Golfsmitheurope.com

The timeline behind golfsmitheurope.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 Golfsmith International, Inc. v. Wilma Freedman Claim Number: FA0505000479433 PARTIES Complainant is Golfsmith International, Inc. (“Complainant”), represented by H. Lisa Calico of Wong & Cabello, L.L.P., PO Box 685108, Austin, TX 78768-5108. Respondent is Wilma Freedman (“Respondent”), North Junction Street, 30 b, EH6 6HN, Edinburgh GB. REGISTRAR AND DISPUTED DOMAIN NAMES The domain name at issue is <golfsmitheurope.com>, registered with Schlund+Partner Ag. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. James A, Crary as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on May 17, 2005; the National Arbitration Forum received a hard copy of the Complaint on May 19, 2005. On May 20, 2005, Schlund+Partner Ag confirmed by e-mail to the National Arbitration Forum that the domain name <golfsmitheurope.com> is registered with Schlund+Partner Ag and that Respondent is the current registrant of the name. Schlund+Partner Ag has verified that Respondent is bound by the Schlund+Partner Ag 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 May 24, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 13, 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@golfsmitheurope.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 June 17, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <golfsmitheurope.com> domain name is confusingly similar to Complainant’s GOLFSMITH mark. 2. Respondent does not have any rights or legitimate interests in the <golfsmitheurope.com> domain name. 3. Respondent registered and used the <golfsmitheurope.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Golfsmith International, Inc., uses its GOLFSMITH mark in association with golf equipment, clothing, retail store services, online store services and mail-order catalog services. Complainant holds a registration with the United States Patent and Trademark Office (“USPTO”) for the GOLFSMITH mark (Reg. No. 1,447,761 registered July 14, 1987). In addition, Complainant’s GOLFSMITH mark is registered in numerous other countries around the world. Complainant has used its mark since at least as early as 1968. Complainant operates more than forty stores in the United States under the GOLFSMITH mark and also has operations in Canada and England. Complainant has spent millions of dollars advertising and promoting its GOLFSMITH goods and services. Complainant has also developed valuable goodwill in the GOLFSMITH mark in association with its goods and services. Respondent registered the <golfsmitheurope.com> domain name on October 7, 2004. Respondent is using the disputed domain name to divert Internet users to a website that advertises web hosing and domain name services for Respondent’s web host. Furthermore, in response to a cease-and-desist letter sent to Respondent by Complainant, Respondent stated in an e-mail, dated April 29, 2005, that Respondent would be willing to sell the disputed domain name registration to Complainant for an amount in the area of $14,000 or the equivalent in golf equipment. 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 presumptive rights in the GOLFSMITH mark through registration of the mark with the USPTO and other governmental authorities. In the absence of a response from Respondent, the Panel has before it no evidence to rebut Complainant’s prima facie case of rights. Therefore, the Panel concludes that Complainant has established rights in the GOLFSMITH mark under Policy ¶ 4(a)(i). 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 Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (“Complainant proves that it has rights in the trademark and service mark, DELL, as a result of Complainant’s registrations with the United States Patent and Trademark Office, which predate the registration of the disputed domain name.”). The <golfsmitheurope.com> domain name includes Complainant’s federally registered GOLFSMITH mark in its entirety and adds the geographically descriptive term “Europe” and the generic top-level domain (“gTLD”) “.com.” Numerous panels have held under the Policy that the additions of a geographic term and a gTLD to a mark in which Complainant has rights do not create a domain name that is distinct from Complainant’s mark. The Panel holds that, despite these additions, the disputed domain name is confusingly similar to Complainant’s registered mark. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to the complainant’s CMGI mark); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to the complainant’s famous mark); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants."). Complainant has satisfied Policy ¶ 4(a)(i). Rights or Legitimate Interests When left with no response from Respondent to rebut any of Complainant’s contentions, the Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See 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.”). Complainant contends that Respondent does not have rights or legitimate interests in the <golfsmitheurope.com> domain name, which is confusingly simlilar to Complainant’s GOLFSMITH mark. Complainant’s assertion in this instance is sufficient to establish a prima facie case in support of its allegations and shift the burden to Respondent to provide evidence to rebut Complainant’s contentions. However, Respondent has failed to respond and has, therefore, failed to meet its burden. Thus, the Panel determines that Respondent lacks rights and legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the complainant that the respondent has no rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such rights or legitimate interests do exist); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interests in the domain names). Complainant asserts that Respondent is not commonly known by the <golfsmitheurope.com> domain name. Furthermore, the WHOIS information for the domain name indicates that Respondent is known as “Wilma Freedman.” Respondent has not provided a response to contradict Complainant’s arguments. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee 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 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). Complainant asserts that Respondent is using the <golfsmitheurope.com> domain name to divert Internet users to a website that advertises web hosting and domain name services offered by Respondent’s web host. The Panel determines that Respondent’s use of a domain name that contains Complainant’s GOLFSMITH mark in its entirety to redirect Internet users to another’s business is not a use in connection with 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). See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”). Furthermore, Complainant has provided evidence that Respondent offered to sell the <golfsmitheurope.com> domain name registration to Complainant. Respondent’s willingness to dispose of any purported rights in the disputed domain name is further evidence that Respondent lacks rights and legitmate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that, under the circumstances, the 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). Complainant has satisfied Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Evidence provided by Complainant in this proceeding shows that Respondent offered to sell the <golfsmitheurope.com> domain name registration to Complainant for approximately $14,000 or the equivalent amount in golf equipment. Complainant asserts that this is evidence that Respondent registered the disputed domain name for the purpose of selling the domain name registration to Complainant for an amount in excess of Respondent’s out-of-pocket expenses pursuant to Policy ¶ 4(b)(i). The Panel agrees and concludes that this is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs); see also Gutterbolt, Inc. v. NYI Bldg. Prod. Inc., FA 96076 (Nat. Arb. Forum Dec. 29, 2000) (finding that the demanded consideration does not have to be monetary in nature, but can be anything of value that exceeds the amount spent in registering and maintaining the domain name). Although Policy ¶ 4(b) includes a list of four specific situations which constitute evidence of bad faith registration and use, the Panel is not limited to this list and may take into account additional evidence in making a finding under Policy ¶ 4(a)(iii). See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Complainant argues that its registration of the GOLFSMITH mark with the USPTO provided Respondent with constructive notice of Complainant’s rights in the mark. Furthermore, Respondent’s registration of a domain name that contains Complainant’s registered mark in its entirety suggests that Respondent had actual knowledge of Complainant’s rights at the time of registration. The Panel finds that Respondent chose the disputed domain name based on the distinctive nature of Complainant’s GOLFSMITH mark. Registration of a domain name that includes another’s mark despite actual or constructive knowledge of the markholder’s rights is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); 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.”). Complainant has satisfied Policy ¶ 4(a)(iii). 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 <golfsmitheurope.com> domain name be TRANSFERRED from Respondent to Complainant. James A, Crary, Panelist Dated: June 29, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.