Acushnet Company v. Sean Hemming
Claim Number: FA2204001990952
Complainant is Acushnet Company ("Complainant"), represented by Jonathan M. Gelchinsky of Pierce Atwood LLP, Maine, USA. Respondent is Sean Hemming ("Respondent"), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <footjoysouthafrica.com> and <footjoyireland.com>, registered with Dynadot, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 4, 2022; the Forum received payment on April 4, 2022.
On April 6, 2022, Dynadot, LLC confirmed by email to the Forum that the <footjoysouthafrica.com> and <footjoyireland.com> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 April 11, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registrations as technical, administrative, and billing contacts, and to postmaster@footjoysouthafrica.com, postmaster@footjoyireland.com. Also on April 11, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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 registrations as technical, administrative, and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 12, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Complainant produces and markets golf shoes and related products. Complainant and its predecessors in interest have used FOOTJOY in connection with these products for more than a century. Complainant states that FOOTJOY has become one of golf’s leading performance wear brands, with net annual sales exceeding $400 million, and that the mark has become famous worldwide. Complainant owns longstanding trademark registrations for FOOTJOY and related marks in the United States and many other jurisdictions.
Respondent used a privacy registration service to register the disputed domain names <footjoysouthafrica.com> and <footjoyireland.com> in October 2021. The domain name <footjoysouthafrica.com> does not resolve to a website and does not appear to be in active use. The domain name <footjoyireland.com> is being used for a website that is nearly identical in appearance to Complainant’s Ireland-targeted website, displaying Complainant’s mark and logo and images of Complainant’s products. Complainant alleges that the website is selling infringing and counterfeit goods or is collecting personally identifiable information from unsuspecting customers. Complainant states that Respondent is not commonly known by the domain name and is not licensed or otherwise authorized to use Complainant's mark. The Panel also notes that the underlying registration data provided by Respondent appear to be at least partly fictitious.
Complainant contends on the above grounds that the disputed domain names <footjoysouthafrica.com> and <footjoyireland.com> are confusingly similar to its FOOTJOY mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Each of the disputed domain names <footjoysouthafrica.com> and <footjoyireland.com> incorporates Complainant's registered FOOTJOY trademark, adding a geographic term and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Client Care / Web Commerce Communications Ltd. / Domain Admin / Whoisprotection.cc / Marina Kohl / Koehler Sophie / Unger Daniel / Astrup Viljar / Uwe Ehrlichmann, FA 1983486 (Forum Mar. 14, 2022) (finding <skecherssouthafrica.com> and <skechersirelandshoes.com> confusingly similar to SKECHERS); Thursday Boot Co. v. Domain Admin, WHOISprotection.cc, Cynthia Wagner, Michelle Gordon, Rita Gilbert, Rudy Fry, Rose Turner, Alice Murray, Gary Dillon, Lisbeth Rose, Gilbert Frasier, Gladys Sipes, Chauncey Thomas, Mark Copeland, Embla Gottfrid, Web Commerce Communications Ltd., Benjamin Bachmeier, Karen Clark, Marina Klein, Birgit Hartmann, Silke Austerlitz, Matthias Schwarz, Jan Meyer, & Enid Walsh, D2021-4291 (WIPO Feb. 28, 2022) (finding <thursdaybootssouthafrica.com> and <thursdaybootsireland.com> confusingly similar to THURSDAY BOOTS); Acushnet Co. v. Client Care / Web Commerce Communications Ltd., FA 1977397 (Forum Jan. 20, 2022) (finding <footjoycanada.com>, <footjoymexico.com>, etc., confusingly similar to FOOTJOY). The Panel considers each of the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name <footjoysouthafrica.com> incorporates Complainant's registered mark without authorization, and Respondent does not appear to be making any active use of the name. The disputed domain name <footjoyireland.com> also incorporates Complainant's registered mark without authorization, and it is being used for a website that passes off as Complainant, for what the Panel infers to be fraudulent purposes. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II, supra (finding lack of rights or interests in similar circumstances); Thursday Boot Co., supra (same); Acushnet Co. v. Client Care / Web Commerce Communications Ltd., supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered a domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register two domain names incorporating Complainant’s well-known mark, and is using at least one of the domain names to pass off as Complainant for what the Panel infers to be fraudulent purposes. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II, supra (finding bad faith registration and use in similar circumstances); Thursday Boot Co., supra (same); Acushnet Co. v. Client Care / Web Commerce Communications Ltd., supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <footjoysouthafrica.com> and <footjoyireland.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 13, 2022
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