Full Swing Golf, Inc. v. Par-T-Golf
Claim Number: FA0112000102749
Complainant is Full Swing Golf, Inc., San Diego, CA (“Complainant”) represented by Brian Arnold, of Full Swing Golf, Inc. Respondent is Par-T-Golf, Las Vegas, NV (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fullswinggolf.com>, registered with Network Solutions, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 6, 2001; the Forum received a hard copy of the Complaint on December 7, 2001.
On December 7, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <fullswinggolf.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 10, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 31, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On January 7, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.
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.” 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 any Response from Respondent.
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The disputed domain name <fullswinggolf.com> is identical and confusingly similar to FULL SWING GOLF and FULL SWING, marks in which Complainant holds rights.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent did not submit a Response in this proceeding.
Complainant registered the FULL SWING service mark on the Principal Register of the United States Patent and Trademark Office as Registration No. 1,628,721 on December 18, 1990 and has continuously used the mark in commerce since 1987 in connection with retail golf equipment sales.
Complainant has used the FULL SWING GOLF mark continuously in interstate and international commerce since about 1989. Complainant has averred that it is applying for a registered trademark in FULL SWING GOLF and that it currently holds common law trademark rights in the mark.
Respondent registered the disputed domain name on January 6, 1997, and has used it to promote its own business, which competes with Complainant. The domain name currently resolves to an “under construction” page.
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant asserts that it holds common law trademark rights in FULL SWING GOLF, through at least eleven years of continuous use of the mark and through wide notoriety. Because Respondent has not disputed the claim, the Panel may accept it as true. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
Aside from any rights gained through common law trademark, Complainant has also sufficiently established rights through registration of the FULL SWING mark with the U.S. Patent and Trademark Office.
The disputed domain name is confusingly similar to Complainant’s registered FULL SWING mark. The addition of the word “golf” to the mark does not defeat confusing similarity, but rather, increases confusion as users of the <fullswinggolf.com> domain will naturally associate the term “golf” with Complainant’s business and mark. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the trademarks was that the goods and services offered in association with the domain name are manufactured by or sold by the Complainant or one of the Complainants approved distributors”).
The inclusion of “.com” in the disputed domain name is inconsequential to the identical/confusingly similar inquiry. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that “the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has established its rights to and legitimate interests in its respective marks. Because Respondent has failed to submit a Response in this proceeding, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Respondent’s use of the domain name, which reflects Complainant’s name in its entirety, to sell competing goods cannot be deemed a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i). See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of domain names that were confusingly similar to Complainant’s mark to sell competing goods was not a bona fide offering of goods within the meaning of the Policy); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from the Complainant's site to a competing website).
There is also no evidence that Respondent is commonly known as “fullswinggolf” or “fullswinggolf.com” pursuant to Policy ¶ 4(c)(ii). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).
Finally, Respondent’s use of the disputed domain name to host an “under construction” page cannot constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain name where Respondent claimed to be using the domain name for a non-commercial purpose but had made no actual use of the domain name); see also Media West-GSI, Inc., & Gannett Satellite Info. Network, Inc. v. Macafee, D2000-1032 (WIPO Oct. 6, 2000) (finding no rights and legitimate interests where Respondent was not commonly known by the BASEBALL WEEKLY mark and made no use of the domain name other than to state that the “web site for domain name BASEBALLWEEKLY.COM is under construction”).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied and that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Registration and Use in Bad Faith
By intentionally registering a domain name that incorporated Complainant’s marks and business name in its entirety, Respondent acted with bad faith to disrupt the business of Complainant, its direct competitor, pursuant to Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).
Respondent’s use of the disputed domain name to divert Complainant’s potential customers to its own website where it sold similar goods and services also indicates bad faith under Policy ¶ 4(b)(iv). See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s mark by offering the same chat services via his website as the Complainant); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <fullswinggolf.com> domain name be transferred from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 8, 2002
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