Taylor Made Golf Company, Inc. v.
Highlands
Claim Number: FA0204000112468
Complainant
is Taylor Made Golf Company, Inc.,
Carlsbad, CA (“Complainant”) represented by Tawnya Wojciechowski, of Sheppard
Mullin Richter & Hampton.
Respondent is Highlands,
Miami, FL (“Respondent”) .
The
domain name at issue is <taylormade.biz>,
registered with Iholdings.com.
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
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 26, 2002; the Forum
received a hard copy of the Complaint on April 27, 2002.
On
May 1, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 21,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
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 June 5, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Hon. Ralph Yachnin
as the single 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 STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response from Respondent.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The
<taylormade.biz> domain name is identical to the mark TAYLOR MADE,
in which Complainant holds rights.
Respondent
has no rights or legitimate interests in respect of the disputed domain name.
Respondent
registered the disputed domain name in bad faith.
B.
Respondent
Respondent
did not submit a Response in this proceeding.
Complainant was founded in 1979 and has
been engaged in the development, manufacture, promotion, distribution and sale
of high quality golf clubs, golf bags, and related products targeted at both
the amateur and professional golf markets.
Complainant sells its products under the federally registered TAYLOR
MADE mark (Reg. No. 1,200,542 issued July 6, 1982). Complainant owns a number of TAYLOR MADE marks for its
golf-related products.
Complainant has widely and extensively
advertised its TAYLOR MADE mark through promotion and enhancement of its
related golf products. Subsequently,
the TAYLOR MADE mark has become well known in the golfing community and to the
public at large.
Respondent registered <taylormade.biz>
on March 27, 2002 and has not established a use for it. Respondent placed a contact address as “This
Domain Is For Sale” in its WHOIS registration information.
Paragraph 15(a) of the STOP 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 STOP Rules
and draw such inferences it considers appropriate pursuant to paragraph 14(b)
of the STOP Rules.
Paragraph
4(a) of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1)
the domain name is identical to a trademark or service mark in which
the Complainant has rights;
and
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service mark
in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
holds trademark rights in the TAYLOR MADE mark through federal registration
with the United States Patent and Trademark Office. Complainant’s mark is identical to Respondent’s <taylormade.biz>
domain name. See Princeton
Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc. FA 102811 (Nat.
Arb. Forom Feb. 8, 2001) (finding that the <.biz> gTLD in the disputed
domain name is not a factor and hence to be ignored, in determining whether a
disputed domain name is identical to the mark in which Complainant asserts
rights).
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Complainant
has demonstrated its rights to and interests in the TAYLOR MADE mark. Respondent’s failure to submit a Response
allows the Panel to presume Respondent has no rights or interests in the
disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondent’s failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
Because
of Respondent’s failure to submit a Response, there is no evidence that
Respondent is the owner or beneficiary of a trade or service mark that is
identical to <taylormade.biz> pursuant to STOP Policy ¶
4(c)(i). 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 under the UDRP 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); see also Nat’l
Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb.
Forum Feb. 11, 2002) (finding that, because Respondent did not come forward
with a Response, the Panel could infer that it had no trademark or service
marks identical to <grammy.biz> and therefore had no rights or legitimate
interests in the domain name).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Respondent posted the domain name <taylormade.biz>
for sale on the domain name registration page.
This behavior evidences bad faith registration under STOP Policy ¶
4(b)(i). See Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding bad faith where the Respondent’s WHOIS registration information
contained the words, “This is domain name is for sale”); see also Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”); see also Microsoft Corp. v. Mehrotra, D2000-0053
(WIPO Apr. 10, 2000) (finding bad faith where that Respondent registered the
domain name for the purpose of selling it, as revealed by the name the
Respondent chose for the registrant, “If you want this domain name, please
contact me”).
The notoriety of Complainant’s TAYLOR
MADE mark, along with the unique STOP procedure, put Respondent on notice that
Complainant held rights in the mark and that Respondent had no such rights when
registering <taylormade.biz>.
Therefore, it can be inferred that Respondent’s registration of the
TAYLOR MADE mark in its domain name was done to prevent Complainant from
reflecting the mark in a corresponding domain name; thus, the registration was
done in bad faith under STOP Policy ¶ 4(b)(ii). See Peachtree Software v. Scarponi, FA 102781
(Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy ¶
4(b)(ii), noting that it was reasonable to conclude Respondent registered
<peachtree.biz> with the intent to prevent Complainant from reflecting
its PEACHTREE mark in a corresponding domain name, given Respondent's knowledge
of Complainant's mark and Respondent's lack of rights or interests in the
mark); see also Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb.
Forum Mar. 4, 2002) (finding that the unique nature of the STOP Policy and the
notice given to Respondent regarding existing IP Claims identical to its chosen
domain name precluded good faith registration of <genelogic.biz> when
Respondent registered it with “full knowledge that his intended business use of
this domain name was in direct conflict with a registered trademark of a known
competitor in exactly the same field of business”); see also Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of
Complainants' famous marks, Respondent had actual or constructive knowledge of
the BODY BY VICTORIA marks at the time she registered the disputed domain name
and such knowledge constitutes bad faith).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having established all three elements
required under the STOP Policy, the Panel concludes that relief shall be hereby
granted.
Accordingly, it is Ordered that the <taylormade.biz>
domain name be transferred from Respondent to Complainant, and that
subsequent challenges under the STOP Policy against this domain name shall
not be permitted.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 6, 2002
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