Club Car, LLC v. Shawn Williams / WEBDOMAIN.VEGAS
Claim Number: FA2211002018813
Complainant is Club Car, LLC (“Complainant”), represented by Christopher B Lay of IpHorgan Ltd, Illinois, USA. Respondent is Shawn Williams / WEBDOMAIN.VEGAS (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clubcar.vegas>, registered with GoDaddy.com, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on November 3, 2022; Forum received payment on November 3, 2022.
On November 4, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <clubcar.vegas> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 November 7, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 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@clubcar.vegas. Also on November 7, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
Complainant is engaged in producing and selling vehicles in the golf car industry. It has registered the trademark CLUB CAR with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,539,252, registered May 16, 1989). Respondent’s <clubcar.vegas> domain name is identical to Complainant’s mark as it wholly incorporates the CLUB CAR mark, less the spaces, and adds the “.vegas” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the <clubcar.vegas> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent holds the disputed domain name merely to sell it and this is not a bona fide offering of goods or services or a non-commercial or fair use of the domain name.
Respondent registered and uses the <clubcar.vegas> domain name in bad faith. Respondent’s website at the disputed domain name is set up merely to offer the domain for sale. It has also engaged in a pattern of registering domains of well-known trademarks for the purpose of reselling them in bad faith. Due to the reputation of the CLUB CAR mark, Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant owns trademark rights to the CLUB CAR trademark and the <clubcar.vegas> domain name is confusingly similar to the mark;
- Respondent has no rights or legitimate interests in the disputed domain name as it is not commonly known thereby, it does not make a bona fide offering of goods or services, and it does not make a legitimate non-commercial or fair use thereof;
- Complainant’s claims regarding the reputation of its trademark are unsupported by the evidence submitted; and
- Respondent’s offering of the disputed domain name for sale and its pattern of so offering other domain names that copy third-party trademarks supports the conclusion that it registered and uses the disputed domain name 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 asserts rights in the CLUB CAR trademark based upon registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark.... Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Here, Complainant has submitted copies of certain of its USPTO registrations and so the Panel finds that Complainant has established rights in the CLUB CAR mark.
Next, Complainant argues that Respondent’s <clubcar.vegas> domain name is identical to Complainant’s mark as it wholly incorporates the CLUB CAR mark, less the spaces, and adds the “.vegas” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (“Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶ 4(a)(i) analysis.”) As the disputed domain name incorporates the entirety of Complainant’s mark and only adds the “.vegas” gTLD, the Panel find that the <clubcar.vegas> domain name is identical or confusingly similar to the CLUB CAR mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <clubcar.vegas> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CLUB CAR mark. Panels often consider WHOIS information in exploring the question of whether a respondent is commonly known by the disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Use of a privacy or proxy service in the public WHOIS record can counsel against a favorable finding under ¶ 4(c)(ii). See Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent in the public WHOIS record but its Registrar revealed its identity after the commencement of this proceeding. This Registrar verification identifies Respondent as “Shawn Williams / WEBDOMAIN.VEGAS.” Additionally, lack of evidence in the record to indicate that a complainant authorized respondent to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, Complainant states that it “is not affiliated with Respondent” and that it “has not licensed” its mark to Respondent. As Respondent has not filed a Response or made any other submission in this case, it does not provide any evidence to the contrary. The Panel therefore finds no ground upon which to conclude that Respondent is commonly known by the <clubcar.vegas> domain name under Policy ¶ 4(c)(ii).
Next, Complainant claims that Respondent offers the disputed domain name for sale. Offering a confusingly similar domain name for sale to the public may not create a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy ¶¶ 4(c)(i) or (c)(iii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA 1614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”) Here, Complainant provides screenshots of Respondent’s website at the <clubcar.vegas> domain name and the content consists mainly of a notice stating “CLUBCAR.VEGAS DOMAIN FOR SALE” followed by a phone number. The footer of the page also displays the notice “Copyright (c) 2022 clubcar.vegas”. As Complainant has made a prima facie showing that has not been rebutted by Respondent, the Panel finds, by a preponderance of the evidence, that Respondent does not make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).
Complainant claims that Respondent had actual or constructive knowledge of Complainant’s rights in the CLUB CAR mark prior to registration of the disputed domain name. Constructive knowledge is typically disfavored under the Policy unless both parties are resident in a jurisdiction that applies such legal theory. As both the Complainant and Respondent list addresses in the United States, the Panel is prepared to accept that Respondent had constructive knowledge of the CLUB CAR mark in this instance. Nevertheless, there is evidence that Respondent had actual knowledge of the mark. Actual knowledge can be determined in an analysis of the totality of the circumstances surrounding the registration and subsequent use of a mark per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Complainant contends that its “trademark is iconic in the golf car industry. Club Car is the official golf car of” many well-known golf tournaments and that “Since 1958, Complainant has expended considerable time, resources, and effort in promoting its CLUB CAR trademarks…” It goes on to assert that
As a consequence of the extensive advertising, promotion, and use of the CLUB CAR Marks, Club Car has developed enormous recognition for its goods under the CLUB CAR Marks and has acquired a valuable reputation and accrued tremendous goodwill under the marks. Moreover, as a result of these efforts, the CLUB CAR Marks are well known to the consuming public…
However, the Panel finds Complainant’s evidence lacking in support of these claims. Its submissions on this issue consist, in their entirety, of copies of Complainant’s trademark registrations, a WHOIS record showing its ownership of the <clubcar.com> domain name, and screenshots of one page from Complainant’s current website. The Panel notes that mere conclusory or unsubstantiated arguments, unsupported by evidence, are unpersuasive and so it is unable to find that the CLUB CAR mark enjoys the reputation or goodwill claimed by Complainant.
However, the Panel also notes the submission of a screenshot of Respondent’s website at the address <webdomain.vegas> which is associated with the phone number displayed at the <clubcar.vegas> site. This other site promotes the sale of Respondent’s portfolio of “.vegas” domain names which include <chick-fil-a.vegas>, <cvs.vegas>, <hilton.vegas>, <jaguar.vegas>, <landrover.vegas>, <pepsi.vegas>, <starbucks.vegas>, <traderjoes.vegas>, and <walgreens.vegas> among others. Lest there be any doubt regarding the Respondent’s intentions for these domain names, the website also states that “Webdomain.vegas owns the most .Vegas domain of elite corporate brand names in this industry….” The Panel finds that this particular piece of evidence supports the conclusion that Respondent most likely had actual knowledge of and was specifically targeting Complainant’s rights in the CLUB CAR mark prior to registration of the disputed domain name.
Next, Complainant claims that Respondent offers the <clubcar.vegas> domain name for sale. Offering a confusingly similar domain name for sale can indicate bad faith registration and use. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Here, Complainant provides a screenshot of Respondent’s website which offers to sell the disputed domain name and it also submits screenshots from Respondent’s other “.vegas” domain name sales page, as noted above. Respondent’s offering of the <clubcar.vegas> domain name for sale to the general public here supports Complainant’s claim that the domain name was registered and used in bad faith and Respondent, having chosen not to participate in these proceedings, offers no alternate explanation for its actions.
Complainant also argues that Respondent registered the disputed domain name in bad faith to prevent Complainant from reflecting its trademark in a domain name. Where Respondent has a demonstrated a pattern of conduct in registering numerous domain names that copy other trademarks, a complainant may use serial cybersquatting to substantiate an argument of bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA 1464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”) As noted above, Complainant provides evidence of Respondent having registered many domain names of well-known entities with the “.vegas” TLD and specifically promoted itself as offering “the most .Vegas domain of elite corporate brand names in this industry….” Based on the evidence presented, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(ii).
Finally, Complainant claims that Respondent inactively holds the domain name, as Respondent fails to use the disputed domain name for any purpose. While inactively holding a confusingly similar domain name can substantiate a finding of bad faith the Panel declines to consider this claim as it has found, on other grounds, that Respondent registered and uses the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clubcar.vegas> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: December 9, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page