Acushnet Company v. Robert Parrish
Claim Number: FA2203001988606
Complainant is Acushnet Company (“Complainant”), represented by Jonathan M. Gelchinsky of Pierce Atwood LLP, Maine, USA. Respondent is Robert Parrish (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names here at issue are <footjoyoutletfactory.com>, <footjoygolfshoesonsale.com> and <footjoycanadasale.com>, all registered with Dynadot, Llc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 16, 2022; the Forum received payment on March 16, 2022.
On March 18, 2022, Dynadot, Llc; confirmed by e-mail to the Forum that the <footjoyoutletfactory.com>, <footjoygolfshoesonsale.com>, and <footjoycanadasale.com> domain names are registered with Dynadot, Llc; and that Respondent is the current registrant of the names. Dynadot, Llc; has verified that Respondent is bound by the Dynadot, Llc; registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 22, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2022, by which Respondent could file a Response to the Complaint, via e-mail addressed to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@footjoygolfshoesonsale.com, postmaster@footjoycanadasale.com and postmaster@footjoyoutletfactory.com. Also on March 22, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 18, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a global leader in the design, development, manufacturing, marketing and sale of high-quality golf products, including golf shoes.
Complainant holds a registration for the FOOTJOY trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,198,007, registered as of June 15, 1982, and renewed most recently as of June 16, 2012.
Respondent registered the domain names <footjoyoutletfactory.com>, <footjoygolfshoesonsale.com> and <footjoycanadasale.com> on January 12, 2022.
The domain names are confusingly similar to Complainant’s FOOTJOY mark.
Respondent has not been commonly known by any of the domain names.
Complainant has not authorized Respondent to use the FOOTJOY mark in any way.
Respondent is not an authorized distributor or retailer of Complainant’s FOOTJOY products.
Respondent fails to make a bona fide offering of goods or services by means of the domain names or a legitimate noncommercial or fair use of them.
Instead, Respondent uses each of the domain names to operate fraudulent commercial websites selling counterfeit goods in competition with the business of Complainant.
Respondent has designed each such commercial website to be identical or nearly identical in appearance and content to Complainant’s genuine FOOTJOY websites.
Respondent lacks both rights to and legitimate interests in the domain names.
Respondent’s use of the domain names disrupts Complainant’s business.
Respondent knew of Complainant’s rights in the FOOTJOY mark when it registered the domain names.
Respondent both registered and now uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) the same domain names have been registered and are being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
By virtue of its registration of the FOOTJOY trademark with a national trademark authority, the USPTO, Complainant has rights in that mark sufficient to satisfy the requirement of Policy¶4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. See, for example, BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum August 3, 2015) (finding that a UDRP complainant’s registration of its mark with the USPTO adequately proved its right to proceed under Policy¶4(a)(i)).
Turning to the core question posed by Policy¶4(a)(i), we conclude from a review of the record that the domain names <footjoygolfshoesonsale.com>, <footjoycanadasale.com> and <footjoyoutletfactory.com> are confusingly similar to Complainant’s FOOTJOY trademark. All of the domain names incorporate the mark in its entirety, with only the addition of the generic Top Level Domain (“gTLD”) “.com.” and the generic terms “shoes on sale,” Canada sale” or “outlet factory,” which serve to underscore both the commercial character of the domain names and Respondent’s intent to employ them to compete with Complainant’s business. These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to a UDRP complainant’s mark a gTLD and the generic term “finance,” which described that complainant’s financial services business conducted under the mark, did not distinguish the resulting domain name from the mark under Policy¶4(a)(i)).
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy¶4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy¶4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <footjoygolfshoesonsale.com>, <footjoycanadasale.com> and <footjoyoutletfactory.com> domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy¶4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by any of the contested domain names, and that Complainant has not authorized Respondent to use the FOOTJOY mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Robert Parrish,” which does not resemble any of the domain names. On this record, we conclude that Respondent has not been commonly known by any of the disputed domain names so as to have acquired rights to or legitimate interests in them within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that complainant asserts, without objection from Respondent, that Respondent uses each of the domain names to operate fraudulent commercial websites, each of them being identical or nearly identical in appearance and content to Complainant’s genuine FOOTJOY websites, and each selling counterfeit goods in competition with Complainant’s business. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy¶4(c)(i) nor a legitimate noncommercial or fair use of it under Policy¶4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016):
use of a domain to sell products and/or services that compete directly with a [UDRP] complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy¶4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy¶4(a)(ii).
We have found each of the domain names <footjoygolfshoesonsale.com>, <footjoycanadasale.com> and <footjoyoutletfactory.com> to be confusingly similar to Complainant’s FOOTJOY trademark. And we are persuaded by the evidence that Respondent’s use of the domain names, as alleged in the Complaint, is an effort to profit commercially from the confusion thus caused among Internet users as to the possibility of Complainant’s affiliation with one or another of the domain names. Under Policy¶4(b)(iv), this stands as proof of Respondent’s bad faith in the registration and use of the domain names. See, for example, Affliction, Inc. v. Chinasupply, FA 1223521 (Forum October 23, 2008) (finding, under Policy ¶ 4(b)(iv), that a respondent’s attempt to gain commercially by creating confusion among Internet users as to the possibility of a UDRP complainant’s connection with the website resolving from a disputed domain name by selling counterfeit products there showed that respondent’s bad faith in registering and using the domain name).
We are also convinced by the evidence that Respondent employs the websites resolving from the contested domain names fraudulently to collect identifying personal information and credit card numbers from unsuspecting Internet users. This practice, often described as a “phishing” scheme, likewise illustrates Respondent’s bad faith in registering and using the domain names. See, for example, Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum March 29, 2004):
‘Phishing’ involves the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.
See also Wells Fargo & Co. v. Maniac State, FA 608239 (Forum January 19, 2006) (finding, under Policy ¶ 4(a)(iii), bad faith registration and use where a respondent used a domain name fraudulently to acquire the personal financial information of a UDRP complainant’s online customers).
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its rights in the FOOTJOY mark when it registered the offending domain names. This further demonstrates Respondent’s bad faith in registering them. See, for example, Mycoskie, LLC v. William Kelly, FA 1488105 (Forum April 23, 2013):
[T]he Panel finds that, due to Respondent’s use of the domain name to sell counterfeit versions of Complainant’s products, Respondent had actual knowledge of the mark and Complainant's rights.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <footjoyoutletfactory.com>, <footjoygolfshoesonsale.com>, and <footjoycanadasale.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 19, 2022
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