Golfsmith International, Inc. v. NA c/o The data in Bulkregister.com's WHOIS database is p
Claim Number: FA0703000938023
Complainant is Golfsmith International, Inc. (“Complainant”), represented by Sherri
L. Eastley, of Wong, Cabello, Lutsch, Rutherford &
Brucculeri, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwgolfsmith.com>, registered with Enom, 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 March 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 16, 2007.
On March 19, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwgolfsmith.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 March 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 12, 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@wwwgolfsmith.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 18, 2007, 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 <wwwgolfsmith.com> domain name is confusingly similar to Complainant’s GOLFSMITH mark.
2. Respondent does not have any rights or legitimate interests in the <wwwgolfsmith.com> domain name.
3. Respondent registered and used the <wwwgolfsmith.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Golfsmith International, Inc.,
uses the GOLFSMITH mark in connection with its business of offering golf-related
goods and services in the
Respondent registered the <wwwgolfsmith.com> domain name on June 1, 2001. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website found at the <usseek.com> domain name. Respondent’s website is composed of links to third-party websites offering golf-related goods and services.
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 holds a USPTO registration for its GOLFSMITH
mark. The Panel finds that Complainant
has established rights in its mark pursuant to Policy ¶ 4(a)(i)
through its USPTO registration. See 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.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."). Further, it is not
necessary for Complainant to hold a registration of its mark in the country in
which Respondent appears to be located.
Thus, Complainant’s USPTO registration is sufficient to establish
Complainant’s rights pursuant to Policy ¶ 4(a)(i) even
though Respondent appears to be located in
Respondent’s <wwwgolfsmith.com>
domain name is confusingly similar to Complainant’s GOLFSMITH mark. The disputed domain name includes
Complainant’s mark in its entirety with the addition of the letters “www” at
the beginning of the mark. As the only
alteration to Complainant’s mark is the result of a common typographical error
of failing to insert the period between the letters “www” and the remainder of
the domain name, the disputed domain name is not sufficiently distinct from
Complainant’s mark. Thus, the Panel finds
that the disputed domain name is confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Dow Jones & Co., Inc. v.
Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the
deliberate introduction of errors or changes, such as the addition of a fourth
“w” or the omission of periods or other such “generic” typos do not change
respondent’s infringement on a core trademark held by the complainant); see
also ank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000)
(finding that the respondent’s domain name <wwwbankofamerica.com> is
confusingly similar to the complainant’s registered trademark BANK OF
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Previous panels, including those in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) and G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002), have found that a complainant’s assertions constitute a prima facie case pursuant to the Policy and shift the burden to the respondent to demonstrate that it does have rights or legitimate interests in the disputed domain names as contemplated by Policy ¶ 4(c). In this case, Respondent declined to take advantage of the opportunity to submit a Response, depriving the Panel of evidence or arguments in support of its rights or legitimate interests. In Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002), the panel stated that “based on respondent's failure to respond, it is presumed that respondent lacks all rights and legitimate interests in the disputed domain name.” This Panel concurs with the reasoning of the Am. Express Co. panel, but will nonetheless evaluate the available evidence to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Respondent is using the disputed domain name to redirect Internet users to its website located at the <usseek.com> domain name composed of links to third-party websites offering golf-related goods and services. The Panel finds that such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) because Respondent is not offering any goods or services of its own at its website. The Panel also finds that Respondent’s use is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because, presumably, Respondent collects pay-per-click revenues from the third-party links on its website. Thus, the Panel finds that Respondent has not established rights or legitimate interests as contemplated by Policy ¶ 4(c)(i) or (iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
No available evidence suggests that Respondent is commonly
known by the <wwwgolfsmith.com>
domain name. Complainant is not
affiliated with or sponsoring Respondent and has not given Respondent
permission to reflect its mark in a domain name. The Panel finds that Respondent is not
commonly known by the disputed domain name and has not satisfied Policy ¶ 4(c)(ii). See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718
(Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of
the [<wwwmedline.com>] domain name and its similarity to Complainant’s
registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶
4(c)(ii) does not apply to Respondent.”); see also MRA Holding, LLC v.
Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the
disputed domain name does not even correctly spell a cognizable phrase” in
finding that the respondent was not “commonly known by” the name “girls gon
wild” or <girlsgonwild.com>).
In addition to failing to establish evidence of rights or legitimate interests under Policy ¶¶ 4(c)(i)-(iii), Respondent’s registration of a typosquatted domain name is further evidence that Respondent lacks rights or legitimate interests. The panel in IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) described typosquatting when finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c.’” In this case, Respondent registered a domain name with the letters “www” affixed to be beginning of the domain name, which is a common typographical error made by Internet users. The Panel finds that Respondent’s typosquatting demonstrates further that Respondent lacks rights or legitimate interests in the disputed domain name. See Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of the complainant's mark); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <wwwgolfsmith.com> domain name
redirects Internet users to Respondent’s website, which features links to third-party
websites offering golf-related goods and services in direct competition with
Complainant. Respondent’s use of the
disputed domain name to redirect Internet users to websites providing competing
goods and services disrupts Complainant’s business and is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also Puckett,
Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the
respondent has diverted business from the complainant to a competitor’s website
in violation of Policy ¶ 4(b)(iii)).
Respondent is using the <wwwgolfsmith.com> domain name, which
is confusingly similar to Complainant’s mark, to redirect Internet users to its
website. Because the disputed domain
name is a typosquatted version of Complainant’s mark, Internet users seeking
Complainant’s genuine website will be redirected to Respondent’s website
instead through the simple typographical error of failing to separate the
letters “www” from Complainant’s mark with a period. Because of the confusing similarity between
the disputed domain name and Complainant’s mark, Internet users may mistakenly
believe that Respondent’s website is somehow related to or affiliated with
Complainant. Respondent is presumably
profiting from this confusion by collecting pay-per-click referral fees. The Panel finds that this use demonstrates
bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
See Am.
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 Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8,
2000) (finding bad faith where the respondent used a misspelling of the
complainant’s famous mark to attract Internet users to a series of
advertisements).
The Panel recognizes that circumstances other than those outlined in Policy ¶¶ 4(b)(i)-(iv) can demonstrate bad faith registration and use. See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [Policy ¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”). Specifically, Respondent has engaged in typosquatting by registering a domain name that reflects a common typographical error. The Panel finds Respondent’s typosquatting to be further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
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 <wwwgolfsmith.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 26, 2007
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