Troon-golf.com

The timeline behind troon-golf.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Troon Golf, L.L.C. v. Domain Traders Claim Number: FA0503000438297 PARTIES 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.. 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. James A. Carmody, Esq., as Panelist. PROCEDURAL HISTORY 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS 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. FINDINGS 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. 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." 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. Identical and/or Confusingly Similar 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. Rights or Legitimate Interests 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. Registration and Use in Bad Faith 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. 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 <troon-golf.com> domain name be TRANSFERRED from Respondent to Complainant. James A. Carmody, Esq., Panelist Dated: April 26, 2005 Click Here to return to the main Domain Decisions Page. 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Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.