Karsten Manufacturing Corporation v. David Lindsay a/k/a Lindsay Enterprises
Claim Number: FA1306001506611
Complainant is Karsten Manufacturing Corporation (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is David Lindsay a/k/a Lindsay Enterprises (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pinggolf.mobi>, registered with Wild West Domains, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 25, 2013; the National Arbitration Forum received payment on June 24, 2013.
On June 26, 2013, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <pinggolf.mobi> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 June 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 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@pinggolf.mobi. Also on June 27, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 makes the following assertions:
1. Respondent’s <pinggolf.mobi> domain name is confusingly similar to Complainant’s PING mark.
2. Respondent does not have any rights or legitimate interests in the <pinggolf.mobi> domain name.
3. Respondent registered and used the <pinggolf.mobi> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the PING mark (e.g., Reg. No. 1,632,445, registered January 22, 1991), used in connection with golf products.
Respondent registered the <pinggolf.mobi> domain name on July 20, 2010, and uses it to resolve to a parked web page that contains links to a third-party website offering services unrelated to Complainant, such as the sale of domain names.
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 Panel finds that Complainant has established its rights in the PING mark through its trademark registrations with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Respondent’s <pinggolf.mobi> domain name is confusingly similar to Complainant’s marks because it fully incorporates Complainant’s PING mark, adding only the word “golf” and the generic top-level domain (“gTLD”) “.mobi.” The gTLD is an irrelevant addition to this domain name. See Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007) (“The suffix .mobi should be treated the same way as .com and should be ignored when comparing the mark and the disputed domain name.”). The descriptive term “golf” exacerbates the confusing similarity, as the term refers to the goods associated with the PING mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Thus, the Panel finds that the <pinggolf.mobi> domain name is confusingly similar to Complainant’s mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has never been commonly known as <pinggolf.mobi>, and is not authorized or licensed to use Complainant’s marks. The WHOIS record lists “David Lindsay” of “Lindsay Enterprises” as the registrant. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant argues that the <pinggolf.mobi> domain name resolves to a parked web page that contains links to a third-party website offering services unrelated to Complainant, such as the sale of domain names. The Panel notes that the domain name resolves to a website that features a toolbar that allows Internet users to buy domain names. The Panel finds that this use fails to establish a Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum, Jan. 15, 2008) (“the view of the panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position of the respondent is also responsible for the sponsored links currently appearing on the website.”); U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has registered the offending domain name in order to prevent Complainant from doing so and has engaged in a pattern of abusive registrations. The Panel notes that Complainant cites various domain names held by Respondent; however, these domain names have not been subject to scrutiny by an administrative panel or court of competent jurisdiction. Thus, the Panel finds that there is insufficient evidence to find a Policy ¶ 4(b)(ii) pattern of bad faith registration.
Respondent’s <pinggolf.mobi> domain name resolves to a parked page promoting the registrar’s business of selling off domain names, evidence of use for commercial gain under Policy ¶ 4(b)(iv). See Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec. 3, 2007) (finding that, even though a respondent does not receive any revenue from the hyperlinks displayed on the website and that the revenues are received by the parking service, a respondent still registered and used the domain name in bad faith because a respondent still allowed the parking service to access the domain name, instead of resolving the webpage to a blank page).
Complainant argues that Respondent had actual knowledge of Complainant’s mark as evidenced by Respondent’s use of the well-known PING mark in his domain name in conjunction with the industry-relevant term “golf.” The Panel agrees and finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Complainant has satisfied 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 <pinggolf.mobi> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 30, 2013
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