Eldrick "Tiger" Woods v. Whitsan Bay Golf Shop
Claim Number: FA0608000772886
PARTIES
Complainant is Eldrick "Tiger" Woods (“Complainant”), represented by Mark Steinberg, of IMG Worldwide, Inc., IMG Center, Suite 100, 1360 East 9th Street, Cleveland 44114-1782. Respondent is Whitsan Bay Golf Shop (“Respondent”), Poprtwrinkle, Torpoint, Cornwall PL11 3BU Great Britain (UK).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tigerwoodscoursedesign.com>,
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
PANEL
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.
Tyrus R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 9, 2006; the National Arbitration Forum received a
hard copy of the Complaint on August 14, 2006.
On August 9, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide
confirmed by e-mail to the National Arbitration Forum that the <tigerwoodscoursedesign.com>
domain name is registered with Melbourne It, Ltd. d/b/a Internet Names
Worldwide and that the Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names
Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a
Internet Names Worldwide 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 August 16, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 9, 2006 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@tigerwoodscoursedesign.com
by e-mail.
A timely Response was received and determined to be incomplete on September
5, 2006 because Respondent failed to submit a hard copy as required by the
Rules. In this case the Panel will
permit the Response to be considered since the content thereof assists the
Panel in reaching a proper decision and the technical nature of the breach and
the need to resolve the real dispute between the parties suggests that the
Response should be allowed and given due weight. See J.W. Spear & Sons PLC v. Fun League Mgmt. FA180628 (Nat. Arb. Forum Oct. 17, 2003)
and Telstra Corp v. Chu, D2000-0423 (WIPO June 21, 2000).
An untimely Additional Submission from Respondent was received by the
Forum on September 17, 2006. This
Additional Submission will not be considered under Rule 7 of the National
Arbitration Forum’s UDRP Supplemental Rules.
Various questions and comments were submitted by e-mail to the Forum by
Respondent which were not in compliance with Rule 7. These e-mails will not be considered by the Panel.
On September 21, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a well-known sports personality. He has had a well-publicized life and
career. 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. He is ranked as #1 in the official World Golf Rankings for a PGA
record of 264 consecutive weeks.
The name TIGER WOODS is registered with the U.S. Patent and Trademark
Office in Class 41. The registration,
No. 2,442,618 is dated April 10, 2001.
This registration is in the name of ETW, Corp. ETW Corp. is Complainant’s personal service corporation. The mark has become well known as being
directly and singularly related to Complainant. Further, the name TIGER WOODS has sufficient secondary
association with Complainant in the mind of the public that even if the name
were not trademarked, common law trademark rights would certainly exist.
Respondent registered the domain name, <tigerwoodscoursedesign.com>
on January 24, 2006. The home page
states that the domain name was registered by <www.simply.com> , a domain
name registration and domain name parking service owned by Nameco Limited (the
administrative contact). There is no
disclaimer or other name indicating the fact that it is not a website
associated with TIGER WOODS.
The <tigerwoodscoursedesign.com> domain name registered by
Respondent is identical or confusingly similar to a trademark in which
Complainant has rights.
Complainant has never licensed, authorized, approved or permitted
Respondent to use the name or mark TIGER WOODS in a domain name or in any other
way. Respondent is not commonly known,
and has never been known, by the name or mark TIGER WOODS or the <tigerwoodscoursedesign.com>
domain name. Respondent has not
provided any evidence that it has any rights or legitimate interests in respect
to the <tigerwoodscoursedesign.com> domain name.
Respondent registered and used the domain name in bad faith. After learning of Respondent’s registration
of the <tigerwoodscoursedesign.com> domain name, Complainant’s
representative at IMG Worldwide, Inc. contacted Respondent by email on July 10,
2006 with regard to its registration and use of the domain name. Respondent did not respond to IMG in the
requested time period.
B. Respondent
Respondent submits a one page letter sent to the Forum by e-mail which
generally denies any bad faith on the ground that Respondent owns no website
and has simply parked the domain name.
Respondent’s plan for the domain was to be an unofficial non profit
tribute website listing and showing all of the golf courses that Tiger Woods
designs in the future. This may not
happen for a very long time as to date Tiger Woods has not designed any golf
courses yet. If this does happen the
website will not make any money as it will not sell goods or advertising.
Respondent has sent many emails to the Complainant and has said he was
quite happy to transfer the domain name to Tiger Woods as long as they would be
willing to send him some signed Tiger memorabilia to cover his costs.
Respondent states “I have done all I can to resolve this problem by
offering to transfer the domain name to IMG as long as my costs are covered…”
FINDINGS
1.
Complainant is
a professional golfer represented by IMG Worldwide, Inc. which holds a valid
registration with the United States Patent and Trademark Office for the mark,
TIGER WOODS.
2.
Respondent is
the apparent owner or operator of the Whitesand Bay Golf Shop.
3.
Complainant
demands the transfer of the domain name, <tigerwoodscoursedesign.com>.
4.
Respondent has
and does agree to transfer the domain name to Complainant.
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.
The Panel finds that Complainant has made a prima
facie case for transfer.
Complainant shows a valid registration for the TIGER WOODS mark. Complainant shows that the disputed domain
name contains the TIGER WOODS mark with addition of the words, “course design”
and “.com”. The panel in Oki Data
Ams., Inc. v. ASD, Inc. D2001-0903 (WIPO Nov. 6, 2001) found that, “[T]he
fact that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to establish identity or confusing similarity for purposes of the
Policy despite the addition of other words to such mark.” Further, the inclusion of the descriptive
terms “course” and “design” which appear to reference Complainant’s prowess as
a golfer and the likelihood that Complainant will eventually design golf
courses, does not overcome the confusing similarity between the disputed domain
name and Complainant’s mark. The
combination of Complainant’s mark with generic terms that have an obvious
relationship to the Complainant, does not extinguish confusing similarity. See
Space Imaging LLC. v. Brownell, AF-0298 (eResolution Sept. 22, 2000).
Complainant contends that Respondent by
registering Complainant’s mark with full knowledge and constructive knowledge
of Complainant’s mark constitutes bad faith registration. In this case, there is no question that
Respondent was aware of the TIGER WOOD mark, when he registered the domain
name. See Kevin Garnett v. Trap
Block Technologies, FA128073 (Nat. Arb. Forum Nov. 21, 2002), which held
that a registrant who knew or should have known of a complainant’s trademark
rights and, without justification, registered a corresponding domain name acts
in bad faith. Complainant contends that
Respondent used the domain name in bad faith since he parked the domain name
and planned to keep it parked for an indefinite period of time. See Phat
Fashions v. Kruger FA96193 (Nat. Arb. Forum Dec. 29, 2000), which held that
even though the respondent had not used the domain name “it makes no sense
whatever to wait until it actually ‘uses’ the name, when inevitably, when there
is such a use, it will create the confusion described in the Policy.”
When such a prima facie case is presented by
Complainant, in is incumbent for Respondent to “Respond specifically to the
statements and allegations contained in the complaint and include any and all
bases for the Respondent…to retain registration and use of the disputed domain
name…”See Rule 5(b)(i), Rules for Uniform Domain Name Dispute Resolution
Policy.
Respondent did not respond to the statements
made in the Complaint nor did he advance any bases to warrant the retention of
the domain name. On the contrary,
Respondent offers to transfer the domain name to Complainant.
Under these circumstances, the Panel finds
that no formal analysis is necessary or required in this case. This Respondent does not want to “retain
registration and use of the disputed domain name.”
Under somewhat similar factual situations,
panels have decided that when a respondent had admitted that he does not have a
past, present or future interest in the disputed domain name and has not
contested transfer of the domain name, the panel may elect to forego the
traditional UDRP analysis and order the immediate transfer of the domain name. See
Boehringer Ingelheim Int’l v. Modern Ltd. Cayman Web Dev. FA133625 (Nat.
Arb. Forum Jan. 9, 2003). See also
Hungarian Airlines, Ltd. v. Vertical Axis Inc. FA212653 (Nat. Arb. Forum
Jan. 13, 2004) which held that when both parties agree to transfer and thus
their requests are identical, the Panel had no scope to do anything other than
to recognize the common request, and it has no mandate to make findings or fact
or of compliance (or not) with the Policy.
The fact that Respondent, after agreeing to
transfer the domain name, would like to have his costs of registration paid by
Complainant either by memorabilia or otherwise does not, in the opinion of this
Panel, constitute any relief available under the Policy nor should it have any
bearing whatsoever on whether the domain name should be transferred. See Dr.
Seuss Enterprises L.P. v. Saunders, D2003-0409 (WIPO Aug. 5, 2003).
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 <tigerwoodscoursedesign.com>
domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 26, 2006
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