national arbitration forum

 

DECISION

 

Eldrick "Tiger" Woods v. Turvill Consultants

Claim Number:  FA0501000406862

 

PARTIES

Complainant is Eldrick "Tiger" Woods (“Complainant”), represented by Mark Steinberg, of IMG Worldwide, Inc., IMG Center, Ste. 100, 1360 East 9th Street, Cleveland, OH 44114-1782.  Respondent is Turvill Consultants (“Respondent”), 265 Port Union Road, Suite 15525, Scarborough, Ontario, Canada MIC4Z7.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tigerwoodswife.com>, registered with Moniker Online Services, Inc.

 

PANEL

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. Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 20, 2005; the National Arbitration Forum received a hard copy of the Complaint on January 24, 2005.

 

On January 24, 2005, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <tigerwoodswife.com> is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On January 26, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 15, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@tigerwoodswife.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 24, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon, Ralph Yachnin 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."  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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <tigerwoodswife.com> domain name is confusingly similar to Complainant’s TIGER WOODS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <tigerwoodswife.com> domain name.

 

3.      Respondent registered and used the <tigerwoodswife.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Eldrick “Tiger” Woods c/o IMG Worlwide, Inc. (collectively, “Complainant”), is one of the best known sports personalities in the world.  Complainant is known as ‘Tiger’ by adults and children alike throughout the world.  Complainant became a professional golfer in 1996 and is the first PGA golfer to ever hold all four professional major championships at the same time and was ranked #1 in the official World Golf Rankings for a PGA record of 264 consecutive weeks.  Complainant has also become well known and admired around the world through global exposure he has received in broadcasts and Internet coverage of golf tournaments, exhibitions, and charity events.  Additionally, Complainant has granted third parties the licensed right to utilize his trademarked name, TIGER WOODS, in connection with various endorsements, products and services such as Buick automobiles, Nike golf equipment and apparel, and Golf Digest magazine. 

 

Complainant married his wife, Elin Maria Pernilla Nordegren, on October 5, 2004.

 

Complainant registered his name, TIGER WOODS with the United States Patent and Trademark Office on April 10, 2001 (Reg. No. 2,442,618) in the name of Complainant’s personal service corporation, ETW, Corp.

 

Respondent registered the <tigerwoodswife.com> domain name on November 27, 2004.  Respondent is using the disputed domain name to redirect Internet users to Respondent’s pornographic website at the <youngyears.com> domain name.  Internet users rerouted to <youngyears.com> encounter a home page consisting of a series of nine pornographic and erotic photographs and cartoon blocks.  Respondent’s webpage then prompts Internet users to obtain a thirty minute “trial membership” to view the materials.  Unless the user cancels the thirty minute trial membership, it automatically converts to a one day trial membership for $1.95, which, unless cancelled, then automatically converts to a full membership with a $34.61 recurring fee every month until cancelled. 

 

Respondent has previously been involved in Internet domain dispute proceedings where the Panel ruled against Respondent under facts similar to the present proceeding.  See Zappos.com, Inc. v. Turvill Consultants Ltd, FA 227655 (Nat. Arb. Forum Mar. 4, 2004).

 

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."

 

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.

 

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

 

Complainant established rights in the TIGER WOODS mark through registration with the United States Patent and Trademark Office in addition to continuous use of the mark in commerce.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Hooijdonk v. Tait, D2000-1068 (WIPO Nov. 4, 2000) (finding that Complainant, professional soccer player Van Hooijdonk, had established common law rights in his name through evidence of its use related to sports clothing, games and his international recognition stemming from the 2000 European Championship).

 

Respondent’s <tigerwoodswife.com> domain name is confusingly similar to Complainant’s TIGER WOODS mark because the domain name incorporates Complainant’s entire mark and only deviates with the addition of the generic or descriptive word “wife.”  The mere addition of a generic or descriptive word to a registered mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to Complainant’s THE BODY SHOP trademark); see also Mr. Severiano Ballesteros Sota, Fairway, S.A. and Amen Corner, S.A. v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that Respondent’s <seveballesterostrophy.com> domain name was confusingly similar to Complainant’s common-law rights in his name).

 

The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent has no rights or legitimate interests in the <tigerwoodswife.com> domain name.  The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii).  Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

 

Moreover, the Panel may accept all reasonable allegations and inferences in the Complaint as true because Respondent has not submitted a response.  See 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.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true.); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

 

Respondent is using the disputed domain name to redirect Internet users to a pornographic commercial website.  Respondent’s use of a domain name that is confusingly similar to Complainant’s TIGER WOODS mark to redirect Internet users to a pornographic website is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)   See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (stating that the fact that the “use of the disputed domain name in connection with pornographic images and links tarnishes and dilutes [Complainant’s mark]” was evidence that Respondent had no rights or legitimate interests in the disputed domain name); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to “define the location of Respondent’s website on the Internet” and to host a pornographic website was not a legitimate noncommercial or fair use of the domain name); see also McClatchy Mgmt. Serv., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features pornographic material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use).

 

Furthermore, Respondent has not offered any evidence and there is no proof in the record or in the WHOIS domain name registration information indicating that Respondent is commonly known by the  <tigerwoodswife.com> domain name.  Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in the domain name when Respondent is not known by the mark); see also Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

 

The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent is wholly appropriating Complainant’s mark to lead Complainant’s fans and Internauts alike who are searching for information about Complainant or his wife, to a pornographic website.  The Panel finds that Respondent’s intentional creation of a likelihood of confusion to attract Internet users for Respondent’s commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also National Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques”); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites).

 

The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).

 

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 <tigerwoodswife.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  March 10, 2005

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum