national arbitration forum

 

DECISION

 

Arnold Palmer Enterprises, Inc. v. Domain Administrator

Claim Number: FA0612000864155

 

PARTIES

 

Complainant is Arnold Palmer Enterprises, Inc. (“Complainant”), represented by Ashley L. Ellis, of Parker, Poe, Adams & Bernstein L.L.P., Three Wachovia Center, 401 South Tryon Street, Suite 3000, Charlotte, NC 28202.  Respondent is Domain Administrator (“Respondent”), P.O. Box 533, West Bay KY.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <arnoldpalmercadillac.com>, registered with Rebel.com.

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 8, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 11, 2006.

 

On December 11, 2006, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <arnoldpalmercadillac.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name.  Rebel.com has verified that Respondent is bound by the Rebel.com 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 December 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 2, 2007 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@arnoldpalmercadillac.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 3, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.  Complainant makes the following assertions:

 

1.      Respondent’s <arnoldpalmercadillac.com> domain name is confusingly similar to Complainant’s ARNOLD PALMER mark.

 

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

 

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

 

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

 

FINDINGS

 

Complainant, Arnold Palmer Enterprises, Inc., owns rights in the ARNOLD PALMER family of marks for use in the provision of footwear and shoe services, automobile services, and beverages.  In particular, Complainant owns rights in the ARNOLD PALMER mark registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,146,086 issued March 24, 1998).

 

Respondent registered the <arnoldpalmercadillac.com> domain name on November 22, 2005.  Respondent’s domain name resolves to a website featuring links to various teaching and educational resources.

 

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.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the ARNOLD PALMER mark through registration with the USPTO.  Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).

 

Complainant contends that Respondent’s <arnoldpalmercadillac.com> domain name is confusingly similar to Complainant’s mark.  Respondent’s domain name contains Complainant’s entire ARNOLD PALMER mark and adds the trademark CADILLAC, which is unrelated to Respondent’s business.[1] The Panel finds that a domain name containing multiple trademarks is an insufficient means of distinguishing domain names from marks for purposes of Policy ¶ 4(a)(i).  See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (holding the domain name to be confusingly similar where <e-viagra-xenical-celebrex-propecia.com> merely includes the addition of related industry-specific words, namely, the marks of the complainant’s competitors); see also G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to a domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

According to Policy ¶ 4(a)(ii), Complainant must initially demonstrate that Respondent lacks rights or legitimate interests with regard to the disputed domain name.  Once Complainant sufficiently establishes a prima facie case, however, the burden shifts to Respondent to demonstrate that it has rights or legitimate interests in connection with the disputed domain name under Policy ¶ 4(a)(ii).  Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).  The Panel finds that Complainant has demonstrated a prima facie case and will examine the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶ 4(c). 

Based upon the evidence in the record, the Panel finds that Respondent is not commonly known by the <arnoldpalmercadillac.com> domain name within the meaning of Policy ¶ 4(c)(ii).  Complainant contends that Respondent is not associated with Complainant, and is not authorized by Complainant to use the ARNOLD PALMER mark.  Moreover, Respondent’s WHOIS information does not indicate that Respondent is commonly known by the disputed domain name.  Consequently, the Panel finds that the evidence fails to demonstrate that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). 

Furthermore, the evidence on record suggests that Respondent’s <arnoldpalmercadillac.com> domain name resolves to a website providing links to third-party websites that provide various teaching and educational materials, as well as advertisements of Complainant’s competitors.  The Panel also finds that Respondent presumably receives referral fees for the posting of the links and advertisements on its website.  In Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006), the panel found that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to other websites did not constitute 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).  Thus, in the instant case, the Panel finds that Respondent’s use of the confusingly similar <arnoldpalmercadillac.com> domain name does not represent either a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is using the confusingly similar disputed domain name to operate a website containing links to various teaching and educational materials as well as advertisements of Complainant’s competitors.  Internet users seeking Complainant’s goods will likely be confused when connected to Respondent’s domain name as to Complainant’s sponsorship of or affiliation with the resulting web page.  The Panel finds that Respondent’s acquisition and use of the <arnoldpalmercadillac.com> domain name in the instant case constitutes registration and use in bad faith under Policy ¶ 4(b)(iv).  See American Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); See also 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).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

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

 

 

 

Bruce E. Meyerson, Panelist

Dated:  January 18, 2007

 

 

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