national arbitration forum

 

DECISION

 

Golfsmith International, Inc. v. Mike Mintari

Claim Number: FA0906001270171

 

PARTIES

Complainant is Golfsmith International, Inc. (“Complainant”), represented by Sherri L. Eastley of PirkeyBarber, LLP, Texas, USA.  Respondent is Mike Mintari (“Respondent”), Utah, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <golfsmithtv.com>, registered with Fastdomain Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically June 23, 2009; the National Arbitration Forum received a hard copy of the Complaint June 24, 2009.

 

On June 25, 2009, Fastdomain Inc. confirmed by e-mail to the National Arbitration Forum that the <golfsmithtv.com> domain name is registered with Fastdomain Inc. and that Respondent is the current registrant of the name.  Fastdomain Inc. verified that Respondent is bound by the Fastdomain Inc. registration agreement and thereby has 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 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 21, 2009, 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@golfsmithtv.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 27, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain name that Respondent registered, <golfsmithtv.com>, is confusingly similar to Complainant’s GOLFSMITH mark.

 

2.      Respondent has no rights to or legitimate interests in the <golfsmithtv.com> domain name.

 

3.      Respondent registered and used the <golfsmithtv.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Golfsmith International, Inc., has offered golf products and golf-related services since 1968.  Complainant holds several registrations of the GOLFSMITH mark with the United States Patent and Trademark Office (“USPTO”) (See, e.g., Reg. No. 1,447,761 issued July 14, 1988).

 

Respondent registered the <golfsmithtv.com> domain name February 20, 2009.  The website resolving from the disputed domain name displays a blank page with the words “Domain Name For Sale or Development for more information contact Tom: tlmgolf@sbcglobal.net.”  On May 5, 2009, Respondent offered the disputed domain name to Complainant in exchange for $14,500. plus an agreement from Complainant that the domain name owner’s company could produce content for the new website.  On June 1, 2009, Respondent offered to sell the disputed domain name to Complainant in exchange for $4,995. and a website production agreement.  On June 19, 2009, Respondent offered to sell the disputed name for $2, 895. and an agreement to give Respondent the last option to bid on production plan for the disputed domain name.

 

Preliminary Issue: Other Correspondence

 

The National Arbitration Forum was copied on documentation submitted from Respondent to Complainant, which is identified in this proceeding as “Other Correspondence.”  This series of emails falls short of meeting the requirements for a formal Response, although statements in them, if taken as true, do tend to refute some of Complainant’s claims. 

 

The Panel reviewed the additional correspondence to determine if its consideration would require a different result on the merits. In summary, Respondent notes on June 27, 2009, that he purchased the domain name for one Tom Miller.  On June 29, 2009, an email to the Forum, represented to be from Miller, sets out that he, Miller, never offered to sell the domain name but that Golfsmith contacted him about buying it; Miller included a “cease and desist” letter from Golfsmith to Miller. On June 30, the Forum received an email claiming that Mike Mintari published the offer to sell the domain name in error.   On July 7, 2009, Miller emailed the Forum that Golfsmith’s Michael Henderson asked him “for a quote” on the domain’s price and that Golfsmith hired Miller on another project.  Miller then concluded: “I should also be paid for the domain name…since they asked to buy it. While this series of emails and their attachments might create a dispute as to the offer to sell, other factors present would tend to dictate the same result that the Arbitrator reached without considering the correspondence summarized here.  The Panel finds that the emails are not a response in compliance with the rule and are not relevant to the outcome.

 

 

DISCUSSION

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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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.

 

Identical to and/or Confusingly Similar

 

The Panel finds that Complainant established rights in the GOLFSMITH mark under Policy ¶ 4(a)(i) by its registration of the mark with the USPTO.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

Complainant contends that the <golfsmithtv.com> domain name is confusingly similar to its GOLFSMITH mark because the disputed domain name incorporates Complainant’s mark in its entirety adding the generic term “tv” and the generic top-level domain (“gTLD”) “.com.”  The Panel agrees and finds that the <golfsmithtv.com> domain name is confusingly similar to Complainant’s GOLFSMITH mark under Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent has no rights or legitimate interests in the <golfsmithtv.com> domain name.  The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the <golfsmithtv.com> domain name pursuant to Policy ¶ 4(a)(ii).  Without a Response, the Panel may presume that Respondent has no rights or legitimate interests in the <golfsmithtv.com> domain name.  However, the Panel still examines the record in consideration of the factors listed in Policy ¶ 4(c) and for that reason read the correspondence that Respondent and Miller sent to the Forum.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). 

 

No evidence in the record suggests that Respondent—whether Mintari or Miller—is commonly known by the <golfsmithtv.com> domain name.  Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the GOLFSMITH mark, and the WHOIS information identifies Respondent as “Mike Mintari.”  Thus, Respondent has not established rights or legitimate interests in 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 Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (“Given the Complainants’ established use of their famous VICTORIA’S SECRET marks it is unlikely that the Respondent is commonly known by either [the <victoriasecretcasino.com> or <victoriasecretcasino.net>] domain name.”).  And even were the Panel to find Miller’s emails to be relevant to the outcome, neither Respondent nor Miller established himself as the true owner, did not show any license to use Complainant’s protected mark, and did not show a business relationship extending any license to use the mark in any way. 

 

The <golfsmithtv.com> domain name resolves to a website that offers to sell the disputed domain name.  Whether or not, as Miller claims, Respondent listed this offer in error, neither Respondent nor Miller made an active use of the disputed domain name.  The Panel further finds that this failure to actively use a disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).

 

Complainant asserts, and the Panel finds no evidence to the contrary, that Respondent’s sole purpose in registering the <golfsmithtv.com> domain name was to sell it.  Indeed, the only content on the website resolving from the <golfsmithtv.com> domain name is the offer to sell. In fact, Complainant’s allegations relate a series of offers by Respondent to sell the domain name to Complainant, each offer representing a reduced amount along with various suggestions for Respondent’s association with Complainant in future use of the domain name. The Panel finds these offers along with proposed future use show further that Respondent held the domain name passively and lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See 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 the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Between May 5 and June 19, 2009, Respondent made three offers to sell the disputed domain name to Complainant for amounts ranging from $14,500 to $2,895.  Aside from immediate monetary compensation Respondent requested that Complainant promise to use or give preferential treatment to Respondent’s company when Complainant decides to develop the website resolving from the disputed domain name.  The Panel finds that the greater weight of the evidence permits the inference that Respondent registered the disputed domain name for the primary purpose of selling it to Complainant for more than Respondent’s out-of-pocket costs.  Further, the Panel finds that this conduct supports findings of bad faith registration and use under Policy ¶ 4(b)(i).  See Lyon v. Casserly, FA 193891 (Nat. Arb. Forum Oct. 29, 2003) (finding that the domain name was acquired primarily for the purpose of transferring the domain name to the complainant for valuable consideration in excess of the respondent's out-of-pocket costs because the respondent made various requests for concert tickets, backstage passes, press passes and a website development contract); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).

 

Respondent failed to make an active use of the <golfsmithtv.com> domain name.  The Panel finds that Respondent’s failure to make an active use of the disputed domain name also supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name constitutes bad faith registration and use).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <golfsmithtv.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: August 10, 2009.

 

 

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