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Generic Top Level Domain Name (gTLD) Decisions |
De La Cruz Golf, LLC v. MPA c/o Terry
Martin
Claim
Number: FA0404000263582
Complainant is De La Cruz Golf, LLC (“Complainant”), represented
by Steven W. Webb, 655 2nd St., Encintas, CA 92024. Respondent is MPA c/o Terry Martin (“Respondent”), 270 North
Canon Drive, Beverly Hills, CA 90210.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <delacruzgolf.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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 28, 2004; the
Forum received a hard copy of the
Complaint on April 30, 2004.
On
April 29, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain name <delacruzgolf.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
May 12, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
June 1, 2004 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@delacruzgolf.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 Forum transmitted
to the parties a Notification of Respondent Default.
On
June 14, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed John
J. Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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 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 <delacruzgolf.com>
domain name is identical to Complainant’s DE LA CRUZ GOLF mark.
2. Respondent does not have any rights or
legitimate interests in the <delacruzgolf.com> domain name.
3. Respondent registered and used the <delacruzgolf.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, De
La Cruz Golf, LLC, manufactures, markets and sells various golf products.
Complainant has
received a notice of acceptance of statement of use from the United States
Patent and Trademark Office for the DE
LA CRUZ GOLF mark (Ser. No. 78/114033
issued April 1, 2004).
Respondent, MPA
c/o Terry Martin, registered the <delacruzgolf.com> domain name on
October 21, 2001. Respondent was an
employee of Complainant at the time of registration and was to register the
domain name in the Complainant’s name.
Respondent is not using the domain name in connection with any goods or
services, and no website can currently be accessed through
the domain
name.
Complainant
offered to compensate Respondent for costs of the registration of the domain
name in exchange for receiving ownership
of the domain name. Respondent offered to return ownership in
exchange for an exclusive distributorship of Complainant’s products.
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 rights in the DE LA CRUZ GOLF mark through notice of acceptance of
statement of use from the United States
Patent and Trademark Office and through
continued use of its mark in commerce over the last year. See Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not
require Complainant to demonstrate ‘exclusive rights,’
but only that
Complainant has a bona fide basis for making the Complaint in the first place);
see also SeekAmerica Networks Inc.
v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not
require that Complainant's trademark or service mark be registered
by a
government authority or agency for such rights to exist. Rights in the mark can be established by pending
trademark applications); see also British Broadcasting Corp.
v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does
not distinguish between registered and unregistered trademarks and
service
marks in the context of abusive registration of domain names” and applying the
Policy to “unregistered trademarks and service
marks”).
The domain name
registered by Respondent, <delacruzgolf.com>, is identical to
Complainant’s DE LA CRUZ GOLF mark because the only difference between the two
is the addition of the generic top-level
domain (“gTLD”) “.com.” See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain
(gTLD) “.com” after the name POMELLATO is not relevant); see
also Sporty's Farm L.L.C. vs.
Sportsman's Market, Inc., [2000] USCA2 33; 202 F.3d 489 (2d Cir. 2000), cert. denied,
530 U.S. 1262 (2000), ("For consumers to buy things or gather information
on the Internet, they need an easy way to find particular companies
or brand
names. The most common method of locating an unknown domain name is simply to
type in the company name or logo with the
suffix .com."); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain
name for the purpose of determining
whether it is identical or confusingly similar).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(i).
Complainant has
alleged that Respondent has no rights or legitimate interests in the <delacruzgolf.com>
domain name that contains in its entirety Complainant’s DE LA CRUZ GOLF
mark. The burden shifts to Respondent
to show that it does have rights or legitimate interests once Complainant
establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which
could demonstrate any rights or legitimate interests in the
domain name); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that Respondents’ failure to respond can be construed as an admission
that they have no
legitimate interest in the domain names); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate
interests in the domain name because Respondent
never submitted a response or
provided the Panel with evidence to suggest otherwise).
Respondent is
wholly appropriating Complainant’s mark and has passively held the domain name
since the time of registration in 2001.
The Panel finds that this use of a domain name that is identical to
Complainant’s mark is not 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 Boeing Co. v. Bressi, D2000-1164 (WIPO
Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has
advanced no basis on which the Panel
could conclude that it has a right or
legitimate interest in the domain names, and no use of the domain names has
been established);
see also Ritz-Carlton
Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that
prior to any notice of the dispute, Respondent had not used the domain names in
connection
with any type of bona fide offering of goods and services); 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 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 Respondent is not commonly known by the
domain name).
Nothing in the
record, including the WHOIS domain name registration information, suggests that
Respondent is commonly know by the
domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. 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 Respondent does not have rights in a domain name when
Respondent is not known
by the mark); 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").
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(ii).
Complainant
offered to compensate Respondent for costs of the registration of the domain
name in exchange for receiving ownership
of the domain name. Respondent offered
to return ownership in exchange for an exclusive distributorship of
Complainant’s products. Thus, the Panel
finds that Respondent likely registered the domain name for the purpose of
compensation from Complainant. See Xerox Corp. v. Imaging Solution,
D2001-0313 (WIPO Apr. 25, 2001) (finding that Respondent registered the domain
name in the hope and expectation of being able to
sell it to Complainant for a
sum of money in excess of its out-of-pocket expenses and/or in the hope of
forcing the establishment
of a business arrangement beneficial to Respondent); see
also Gutterbolt, Inc. v. NYI Bldg.
Prod. Inc., FA 96076 (Nat. Arb. Forum Dec. 29, 2000) (finding that use of a
domain name as a bargaining tool in an effort to receive compensation
for a
failed business transaction is evidence of bad faith); see also Booz-Allen & Hamilton Inc. v.
Servability Ltd, D2001-0243 (WIPO
Apr. 5, 2001) (finding bad faith where Respondent, a domain name dealer,
rejected Complainant’s nominal offer of
the domain in lieu of greater
consideration).
Respondent
intentionally registered the domain name <delacruzgolf.com> that
contains in its entirety Complainant’s mark.
Respondent has failed to market any bona fide goods or services since
the disputed domain name was registered.
Respondent’s passive holding of a domain name that is identical to
Complainant’s mark evidences bad faith registration and use pursuant
to Policy
¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows,
D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain
circumstances, for inactivity by the Respondent to amount
to the domain name
being used in bad faith”); see also Caravan
Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that
Respondent made no use of the domain name or website that connects with the
domain name, and that passive holding of a domain name permits an inference of
registration and use in bad faith); see also Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding
that, despite Respondent’s decision to passively hold the disputed domain name,
“Respondent
has made its intention clear and the continuing threat hanging over
the Complainant’s head constitutes bad faith use.”).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <delacruzgolf.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: June 28, 2004
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