Troon Golf, L.L.C. v. Domain Traders
Claim
Number: FA0503000438297
Complainant is Troon Golf, L.L.C. (“Complainant”), represented
by Jay McGrath, 15044 W. Scottsdale Road, Ste. 300,
Scottsdale, AZ 85254. Respondent is Domain Traders (“Respondent”), 77 Peter
Street, Toronto, Ontario M5V 2G5, Canada.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <troon-golf.com>, registered with Go
Daddy Software, 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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
9, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 11, 2005.
On
March 10, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <troon-golf.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy Software, Inc. has verified that Respondent is
bound by the Go Daddy Software, 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 14, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 4, 2005 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@troon-golf.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 12, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., 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 <troon-golf.com>
domain name is identical to Complainant’s TROON GOLF mark.
2. Respondent does not have any rights or
legitimate interests in the <troon-golf.com> domain name.
3. Respondent registered and used the <troon-golf.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Troon Golf LLC, is an internationally known provider of golf course management
services. Founded in 1990, Complainant
manages 140 golf courses throughout the world including Japan, Australia,
Switzerland and the United Arab Emirates.
Complainant
holds a trademark registration for the TROON GOLF mark with the United States
Patent and Trademark Office (Reg. No. 2,242,602 issued May 4, 1999). Complainant’s TROON GOLF mark has become
well known through continued use in commerce since 1993 and with over a million
golfers having played Complainant’s courses.
Complainant
operates websites at <troongolf.com>, <troongolfcourses.com>, and
many other domain names that include the “troon” name.
Respondent
registered the <troon-golf.com> domain name on June 30, 2003. Respondent is using the domain name to link
to an advertisement hosted by Travel Golf Media a/k/a Arizona Tee Times for
Troon golf vacation packages.
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.
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 has
established that it has rights in the TROON GOLF mark through registration with
the United States Patent and Trademark Office (“USPTO”) and through continued
use of the mark in commerce since 1993.
Registration of a mark with the United States Patent and Trademark
Office is prima facie evidence that Complainant has rights in the TROON
GOLF mark. See Men’s Wearhouse, Inc.
v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that 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 and
that a respondent has the burden of refuting this assumption); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat.
Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use
was continuous and ongoing, and secondary meaning was established).
Respondent’s <troon-golf.com>
domain name is identical to Complainant’s TROON GOLF registered trademark
because the domain name merely adds a hyphen between the words and adds the
“.com” generic top-level domain (“gTLD”) to the mark. The addition of a hyphen and a gTLD do not distinguish the domain
name from the mark. Thus, the Panel
finds that the domain name is identical to Complainant’s mark under Policy ¶
4(a)(i). See Chernow Communications, Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (“[T]he use or absence of punctuation marks,
such as hyphens, does not alter the fact that a name is identical to a
mark"); see also Nintendo of
Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000)
(finding <game-boy.com> identical and confusingly similar Complainant’s
GAME BOY mark, even though the domain name is a combination of two descriptive
words divided by a hyphen); see also InfoSpace.com,
Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“The domain name
‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The
addition of a hyphen and .com are not distinguishing features”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to submit a response in this proceeding. In the absence of a response, the Panel accepts as true all
reasonable allegations contained in the Complaint unless clearly contradicted
by the evidence. Complainant has
alleged that Respondent lacks rights and legitimate interests in the <troon-golf.com>
domain name. Complainant’s submission
has gone unopposed and its arguments unrefuted. Further, because Respondent has failed to submit a response,
Respondent has failed to propose any explanation that could substantiate its
rights or legitimate interests in the disputed domain name. See Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that a respondent’s failure to respond allows all reasonable
inferences of fact in the allegations of the complainant to be deemed true); see
also Parfums Christian Dior v. QTR
Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a
response, the respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name).
In the WHOIS
contact information, Respondent lists its name as “Domain Traders.” However, since Respondent failed to respond
to the Complaint, there has not been any affirmative evidence provided to the
Panel showing that Respondent was ever commonly known by the disputed domain
name. Moreover, Complainant’s first use
of the TROON GOLF mark in commerce and its registration of the mark predates
Respondent’s registration of the domain name.
Thus, the Panel concludes that Respondent has not been commonly known by
the domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (“[N]othing 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail"); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interests where a respondent was not commonly
known by the mark and never applied for a license or permission from the
complainant to use the trademarked name).
Respondent’s use
of the infringing <troon-golf.com> domain name to offer and
advertise Troon Golf vacation packages, which are similar to services that
Complainant offers at its website, is not 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). Thus,
the Panel finds that Respondent lacks rights and legitimate interests in the
domain name under Policy ¶ 4(a)(ii). See
G.D. Searle & Co.
v. Mahoney, FA 112559 (Nat.
Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain
name to solicit pharmaceutical orders without a license or authorization from
the complainant did not constitute a bona fide offering of goods or services
under Policy ¶ 4(c)(i)); see also Clear Channel Communications, Inc. v.
Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that a
respondent, as a competitor of the complainant, had no rights or legitimate
interests in a domain name that utilized the complainant’s mark for its
competing website); see also Chip
Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding
that the disputed domain names were confusingly similar to the complainant’s
mark and that the respondent’s use of the domain names to sell competing goods
was illegitimate and not a bona fide offering of goods).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <troon-golf.com> domain name, which is identical to
Complainant’s TROON GOLF mark, to operate a website that offers and advertises
Troon Golf vacation packages and related services in direct competition with
Complainant. Such use constitutes
disruption and is evidence that Respondent registered and used the disputed
domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See
Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001)
(finding that, given the competitive relationship between a complainant and a
respondent, the respondent likely registered the contested domain name with the
intent to disrupt the complainant's business and create user confusion); see
also Gorstew Ltd. & Unique
Vacations, Inc. v. Satin Leaf, Inc., FA 95414 (Nat. Arb. Forum Oct. 4,
2000) (transferring <sandalsagency.com> and <sandalsagent.com> from
a respondent travel agency to the complainants, who operate Sandals hotels and
resorts); see also Hewlett Packard
Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that a
respondent registered and used the domain name primarily for the purpose of
disrupting the business of the complainant by offering personal e-mail accounts
under the domain name <openmail.com> which is identical to Complainant’s
services under the OPENMAIL mark).
Since
Respondent’s domain name is identical to Complainant’s mark, Internet users
accessing Respondent’s domain name may become confused as to Complainant’s
affiliation with the resulting website.
Thus, Respondent’s commercial and opportunistic use of the disputed
domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (finding that a respondent’s use of the
<saflock.com> domain name to offer goods competing with a complainant’s
illustrates the respondent’s bad faith registration and use of the domain name,
evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see
also Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that, given the similarity of
a complainant’s marks with the domain name, consumers will presume the domain
name is affiliated with the complainant; a respondent is attracting Internet
users to a website, for commercial gain, by creating a likelihood of confusion
with the complainant’s mark as to the source, sponsorship, or endorsement of
the respondent’s website); see also Kmart v. Khan, FA 127708 (Nat. Arb.
Forum Nov. 22, 2002) (finding that if a respondent profits from its
diversionary use of a complainant's mark when the domain name resolves to
commercial websites and the respondent fails to contest the Complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)).
Furthermore,
Respondent registered the <troon-golf.com> domain name with actual
or constructive knowledge of Complainant’s rights in the TROON GOLF mark due to
Complainant’s registration of the mark with the USPTO as well as the fame
attributed to Complainant’s mark. Moreover,
the Panel infers that Respondent registered the disputed domain name with
actual knowledge of Complainant’s rights in the mark due to the obvious
connection between the content advertised on Respondent’s website and
Complainant’s business. Thus, the Panel
finds that Respondent registered and used the domain name in bad faith pursuant
to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on those
seeking to register or use the mark or any confusingly similar variation
thereof”); see also Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr.
24, 2002) (finding that because the link between a complainant’s mark and the
content advertised on the respondent’s website was obvious, the respondent
“must have known about the Complainant’s mark when it registered the subject
domain name”).
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 <troon-golf.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
April 26, 2005
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