national arbitration forum

 

DECISION

 

Snag, Inc. v. Jorge Ruiz

Claim Number: FA1301001483058

 

PARTIES

Complainant is Snag, Inc. (“Complainant”), represented by Amber N. Davis of Beusse Wolter Sanks Mora & Maire, P.A., Florida, USA.  Respondent is Jorge Ruiz (“Respondent”), represented by Miguel Sanchez Gallegos, Spain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <snaggolfspain.com>, registered with 1 & 1 INTERNET AG.

 

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.

 

Mrs. Antonina Pakharenko-Anderson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2013; the National Arbitration Forum received payment on January 31, 2013.

 

On February 1, 2013, 1 & 1 INTERNET AG confirmed by e-mail to the National Arbitration Forum that the <snaggolfspain.com> domain name is registered with 1 & 1 INTERNET AG and that Respondent is the current registrant of the name.  1 & 1 INTERNET AG has verified that Respondent is bound by the 1 & 1 INTERNET AG 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 February 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2013 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@snaggolfspain.com.  Also on February 4, 2013, 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.

 

A timely Response was received and determined to be complete on February 23, 2013.

 

The Parties mutually requested a Stay of the Administrative Proceeding, which was received and granted on February 27, 2013, requesting a stay of forty-five days ending on April 11, 2013.

 

Complainant requested and was granted the re-opening of the proceeding on April 10, 2013.

 

Complainant submitted an Additional Submission in regards to this matter, which was received and found to be compliant on April 10, 2013.

 

On April 15, 2013 an additional submission to the above listed ICANN case was served by the Respondent which was received in a timely manner according to The Forum's Supplemental Rule #7.

 

On April 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mrs. Antonina Pakharenko-Anderson 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

  1. Complainant alleges:
    1. Policy ¶ 4(a)(i)

                                          i.    Complainant owns exclusive rights in the SNAG mark that Complainant uses continuously and exclusively in commerce in the U.S., Europe and Canada.

                                         ii.    Complainant owns the SNAG mark and has trademark registrations for the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,872,151 registered on August 10, 2004). See Complainant’s Exhibit C. Complainant also owns trademark registrations with the European Office of Harmonization for the Internal Market (“OHIM”) (Reg. No. 002142552 registered April 18, 2002) and the Canadadian Intellectual Property Office (“CIPO”) (Registration No. TMA0615352 registered July 21, 2004). See Complainant’s Exhibits E and F. Complainant uses the SNAG mark for its business selling golf equipment, accessories, and games. Complainant owns the domain name <snaggolf.com>, which it uses to sell its products. Complainant was incorporated as Snag, Inc., in August of 2000. Complainant has used it mark and domain names continuously in the United States, Europe, and Canada.

                                        iii.    Complainant holds the domain name <snaggolf.com>, which was registered November 16, 1999 and used by Complainant for the sale of equipment and games. The associated domain name <snageurope.com> was registered August 12, 2009 and is used by the Complainant’s licensee in Europe for the sale of golf-related and equipment and games.

                                       iv.    Respondent’s <snaggolfspain.com> domain name is identical or confusingly similar to Complainants’ SNAG mark and is used to offer very similar products to Complainant’s customers via “similar channels of trade.”

    1. Policy ¶ 4(a)(ii)

                                          i.    Respondent is not using the domain name in connection with a bona fide offering of goods and service.

                                         ii.    Respondent is not commonly known by the <snanggolfspain.com> domain name.

                                        iii.    Respondent uses the <snanggolfspain.com>  domain name to offer similar goods and services in direct competition with Complainant’s goods and services regardless of the fact that Respondent is well aware of Complainant’s business and its marks.

                                       iv.    Respondent is not making a legitimate noncommercial or fair use of the domain name, but is instead directly competing with Complainant in an attempt to mislead consumers into believing that the domain name and resolving website is approved or endorsed by Complainant.

    1. Policy ¶ 4(a)(iii)

                                          i.    Respondent causes website visitors to be confused as to the sponsor of the website, as it uses the same color scheme as those Complainant uses, and uses similar wording to describe Respondent’s business.

                                         ii.    Respondent uses the domain name in bad faith by disrupting Complainant’s business and to get a “free ride” off of Complainant’s goodwill, and Respondent aims to make a profit from its use of the resolving website.

                                        iii.    Respondent’s website provides no differences that would distinguish the disputed domain name from Complainant’s federally and common law protected marks.

 

B. Respondent

a.    Policy ¶ 4(a)(ii)

                                          i.    Respondent registered the SNAGGOLF mark with the Spanish Patent and Trademark Office (“SPTO”) (Reg. No. 3009316 registered March 14, 2012) for the SNAGGOLF mark, which he uses for the purpose of education and sports activities. See Respondent’s Exhibit. Respondent registered the mark in Spain because no similar name was registered at the time, and Respondent sought to protect his way of teaching.

                                         ii.    Respondent asserts that Complainant does not have trademark registrations for its SNAG mark under “class 41 Niza,” which covers education, teaching, sports and cultural activities, and sports competition, either in Spain or elsewhere.

b.    Policy ¶ 4(a)(iii)

                                        iii.    Respondent is a fifty-one year old professional golf player that has trained many young golf players to play competitively.

                                       iv.    Respondent denies that he registered and uses the <snaggolfspain.com> domain name to damage or intrude upon Complainant’s business, and asserts rather that by referencing Complainant’s business at its website, Complainant benefits by being exposed to more potential customers in Spain.

                                        v.    Respondent has not received any compensation for working on Complainant’s behalf to promote Complainant’s products.

                                       vi.    Respondent denies taking part in any commerce with Complainant or selling any of Complainant’s materials. Respondent frequently refers his clients to Complainant’s website.

                                      vii.    Respondent claims that its good faith use of Complainant’s SNAG mark and materials should be sufficient to dissuade Complainant from making further attempts to deprive Respondent from his rights to the disputed domain name, and offers his assistance in helping to stop other entities from using the SNAG and SNAGGOLF marks without authorization.

 

C. Additional Submissions

 

Complainant attests that it does in fact have several trademarks of the Class 41 and has been using the SNAG mark in Class 41 globally since 2001.

 

Respondent registered its SNAGGOLF mark only after it had become aware of Complainant’s SNAG products and services.  Respondent’s tale that he came up with the term “snag” because of the difficulties younger golfers encounter playing the game is a fabrication, as Respondent had only recently purchased SNAG goods when he began using the SNAGGOLF mark.  Respondent’s training services are based entirely upon watching SNAG educational videos.  Respondent therefore has no rights and legitimate interests in copying the legitimate SNAG brand materials for his own profit on a confusingly similar domain name.

 

Since the filing of the complaint, Respondent has requested that Complainant pay him €30,000 for a licensed use of the domain name and SNAGGOLF trademark.  Respondent further stated that if Complainant desired full ownership of the domain name and SNAGGOLF mark it would have to pay a much larger fee to Respondent.  See Complainant’s Additional Submission Exhibit K.

 

Respondent’s bad faith may be based upon actual knowledge.  Respondent’s knowledge of Complainant’s rights is evident by the fact that Respondent has submitted evidence showing he bought Complainant’s SNAG products months prior to ever registering the disputed domain name or filing for the SNAGGOLF trademark.

 

In his Additional Submission, Respondent claims that Complainant distorted the facts in the summary of the settlement process and tries to mislead the Panel as to the actual idea behind the negotiation process and arbitration procedure.

 

Respondent notices that it is his way of teaching using those materials (not only SNAG materials) and his idea, what he has to protect or get appropriate compensation for.

 

FINDINGS

 

The Complainant established that it holds valid trademark rights for word and word & design marks deriving from U.S. Federal Trademark Registrations, European Community Trademark Registrations, Canada Trademark Registration indicated in Exhibits C, D, E, F, particularly registered for the goods in International Class 28, include the goods covering the following list: equipment for golf-like game sold as a unit primarily composed of golf balls, golf clubs, golf bags, targets, helmets, golf tees and golf mats. According the U.S. Federal Trademark Registrations the first use in commerce is claimed as of the year 2000.

 

The provided records show that these registrations are valid and subsisting, and have not been cancelled, revoked or abandoned, as well as that the earliest Complainant’s rights in registrations of “SNAG” date back to 2001.

 

The specific note should be given that the Community Trademark, Registration no. EC002426575, filing date being October 19, 2001, with a registration date of April 03, 2003, covers the following goods of class 28: toys, games and playthings; sporting articles; golf equipment; golf based recreational games; golf instructional products.

 

The Complainant has also established it also holds the domain name <snaggolf.com>, registered on November 16, 1999, as indicated in Complainant’s Exhibit G.

 

The domain name <snageurope.com> was registered on August 12, 2009 and is held by the Complainant licensee in Europe who is authorized to use the SNAG trademark on the website.

 

Complainant’s Additional Submission also indicates that Complainant was incorporated under the name SNAG, INC. as the Florida Profit Corporation in 2000 and has been in business since that time.

 

Complainant also holds other registrations for the SNAG mark for services in class 41. U.S. filing of the SNAG trademark for services of class 41 may not be cited against the domain name <snaggolfspain.com>, as the registration date of the domain name predates the filing date of the U.S. mark by Complainant.

 

The Complainant shows in its Exhibit B that Respondent has not been commonly known by the domain name.

 

According to the Response, respondent is a fifty-one year old professional golf player that has trained many young golf players to play competitively

 

At the same time, on March 14, 2012 Respondent has been granted the Spanish registration for the SNAG GOLF (stylized) mark for services in class 41, with an application filing date of November 30, 2011 (as shown in the certificate of registration attached to the Respondent’s Response). After that, the contested domain name was registered on June 5, 2012 as shown in the WHOIS recorded attached as Exhibit B to the Complaint.

 

According to the Response, Respondent purchased SNAG® gold equipment from SNAG® exclusive distributor in Europe, which purchases are supported by respective sales invoices as of 11/10/2011, 12/09/2011, 10/06/2011, 02/06/2011 attached as Exhibits to the Response.

 

The case also includes the correspondence between Complainant and Respondent where Complainant suggested the terms and conditions of the amicable settlement of the dispute, in response to which Respondent offered to license use of his trademark to Complainant for 30,000 EUR, and suggested several other options for settlement, having not generally accepted the Complainant’s terms of settlement. And namely, according to the Respondent’s e-mail, which has been attached to the Additional Submission of Complainant: “Also SNAG should pay a certain quantity so their clients and they  themselves could use the trademark SNAG GOLF in Spain under class 41(Niza). In that case, I would allow the use of the trademark for the amount of time that we agree.

I consider a quantity of Thirty thousand Euros a fair amount for a period of 10 years using that option.

Another possibility would be, doing it as you propose but then the amount that I consider satisfactory would have to be bigger.

A third option would be that SNAG buys the trademark and the Internet domain names related to it in Spain completely. This option, would increase the price to pay according to the loss of business that it would mean to me, forever.

 

However, in his Additional Submissions, Respondent alleges that, in fact, it is his way of teaching using those materials (not only SNAG materials) and his idea, that he has to protect or obtain appropriate compensation for.

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that the Complainant owns trademark rights to the SNAG mark by its USPTO trademark registration (e.g., Reg. No. 3,939,700 registered April 5, 2011) and by its OHIM trademark registration (Reg. No. 002142552 registered April 18, 2002), and the latter one covers the territory of Spain as well, and by some other trademark registrations.

 

The due note should be given to the fact that the Complainant operates under the trade name SNAG Inc. and holds the domain name <snaggolf.com> which maintains the online presence of the Complainant. The domain <snageurope.com> is also active and directs Internet user to the web-site of the Complainant’s licensee who is authorized to use the trademark SNAG on the website and domain name.

 

The specific note should be given that the OHIM trademark registration (Reg. No. EC002426575, filed October 19, 2001, registered April 03, 2003) covers the following goods of class 28: toys, games and playthings; sporting articles; golf equipment; golf based recreational games; golf instructional products.

 

The Complainant was incorporated in 2000 and is in business since then in a number of territories worldwide, including Spain.

 

Thus, through Complainant’s use of the SNAG mark, this mark serves as the clear identifier of the source of the goods and/or services labeled by this brand, and is associated with the Complainant.

 

In Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005), the panel found that the complainant’s trademark registration of its mark with several international trademark agencies, including the USPTO, established its rights in the mark. Thus, the Panel concludes that Complainant has demonstrated rights in its mark under Policy ¶ 4(a)(i) due to its USPTO and OHIM trademark registrations.

 

The <snaggolfspain.com> domain name is confusingly similar to Complainant’s SNAG mark, as the SNAG mark is included into the domain name in its entirety. The Panel notes that the domain name includes the descriptive term “golf” and the geographic identifies “spain,” as well as the generic top-level domain (“gTLD”) “.com.”, and these descriptive terms do not add distinctiveness to the domain name and do no preclude confusion with the Complainant’s mark.

 

Thus, the Panel finds that using Complainant’s mark, combined with the words “golf” and “spain,” and the gTLD “.com” creates a domain name that is confusingly similar to Complainant’s SNAG mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).

 

Therefore, the Panelist holds that the Respondent’s <snaggolfspain.com> domain name is confusingly similar to the Complainant’s SNAG mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

The Panel finds that Complainant has made a prima facie case showing that Respondent does not have rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

 

The Panelist does not believe that the Respondent has been commonly known by the <snaggolfspain.com> domain name, regardless of the recent Spanish registration of the SNAG GOLF mark in the name of the Respondent for services in class 41, application filing date being November 30, 2011.

 

The Panel is of the impression that this trademark registration was filed in bad faith, as long as Complainant’s Community Trademark of the SNAG mark did not cover the services of class 41, that gave the Respondent the chance to apply for this mark in Spain under the national procedure.

 

However, in light of the Complainant’s business; the goods and services for which the SNAG brand has been used by Complainant for years; and its presence on the European market through its licensees, the SNAGGOLF trademark registered in the name of Respondent may be regarded as confusing. This trademark may mislead consumers as to the origin of services provided under the SNAGGOLF mark, as consumers may be of impression that the services under this mark are provided either by the Complainant directly, or under his licenses, or the holder of the SNAGGOLF mark is somehow related with the Complainant, which is not the case.

 

The Complainant shows that Respondent is not commonly known by the <snaggolfspain.com> domain name, as the WHOIS information indicates that the registrant is “Jorge Ruiz.” Complainant also states that Respondent was never granted permission to use the SNAG mark in any manner. Thus, the Panel determines that pursuant to Policy ¶ 4(c)(ii), Respondent is not commonly known by the disputed domain name, as demonstrated by the WHOIS information and Complainant’s claim that Respondent has no authorization to use the SNAG mark. See 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 also shows that Respondent fails to make use of the <snaggolfspain.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant supports its argument by comparing its own website to Respondent’s website, which shows that Respondent uses Complainant’s mark to offer similar goods and services in competition with Complainant’s goods and services. Complainant asserts that Respondent uses the SNAG mark to compete with Complainant and draw customers to its own website. Complainant argues in its Additional Submission that Respondent’s services are in fact simply restating the golf tips and strategies that Complainant offers in its SNAG golf training and promotional videos.  The panel in Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010), found competing use of the domain name by the respondent failed to demonstrate a bona fide offering of goods or services or a legitimate noncommerciral or fair use, as the respondent used the complainant’s mark to attract Internet users to its resolving website in order to sell substantially similar products.

 

Based on the information provided on the website <snaggolfspain.com>, this website may not be regarded as an active and noncommercial website, and to make such a conclusion, a website should be clearly distinctive from any official site, and noncommercial in nature.

 

Normally, a reseller or distributor’s use of a domain name can be considered a bona fide offering of goods and services, and will thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue; the use of the site to sell only the trademarked goods; and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder.

 

However, Complainant shows that Respondent not only uses Complainant’s SNAG mark at the resolving website, but also uses a nearly identical color scheme and offers nearly identical equipment and products for sale at the site. No information is published on the website <snaggolfspain.com> that clearly indicates the service provider or that would help to avoid any confusion with the Complainant. Instead, the information about the service provided published on the website is remarkably sparse.

 

At the same time, Respondent’s activities may be regarded as competitive to the Complainants as he is engaged in the business of training golf players.

 

In light of the above, the Panel finds that the use of the domain name <snaggolfspain.com> by the Respondent does not constitute a legitimate noncommercial or fair use of the domain name, without the intent for commercial gain, to misleadingly divert consumers to his website.

 

The Panel also determines that Respondent’s use of the <snaggolfspain.com> domain name to attempt to pass itself off as Complainant provides further evidence that Respondent does not possess rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).

 

Even if the Respondent uses the disputed domain name to sell or promote goods produced by the Complainant, this use does not grant the Respondent rights or legitimate interests to use a domain name that fully incorporates the Complainant’s trademark. See Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2011).

 

In this regard, the Panelist believes that although the Respondent can use the SNAG trademark with reference to property offered for sale on his website, it is not legitimate to use a domain name that fully incorporates the Complainant’s registered trademarks to re-direct Internet users to such a website.

 

In this context, the Panel noted that Respondent argues that he uses the SNAGGOLF mark in Spain to identify his profession and protect his way of teaching golf and to have come up with the name SNAGGOLF after contemplating the “snag” and difficulties that novice golf students encounter, However, in light of the Complainant’s use and registrations of the SNAG mark, the SNAGGOLF mark cannot serve as the identifier of the Respondent as the misleading similarity of Respondent’s mark with the Complainant’s mark cannot preclude confusion between the marks. In light of this, and factoring that the protection golf teaching method is above the scope of the trademark protection, the Panel finds that the above reasoning of the Defendant is not the valid one.

 

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

 

Registration and Use in Bad Faith

 

Evidence of offers to sell the domain name are generally admissible under the UDRP, and is often used to show bad faith. This is so both in relation to offers by a respondent to sell, made prior to a complainant's filing of a UDRP complaint or after such filing.

 

Complainant claims in its Additional Submission that since the filing of the complaint, Respondent has requested that Complainant pay him €30,000 for a licensed use of the SNAGGOLF trademark.  Respondent further stated that if Complainant desired full ownership of the domain name and SNAGGOLF mark it would have to pay a much larger fee to Respondent.

 

The evidence provided does not show that there have been marketing investments made to the domain name in dispute that are commensurate with the requested amount which is far in excess of Respondent’s out-of-pocket costs.

 

According to the findings discussed above, the Panel agrees that Respondent’s excessive asking price is evidence of bad faith use and registration under Policy ¶ 4(b)(i).  See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).

 

Complainant shows that Respondent registered and uses the <snaggolfspain.com> domain name in bad faith by using the domain name for the purpose of disrupting Complainant’s business and diverting consumers from Complainant’s to Respondent’s website. Complainant shows that Respondent operates a business using a nearly identical domain name in direct competition with Complainant’s business, which has relationships with other training schools. The panel in Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006), stated that the respondent registered and used the disputed domain name with the purpose of disrupting the complainant’s business under the complainant’s mark, because the respondent maintained a website in competition with the complainant. The Panel thus finds that Respondent’s registration and use of the <snaggolfspain.com> domain name demonstrates bad faith as envisioned by Policy ¶ 4(b)(iii) due to its disruptive use of the resolving website to offer competing services to those offered by Complainant.

 

Furthermore, having studied the provided evidence on record, the Panel believes that Respondent has registered the disputed domain with full knowledge that he has no right to use this domain name. The Panel also believes that this attracts, for commercial gain, Internet users to the Respondent’s web sites by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web sites.

 

Respectively, the Panel finds that Complainant succeeded to prove that Respondent’s bad faith registration and use is also shown by its use of the confusingly similar domain name to attempt to draw traffic to the resolving website in order to make sales. Complainant shows that Respondent’s ongoing bad faith is demonstrated by its effort to “intentionally attract and misleadingly divert customers to his website for presumed commercial gain” by offering website visitors a page populated with competing products. In the opinion of the Panel this also supports the fact that that Respondent registered and uses the <snaggolfspain.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), as Respondent uses the domain name to draw consumers to its website in order to make sales from its competing goods and services related to the golf industry. See MathForum.com, LLC v. 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 offered by the complainant under its mark).

 

Complainant contends in its Policy ¶ 4(a)(ii) section that Respondent substantially copies the color scheme of Complainant’s website on its own website, and offers similar products and services at the resolving website. The panel in DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000), stated that the respondent’s use of the complainant’s mark at the homepage gave consumers the impression that the complainant endorsed the respondent’s website, and found bad faith. In this context the Panel concludes that Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii) is vivdly demonstrated by its considerable replication of the elements of Complainant’s website in order to give the impression of affiliation with Complainant.

 

A further indication of bad faith registration and use is evidence that shows that Respondent was aware of Complainant’s SNAG mark at the time Respondent registered the <snaggolfspain.com> domain name. Respondent’s knowledge of Complainant’s rights is evident by the fact that Respondent has submitted evidence showing he bought Complainant’s SNAG products months prior to registering the disputed domain name or filing for the SNAGGOLF trademark. 

 

Respectively, the Panel concludes that because Respondent purchased Complainant’s SNAG mark goods prior to registering the domain name, and in general as the Respondent golf trainer operates in the same sector of the market as the Complainant, the Respondent had actual knowledge of Complainant’s SNAG mark at the time Respondent registered the <snaggolfspain.com> domain name, which demonstrates Respondent’s bad faith registration under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

Thus, it is found 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 <snaggolfspain.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Antonina Pakharenko-Anderson, Panelist

Dated:  May 17, 2013

 

 

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