Desert Classic Charities v. Longhorn Mgmt
Claim Number: FA0806001213035
Complainant is Desert Classic Charities (“Complainant”), represented by Michael
J. Andelson, of Best Best & Krieger, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bobhopechryslerclassic.com>, registered with Godaddy.com, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 27, 2008.
On June 30, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bobhopechryslerclassic.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 July 7, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 28, 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 postmaster@bobhopechryslerclassic.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 31, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Since 1985, Complainant has used the BOB HOPE CHRYSLER CLASSIC mark in connection with the organization, promotion and operation of an annual PGA Tour professional golf tournament.
Complainant utilizes the BOB HOPE name with permission from comedian and philanthropist, Bob Hope.
The tournament competition is broadcast to audiences of millions each year, and numerous celebrities participate.
Since the competition’s beginnings, it has raised over US $25 million for a variety of deserving charities.
Complainant has established trademark rights in the BOB HOPE CHRYSLER CLASSIC mark under the common law through its long and continuous use in commerce.
Respondent is not a licensee of Complainant and has not otherwise been authorized to use the BOB HOPE CHRYSLER CLASSIC mark.
Respondent’s <bobhopechryslerclassic.com> domain name was registered on January 14, 2007, and resolves to a links page, in which the links connect Internet users to a variety of third-parties unrelated to Complainant.
These links produce income for Respondent through the collection of “click-through” fees or similar referral fees.
Indeed Complainant has offered Respondent US $1,500.00 to transfer the disputed domain name, but Respondent refused, stating that it was worth more due to “click-through” fees that it generates, especially during the four months of the year around the time of the tournament.
Respondent’s <bobhopechryslerclassic.com> domain name is identical to Complainant’s BOB HOPE CHRYSLER CLASSIC mark.
Respondent does not have any rights or legitimate interests in the domain name <bobhopechryslerclassic.com>.
Respondent has registered and uses the <bobhopechryslerclassic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is 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."
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant need not have registered the BOB HOPE CHRYSLER
CLASSIC mark with a governmental trademark authority in order to establish
rights in the mark. It need only establish common law rights in order to
satisfy Policy ¶ 4(a)(i). See, for
example, Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July
18, 2006) (finding that a complainant need not own a valid trademark
registration for the ZEE CINEMA mark in order to demonstrate its rights in the
mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v.
calcuttawebdevelopers.com,
FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that
Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can
establish common law rights in its mark).
There is no dispute that the BOB HOPE CHRYSLER CLASSIC mark
has been used by Complainant since 1985 in connection with a PGA golf
tournament broadcast to millions of viewers annually. Previous panels have found that common law
rights are established through such continuous use and the development of secondary
meaning. 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). We
therefore accept Complainant’s allegations that there is significant public
recognition of Complainant’s tournament under the BOB HOPE CHRYSLER CLASSIC
mark by virtue of continuous use of the mark for more than two decades. Accordingly, we conclude that Complainant has
established common law rights in the BOB HOPE CHRYSLER CLASSIC mark pursuant to
Policy ¶ 4(a)(i). See Ass’n of Tex. Prof’l Educators, Inc. v.
Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that
the complainant had demonstrated common law rights in the ATPE mark through
continuous use of the mark in connection with educational services for over
twenty-five years); see also Kahn Dev. Co. v. RealtyPROshop.com,
FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that a complainant’s VILLAGE
AT SANDHILL mark acquired secondary meaning among local consumers sufficient to
establish common law rights where that complainant had been continuously and
extensively promoting a real estate development under the mark for years).
We turn then to the parallel question of
identity-similarity. In this connection, we observe that the <bobhopechryslerclassic.com>
domain name is identical to Complainant’s BOB HOPE CHRYSLER CLASSIC mark but
for the omission of spaces within the mark and the inclusion of the generic
top-level domain (“gTLD”) “.com.” Such
omission of spaces and inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i)
analysis. As a result, we conclude that
the disputed domain name is identical to Complainant’s mark pursuant to Policy
¶ 4(a)(i). See
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).
To begin a Policy ¶ 4(a)(ii) analysis, we must first determine whether Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the <bobhopechryslerclassic.com> domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 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, then the burden shifts to Respondent to show that it does have rights
or legitimate interest in the subject domain names.
See also VeriSign Inc.
v. VeneSign
We are satisfied that Complainant has met its threshold burden. Accordingly, the burden is shifted to Respondent to prove that it has rights to or legitimate interests in the disputed domain name. Because Respondent has failed to reply to the Complaint, we are free to presume that Respondent lacks rights and legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a complaint filed under the Policy allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to accept
all reasonable allegations set forth…as true.
We will nonetheless examine the record in light of the
elements listed in Policy ¶ 4(c). We begin by noting that there is nothing in
the record, including the pertinent WHOIS information, to indicate that Respondent
is commonly known by the disputed domain name.
Likewise there is no dispute as to Complainant’s allegation to the effect
that Respondent is using the disputed domain name without permission from Complainant. In such circumstances, panels typically fail
to find for a respondent under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652
(Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly
known by disputed domain names where the WHOIS information, as well as all
other information in the record, gave no indication that that respondent was
commonly known by the disputed domain names, and where a complainant had not
authorized that respondent to register a domain name containing its registered
mark). See also Reese v. Morgan, FA
917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not
commonly known by the <lilpunk.com> domain name where there was no
evidence in the record, including the WHOIS information, that that respondent
was commonly known by that domain name, and where a complainant asserted that
it did not authorize or license that respondent’s use of its mark in a domain
name). For similar reasons, and, in the absence of additional evidence, we are
comfortable in concluding that Respondent is not commonly known by the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
We next consider that Complainant alleges, and Respondent
does not deny, that Respondent uses the disputed domain name to operate a
website featuring links to goods and services unrelated to complainant. In Constellation Wines
Moreover, Respondent does not deny the allegation that it has
shown a willingness to sell the disputed domain name for a price in excess of
US $1,500.00 after Complainant had offered to purchase the disputed domain name
for this amount. This willingness to
dispose of the disputed domain name is further evidence that Respondent lacks
rights and legitimate interests in the disputed domain name pursuant to Policy
¶ 4(a)(ii). See Reese v. Morgan, FA 917029
(Nat. Arb. Forum Apr. 5, 2007) (finding that a respondent’s willingness to sell
a contested domain name for more than its out-of-pocket costs provides evidence
that that respondent had no rights to or legitimate interests in a contested
domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704
(Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to
sell a domain name to a complainant suggests that that respondent has no rights
or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
The Panel therefore concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts, and Respondent does not deny, that Respondent
refused an offer from Complainant to purchase the <bobhopechryslerclassic.com>
domain name for US $1,500.00, citing the numerous hits it receives and the revenue
it generates, especially during the four months of the year around the time of
the described golf tournament. In the circumstances,
we conclude that Respondent has registered and is using the disputed domain
name in bad faith under Policy ¶ 4(b)(i).
See Booz-Allen & Hamilton Inc.
v. Servability Ltd, D2001-0243
(WIPO Apr. 5, 2001) (finding bad faith where a respondent, a domain name
dealer, rejected a complainant’s offer for the domain in favor of greater
consideration); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26,
2000) (finding that a respondent demonstrated bad faith when it requested
compensation beyond out-of-pocket costs in exchange for a registered domain
name).
Moreover, since the disputed domain name is identical to
Complainant’s mark and is being used to generate financial revenue for
Respondent, we conclude this to be additional evidence that Respondent registered
and is using the contested domain name in bad faith pursuant to Policy ¶
4(b)(iv). See
Respondent is using the disputed domain name
to operate a website which features links to competing and non-competing
commercial websites from which Respondent presumably receives referral
fees. Such use for Respondent’s own
commercial gain is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).
See also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel thus concludes that Complainant has satisfied 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 GRANTED.
Accordingly, it is Ordered that the <bobhopechryslerclassic.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 7, 2008
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