national arbitration forum

 

DECISION

 

Shaun Micheel v. Maria Elena Fernandez-Smith

Claim Number: FA1103001378028

 

PARTIES

Complainant is Shaun Micheel (“Complainant”), represented by John Jacobson of Riley Warnock & Jacobson, PLC, Tennessee, USA.  Respondent is Maria Elena Fernandez-Smith (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <shaunmicheel.com>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 15, 2011; the National Arbitration Forum received payment on March 15, 2011.

 

On March 15, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <shaunmicheel.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 March 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of  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@shaunmicheel.com.  Also on March 16, 2011, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.

 

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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.    Respondent’s <shaunmicheel.com> domain name is identical to Complainant’s SHAUN MICHEEL mark.

 

2.    Respondent does not have any rights or legitimate interests in the <shaunmicheel.com> domain name.

 

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

 

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

 

FINDINGS

Complainant, Shaun Micheel, is a professional golfer, best known for his 2003 PGA Championship victory.  Complainant has used the SHAUN MICHEEL mark since 1992, in connection with his services as a professional golfer and specific golf-related product endorsements. 

 

Respondent, Maria Elena Fernandez-Smith, registered the disputed domain name on April 7, 2010.  The disputed domain name resolves to a website featuring links to golf-related products, from which Respondent presumably profits.  The links on the website do not appear to directly compete with Complainant’s status as a professional golfer or his specific product endorsements.

 

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."

 

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 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 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.

 

Identical and/or Confusingly Similar

 

Complainant does not have a trademark registration with any governmental trademark authority for its SHAUN MICHEEL mark.  However, the Panel finds such trademark registration unnecessary so long as Complainant can establish common law rights in the mark by showing that the mark has acquired secondary meaning.  See 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); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the 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)).

 

Complainant became a professional golfer in 1992 and has used his SHAUN MICHEEL mark in commerce since that time.  Complainant joined the PGA Tour in 1994, and won the PGA Championship in 2003.  Complainant was runner-up in the PGA Championship in 2006.  Complainant also uses his name in connection with his philanthropic work, including his involvement with the Make-a-Wish Foundation and his hosting of an annual golf tournament and auction in his hometown, Memphis, Tennessee.  Complainant uses his SHAUN MICHEEL mark to distinguish himself from other golfers and to endorse and promote various products and services.  Complainant has expended, and continues to expend, a substantial amount of money and time promoting and marketing his services under the SHAUN MICHEEL mark and goods bearing the SHAUN MICHEEL mark.  Complainant submits evidence of his use of the SHAUN MICHEEL mark to endorse Callaway golf products, the Make-a-Wish Foundation, and his services as a professional golfer on the PGA Tour.  The Panel finds that Complainant has submitted sufficient evidence to prove that his SHAUN MICHEEL mark is associated with his services as a professional golfer, thus establishing the required secondary meaning.  Therefore, the Panel finds that Complainant has rights in the SHAUN MICHEEL mark pursuant to Policy ¶ 4(a)(i).  See Bayless v. Cayman Trademark Trust, FA 648245 (Nat. Arb. Forum Apr. 3, 2006) (“The Panel concludes Complainant has proved that the RICK BAYLESS mark has become sufficiently connected to Complainant’s career as a chef and the public associates that career with Richard L. Bayless and the RICK BAYLESS mark.”); see also Kaino v. Fix, FA 699578 (Nat. Arb. Forum June 19, 2006) (finding common law rights where the complainant has been “creating and displaying artwork under the GLENN KAINO mark since 1999, and that Complainant’s mark has been recognized as associated with Complainant’s artwork by several publications and the national media.”).

 

The Panel finds that where, as here, Respondent registered a domain name incorporating Complainant’s entire mark, absent only the space between the terms, and added the generic top-level domain (“gTLD”) “.com,” the <shaunmicheel.com> domain name is identical to Complainant’s SHAUN MICHEEL mark under Policy ¶ 4(a)(i).  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also  Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ . . . [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant must make a prima facie case showing Respondent lacks rights or legitimate interests in the <shaunmicheel.com> domain name under Policy ¶ 4(a)(ii).  The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name.  See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).  The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests.  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).  Nevertheless, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name.

 

The WHOIS record for the <shaunmicheel.com> domain name indicates that “Maria Elena Fernandez-Smith” is the registrant of the name.  There does not appear to be any connection between the registrant and the disputed domain name that would support a finding that Respondent is commonly known by the disputed domain name.  Beyond the WHOIS information, there does not appear to be any other information in the record that would indicate even a nominal association between Respondent and the <shaunmicheel.com> domain name.  Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant alleges that Respondent’s <shaunmicheel.com> domain name is being used to feature links to golf-related products and websites.  Complainant further alleges that Respondent likely profits from the display of these links.  Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that the respondent’s use of “confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users to websites featuring pop-up advertisements” was not a bona fide offering of goods or services); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements). 

 

Complainant states that on February 2, 2011, Complainant’s counsel sent Respondent a letter requesting the transfer of ownership of the disputed domain name from Respondent to Complainant.  Complainant indicates that it offered to reimburse Respondent for the expenses incurred in obtaining the disputed domain name.  Respondent refused to transfer the disputed domain name and admitted that it acquired the domain name because “she saw Mr. Micheel on television playing golf in a PGA Tournament and thought someone would pay [her] for the domain name at some point.”  Complainant offered to pay Respondent $250 for the domain name, but Respondent refused and insisted on a price of $4,000.  The Panel finds that Respondent’s offer to sell the domain name for an amount that greatly exceeds Respondent’s out-of-pocket costs associated with 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 the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant submits evidence, in the form of emails sent from Respondent,  indicating that Respondent offered to sell the disputed domain name to Complainant for the amount of $4,000.  Complainant also submits that Respondent stated that it “saw Mr. Micheel on television playing golf in a PGA Tournament and thought someone would pay [her] for the domain name at some point.”  The Panel finds there to be enough evidence in the record to support a finding that Respondent’s registered the disputed domain name with the intent to sell it for an amount in excess of Respondent’s out-of-pocket expenses associated with the domain name.  The Panel finds Respondent’s registration and use is evidence of bad faith under Policy ¶ 4(b)(i).  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").

 

Complainant argues that Respondent is likely profiting from the links that are displayed on the website resolving from the <shaunmicheel.com> domain name.  The Panel concurs and finds that Respondent registered and is using the identical disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to Complainant’s affiliation or endorsement of the disputed domain name.  Therefore, the Panel finds that Respondent has demonstrated bad faith pursuant to Policy ¶ 4(b)(iv).  See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks.  Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

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 <shaunmicheel.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  April 18, 2011

 

 

 

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