Rolfing Sports, Inc. d/b/a Golf Hawaii v.
Compana LLC
Claim Number: FA0510000573022
PARTIES
Complainant is Rolfing Sports,
Inc. d/b/a Golf Hawaii (“Complainant”),
represented by Kay Lyn Schwartz, of Gardere Wynne Sewell, LLP,
1601 Elm Street, Suite 3000, Dallas, TX, 75201. Respondent is Compana LLC (“Respondent”),
represented by Gregory H. Guillot, of Gregory H. Guillot, PC, 13455
Noel Road, Suite 1000, Dallas, TX 75240.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <golfhawaii.com>,
registered with Compana, LLC.
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.
Mark McCormick as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 6, 2005; the National Arbitration Forum received a
hard copy of the Complaint on October 11, 2005.
On October 11, 2005, Compana, LLC confirmed by e-mail to the National
Arbitration Forum that the <golfhawaii.com>
domain name is registered with Compana, LLC and that the Respondent is the
current registrant of the name. Compana,
LLC has verified that Respondent is bound by the Compana, LLC 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 October 14, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 3, 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@golfhawaii.com by e-mail.
A timely Response was received and determined to be complete on November
3, 2005.
A Timely Additional Submission from Respondent was received and
determined to be complete on November 8, 2005.
On November 10, 2005, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Mark McCormick as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts that it has established rights in the GOLF HAWAII
mark through registration with the United States Patent and Trademark Office
and has maintained a valid registration of the mark since 2003. Complainant also contends it has used the
mark since January 1995. Complainant
asserts that Respondent’s <golfhawaii.com>
domain name is identical to Complainant’s mark, but merely adds the domain
“.com.”
Complainant contends Respondent has not established rights or
legitimate interests in the disputed domain name and has not used the domain
name in connection with a legitimate and clear use, but merely uses the domain
name to operate a website featuring commercial links to third-party websites in
exchange for referral fees.
Complainant contends that Respondent has registered the domain name in
bad faith to attract, for commercial gain, Internet users by taking advantage
of Complainant’s mark.
B. Respondent
Respondent challenges Complainant’s rights in the GOLF HAWAII mark by asserting that the terms are generic and not subject to protection. Respondent contends it has rights and legitimate interests in the disputed domain name because the words are merely generic and descriptive and because Respondent is making a legitimate use of the domain name.
Respondent contends Complainant cannot demonstrate bad faith because the domain name is comprised merely of generic terms and because Respondent is making a legitimate use of the domain name.
C. Additional Submissions
In its additional submission, Respondent provided information that the
<golfhawaii.com> domain name
was first registered December 23, 1996 by a company which used it for several
years but permitted it to expire.
Respondent contends this prior use provides an additional example of a
valid, good-faith use of the Golf Hawaii term and helps demonstrate that
Respondent should similarly be free to use it.
FINDINGS
Complainant has proved that the disputed domain name is confusingly similar to the GOLF HAWAII mark, which Complainant has registered with the United States Patent and Trademark Office. Complainant’s mark is not denied protection merely because it is comprised of common words. Complainant has also established its rights and legitimate interests in its mark and has shown that Respondent has not established rights or legitimate interests in the disputed domain name.
Complainant has also demonstrated that
Respondent has registered and used the domain name in bad faith in order to
divert Internet users to its website for commercial gain. Circumstantial evidence establishes
Respondent’s knowledge of Complainant’s registered mark.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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’s registration of its GOLF HAWAII mark with the United States Patent and Trademark Office establishes Complainant’s rights in the GOLF HAWAII mark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003). Respondent’s <golfhawaii.com> domain name is confusingly similar to Complainant’s mark because it merely adds the generic top-level domain “.com.” See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000).
Complainant has established that Respondent is not commonly known by the <golfhawaii.com> domain name and has not established rights or legitimate interests in the name. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000). Respondent effectively acknowledges that it is using the domain name to operate a website featuring commercial links to third-party websites, through which it receives referral fees. This is not a bona fide offering of goods or services. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002).
Complainant has demonstrated that Respondent uses the domain name to divert Internet users to its commercial website to intentionally attract users for commercial gain by using Complainant’s GOLF HAWAII mark. Circumstantial evidence shows Respondent knew of Complainant’s rights in the mark at the time of its registration of the domain name. Its use of the domain name is in bad faith. See H-D Michigan, Inc. v. Petersons Auto, FA 135608 (Nat. Arb. Forum Jan. 8, 2003).
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <golfhawaii.com>
domain name be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: November 28, 2005
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