Eldrick "Tiger" Woods v. Shay Kostiner
Claim Number: FA0608000772899
Complainant is Eldrick "Tiger" Woods (“Complainant”), represented by Mark Steinberg, of IMG Worldwide, Inc., IMG Center, Suite 100, 1360 East 9th Street, Cleveland, OH 44114-1782. Respondent is Shay Kostiner (“Respondent”), 1521 Alton Rd., #304, Miami Beach, FL 33139.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <tigerwoodsdesign.com>, registered with Go Daddy Software, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
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, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <tigerwoodsdesign.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 August 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 5, 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@tigerwoodsdesign.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 12, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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." 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. Respondent’s <tigerwoodsdesign.com> domain name is confusingly similar to Complainant’s TIGER WOODS mark.
2. Respondent does not have any rights or legitimate interests in the <tigerwoodsdesign.com> domain name.
3. Respondent registered and used the <tigerwoodsdesign.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Eldrick “Tiger” Woods c/o IMG Worldwide, Inc., is a well-known professional golfer who has won numerous major championships in the past ten years. Complainant holds the distinction of being the first PGA golfer to hold all four professional major championships at the same time, which he accomplished in the year 2001. Complainant was also ranked the number one golfer in the PGA by World Golf Rankings for a record 264 consecutive weeks.
Complainant’s personal service corporation, ETW Corp., holds a trademark registration for the TIGER WOODS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,442,618 issued April 10, 2001). The Panel imputes this corporation’s registration of the mark to Complainant for purposes of this decision. Complainant has licensed other entities to use the TIGER WOODS mark in connection with various products and services, including automobiles, golf equipment and clothing items.
Respondent registered the <tigerwoodsdesign.com> domain name on January 27, 2006. Respondent advertises its e-commerce business at the disputed domain name, which is not affiliated with Complainant in any way.
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. 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.”).
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.
Complainant has demonstrated its rights in the TIGER WOODS mark through its registration of the mark with the USPTO. As stated above, the Panel imputes ETW Corp.’s registration of the mark to Complainant for purposes of Policy ¶ 4(a)(i). See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <tigerwoodsdesign.com> domain name
incorporates Complainant’s entire TIGER WOODS mark and merely adds the term
“design” and the generic top-level domain (“gTLD”) “.com.” In McClatchy Mgmt. Serv., Inc. v. Purdy,
FA 165944 (Nat. Arb. Forum Aug. 12, 2003), the panel found the respondent’s
<startribunenews.com> domain name to be confusingly similar to the
complainant’s STAR TRIBUNE mark because “the mere addition of the term ‘news’
to the end of the domain name is a meaningless distinction, intended to avoid a
direct copy of the actual name.”
Because the mere addition of the term “design” and the gTLD “.com” does
not sufficiently distinguish the disputed domain name from Complainant’s mark
in this case either, the Panel finds the <tigerwoodsdesign.com>
domain name to be confusingly similar to the mark pursuant to Policy ¶
4(a)(i). See Google Inc. v. Xtraplus
Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s
domain names were confusingly similar to Complainant’s GOOGLE mark where the
respondent merely added common terms such as “buy” or “gear” to the end).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and
legitimate interests in the <tigerwoodsdesign.com> domain
name. Complainant must first make a prima
facie case in support of its allegations, and then the burden shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Document
Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000)
(“Although Paragraph 4(a) of the Policy requires that the Complainant prove the
presence of this element (along with the other two), once a Complainant makes
out a prima facie showing, the burden of production on this factor
shifts to the Respondent to rebut the showing by providing concrete evidence
that it has rights to or legitimate interests in the Domain Name.”); see
also Hanna-Barbera
Productions, 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 Policy
¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <tigerwoodsdesign.com>
domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names); see also Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000)
(finding that the respondent has no rights or legitimate interests in the domain
name because the respondent never submitted a response or provided the panel
with evidence to suggest otherwise). However, the Panel will now examine the record to determine
if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent has registered the <tigerwoodsdesign.com>
domain name under the name “Shay Kostiner,” and there is no other evidence in
the record suggesting that Respondent is commonly known by the <tigerwoodsdesign.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See The Braun
Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that
the respondent was not commonly known by the disputed domain names where the
WHOIS information, as well as all other information in the record, gave no
indication that the respondent was commonly known by the disputed domain names,
and the complainant had not authorized the respondent to register a domain name
containing its registered mark); see also Coppertown Drive-Thru Systems, LLC v. Snowden, FA 715089 (Nat. Arb. Forum Jul. 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
By using the <tigerwoodsdesign.com> domain name
to promote and advertise its own business, which is unrelated to Complainant,
Respondent is taking advantage of the confusing similarity between the disputed
domain name and Complainant’s TIGER WOODS mark in order to profit from the
goodwill associated with the mark. The
Panel finds such diversionary use to be indicative of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that the respondent registered and used the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also MySpace,
Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that
the respondent registered and used the <myspacebot.com> domain name in
bad faith by diverting Internet users seeking the complainant’s website to its
own website for commercial gain because the respondent likely profited from
this diversion scheme).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tigerwoodsdesign.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 25, 2006
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