GolfNow, LLC v. Above.com Domain Privacy
Claim Number: FA1407001570402
Complainant is GolfNow, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <golfnnow.com>, <golfno.com>, and <golfnoe.com>, registered with ABOVE.COM PTY 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 18, 2014; the National Arbitration Forum received payment on July 18, 2014.
On July 24, 2014, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <golfnnow.com>, <golfno.com>, and <golfnoe.com> domain names are registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the names. 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 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 2014 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@golfnnow.com, postmaster@golfno.com, and postmaster@golfnoe.com. Also on July 24, 2014, 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 20, 2014, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant
Complainant uses the GOLFNOW.COM mark in connection with a website through which golfers reserve tee times at selected courses. The GOLFNOW.COM mark is registered with the United States Patent and Trademark Office ("USPTO"). The disputed domain names are confusingly similar to the GOLFNOW.COM mark as the domain names are comprised of mere misspellings of the mark.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is neither commonly known by the disputed domain names nor was Respondent authorized to use of the mark. Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third parties, some of which compete with Complainant’s offerings. Respondent presumably benefits from the linked pages. Such use does not constitute a bona fide offering of goods or services nor a legitimate noncommercial use.
Respondent’s bad faith is demonstrated on four grounds. First, Respondent uses the disputed domain names to feature links to services in competition with Complainant thereby disrupting Complainant’s own operations. Second, Respondent uses the disputed domain names in connection with click-through fees, which suggests that Respondent is intentionally creating confusion as to Complainant’s affiliation with the names and seeks to commercially benefits from the resulting confusion. Third, Respondent had knowledge of Complaint’s rights in the GOLFNOW.COM mark at the time the disputed domain names were registered. Lastly, Respondent’s actions amount to typosquatting behavior, which alone is evidence of bad faith.
Respondent
Respondent failed to submit a Response in this proceeding.
For the 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 uses the GOLFNOW.COM mark in connection with a website through which golfers reserve tee times at selected courses. Complainant registered the GOLFNOW.COM mark with the USPTO (e.g., Reg. No. 3,348,235 registered Dec. 4, 2007, filed on December 14, 2005). Past panels have found USPTO registrations sufficient to demonstrate rights in a mark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Accordingly, the Panel finds that Complainant’s USPTO registration of the GOLFNOW.COM mark establishes Complainant’s rights in the mark dating back to the Dec. 14, 2005 filing date.
Complainant argues the <golfnnow.com>, <golfno.com>, and <golfnoe.com> disputed domain names are confusingly similar to the GOLFNOW.COM mark as the domain names are comprised of misspellings of the mark. The disputed domain names either add, delete, or substitute one letter in the mark. Past panels have found that minor misspellings of a mark create confusing similarity for purposes of Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)); see also CEC Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002) (finding that the <chuckcheese.com> domain name was confusingly similar to the complainant’s CHUCK E. CHEESE mark because the domain name only differed from the mark by one letter). The Panel finds confusing similarity under 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 claims Respondent has no rights or legitimate interests in the disputed domain names. Complainant alleges Respondent is neither commonly known by the disputed domain names nor was Respondent authorized to use the mark. The WHOIS record for the each of the three domain names in dispute identifies “Above.com Domain Privacy” as registrant. Past panels have looked to the WHOIS record as well as other available evidence in making the Policy ¶ 4(c)(ii) conclusion. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Here, based on the WHOIS record as well as Respondent’s failure to submit a response claiming otherwise, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4 (c)(ii).
Complainant claims Respondent is using the disputed domain names to redirect Internet users to a website featuring generic links to third parties, some of which compete with Complainant’s business. Complainant presumes Respondent benefits commercially from the linked pages. Complainant argues that such use does not constitute a bona fide offering of goods or services nor a legitimate noncommercial use. The disputed domain names resolve to pages featuring links including, “Discount Golf Tee Times,” “Golf Tee Times,” and “Coupon Savings at Target.” The Panel agrees that the promotion of and probable benefit from such links does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively. 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).
Complainant has proven this element.
Complainant argues Respondent is using the disputed domain names to feature links to services in competition with Complainant thereby disrupting Complainant’s own operations. Complainant provides evidence that the disputed domain names resolve to feature links such as “Discount Golf Tee Times,” and “Golf Tee Times.” In David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007), the panel found that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business. Here, the Panel similarly finds that the featured links disrupt Complainant’s operation, and finds bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant argues Respondent is using the disputed domain names in connection with click-through fees, and that Respondent is intentionally creating confusion as to Complainant’s affiliation with the names and seeks to commercially benefit from the resulting confusion. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel wrote, “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” Similarly, the Panel finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues Respondent had knowledge of Complaint’s rights in the GOLFNOW.COM mark at the time the disputed domain names were registered. Complainant claims that the disputed domain names resolve to pages where Complainant’s mark is correctly spelled. Respondent’s use of Complainant’s GOLFNOW.COM mark indicates Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration. The Panel therefore finds additional evidence of bad faith against Respondent pursuant to Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Complainant argues Respondent’s actions amount to typosquatting behavior, which alone is evidence of bad faith. In Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) the panel explained that the practice of typosquatting “diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).” The <golfnnow.com>, <golfno.com>, and <golfnoe.com> domain names differ from the GOLFNOW.COM mark by a single added, deleted, or substituted letter. The Panel concludes that Respondent’s behavior amounts to typosquatting, and finds this is evidence that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <golfnnow.com>, <golfno.com>, and <golfnoe.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret), Panelist
Dated: August 22, 2014
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