Stuart Appleby v. Mercedita Kyamko d/b/a
This Domain is For Sale!
Claim
Number: FA0409000326548
Complainant is Stuart Appleby (“Complainant”), represented
by Peter Malik of IMG Worldwide, Inc.,
IMG Center, Suite 100, 1360 East 9th Street, Cleveland, OH, 44114-1782. Respondent is Mercedita Kyamko d/b/a This Domain is For Sale! (“Respondent”), P.O. Box 53792, CSEZ
Clarkfield, Angeles City, Pampanga 2009, Philippines.
The
domain name at issue is <stuartappleby.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically September 13, 2004; the Forum received a hard copy of the
Complaint September 16, 2004.
On
September 16, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by
e-mail to the Forum that the domain name <stuartappleby.com> is
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent
is the current registrant of the name. Iholdings.com, Inc. d/b/a
Dotregistrar.com verified that Respondent is bound by the Iholdings.com, Inc.
d/b/a Dotregistrar.com registration agreement and thereby has agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
September 17, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 7, 2004, 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@stuartappleby.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 14, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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."
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent
registered, <stuartappleby.com>, is identical to Complainant’s
STUART APPLEBY mark.
2. Respondent has no rights to or legitimate
interests in the <stuartappleby.com> domain name.
3. Respondent registered and used the <stuartappleby.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
world-renowned PGA golfer who turned pro in 1992 and joined the PGA Tour in
1996. Complainant has 5 career PGA
tournament wins and had 3 top 10 PGA tournament finishes in 2004. Complainant’s name has become well known
through his participation in the PGA Tour and by Complainant’s granting various
third parties licenses to use Complainant’s name to endorse their products.
Respondent
registered the <stuartappleby.com> domain name June 17, 2002. The domain name redirects Internet users to
an adult-oriented website. Respondent
advertised in the WHOIS information for the <stuartappleby.com> domain
name that the registration was for sale by stating “This Domain is For Sale!”
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
established with extrinsic proof in this proceeding that he has rights to and
legitimate interests in the use of his name as a mark and that secondary
meaning is associated with it as a well-known professional golfer. Respondent
failed to submit a Response and the Panel will therefore accept all reasonable
assertions and inferences in the Complaint as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s
allegations] is tantamount to admitting the truth of complainant’s assertion in
this regard.”); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the Panel to draw adverse inferences from Respondent’s failure
to reply to the Complaint).
Complainant
further urges that he has established common law rights in the STUART APPLEBY
mark by granting third parties licenses to use his personal name to endorse
their products. Respondent’s failure to
contest this assertion also permits the Panel to accept it as true. Therefore, Complainant established common
law rights in the STUART APPLEBY mark. See Winterson v. Hogarth, D2000-0235 (WIPO
May 22, 2000) (finding that ICANN Policy does not require that Complainant have
rights in a registered trademark and that it is sufficient to show common law
rights in holding that Complainant has common law rights to her name); see also
Estate of Tupac Shakur v. Shakur Info
Page, AF-0346 (eResolution Sept. 28, 2000) (finding that a “person may
acquire such a reputation in his or her own name as to give rise to trademark
rights in that name at common law”).
The domain name
that Respondent registered, <stuartappleby.com>, is identical to
Complainant’ mark because the domain name fully incorporates the mark and
merely adds the generic top-level domain “.com” to the mark. The addition of the generic top-level domain
“.com” is insufficient to distinguish the domain name from Complainant’s
mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established rights to and legitimate interests in the mark contained in its
entirety in the disputed domain name.
Given Respondent’s failure to respond to the Complaint, the Panel
presumes that Respondent lacks rights and legitimate interests in the <stuartappleby.com>
domain name. See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any rights
or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
The <stuartappleby.com>
domain name is identical to Complainant’s mark and diverts Internet users
to adult-oriented websites. The Panel
infers that Respondent receives click-through fees for redirecting Internet
users to these adult-oriented websites.
Respondent’s use of the misleading domain name for commercial gain does
not constitute a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy
¶ 4(c)(iii). See Black & Decker
Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002)
(holding that Respondent’s use of the disputed domain name to redirect Internet
users to commercial websites, unrelated to Complainant and presumably with the
purpose of earning a commission or pay-per-click referral fee, did not evidence
rights or legitimate interests in the domain name); see also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the
famous MSNBC mark where Respondent attempted to profit using Complainant’s mark
by redirecting Internet traffic to its own website).
In addition,
Respondent’s <stuartappleby.com> domain name resolves to a website
that provides links to adult-oriented websites. Such use tarnishes Complainant’s mark and does not fall within
the parameters of Policy ¶¶ 4(c)(i) or (iii).
Therefore, the Panel concludes that such use is evidence that Respondent
lacks rights and legitimate interests in the domain name. See ABB Asea Brown Boveri Ltd. v.
Quicknet, D2003-0215 (WIPO May 26, 2003) (stating that the fact that
the “use of the disputed domain name in connection with pornographic images and
links tarnishes and dilutes [Complainant’s mark]” was evidence that Respondent
had no rights or legitimate interests in the disputed domain name); see also
McClatchy Mgmt. Serv., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum
June 2, 2003) (holding that Respondent’s use of the disputed domain names
to divert Internet users to a website that features pornographic material, had
been “consistently held” to be neither a bona fide offering of goods or
services . . . nor a legitimate noncommercial or fair use).
Moreover,
nothing in the record suggests that Respondent is commonly known by the <stuartappleby.com>
domain name. Therefore, the Panel
finds that Respondent lacks rights and legitimate interests in the domain name
pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. 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 Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the domain name in question).
Furthermore,
Respondent advertised in the WHOIS information for the <stuartappleby.com>
domain name that the registration was for sale by stating: “This Domain is
For Sale!” Respondent’s apparent
willingness to dispose of the domain name also may be taken as evidence that
Respondent lacks rights and legitimate interests in the domain name. See Mothers Against Drunk Driving
v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that
under the circumstances, Respondent’s apparent willingness to dispose of its
rights in the disputed domain name suggested that it lacked rights or
legitimate interests in the domain name); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083
(Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests
where Respondent registered the domain name with the intention of selling its
rights).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
alleges that Respondent acted in bad faith in registering and using the
disputed domain name. The domain name
that Respondent registered, <stuartappleby.com>, is identical to
Complainant’s mark and redirects Internet users to adult-oriented
websites. The Panel infers that
Respondent receives click-through fees for redirecting Internet users to these
adult-oriented websites. Therefore, the
Panel finds that Respondent’s use of the misleading domain name for commercial
gain is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that, if Respondent profits from its diversionary use of Complainant's
mark when the domain name resolves to commercial websites and Respondent fails
to contest the Complaint, it may be concluded that Respondent is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent
directed Internet users seeking Complainant’s site to its own website for
commercial gain).
Moreover, the
mere fact that the <stuartappleby.com> domain name is identical to
Complainant’s mark and redirects Internet users to adult-oriented websites is
sufficient evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Wells Fargo
& Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003)
(finding that Respondent’s tarnishing use of the disputed domain names to redirect
Internet users to adult-oriented websites was evidence that the domain names
were being used in bad faith); see also National Ass’n of
Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387
(WIPO Jan. 23, 2002) (“it is now well known that pornographers rely on
misleading domain names to attract users by confusion, in order to generate
revenue from click-through advertising, mouse-trapping, and other pernicious
online marketing techniques”).
Furthermore, the
Panel finds that Respondent registered and used the <stuartappleby.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(i) because Respondent
advertised in the WHOIS information that the domain name registration was for
sale by stating “This Domain is For Sale!”
See Microsoft Corp. v.
Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding bad faith where the
Respondent registered the domain name for the purpose of selling it, as
revealed by the name Respondent chose for the registrant, “If you want this
domain name, please contact me”); see also Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding bad faith where Respondent’s WHOIS registration information contained
the words, “This is domain name is for sale”).
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 <stuartappleby.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 28, 2004
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