Skyhawke Technologies, LLC v. Sky Golf
Company Limited c/o Dennis Tang
Claim
Number: FA0501000409457
Complainant is Skyhawke Technologies, LLC (“Complainant”),
represented by Jonathan Hudis of Oblon, Spivak, McClelland, Maier & Neustadt, P.C., 1940 Duke Street, Alexandria, VA,
22314. Respondent is Sky Golf Company Limited c/o Dennis Tang (“Respondent”), Flat C, 13/F Block 1, Villa Esplanada,
Tsing Yi, NT, Hong Kong.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <sky-golf.com>, registered with Onlinenic,
Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically January
25, 2005; the National Arbitration Forum received a hard copy of the Complaint January
26, 2005.
On
January 25, 2005, Onlinenic, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <sky-golf.com> is
registered with Onlinenic, Inc. and that Respondent is the current registrant
of the name. Onlinenic, Inc. verified that Respondent is bound by the Onlinenic,
Inc. registration agreement and thereby has agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN's Uniform Domain
Name Dispute Resolution Policy (the "Policy").
On
February 4, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 24, 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@sky-golf.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
March 3, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name Respondent registered, <sky-golf.com>,
is confusingly similar to Complainant’s SKY GOLF mark.
2. Respondent has no rights to or legitimate
interests in the <sky-golf.com> domain name.
3. Respondent registered and used the <sky-golf.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Skyhawke Technologies, LLC, is a Mississippi-based limited liability company
formed in 2000, which develops innovative positioning systems for golfers. Complainant’s SKY GOLF system integrates GPS
and wireless technology on multiple palm-sized computer platforms to help golfers
determine distances on golf courses and access relevant data and
statistics. Complainant operates a
website at the <skygolf.com> domain name.
Complainant
registered the SKY GOLF mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,453,373 issued May 22, 2001).
Respondent
registered the <sky-golf.com> domain name January 2, 2002. Respondent’s domain name resolves to a
website that markets golf equipment and clothing.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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.
Complainant
established by extrinsic proof in this proceeding that it has rights in the SKY
GOLF mark through registration of the mark with the USPTO. 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 Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark).
The domain name that Respondent registered, <sky-golf.com>,
is confusingly similar to Complainant’s SKY GOLF mark. Respondent’s domain name incorporates Complainant’s
mark in its entirety and merely replaces the space in between the terms of
Complainant’s mark with a hyphen.
Respondent’s domain name additionally adds the generic top-level domain
“.com.” Such minor changes are
insufficient to negate a finding of confusing similarity pursuant to Policy ¶
4(a)(i). See Nintendo
of Am. Inc. v. This Domain Is For Sale,
D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and
confusingly similar Complainant’s GAME BOY mark, even though the domain name is
a combination of two descriptive words divided by a hyphen); see also CBS Broad., Inc. v. LA-Twilight-Zone,
D2000-0397 (WIPO June 19, 2000) (finding that putting a hyphen between words of
Complainant’s mark is identical to and confusingly similar to Complainant’s
mark); see also Gardline
Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
May 27, 2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable assertions and
allegations set forth by Complainant as true and accurate. See 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); 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 the Complaint to be
deemed true).
Complainant
alleges that Respondent has no rights to or legitimate interests in the
disputed domain name, and Respondent, in not submitting a response, failed to
rebut this assertion. Thus, the Panel
may interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <sky-golf.com> domain name,
pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent is
using the <skygolf.com> domain name to market golf equipment and
clothing. Such use of a domain name
that is confusingly similar to another’s mark is not a 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). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where
Respondent attempted to profit using Complainant’s mark by redirecting Internet
traffic to its own website); see also G.D. Searle & Co. v. Pelham,
FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because Respondent is
using the infringing domain name to sell prescription drugs it can be inferred
that Respondent is opportunistically using Complainant’s mark in order to
attract Internet users to its website).
Furthermore, the Panel finds that despite being listed in the
WHOIS information as “Sky Gold Company Limited,” Respondent is not commonly
known by this domain name and Respondent is not authorized to register a domain
names featuring Complainant’s SKY GOLF mark.
Thus, the Panel concludes that Respondent lacks rights and legitimate
interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not
“commonly known by” the <shantiyogaworks.com> domain name despite
listing its name as “Shanti Yoga Works” in its WHOIS contact information
because there was “no affirmative evidence
before the Panel that Respondent was ever ‘commonly known by’ the disputed
domain name prior to its registration of the disputed domain name”); see
also Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048
(Nat. Arb. Forum Jan. 13, 2003) (noting that “Complainant has established itself as the sole holder of all rights and
legitimate interests in the NEIMAN MARCUS mark,” in holding that Respondent was
not commonly known by the <neiman-marcus.net> name, despite naming
itself “Neiman-Marcus” in its WHOIS contact information).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <sky-golf.com> domain name, which features a confusingly
similar version of Complainant’s SKY GOLF mark, to market golf equipment and
clothing. Consumers accessing
Respondent’s domain name may become confused as to Complainant’s affiliation
with the resulting website. Thus, the
Panel finds that Respondent’s commercial use of the domain name constitutes bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22,
2000) (finding bad faith where Respondent attempted to attract customers to its
website, <efitnesswholesale.com>, and created confusion by offering
similar products for sale as Complainant); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where Respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that Complainant is the source of or
is sponsoring the services offered at the site).
Furthermore,
Respondent registered the <sky-golf.com> domain name with actual
or constructive knowledge of Complainant’s rights in the SKY GOLF mark due to
Complainant’s registration of the mark with the USPTO. Moreover, the Panel finds that Respondent
registered the domain name with actual knowledge of Complainant’s mark due to
the obvious link between the content advertised on Respondent’s website and
Complainant’s business. Thus, the Panel
finds that Respondent registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(a)(iii). See
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”); see also Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a
legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively.”); see also
Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that
because the link between Complainant’s mark and the content advertised on
Respondent’s website was obvious, Respondent “must have known about the
Complainant’s mark when it registered the subject domain name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <sky-golf.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 17, 2005.
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