TigerTurf International, Ltd. v. XL Registrations, Inc. a/k/a XL Registrations a/k/a XI Registrations
Claim Number: FA0604000678058
Complainant is TigerTurf International, Ltd. (“Complainant”), represented by W. Reid Wittliff, of Graves, Dougherty, Hearon & Moody, P.C., 401 Congress Ave., Suite 2200, Auston, TX 78701. Respondent is XL Registrations, Inc. a/k/a XL Registrations a/k/a XI Registrations (“Respondent”), 1804 Blvd Le Corbusier, Laval, PQ H7S 2N3, Canada.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <tigerturfglobal.com>, <tigerturfglobal.org>, <tigerturfglobal.net>, <tigerturfusa.com>, <tigerturfamerica.com>, <tigerturfamerica.net> and <tigerturfamerica.org>, registered with Register.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 14, 2006.
On April 17, 2006, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <tigerturfglobal.com>, <tigerturfglobal.org>, <tigerturfglobal.net>, <tigerturfusa.com>, <tigerturfamerica.com>, <tigerturfamerica.net> and <tigerturfamerica.org> domain names are registered with Register.com, Inc. and that Respondent is the current registrant of the names. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 April 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 9, 2006 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@tigerturfglobal.com, postmaster@tigerturfglobal.org, postmaster@tigerturfglobal.net, postmaster@tigerturfusa.com, postmaster@tigerturfamerica.com, postmaster@tigerturfamerica.net and postmaster@tigerturfamerica.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tigerturfglobal.com>, <tigerturfglobal.org>, <tigerturfglobal.net>, <tigerturfusa.com>, <tigerturfamerica.com>, <tigerturfamerica.net> and <tigerturfamerica.org> domain names are confusingly similar to Complainant’s TIGERTURF mark.
2. Respondent does not have any rights or legitimate interests in the <tigerturfglobal.com>, <tigerturfglobal.org>, <tigerturfglobal.net>, <tigerturfusa.com>, <tigerturfamerica.com>, <tigerturfamerica.net> and <tigerturfamerica.org> domain names.
3. Respondent registered and used the <tigerturfglobal.com>, <tigerturfglobal.org>, <tigerturfglobal.net>, <tigerturfusa.com>, <tigerturfamerica.com>, <tigerturfamerica.net> and <tigerturfamerica.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, TigerTurf International, Ltd., is a New Zealand corporation that has continuously sold and marketed artificial and synthetic turf products since May 2002. Complainant uses the TIGERTURF mark in connection with synthetic sporting surfaces and other products used on athletic playing fields and landscaping applications. Complainant does business in over thirty countries, including countries in Europe, Asia and North America.
Complainant has registered the TIGERTURF mark with New Zealand trademark authority (Reg. No. 677,503 issued March 29, 2004), the Australian trademark authority (Reg. No. 893,822 issued November 2, 2001), the Chinese trademark authority (Reg. No. 3,202,776 issued September 28, 2003) and the European Union (Reg. No. 3,346,061 issued March 17, 2005). Complainant also operates websites at the <tigerturf.co.uk>, <tigerturf.com.au> and <tigerturf.co.nz> domain names.
Respondent registered the <tigerturfusa.com>, <tigerturfamerica.com>, <tigerturfamerica.org> and <tigerturfamerica.net> domain names on February 21, 2006, and the <tigerturfglobal.com>, <tigerturfglobal.net> and <tigerturfglobal.org> domain names on February 23, 2006. Complainant alleges that Respondent also filed a forged trademark application for the TIGERTURF mark with the USPTO on February 15, 2006. Complainant claims that Respondent registered the disputed domain names after hearing the Complainant planned on registering them. Respondent’s domain names do not resolve to any content.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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’s valid trademark registrations with the
relevant government authorities in Australia, New Zealand, China and the
European Community demonstrate its rights in the TIGERTURF mark pursuant to
Policy ¶ 4(a)(i). See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which the respondent operates; therefore it is sufficient that
the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <tigerturfglobal.com>,
<tigerturfglobal.org>, <tigerturfglobal.net>, <tigerturfusa.com>,
<tigerturfamerica.com>, <tigerturfamerica.net> and
<tigerturfamerica.org> domain names are
confusingly similar to Complainant’s TIGERTURF mark under Policy ¶ 4(a)(i),
because each contains Complainant’s entire registered mark and simply adds a
common term and a generic top-level domain (“gTLD”) to the end. In Sony Kabushiki Kaisha v. Inja,
Kil, D2000-1409 (WIPO Dec. 9, 2000), the Panel found that the addition of
generic words to the end of the complainant’s SONY mark rendered the
respondent’s domain names confusingly similar because “[n]either the addition
of an ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case.” Therefore, Respondent’s addition
of common terms to the TIGERTURF mark in the disputed domain names is also
confusingly similar because Complainant’s mark is the dominant part of the
disputed domain names. See PG&E
Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that
“Respondent does not by adding the common descriptive or generic terms ‘corp’,
‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in
which it has rights or legitimate interests, nor does it alter the underlying
[PG&E] mark held by Complainant”).
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to the Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this subparagraph, 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.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain names. Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the panel and the respondent did not come forward to suggest any
right or interest it may have possessed).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “XL Registrations, Inc. a/k/a XL Registrations a/k/a XI,” and there is no other evidence in the record suggesting that Respondent is commonly known by the disputed domain names. Thus, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Moreover, Respondent’s disputed domain names, which are confusingly similar to Complainant’s TIGERTURF mark, do not resolve to any content. Panels have held that the passive holding of a domain name provides evidence that a respondent lacks rights or legitimate interests in the domain name. Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name). Thus, Respondent’s passive holding of the disputed domain names does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii), because Respondent has failed to make any use of the domain name since registering them three months ago.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s domain names, which include Complainant’s TIGERTURF mark, do not resolve to any content. Therefore, Respondent is passively holding the disputed domain names. Such nonuse provides evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). As the Panel stated in Phat Fashions, LLC v. Kruger, FA 9619 (Nat. Arb. Forum Dec. 29, 2000), “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy.” See also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
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 <tigerturfglobal.com>, <tigerturfglobal.org>, <tigerturfglobal.net>, <tigerturfusa.com>, <tigerturfamerica.com>, <tigerturfamerica.net> and <tigerturfamerica.org> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 1, 2006
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