national arbitration forum

 

DECISION

 

The Finest Golf Clubs of the World, LTD d/b/a The Eden Club v. Neil Krauter

Claim Number: FA1401001537779

 

PARTIES

Complainant is The Finest Golf Clubs of the World, LTD d/b/a The Eden Club (“Complainant”), represented by Steven L. Rinehart, Utah, USA.  Respondent is Neil Krauter (“Respondent”), represented by Jennifer Rolfe, New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <theedenclubfraud.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Jaime Delgado as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 7, 2014; the National Arbitration Forum received payment on January 7, 2014.

On January 7, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <theedenclubfraud.com> 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 January 12, 2014 Complainant submitted an amended Complaint to the National Arbitration Forum.

 

On January 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2014 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@theedenclubfraud.com.  Also on January 13, 2014, 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.

 

A timely Response was received and determined to be complete on February 3, 2014.

 

On February 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jaime Delgado 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

a)    Complainant’s company was founded in 1997 as a private limited company in the UK as an international private members’ club providing members access to a spacious private club in St Andrews, Scotland, having a luxury golf course as well as access to approximately 40 annual events and a unique Secretariat service. Membership provides access to a variety of other services and experiences during travel and at home. Complainant has since registered a trademark with the European Union Office for the Harmonization in the Internal Market (“OHIM”) for the THE EDEN CLUB STANDREWS mark (Reg. No. 2,814,523 registered Aug. 15, 2005). See Complainant’s Annex E.

b)    The <theedenclubfraud.com> domain name is confusingly similar to Complainant’s mark, as it merely adds the generic top-level domain (“gTLD”) “.com” which panels have found to be irrelevant.

c)    Respondent has no rights or legitimate interests in the <theedenclubfraud.com> domain name.

a.    Respondent was never authorized, licensed, or otherwise permitted to use Complainant’s mark.

b.    Respondent uses the <theedenclubfraud.com> domain name to tarnish Complainant’s business and brand.

d)    The <theedenclubfraud.com> domain name was registered and is using in bad faith.

a.    Respondent uses the <theedenclubfraud.com> domain name to interfere with Complainant’s business.

b.    Respondent means to create initial interest confusion by using Complainant’s mark in its domain name, and Respondent is intentionally attempting to divert Internet users to it’s website via the <theedenclubfraud.com> domain name.

c.    Respondent registered the <theedenclubfraud.com> domain name with actual and constructive knowledge that the disputed domain name was confusingly similar to a mark that Complainant had rights in. Respondent resolves the domain to a website that seeks to tarnish Complainant’s business affairs and uses a domain name that is nearly identical to Complainant’s mark. 

 

B. Respondent

 

a)    The <theedenclubfraud.com> domain name is not identical or confusingly similar to Complainant’s mark.

b)    After being fraudulently induced to join Complainant’s club, The Eden Club, Respondent tried to work out with Complainant a refund based on their failure to give the services they purport to give their members. Complainant refused a refund, so Respondent started the <theedenclubfraud.com> domain name to warn others who might be fraudulently induced into spending large sums of money to join a club that was unable to give the services its website states it will provide and gives its members no recourse if they are dissatisfied.

c)    Respondent was induced to join Complainant’s club based on promises that were given orally and writing and via the website representations that the club was one of the “finest clubs in the world” and could give access to its members through a private “secretariat” who would arrange the golf outings. Respondent, upon these assurances, paid an upfront fee of $100,000 plus annual dues, and was later told that he was bound to the terms of the club for the next five years at a minimum. Respondent later found that Complainant could not make good on what it advertised except to a stretch of technicality.

d)    Respondent also found out that Complainant was using Respondent’s name without permission to endorse the club.

e)    Respondent is making a legitimate noncommercial and fair use of the disputed domain name. Respondent has the rights to voice its opinions on Complainant’s company, brand, and practices.

f)     Respondent is not competing in any way with Complainant.

g)    The <theedenclubfraud.com> domain name was not registered in bad faith, but rather in a good faith effort to notify the general public of the truth. Respondent gains nothing from the website.

 

The Panel notes that the <theedenclubfraud.com> domain name was registered on December 21, 2011.

 

FINDINGS

a)    Complainant is the owner of a trademark registered with the European Union OHIM for the THE EDEN CLUB STANDREWS mark (Reg. No. 2,814,523 registered Aug. 15, 2005). See Complainant’s Annex E.

b)    Respondent is the current registrant of the domain name: <theedenclubfraud.com>.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts that its company was founded in 1997 as a private limited company in the UK as an international private members’ club providing members access to a spacious private club in St Andrews, Scotland, having a luxury golf course as well as access to approximately 40 annual events and a unique Secretariat service. Complainant notes that membership provides access to a variety of other services and experiences during travel and at home. Complainant has since registered a trademark with the OHIM for the THE EDEN CLUB STANDREWS mark (Reg. No. 2,814,523 registered Aug. 15, 2005). See Complainant’s Annex E. Panels have found that, regardless of the location of the parties, trademark registration is a sufficient demonstration of rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); 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). Therefore, the Panel finds that Complainant has rights in the THE EDEN CLUB STANDREWS mark under Policy ¶ 4(a)(i).

Complainant contends that the <theedenclubfraud.com> domain name is confusingly similar to Complainant’s mark as it merely adds the gTLD “.com” which panels have found to be irrelevant. Panels have, in fact, found the addition of a gTLD to be irrelevant. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel notes, however, that Respondent also removes spaces and the term “STANDREWS” from the mark as well as adding the term “fraud,” all of which panels have previously held to not negate confusing similarity. The Panel agrees that the removal of a term in a mark is not dispositive. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark). Previous panels have accepted that the addition of negative terms, such as “fraud” can at times be added to a mark in a domain name without relieving the domain name of its confusing similarity. See, e.g., TimesofMoney Ltd. v. Vikas Gupta / NETCOM USA INC., FA 1487687 (Nat. Arb. Forum Apr. 16, 2013) (“Respondent’s  <remit2indiafraud.com>  domain name is confusingly similar to Complainant’s REMIT2INDIA.COM mark, as it merely adds the derogatory term “fraud” to the mark.”). Therefore, the Panel finds that the <theedenclubfraud.com> domain name is confusingly similar to the THE EDEN CLUB STANDREWS mark pursuant to Policy ¶ 4(a)(i).

 

Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

 

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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant argues that Respondent has no rights or legitimate interests in the <theedenclubfraud.com> domain name. Complainant argues that Respondent was never authorized, licensed, or otherwise permitted to use Complainant’s mark. The Panel notes that the WHOIS record for the <theedenclubfraud.com> domain name lists “Neil Krauter” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <theedenclubfraud.com> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Next, Complainant alleges that Respondent uses the <theedenclubfraud.com> domain name to tarnish Complainant’s business and brand by displaying negative information about Complainant. Panels have found that a respondent has the right to voice negative opinions, but not via a confusingly similar domain name. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“the domain name <eastman-chemical.com> is not protected by free speech although the content of the website supported by this domain name is protected.  Free speech cannot be used as a defense against the use of a confusingly similar mark as a domain name.”). Therefore, the Panel finds that Respondent’s use of the <theedenclubfraud.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

 

Complainant argues that the <theedenclubfraud.com> domain name was registered and is using in bad faith. Complainant asserts that Respondent uses the <theedenclubfraud.com> domain name to interfere with Complainant’s business. The Panel notes that in Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), that panel stated that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [the complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith. As such, the Panel finds that Respondent’s registration and use of the <theedenclubfraud.com> domain name were a result of bad faith intended disruption under Policy ¶ 4(b)(iii).

 

Complainant contends that Respondent means to create initial interest confusion by using Complainant’s mark in its domain name, and Respondent is intentionally attempting to divert Internet users to it’s website via the <theedenclubfraud.com> domain name. Panels have found bad faith where a respondent uses a confusingly similar domain name to associate the website with the complainant and then hosting negative reviews. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (finding that the respondent registered the domain names <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> in bad faith where the respondent published negative comments regarding the complainant’s organization on the confusingly similar website). Therefore, the Panel finds that Respondent registered and is using the <theedenclubfraud.com> domain name in bad faith under Policy ¶ 4(a)(iii) because the use of the confusingly similar domain name for hosting negative commentary is in bad faith.

 

Complainant claims that Respondent registered the <theedenclubfraud.com> domain name with actual and constructive knowledge that the disputed domain name was confusingly similar to a mark that Complainant had rights in. Complainant notes that Respondent resolves the domain to a website that seeks to tarnish Complainant’s business affairs and uses a domain name that is nearly identical to Complainant’s mark. In addition, the Panel notes that Respondent admits in its Response that it registered the domain name because of its association to Complainant. Respondent may or may not have a legitimate cause of action against Complainant, but this is not the proper forum to resolve such a dispute, the only issue in this proceedings is whether or not the disputed domain name should be transferred to Complainant. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED

 

Accordingly, it is Ordered that the <theedenclubfraud.com> domain name be TRANSFERRED from Respondent to Complainant

 

Jaime Delgado Panelist

Dated:  February 14, 2014.

 

 

 

 

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