Golfsmith International, Inc. v. Above.com Domain Privacy
Claim Number: FA1207001452767
Complainant is Golfsmith International, Inc. (“Complainant”), represented by Sherri L. Eastley, Texas, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <golfsmithinternational.com>, registered with Above.com Pty Ltd.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2012; the National Arbitration Forum received payment on July 10, 2012.
On July 15, 2012, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <golfsmithinternational.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 July 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 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@golfsmithinternational.com. Also on July 18, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant Golfsmith International, Inc. has rights in the GOLFSMITH mark, which it uses in connection with the sale of sporting goods and apparel online and in stores throughout the world. Complainant is the owner of a United States Patent and Trademark Office (“USPTO”) trademark registration for the GOLFSMITH mark (Reg. No. 3,173,001 registered November 21, 2006) and the owner of an IP Australia (“IPA”) trademark registration for the mark (Reg. No. 1,230,703 registered February 6, 2008). Complainant also owns numerous other trademark registrations for GOLFSMITH throughout the world.
The <golfsmithinternational.com> domain name is confusingly similar to the GOLFSMITH mark.
Respondent is not commonly known by the disputed domain name.
The <golfsmithinternational.com> domain name resolves to a website which displays links to goods and services related to those offered under the GOLFSMITH mark.
Respondent has engaged in a pattern of bad-faith registration and use of others’ trademarks as domain names
Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the GOLFSMITH Mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO and IPA registered trademarks for the GOLFSMITH mark as well as numerous other trademark registrations for GOLFSMITH throughout the world.
The at-issue domain name was registered after Complainant acquired trademark rights in GOLFSMITH.
Respondent was aware of the GOLFSMITH mark at the time it registered the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
The <golfsmithinternational.com> domain name references a website which displays links to goods and services related to those offered under the GOLFSMITH 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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant establishes that it has rights in the GOLFSMITH mark for the purposes of Policy ¶4(a)(i) through its registration of the mark with a bona fide trademark authority, including but not limited to the Australian IPA registry or the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The domain name <golfsmithinternational.com> incorporates Complainant’s GOLFSMITH mark in its entirety, merely appending the geopolitical designation “international” to the mark and adding the top level domain name, “.com.” Such alterations are insufficient to distinguish the at-issue domain name from Complainant’s trademark for the purpose of Policy ¶4(a)(i). Therefore, the Panel concludes that the at-issue domain name is confusingly similar to Complainant’s GOLFSMITH trademark. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Respondent lacks either rights or legitimate interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent is not authorized to use Complainant’s trademark. Furthermore, the WHOIS record for the <golfsmithinternational.com> domain name lists “Above.com Domain Privacy” as the domain name registrant and there is no evidence in the record which indicates that Respondent is commonly known by the at-issue domain name. These circumstances suggest that Respondent lacks rights and interests in respect of the domain name. 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).
Likewise, Respondent’s rights or interests in respect of the domain name are not demonstrated under Policy ¶¶ 4(c)(i) or 4(c)(iii). Respondent fails to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the <golfsmithinternational.com> domain name because the referenced website displays links under headings such as “Golf Discount,” “Golf Equipment Golf,” and “Golf Warehouse” and directs the website visitor to goods and services related to Complainant’s sporting goods and apparel business. The links appear to be pay-per-click links whereby Respondent may be compensated each time a website visitor accesses a linked destination. Respondent’s use of the at‑issue domain name in this manner 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). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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)); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)).
In light of Complainant’s uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain name in bad faith.
Although Complainant may have submitted evidence that Respondent, Above.com Domain Privacy, was the respondent in multiple UDRP proceedings, Above.com Domain Privacy is merely acting as the agent for the real registrant/respondent in-interest. The privacy service is provided by the domain name registrar, Above.com, presumably to numerous registrants who find it necessary to shield their identity from public scrutiny. Therefore, the Panel cannot conclude that the real registrant/respondent in-interest has participated in multiple UDRP proceedings as Complainant suggests without inappropriately speculating; and although some panels have found that using a privacy facility to cloak a respondent’s identity is in itself indicative of bad faith, this Panel declines to make such a leap. The Panel recognizes that there are many benign reasons for not revealing a domain name’s Whois record to the public. Nevertheless, there is more than ample evidence showing that Respondent registered and uses the <golfsmithinternational.com> domain name in bad faith pursuant to Policy ¶4(a)(iii).
First, and as mentioned above, it is reasonable to conclude (as Complainant suggests) that Respondent collects “click-through” fees if and when visitors to the <golfsmithinternational.com> website, or perhaps more appropriately the <golfsmithinternational.com> parking page, click on links displayed on the page. The use of Complaint’s trademark and corporate name in a domain name that references Respondent’s monetized parking page creates confusion among Internet users and ultimately benefits Respondent by increasing traffic to <golfsmithinternational.com>. Given the foregoing, the Panel finds that Respondent registered the at‑issue domain name in bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Furthermore, Respondent selected the <golfsmithinternational.com> domain name precisely because it was similar to Complainant’s GOLFSMITH trademark and identical to Complainant’s business name. GOLFSMITH is arguably a suggestive trademark and is well known throughout the United States and the world, as is Complainant. Indeed, GOLFSMITH International, Inc. is a publically traded company. The unique nature of Complainant’s mark, Respondent’s use of the at‑issue domain name to referenced a platform for offering pay-per-click links, the absence of any evidence of a good faith basis for registering the at‑issue domain name, the Complainant’s corporate name being identical to the at-issue second level domain name, and the GOLFSMITH mark’s notoriety, together demonstrate that Respondent was well aware of Complainant and Complainant’s rights in the GOLFSMITH mark when it registered <golfsmithinternational.com>. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name"). Respondent’s prior knowledge of Complainant’s trademark is additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <golfsmithinternational.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 12, 2012
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