Acushnet Company v. Client Care / Web Commerce Communications Limited
Claim Number: FA2203001988386
Complainant is Acushnet Company (“Complainant”), represented by Jonathan M. Gelchinsky of Pierce Atwood LLP, Maine, USA. Respondent is Client Care / Web Commerce Communications Limited (Respondent), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <footjoygolfsaleusa.com>, <footjoyproslcanada.com>, <footjoycanadaoutlet.com>, <footjoyukwebsite.com>, <footjoynz.com>, <footjoyauckland.com>, <footjoy-australia.com>, <footjoyoutletsydney.com>, and <footjoyskonorge.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
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.
Complainant submitted a Complaint to the Forum electronically on March 15, 2022; the Forum received payment on March 15, 2022.
On March 17, 2022, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to the Forum that the <footjoygolfsaleusa.com>, <footjoyproslcanada.com>, <footjoycanadaoutlet.com>, <footjoyukwebsite.com>, <footjoynz.com>, <footjoyauckland.com>, <footjoy-australia.com>, <footjoyoutletsydney.com>, and <footjoyskonorge.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 21, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@footjoygolfsaleusa.com, postmaster@footjoyproslcanada.com, postmaster@footjoycanadaoutlet.com, postmaster@footjoyukwebsite.com, postmaster@footjoynz.com, postmaster@footjoyauckland.com, postmaster@footjoy-australia.com, postmaster@footjoyoutletsydney.com, postmaster@footjoyskonorge.com. Also on March 21, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 18, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is a global leader in the golf industry. Complainant has rights in the FOOTJOY mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 271,260, registered May 27, 1930). Respondent’s <footjoygolfsaleusa.com>, <footjoyproslcanada.com>, <footjoycanadaoutlet.com>, <footjoyukwebsite.com>, <footjoynz.com>, <footjoyauckland.com>, <footjoy-australia.com>, <footjoyoutletsydney.com>, and <footjoyskonorge.com>[i] domain names are confusingly similar to Complainant’s FOOTJOY mark.
2. Respondent incorporates the mark in its entirety and adds generic terms, such as “golf sale,” “outlet,” and “website,” along with the “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights or legitimate interests in the <footjoygolfsaleusa.com>, <footjoyproslcanada.com>, <footjoycanadaoutlet.com>, <footjoyukwebsite.com>, <footjoynz.com>, <footjoyauckland.com>, <footjoy-australia.com>, <footjoyoutletsydney.com>, and <footjoyskonorge.com> domain names as Respondent is not commonly known by the domain names nor did Complainant authorize Respondent to use the FOOTJOY mark in any way.
4. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain names resolve to webpages that offer products that compete with Complainant’s business.
5. Respondent registered and uses the <footjoygolfsaleusa.com>, <footjoyproslcanada.com>, <footjoycanadaoutlet.com>, <footjoyukwebsite.com>, <footjoynz.com>, <footjoyauckland.com>, <footjoy-australia.com>, <footjoyoutletsydney.com>, and <footjoyskonorge.com> domain names in bad faith as Respondent attempts to create a likelihood of confusion between Respondent and Complainant.
6. Respondent has also engaged in a pattern of bad faith registration by registering multiple domain names.
7. Respondent
had actual knowledge of Complainant’s rights in the FOOTJOY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the FOOTJOY mark. Respondent’s domain names are confusingly similar to Complainant’s FOOTJOY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <footjoygolfsaleusa.com>, <footjoyproslcanada.com>, <footjoycanadaoutlet.com>, <footjoyukwebsite.com>, <footjoynz.com>, <footjoyauckland.com>, <footjoy-australia.com>, <footjoyoutletsydney.com>, and <footjoyskonorge.com> domain names and that Respondent registered and uses the domain names in bad faith.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has claimed rights in the FOOTJOY mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Complainant has provided this Panel with copies of its USPTO registrations for the FOOTJOY mark (e.g. Reg. No. 271,260, registered May 27, 1930). Therefore, the Panel holds that Complainant has rights in the mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <footjoygolfsaleusa.com>, <footjoyproslcanada.com>, <footjoycanadaoutlet.com>, <footjoyukwebsite.com>, <footjoynz.com>, <footjoyauckland.com>, <footjoy-australia.com>, <footjoyoutletsydney.com>, and <footjoyskonorge.com> domain names are confusingly similar to Complainant’s FOOTJOY mark. Registration of a domain name that contains a mark in its entirety and adds generic words and a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Respondent incorporates the FOOTJOY mark in its entirety and adds generic terms, such as golf sale, “outlet,” and finds that Respondent’s domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <footjoygolfsaleusa.com>, <footjoyproslcanada.com>, <footjoycanadaoutlet.com>, <footjoyukwebsite.com>, <footjoynz.com>, <footjoyauckland.com>, <footjoy-australia.com>, <footjoyoutletsydney.com>, and <footjoyskonorge.com> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.) The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <footjoygolfsaleusa.com>, <footjoyproslcanada.com>, <footjoycanadaoutlet.com>, <footjoyukwebsite.com>, <footjoynz.com>, <footjoyauckland.com>, <footjoy-australia.com>, <footjoyoutletsydney.com>, and <footjoyskonorge.com> domain names as Respondent is not commonly known by the domain names nor has Respondent been given license or consent to use the FOOTJOY mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by a domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)). The WHOIS information for the domain names lists the registrant as “Client Care / Web Commerce Communications Limited” and there is no other evidence to suggest that Respondent is authorized to use the FOOTJOY mark or is commonly known by the domain names. Therefore, the Panel holds that Respondent is not commonly known by the <footjoygolfsaleusa.com>, <footjoyproslcanada.com>, <footjoycanadaoutlet.com>, <footjoyukwebsite.com>, <footjoynz.com>, <footjoyauckland.com>, <footjoy-australia.com>, <footjoyoutletsydney.com>, and <footjoyskonorge.com> domain names per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain names resolve to webpages that offer products that compete with Complainant’s business. Use of a domain name incorporating the mark of a complainant to resolve to a webpage that offers goods and services that compete with the complainant’s business is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (use of a domain to sell products and/or services that compete directly with a complainant’s business does 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)). Complainant has provided the Panel with screenshots of the <footjoygolfsaleusa.com>, <footjoyproslcanada.com>, <footjoycanadaoutlet.com>, <footjoyukwebsite.com>, <footjoynz.com>, <footjoyauckland.com>, <footjoy-australia.com>, <footjoyoutletsydney.com>, and <footjoyskonorge.com> domain names resolving webpages that show products that compete with Complainant’s business. Therefore, the Panel holds that Respondent failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent engages in a pattern of bad faith registration. Registration of multiple domain names that are subject to a UDRP proceeding may show that a respondent has engaged in a pattern of bad faith registration per Policy ¶ 4(b)(ii). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)). The record contains nine domain names, all of which are confusingly similar to Complainant’s mark. Therefore, Respondent has engaged in a pattern of bad faith registration per Policy ¶ 4(b)(ii).
Complainant argues that Respondent registered and uses the <footjoygolfsaleusa.com>, <footjoyproslcanada.com>, <footjoycanadaoutlet.com>, <footjoyukwebsite.com>, <footjoynz.com>, <footjoyauckland.com>, <footjoy-australia.com>, <footjoyoutletsydney.com>, and <footjoyskonorge.com> domain names in bad faith as Respondent attempts to create a likelihood of confusion between Respondent and Complainant. Use of a domain name incorporating the mark of another to create a likelihood of confusion by offering similar products and services is evidence of bad faith per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). Complainant has provided the Panel with screenshots of Respondent’s domain names resolving webpages that show products that compete with Complainant’s business. Therefore, the Panel holds that Respondent registered and uses the domain names in bad faith per Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the FOOTJOY mark at the time of registering the <footjoygolfsaleusa.com>, <footjoyproslcanada.com>, <footjoycanadaoutlet.com>, <footjoyukwebsite.com>, <footjoynz.com>, <footjoyauckland.com>, <footjoy-australia.com>, <footjoyoutletsydney.com>, and <footjoyskonorge.com> domain names. Actual knowledge of Complainant's rights in the FOOTJOY mark prior to registering these domains name can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. Based on this evidence and the entire record, the Panel holds that Respondent did have actual knowledge of Complainant’s right in its mark constituting bad faith under Policy ¶ 4(a)(iii).
The Panel finds 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<footjoygolfsaleusa.com>, <footjoyproslcanada.com>, <footjoycanadaoutlet.com>, <footjoyukwebsite.com>, <footjoynz.com>, <footjoyauckland.com>, <footjoy-australia.com>, <footjoyoutletsydney.com>, and <footjoyskonorge.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 25, 2022
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