Golf Galaxy, Inc. v. yu dezheng / qingdaoyuelanmaoyiyouxiangongsi
Claim Number: FA1307001509462
Complainant is Golf Galaxy, Inc. (“Complainant”), represented by David A. Wheeler of Greenberg Traurig, LLP, Illinois, USA. Respondent is yu dezheng / qingdaoyuelanmaoyiyouxiangongsi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <golfsgalaxy.com>, registered with HICHINA ZHICHENG TECHNOLOGY LTD.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 11, 2013; the National Arbitration Forum received payment on July 12, 2013. The Complaint was submitted in both Chinese and English.
On July 24, 2013, HICHINA ZHICHENG TECHNOLOGY LTD. confirmed by e-mail to the National Arbitration Forum that the <golfsgalaxy.com> domain name is registered with HICHINA ZHICHENG TECHNOLOGY LTD. and that Respondent is the current registrant of the name. HICHINA ZHICHENG TECHNOLOGY LTD. has verified that Respondent is bound by the HICHINA ZHICHENG TECHNOLOGY 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 August 2, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 22, 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@golfsgalaxy.com. Also on August 2, 2013, the Chinese language 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 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Policy ¶ 4(a)(i)
a. Complainant, Golf Galaxy, Inc. is a national, multi-channel golf specialty retailer and has operated under the GOLF GALAXY mark since 1997.
b. Complainant operates 81 stores in 30 states and conducts e-commerce and catalog operations from the <golfgalaxy.com> domain name.
c. Complainant has rights in the GOLF GALAXY mark by way of registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,232,924 registered March 16, 1999).
d. The offending <golfsgalaxy.com> domain name is confusingly similar to Complainant’s GOLF GALAXY mark.
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known as “Galaxy Golf.”
i. Respondent has no trademark or other intellectual property rights to the <golfsgalaxy.com> domain.
ii. Respondent has no trademark applications or registrations known to Complainant that incorporate the element GOLF GALAXY.
iii. Respondent’s use of the GOLF GALAXY mark is unauthorized.
b. Respondent has never operated any bona fide or legitimate business in conjunction with the disputed domain, and is not making a protected non-commercial or fair use of the domain.
i. The disputed domain currently resolves to an inactive site.
ii. Respondent previously used the disputed domain to display pay-per-click advertising pages promoting goods and services similar to and competitive with those offered by Complainant.
3. Policy ¶ 4(a)(iii)
a. Respondent’s former use of the <golfsgalaxy.com> domain name constitutes an unfair attempt to capitalize on the fame and reputation of Complainant’s mark in order to generate profits at the expense of Complainant.
b. Respondent’s current inactive use of the <golfsgalaxy.com> domain name amounts to bad faith.
c. Respondent had at least constructive knowledge of Complainant’s GOLF GALAXY mark on account of Complainant’s USPTO registrations.
d. Respondent had actual knowledge of the GOLF GALAXY Mark due to Respondent’s registration of a domain name which incorporates the trademark of a well-known national golf retail company.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant, Golf Galaxy, Inc. identifies itself as a national, multi-channel golf specialty retailer with 81 stores in 30 states and e-commerce and catalog operations conducted from the <golfgalaxy.com> domain name. Complainant claims to have operated under the GOLF GALAXY mark since 1997. Complainant also claims rights in the GOLF GALAXY mark by way of its registration with the USPTO (e.g., Reg. No. 2,232,924 registered March 16, 1999). Past panels have agreed that USPTO registration establishes rights in a mark for the purposes of Policy ¶ 4(a)(i). 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)). The Panel holds that Complainant possesses rights in the GOLF GALAXY mark under Policy ¶ 4(a)(i), notwithstanding the fact that Respondent appears to live in China. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant complains that Respondent’s <golfsgalaxy.com> domain name is confusingly similar to Complainant’s GOLF GALAXY mark within the meaning of Policy ¶ 4(a)(i). Complainant notes that the disputed domain incorporates Complainant’s GOLF GALAXY mark in its entirety, except that the letter “s” is inserted between the words GOLF and GALAXY. The Panel finds that Respondent’s addition of a single letter to Complainant’s mark is insufficient to distinguish the disputed domain name. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel notes that the disputed domain name also removes the space between words in Complainant’s mark while adding a generic top-level domain (“gTLD”). Previous panels have agreed, however, that spaces and gTLDs do not affect Policy ¶ 4(a)(i) analysis. 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.”). In view of the foregoing, the Panel determines that Respondent’s <golfsgalaxy.com> domain name is confusingly similar to Complainant’s GOLF GALAXY mark within the meaning of Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 asserts that Respondent is not commonly known as ‘Galaxy Golf’ and has no trademark or other intellectual property rights to the <golfsgalaxy.com> domain. Complainant states that Respondent’s use of the GOLF GALAXY mark is unauthorized, and that Respondent has no trademark applications or registrations known to Complainant that incorporate the element GOLF GALAXY. Complainant also cites the WHOIS record, which identifies Respondent as “yu dezheng / qingdaoyuelanmaoyiyouxiangongsi,” as further evidence that Respondent, is not commonly known by the at-issue domain name. Upon consideration of the evidence presented in the record, the Panel concludes that Respondent is not commonly known by the <golfsgalaxy.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant alleges that Respondent has never operated any bona fide or legitimate business in conjunction with <golfsgalaxy.com>, and is not making a protected non-commercial or fair use of the domain. According to Complainant, Respondent previously used the website housed at the disputed domain to display pay-per-click advertising pages promoting goods and services similar to and competitive with those offered by Complainant. The panel in ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) refused to find use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) where the respondent was merely using the contested domain name to operate a website containing links to various competing commercial websites. The Panel finds that Respondent’s past use of the <golfsgalaxy.com> domain name coincides with neither Policy ¶ 4(c)(i) nor Policy ¶ 4(c)(iii).
Complainant further alleges that the disputed domain name currently resolves to an inactive site. The Panel notes that the screen shot provided by Complainant shows the <golfsgalaxy.com> domain name resolves to a blank “justhost.com” page. The Panel accepts this evidence as proof that Respondent is currently failing to make an active use of the disputed domain and the Panel finds that such inactive use qualifies as neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Complainant has proven this element.
Complainant contends that Respondent’s former use of the <golfsgalaxy.com> domain name constitutes an unfair attempt to capitalize on the fame and reputation of Complainant’s mark in order to generate profits at the expense of Complainant. The Panel notes that Complainant has alleged that Respondent used the domain to display pay-per-click advertising pages promoting goods and services similar to and competitive with those offered by Complainant, which Complainant alleges demonstrates bad faith pursuant to Policy ¶ 4(b)(iv). The Panel finds that Respondent intentionally registered a domain name confusingly similar to Complainant’s mark in order to create confusion as to Respondent’s affiliation with Complainant, thereby increasing Internet traffic to Respondent’s site, in turn enabling Respondent to generate a commercial gain therefrom. The Panel considers Respondent’s disingenuous attraction of consumers for commercial gain to demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Complainant also cites Respondent’s currently inactive use of the <golfsgalaxy.com> domain name as evidence of bad faith. The screen shot of Respondent’s website provided by Complainant shows the <golfsgalaxy.com> domain name resolves to a blank “justhost.com” page. When confronted with a respondent’s inactive use of a disputed domain name, the panel in Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) held that merely holding an infringing domain name without active use can constitute use in bad faith. As such, the Panel determines that Respondent’s inactive use of the <golfsgalaxy.com> domain is evidence of bad faith registration and/or use subject to Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent had notice of Complainant and Complainant’s rights in the GOLF GALAXY mark prior to Respondent’s registration of the <golfsgalaxy.com> domain name. Specifically, Complainant urges that Respondent had at least constructive notice on account of Complainant’s USPTO registrations, and that Respondent had actual notice due to Respondent’s registration of a domain name which incorporates the trademark of a well-known national golf retail company. The Panel considers Respondent’s arguments of bad faith based on constructive notice to be irrelevant, as modern UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. The Panel finds that such actual knowledge is adequate evidence of bad faith 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).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <golfsgalaxy.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 5, 2013
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