Taylor Made Golf Company, Inc. v. David Walker
Claim Number: FA1355848
Complainant is Taylor Made Golf Company, Inc. (“Complainant”), represented by David K. Friedland of Lott & Friedland, P.A., Florida, USA. Respondent is David Walker (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buy-taylormadegolfclubs.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2010; the National Arbitration Forum received payment on November 1, 2010.
On November 2, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <buy-taylormadegolfclubs.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@buy-taylormadegolfclubs.com. Also on November 3, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on November 17, 2010.
On November 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant, Taylor Made Golf Company, Inc., contends that
1. Respondent’s <buy-taylormadegolfclubs.com> domain name is confusingly similar to Complainant’s TAYLOR MADE mark.
2. Respondent does not have any rights or legitimate interests in the <buy‑taylormadegolfclubs.com> domain name.
3. Respondent registered and used the <buy-taylormadegolfclubs.com> domain name in bad faith.
B. Respondent
Respondent, David Walker, argues that it has not intended to dilute or otherwise divert business from Complainant, and that it receives nominal income from the use of the disputed domain name through its affiliate agreement with third-party <ebay.com>. Respondent contends that it is merely attempting to sell products that are supplied by Complainant, not to mislead Internet users or dilute Complainant’s rights. Respondent contends that it is making a legitimate use of the disputed domain name, and argues that it is not attempting to divert any Internet traffic away from Complainant’s business. Rather, Respondent contends that it is merely linked with an affiliate auction site that sells goods supplied by Complainant. Respondent alleges that many other businesses are performing similar operations.
Complainant is an internationally-recognized manufacturer, distributor and retailer of
golf equipment, footwear and apparel, all of which prominently display its federally-registered trademarks, such as TAYLOR MADE and TAYLORMADE and Design (collectively, the “TAYLOR MADE mark”). TAYLOR MADE metalwoods, irons and putters have been used in hundreds of professional golf tournaments around the world.
Specifically in the United States, Complainant has used its TAYLOR MADE mark since
as early as 1979. As a result of its long-standing use, Complainant also owns common law trademark rights in its TAYLOR MADE mark.
Complainant owns four United States Trademark Registrations for its marks in connection with sportswear, footwear, headwear, golf equipment, bags, and umbrellas. These trademark registrations are as follows:
TAYLOR MADE
Reg. No. 1,200,542
Issued July 6, 1982
TAYLOR MADE1
Reg. No. 1,374,009
Issued Dec. 3, 1985
TAYLOR MADE
Reg. No. 1,420,059
Issued Dec. 9, 1986
TAYLORMADE and Design
Reg. No. 2,557,110
Issued Apr. 2, 2002
Complainant also owns the domain name <taylormadegolf.com>, which wholly
incorporates Complainant’s TAYLOR MADE mark. Since its registration on August 16, 1995, Complainant has used and continues to use <taylormadegolf.com> in connection with its website which provides information about Complainant and its products and services as well as offers its products for sale.
Respondent’s <buy-taylormadegolfclubs.com> domain was registered on July 6, 2010, more than thirty years after Complainant first used and twenty-eight years after Complainant first registered its TAYLOR MADE mark
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."
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 owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its TAYLOR MADE mark (e.g., Reg. No. 1,200,542 issued July 6, 1982). The Panel finds that Complainant has established rights in the TAYLOR MADE mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant argues that the <buy-taylormadegolfclubs.com> domain name is confusingly similar to its TAYLOR MADE mark. Complainant notes that the disputed domain name contains its entire mark, absent the space between the terms, along with the generic term “buy,” a hyphen, and the descriptive terms “golf” and “clubs.” Further, Complainant argues that the addition of the generic top-level domain (“gTLD”) “.com” fails to distinguish the domain name from its mark. The Panel finds that such additions and omissions to the mark do not sufficiently distinguish the disputed domain name from Complainant’s mark, thereby rendering the domain name confusingly similar to the mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the 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 first 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 interests in the subject domain names.”).
Complainant contends that Respondent has no proprietary rights or legitimate interests in the disputed domain name, and that Respondent is not commonly known by the disputed domain name. Complainant notes that the WHOIS information for the disputed domain name identifies “David Walker” as the registrant. The Panel finds that Respondent is not commonly known by the disputed domain under Policy ¶ 4(c)(ii) based upon the WHOIS information. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent is using the disputed domain name to promote auction sales of Complainant’s goods through the third-party <ebay.com> website. Complainant submits screen shot evidence to show that Respondent prominently displays Complainant’s TAYLOR MADE mark and photographs of Complainant’s golf products. Further, Complainant contends that Respondent receives affiliate and click-through fees in conjunction with its directing of Internet users to the aforementioned auction site. Complainant argues that such use is evidence that Respondent does not have rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds that Respondent’s use of the disputed domain name to display photographs of Complainant’s golf products, as well as using Complainant’s mark prominently, while diverting Internet users to the third-party website <ebay.com> where Complainant’s products are sold by third-party businesses 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent attempted to sell the disputed domain name to Complainant for $978.25. Complainant alleges that Respondent’s offer to sell came in its response to Complainant’s September 2, 2010 cease and desist letter that demanded that Respondent transfer the disputed domain name. Complainant argues that Respondent’s offer far exceeds any initial payment to acquire the disputed domain name, and as such is evidence of bad faith registration and use of the domain name by Respondent. The Panel finds that Respondent’s offer to sell the disputed domain name to Complainant is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith).
Complainant alleges that Respondent is using the disputed domain name in bad faith where Respondent is diverting Internet users who are attempting to find information on Complainant’s products to Respondent’s website. Complainant notes that Respondent’s website displays photographs of Complainant’s products and sends Internet users who wish to purchase such products to auction sites located on third-party <ebay.com>. Complainant argues that such competing use is evidence of bad faith registration and use. The Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii) where Respondent is diverting Internet users who are interested in Complainant’s products to a third-party auction site, where Complainant’s products are sold without authorization. See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Further, Complainant alleges that Respondent receives click-through and affiliate fees for sending Internet users to third-party auction sites that sell Complainant’s goods. The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to third-party auction sites that sell Complainant’s products where Respondent presumably collects affiliate or click-through fees is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
Furthermore, Respondent had actual notice of Complainant’s famous TAYLOR MADE mark. Respondent’s use of Complainant’s mark to market Complainant’s products is evidence of Respondent’s knowledge that Complainant was operating under the federal trademark of TAYLOR MADE. Respondent’s actual knowledge of Complainant's mark supports a finding that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
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 <buy-taylormadegolfclubs.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 3, 2010
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