Todd Graves Golf School, LLC v. Patrick Cunningham
Claim Number: FA1110001411688
Complainant is Todd Graves Golf School, LLC (“Complainant”), represented by Alexander M. Kargher of Glasser Weil Fink Jacobs Howard Avchen & Shapiro LLP, California, USA. Respondent is Patrick Cunningham (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <therealmoenorman.com>, registered with Register.com.
The undersigned certifies that she 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 October 17, 2011; the National Arbitration Forum received payment October 18, 2011.
On October 18, 2011, Register.com confirmed by e-mail to the National Arbitration Forum that the <therealmoenorman.com> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com verified that Respondent is bound by the Register.com registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 2011, 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@therealmoenorman.com. Also on October 19, 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 other than correspondence that disavowed further interest in the business utilizing the site but that did not qualify as a Response, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 14, 2011, 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" 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.
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, <therealmoenorman.com>, is confusingly similar to Complainant’s MOE NORMAN mark.
2. Respondent has no rights to or legitimate interests in the <therealmoenorman.com> domain name.
3. Respondent registered and used the <therealmoenorman.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Todd Graves Golf School, LLC, owns rights in the MOE NORMAN mark through various trademark registrations that it owns through the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,875,002 filed July 29, 2008; registered November 9, 2010). Complainant uses that mark to market and sell a variety of sporting goods relating to the game of golf. Respondent’s rights in the mark date back to the date of filing in 2008.
Respondent, Patrick Cunningham, registered the <therealmoenorman.com> domain name November 9, 2010. Respondent’s disputed domain name resolves to a website that offers a book for sale relating to MOE NORMAN.
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 as 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.
Complainant alleges that it has rights in the MOE NORMAN mark under Policy ¶ 4(a)(i). To support this assertion Complainant submits several trademark printouts showing that it owns trademark registrations with the USPTO for the MOE NORMAN mark (e.g., Reg. No. 3,875,002 filed July 29, 2008; registered November 9, 2010). The Panel finds that such evidence is sufficient for Complainant to establish rights in the mark under Policy ¶ 4(a)(i) and that such rights begin on the filing date of the trademark with the USPTO, which is July 29, 2008, in the present matter. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The Panel also finds that a USPTO trademark registration is sufficient, even when Respondent lives or operates in a different country. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant argues that Respondent’s <therealmoenorman.com> domain name is confusingly similar to Complainant’s MOE NORMAN mark. Complainant contends that Respondent’s mere addition of the terms “the” and “real,” as well as the generic top-level domain (“gTLD”) “.com,” is insufficient to differentiate the domain name from Complainant’s mark. The Panel further notes that the removal of a space from the mark is also not sufficient to remove the domain name from the realm of confusing similarity. Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s 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 Antoun v. Truth Squad, FA 114766 (Nat. Arb. Forum Aug. 21, 2002) (stating that the article "the" is "often added only for grammatical purposes, and may be superfluous to the name itself"); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleged that Respondent does not have rights or legitimate interests in the <therealmoenorman.com> domain name. According to Policy ¶ 4(a)(ii), Complainant is required to make a prima facie case to support its allegations, and then the burden of proof shifts to Respondent to prove it does have such rights or legitimate interests in the disputed domain name. The Panel finds that Complainant made a prima facie case. Given Respondent’s failure to respond to these proceedings, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 2, 2002) (“Because Complainant’s submissions constitute 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 right or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fan Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel, however, still examines the record to determine whether evidence there suggests that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant further contends that Respondent is not commonly known by the disputed domain name, and that Complainant has not given Respondent license or permission to use Complainant’s mark. The WHOIS information for the disputed domain name identifies Respondent as “Patrick Cunningham,” and no further evidence on record shows that Respondent is commonly known by the disputed domain name. The Panel finds that without affirmative evidence that Respondent is commonly known by the disputed domain name, Respondent cannot claim rights and legitimate interests in the disputed domain name under a Policy ¶ 4(c)(ii) analysis. 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 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 that it is commonly known by the disputed domain name).
Complainant also alleged that it has exclusive rights to use the MOE NORMAN mark for many products, including un-mounted photographs and biographies. Complainant contends that Respondent is using the disputed domain name to market and sell an unauthorized biography of MOE NORMAN, which provides photographs for golf instruction. Complainant argues that Respondent is using the domain name to create an allusion of affiliation between Complainant and Respondent in order to sell an unauthorized and unlicensed book. The Panel agrees and finds that Respondent’s commercial use of the disputed domain name to sell a competing and unauthorized product 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). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds that Respondent has no rights to or interests in the dispute domain name and mark within it; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant lastly contends that Respondent registered and is using the disputed domain name to offer an unauthorized biography of MOE NORMAN, which directly competes with Complainant’s rights under the mark. Complainant contends that Respondent’s conduct is “undoubtedly designed to interfere with Complainant’s activities, and is therefore bad faith.” The Panel agrees and finds that Respondent’s directly competing use of the domain name in question is evidence of bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Further, Complainant urges that Respondent is creating the false impression that its website is sponsored or approved by Complainant in order to profit from the sale of its unauthorized biography. The Panel finds that this use is also evidence of bad faith pursuant to Policy ¶ 4(b)(iv), where Respondent is profiting from its use of the confusingly similar domain name. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services [to those] offered by the complainant under its mark); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; 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 <therealmoenorman.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 23, 2011.
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