national arbitration forum

 

DECISION

 

Absolutely Golf and Travel LLC / Hilary K. Bussey a/k/a Debbie Bussey v. Irish Links

Claim Number: FA1112001421437

 

PARTIES

Complainant is Absolutely Golf and Travel LLC / Hilary K. Bussey a/k/a Debbie Bussey (Complainant), represented by Natalie Sulimani, New York, USA.  Respondent is Irish Links (Respondent), Connecticut, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <absolutelygolf.com> ("the Domain Name"), registered with Network Solutions, LLC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Dawn Osborne as Presiding Panelist and Judge Kuechenmeister and Dr. Schanda as Panelists

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 23, 2011; the National Arbitration Forum received payment on December 23, 2011.

 

On December 30, 2011, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <absolutelygolf.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name.  Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 January 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2012 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@absolutelygolf.com.  Also on January 5, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.

 

Respondent’s Response was received after the Response deadline and, therefore was not in compliance with the Rules.

 

An Additional Submission which complies with Supplemental Rule 7 was served by the Complainant on February 6, 2012.

 

On February 6, 2012 pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Dawn Osborne as Presiding Panelist and Judge Kuechenmeister and Dr Schanda as Panelists.

 

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."  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. However, the Panel decided to take the Response into account as the Complainant was not prejudiced thereby.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

 

The Complainant's contentions can be summarised as follows:

 

The Complainant has been using the mark ABSOLUTELY GOLF since its inception on May 9, 2001 in relation to a golf travel business and so has common law rights in this mark. On May 9, 2001 it was incorporated with the Connecticut Department of State. At this time the Respondent was informed the Complainant would be starting up this business. The Complainant is applying for a registered trade mark for the mark.

 

The domain name <absolutely-golf.com>, not the subject of these proceedings, was registered shortly after its incorporation by the Complainant and is used for its website and e-mail to date (as the Domain Name had already been registered by a third party, not a party to this dispute).  

 

The customers of the Complainant commonly refer to it as ABSOLUTELY GOLF and have come to associate this mark exclusively with the Complainant's golf travel business. ABSOLUTELY GOLF is identical to the Domain Name. 

 

The Respondent has no rights or legitimate interests in the Domain Name. It has always been known as Irish Links and has never been known as ABSOLUTELY GOLF and is not commonly known by that name. It has no authorisation to use the mark ABSOLUTELY GOLF.

 

Respondent has owned the Domain Name since July 16, 2001 after learning of the Complainant's intention to use ABSOLUTELY GOLF since which time it has not used the Domain Name for an active web site. The Domain Name has almost always been parked in such a manner as to hyperlink to various third party web sites, but it was pointed to the Respondent's own web site in May 2009, Winter 2010 and August 2011. Each time the Complainant sent the Respondent a cease and desist letter and the re-direct was removed. This is confusing as the Complainant and the Respondent have competing businesses. It is also not bona fide use to point the Domain Name to third party web sites and collect revenue from click through advertising.  Due to the third occasion of re-direction the Complainant is now seeking relief through these proceedings.

 

The Complainant and Respondent both own golf travel businesses in Connecticut mere miles from each other. Ms. Bussey of the Complainant worked briefly for the Respondent before starting her own business. It was because of this and in revenge for the Complainant starting her own competing business that the Respondent vindictively bought the Domain Name from the third party prior owner (not a party to this dispute) in order to keep the Domain Name from the Complainant.

 

The Respondent's registration and use of the Domain Name is evidence of an attempt to disrupt the Complainant's business and is evidence of the Respondent's bad faith registration of the Domain Name.

 

The Respondent refused to transfer the Domain Name to the Complainant without compensation and threatened to sell the Domain Name to an unrelated third party UK company (not a party to this dispute).

 

B. Respondent

 

The Respondent's submissions can be summarised as follows:

 

Complainant has not used ABSOLUTELY GOLF alone but always with AND TRAVEL. The Complainant's web site is <agtgolftours.com> again incorporating the idea of travel. The Way Back Machine shows the earliest hits to the Complainant's web site as 2005.

 

The Complainant abandoned its trade mark filing for ABSOLUTELY GOLF in March 2010.

 

The Complainant goes by the name "Absolutely Golf and Travel" and still does with the letters AGT as its service mark.

 

The Respondent registered the Domain Name based on an idea developed some time before Ms. Bussey joined the Respondent as an employee where she did not mention her intention to start her own business. The Complainant started her own business in competition and nearby using proprietary information belonging to the Respondent in breach of her Employment Contract and non compete clause.

 

The Respondent has controlled the Domain Name for over ten years including a significant period during which it was pointed to the Respondent's web site. The Complainant never contended it owned rights in the web site and is estopped from doing so now.

 

Last September the Respondent offered the Domain Name to the Complainant, as well as another golf company with the same name "Absolutely Golf". There was no response from the Complainant. The third party company has accepted the offer of the name. 

 

Complainant has no rights to the Domain Name and the ten year delay is inconsistent with the allegation that the Respondent registered the name to harm the Complainant.

 

C. Additional Submissions

 

The Complainant's Additional Submission can be summarised as follows:

 

The registration of <agtgolftours.com> was a direct reaction to the Respondent's bad faith of redirecting the Domain Name to its competing web site.

 

The trade mark application was only abandoned due to the Complainant's inexperience with the trade mark office. A new application is currently pending.

 

The Complainant is known as ABSOLUTELY GOLF and Google searches yield results relating to the Complainant's business. However, even if the Complainant only had rights in "Absolutely Golf and Travel" the Domain Name is a shortened version of that mark and there is clearly bad faith and intention to cause confusion on the part of the Respondent. 

 

The Respondent has had the name for ten years and has not pursued any use of it except parking and redirection to its and third party sites.

 

The Complainant never signed the employment contract due to the severity of the non compete clause. This is why the Complainant left within months.

 

The Respondent offered the Domain Name to the third party UK business "Absolutely Golf" free of charge. The Respondent has no interest in the Domain Name except to keep it from the Complainant. 

 

FINDINGS

         The Complainant and Defendant both run competing golf travel businesses. Ms. Bussey of the Complainant worked for the Respondent for a few months before setting up her own business.

 

The Complainant has been using the mark ABSOLUTELY GOLF AND TRAVEL since its inception on May 9, 2001 in relation to a golf travel business. Its customers commonly refer to it as ABSOLUTELY GOLF and it owns the domain name <absolutely-golf.com>.

 

Respondent has owned the Domain Name since July 16, 2001 and has used it to point it to its own web site and to third party web sites.

 

The Respondent offered to sell the Domain Name to the Complainant.

 

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."

 

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.

 

The Response was received after the deadline to file a Response. The Panel, at its discretion, may choose whether to accept and consider this Response under the Rules. The Panel have nonetheless decided to accept and consider the Response as the Complainant is not prejudiced thereby. Victoria's Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011).

 

Identical and/or Confusingly Similar

 

The Complainant need not have a registered trade mark in order to show rights in the marks ABSOLUTELY GOLF AND TRAVEL and ABSOLUTELY GOLF or ABSOLUTELY- GOLF. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat Arb. Forum July 18, 2006). The Complainant has been using the mark ABSOLUTELY GOLF AND TRAVEL since its inception on May 9, 2001 in relation to a golf travel business. The Complainant has produced evidence that its customers commonly refer to it as ABSOLUTELY GOLF and it owns the domain name <absolutely-golf.com> which has used for its e-mail and web site since registration. Accordingly, the Complainant has shown that it owns common law rights in relation to the marks ABSOLUTELY GOLF AND TRAVEL and ABSOLUTELY GOLF or ABSOLUTELY-GOLF and demonstrated secondary meaning in these marks in relation to its business.  See Toyota Sunnyvale v. Adfero Publishing Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat Arb. Forum Apr. 25, 2007).

 

Apart from the .com suffix which is not taken into account for the purposes of the Policy, the Domain Name consists of ABSOLUTELY GOLF, a term identical to a mark and confusingly similar to marks in which the Complainant has common law rights as established above. The omission of a hyphen and the words "and travel", generic for the travel business, do not serve to distinguish the Domain Name from the Complainant's marks ABSOLUTELY-GOLF and ABSOLUTELY GOLF AND TRAVEL. The Panel finds that the Domain Name is identical to the ABSOLUTELY GOLF mark and confusingly similar to the ABSOLUTELY-GOLF and ABSOLUTELY GOLF AND TRAVEL marks in which the Complainant owns common law rights for the reasons given above and as such the Complainant satisfies para 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

 

The Respondent has not produced any evidence that it is commonly known by the Domain Name, nor has it produced any evidence that it had the idea to use ABSOLUTELY GOLF or the Domain Name before this dispute arose. The Respondent's name Irish Links has no obvious connection to the Domain Name. The Complainant has not authorised the Respondent to use the ABSOLUTELY GOLF name. Pointing the Domain Name to its own competing web site or to third party links is not a bona fide offering of goods or services under the Policy 4(c)(i) or a legitimate non commercial or fair use under the Policy 4(c)(iii). See Alpitour SpA v. Albloushi, FA 888651 (Nat Arb. Forum Feb. 26, 2007); see also Florists' Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat Arb. Forum June 23, 2003). Accordingly, the Panel finds that the Respondent does not have any Rights or Legitimate Interests under the Policy 4(a)(ii).

 

Registration and Use in Bad Faith

 

Policy 4(b) established several non exclusive ways in which a Complainant can demonstrate bad faith registration and use including:

 

(i) the Respondent registered the Domain Name for the purpose of selling the Domain Name for more than the Respondent's out of pocket costs;

 

[(ii) Intentionally omitted]

 

(iii) the Respondent registered and used the Domain Name for the purpose of disrupting the Complainant's business; and

 

(iv) the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website.

 

The Respondent has pointed the Domain Name to third party web sites and to its own competing web site. Previous panels have held that this disrupts a Complainant's business and is evidence of attempting to attract Internet users for commercial gain by causing confusion with the Complainant's mark. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat Arb Forum Feb.13, 2007); see also Dating Direct.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005); see also Univ. of Houston Sys. v Salvia Corp., FA 637920 (Nat Arb. Forum Mar. 21, 2006); see also Scholastic Inc. v Applied Software Solutions Inc., D2000-1628 (WIPO Mar. 15, 2001). The Respondent and Complainant have clearly had a dispute about the Complainant setting up a competing business to the Respondent. However, the evidence suggest that the Complainant has done this under the ABSOLUTELY GOLF AND TRAVEL, ABSOLUTELY GOLF and ABSOLUTELY-GOLF names and the Respondent has not demonstrated by evidence any link to this name except its link to the Complainant.  The Panel finds that the Respondent did register and use the Domain Name for the purpose of disrupting the Complainant's competing business and attempting to attract Internet users by causing confusion with the Complainant's mark under the Policy.

 

The Respondent has also offered to sell the Domain Name to the Complainant and offered to transfer it to a third party not involved in this dispute. In light of the finding that the Respondent did register and use the Domain Name for the purpose of disrupting the Complainant's competing business and attempting to attract Internet users by causing confusion with the Complainant's mark under the Policy, there is no need for the Panel to make a finding on whether the Respondent registered the Domain Name for the purpose of selling the Domain Name for more than the Respondent's out of pocket costs or this was merely incidental to its primary purpose of disrupting the Complainant's business and attracting customers for commercial gain.

 

Accordingly the Panel finds that the Respondent did register and use the Domain Name in bad faith under the Policy.

 

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

 

 

Dawn Osborne, Presiding Panelist

Judge Kuechenmeister and Dr Schanda, Panelists

Dated:  February14, 2012

 

 

 

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