Jon Bradley, Trustee Byron Nelson Marital Trust v. Gary Van Gundy
Claim Number: FA0712001119201
Complainant is Jon Bradley, Trustee Byron Nelson Marital Trust (“Complainant”), represented by David J. Zubke, of Best & Flanagan LLP, 225 South Sixth Street, #4000, Minneapolis, MN 55402. Respondent is Gary Van Gundy (“Respondent”), 3324 Hart, Flower Mound, TX 75028.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <byronnelson.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On December 18, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 7, 2008 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <byronnelson.com> domain name is identical to Complainant’s BYRON NELSON mark.
2. Respondent does not have any rights or legitimate interests in the <byronnelson.com> domain name.
3. Respondent registered and used the <byronnelson.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, John Bradley, Trustee of the Byron Nelson
Marital Trust and its predecessors in interest, has continuously used the BYRON
NELSON mark in relation to golf-related products, apparel, and personal
services for many decades. Byron Nelson
established the Trust prior to his 2006 death in order to manage and license
his endorsements and other valuable rights established over his golf career. The BYRON NELSON mark is well-known in the
professional-golfing world as a result of Bryon Nelson’s legendary golf
career. Byron Nelson won 52 professional
tournaments, including five majors, holds the single-season record for most
tour wins, hosted the PGA Tour’s BYRON NELSON CLASSIC tournament in
Respondent, Gary Van Gundy, registered the <byronnelson.com> domain name on
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant is not required to own a trademark registration
to establish rights in the BYRON NELSON mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist);
see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO
Complainant has established common law rights in the BYRON NELSON mark through continuous and extensive use of the mark in connection with golfing product promotion since 1939 and golf tournaments since 1968. Complainant is well-known in the professional golfing world. Therefore, Complainant’s BYRON NELSON mark has acquired secondary meaning sufficient to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
domain name is identical to Complainant’s BYRON NELSON mark because it includes
both terms of the mark. Furthermore, the
removal of the space between the two individual terms does not sufficiently
distinguish the disputed domain name from the registered mark. Finally, the addition of the generic
top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name
from Complainant’s mark because all domain names are required to have a
top-level domain. Therefore, the Panel
finds that the <byronnelson.com>
domain name is identical to Complainant’s BYRON NELSON mark. See Pomellato S.p.A v. Tonetti,
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent has neither rights nor
legitimate interests in the disputed domain name. Complainant must first present a prima facie case establishing that
Respondent lacks all rights and legitimate interests in the disputed domain
name. Once Complainant has met the
burden and made a prima facie case
supporting the assertion that Respondent lacks rights and legitimate interests,
the burden shifts to Respondent to show that it does have rights or legitimate
interests in the disputed domain name.
The Panel finds that Complainant has demonstrated that Respondent lacks
rights and legitimate interests, and thus made a prima facie case pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires
v. Greenpeace Int’l, D2001-0376 (WIPO
The Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain name because Respondent failed to answer the Complaint. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Despite Respondent’s failure to respond, the Panel will examine all evidence in the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that Respondent has never been
authorized to use the BYRON NELSON mark and that Respondent is not commonly
known by the disputed domain name. The
WHOIS information indicates that the registrant is Gary Van Gundy, and
therefore does not indicate that Respondent is commonly known by the <byronnelson.com> domain name. Thus, the Panel finds that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply; see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
Respondent is currently using the disputed domain name to divert Internet users to a website that is designed only to advertise the <byronnelson.com> domain name for sale. The Panel finds that such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website); see also Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).
Moreover, Respondent’s intent to sell the <byronnelson.com> domain name further demonstrates Respondent’s lack of rights and legitimate interests. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds
Respondent’s intent to sell the disputed domain name to be evidence of
registration and use in bad faith under Policy ¶ 4(b)(i).
See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the
disputed domain name registration for sale establishes that the domain name was
registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Online,
Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <byronnelson.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 23, 2008
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