Golfsmith International, Inc. v. TD Domain Names
Claim Number: FA1301001482475
Complainant is Golfsmith International, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is TD Domain Names (“Respondent”), Grand Cayman, Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <glofsmith.com>, <golfsmiyh.com>, <golfsmoth.com>, <golgsmith.com>, and <gplfsmith.com>, registered with Tucows Domains, Inc.
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 January 29, 2013; the National Arbitration Forum received payment on January 29, 2013.
On January 29, 2013, Tucows Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <glofsmith.com>, <golfsmiyh.com>, <golfsmoth.com>, <golgsmith.com>, and <gplfsmith.com> domain names are registered with Tucows Domains, Inc. and that Respondent is the current registrant of the domain names. Tucows Domains, Inc. has verified that Respondent is bound by the Tucows Domains, Inc. 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 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 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@glofsmith.com, postmaster@golfsmiyh.com, postmaster@golfsmoth.com, postmaster@golgsmith.com, and postmaster@gplfsmith.com. Also on January 30, 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 February 27, 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(s) be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <glofsmith.com>, <golfsmiyh.com>, <golfsmoth.com>, <golgsmith.com>, and <gplfsmith.com> domain names are confusingly similar to Complainant’s GOLFSMITH mark.
2. Respondent does not have any rights or legitimate interests in the <glofsmith.com>, <golfsmiyh.com>, <golfsmoth.com>, <golgsmith.com>, and <gplfsmith.com> domain names.
3. Respondent registered and used the <glofsmith.com>, <golfsmiyh.com>, <golfsmoth.com>, <golgsmith.com>, and <gplfsmith.com> domain names name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its GOLFSMITH mark (e.g., Reg. No. 1,447,761 registered July 14, 1987).
Respondent is using the disputed domain names to redirect Internet users to websites featuring generic links to third-party websites, some of which directly compete with Complainant.
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 rights in the GOLFSMITH mark through its trademark registrations with the USPTO. Previous panels have found that a complainant’s registration of a mark with a federal trademark authority is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Further, UDRP precedent has established that a complainant does not need to own a trademark registration in the country of a respondent in order to establish rights in its mark under Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <golfsmiyh.com>, <golfsmoth.com>, <golgsmith.com>, and <gplfsmith.com> domain names each misspell Complainant’s GOLFSMITH mark by a single letter, while the <glofsmith.com> domain name merely transposes the letters “l” and “o.” Past panels have found such slight misspellings to indicate confusing similarity. See Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar). The disputed domain names also add the gTLD “.com,” irrelevant to the confusing similarity analysis as it does not distinguish the disputed domain names from Complainant’s mark. See 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). Therefore, the Panel finds that the <glofsmith.com>, <golfsmiyh.com>, <golfsmoth.com>, <golgsmith.com>, and <gplfsmith.com> domain names are confusing to Complainant’s GOLFSMITH 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 not been commonly known by the disputed domain names and has therefore not demonstrated rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(i). The WHOIS information identifies “TD Domain Names” as the registrant of the disputed domain names. Complainant also states that it is not affiliated with Respondent and has not authorized Respondent to use the GOLFSMITH mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names and has not established rights or legitimate interests pursuant to 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 also notes that Respondent is using the disputed domain names to redirect users to websites featuring generic links to third-party websites, some of which compete with Complainant’s golf retail business. Complainant argues that this demonstrates that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel agrees and finds that Respondent has not demonstrated rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent holds registrations on other domain names that appear to be examples of typosquatting, which demonstrates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). However, since these domain names have not been reviewed by a UDRP Panel, the Panel declines to find a pattern of bad faith pursuant to Policy ¶ 4(b)(ii).
Respondent has set up “click through” websites that contain links to competing websites, including <shipsticks.com> and <VW.com/Golf>, which disrupts Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). Accordingly, the Panel finds that Respondent registered the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii).
Respondent is intentionally using domain names confusingly similar to Complainant’s GOLFSMITH mark in order to divert Internet users to its websites. Respondent likely receives revenue when misdirected Internet users click on the competing links, a demonstration of bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Respondent’s intentional misspelling of Complainant’s mark is typosquatting and is, in itself, evidence of bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Thus, the Panel finds that Respondent’s typosquatting indicates that Respondent registered and is using the disputed domain names in bad faith, pursuant to Policy ¶ 4(a)(iii).
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 <glofsmith.com>, <golfsmiyh.com>, <golfsmoth.com>, <golgsmith.com>, and <gplfsmith.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 5, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page