Golfsmith International, Inc. v. Mike Mintari
Claim Number: FA0906001270171
Complainant is Golfsmith International, Inc. (“Complainant”), represented by Sherri
L. Eastley of PirkeyBarber, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <golfsmithtv.com>, registered with Fastdomain Inc.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically June
23, 2009; the National Arbitration Forum received a hard copy of the
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
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
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: email@example.com.” On
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.
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.
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.
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
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
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
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.
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
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.
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.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Between May 5 and
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.,
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
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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