WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ralph Maltby Enterprises, Inc. v. Women With Balls (W.W.B. Accessories)
Case No. D2004-0917
1. The Parties
The Complainant is Ralph Maltby Enterprises, Inc., Newark, Ohio, United States of America, represented by Dinsmore & Shohl LLP, Dayton, Ohio, United States of America.
The Respondent is Women With Balls (W.W.B. Accessories), Laguna Beach, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Dotster, Inc..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on November 3, 2004. On November 3, 2004, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On November 4, 2004, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the�“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November�28, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2004.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on December 13, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The following facts and statements are derived from the Complaint and its annexed documents. The Respondent has not contested any of these facts and statements.
For over twenty-five years, Complainant, Ralph Maltby Enterprises, Inc., has used both GOLFWORKS and THE GOLFWORKS in various formats as trademarks and service marks in connection with golf clubs and golf equipment. Complainant is the owner of several United States federal registrations covering its GOLFWORKS marks, including the following registrations that have become incontestable under the provisions of U.S. trademark law:
THE GOLFWORKS (Stylized), U.S. Reg. No. 1,211,844, issued October�5,�1982, and used since 1976, in connection with the custom manufacture and repair of golf clubs and the custom design of golf clubs;
THE GOLFWORKS (Stylized), U.S. Reg. No. 1,304,735, issued November�14,�1984, and used since 1977, in connection with hand tools and gauges used in the manufacture and repair of golf clubs;
THE GOLFWORKS, U.S. Reg. No. 1,749,856, issued February 2, 1993, and used since 1978, in connection with tools and gauges for use in the manufacture and repair of golf clubs, golf bags; golf clubs and components thereof and accessories therefor, and other golf-related items.
Under U.S. trademark law (15 U.S.C. Section 1115), these incontestable registrations provide conclusive evidence of Complainant’s ownership of the marks in the U.S. and of its exclusive right to use the marks in connection with the goods and services identified in the registrations.
Complainant also owns registrations of THE GOLFWORKS mark in other countries, including Canada, Japan and the United Kingdom for use in connection with golf clubs and golf equipment. Complainant submitted with its Complaint copies of the certificates of registration for all of the trademarks referenced above.
Complainant registered the domain name on November 17, 1995, and has maintained the registration continuously since that date. Complainant uses the domain name in connection with a web site that promotes Complainant’s products and services marketed under the GOLFWORKS marks, and through which consumers can purchase those goods and services. In addition to the goods and services listed in Complainant’s above registrations, Complainant’s web site also offers clothing and sportswear items, and educational services, books and videos in the field of golf equipment.
According to the Complaint, Complainant and its founder, Ralph Maltby, are well known in the field of golf and golf equipment, and they are particularly recognized for their expertise in the custom manufacture and design of golf clubs and the repair of golf clubs.
Respondent registered the disputed domain name on July�9,�2000. As shown in Annex 7 attached to the Complaint, the domain name resolves to a web site used to promote golf accessories and golf clothing items directed primarily to women golfers. Pages printed from the web site in November 2004, show Respondent’s use of the phrase “An Original Golfworks product” to describe Respondent’s golf-related items promoted on the web site.
5. Parties’ Contentions
A. Complainant
Complainant contends that it has prior rights in the GOLFWORKS mark which is incorporated in its entirety in Respondent’s domain name, with the addition of the descriptive term “womens” and the top-level domain designation “.com.” Complainant contends that the disputed domain name is confusingly similar to its registered GOLFWORKS marks and domain name, that Respondent has no legitimate rights or interests in respect of the disputed domain name and that Respondent has registered and is using the disputed domain name in bad faith to sell golf-related products, mislead Internet users and disrupt the Complainant’s business. Complainant therefore contends that the domain name should be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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 the 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 directs that the Complainant must prove each of the following to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith;
A. Identical or Confusingly Similar
Complainant has established its prior rights in the mark GOLFWORKS as indicated in its U.S., Canadian, Japanese and UK trademark registrations. Complainant is also the owner and operator of a web site located at the domain name , which it registered in 1995, and which promotes and offers for sale golf equipment and related clothing and accessories.
Respondent’s domain name incorporates Complainant’s registered trademark GOLFWORKS in its entirety. Complainant argues that the addition of the descriptive term “womens” adds nothing distinctive and does not substantially alter the impression conveyed by the domain name. Instead, according to Complainant, this descriptive term merely suggests that the products advertised at Respondent’s site are a line of GOLFWORKS products directed toward women and that the addition of such a descriptive term is not sufficient to avoid a finding of confusing similarity. Complainant submits that Respondent’s domain name is sufficiently similar to Complainant’s GOLFWORKS marks that a reasonable Internet user would mistakenly assume that the domain name and any associated web site are affiliated with Complainant. Complainant submits further that the potential for confusion is aggravated by the reference in the content of Respondent’s web site to the phrase “An Original Golfworks product,” to promote certain products offered for sale on Respondent’s web site. Complainant states that the use of GOLFWORKS alone, without the word “womens,” in the content of the website to promote golf-related goods reinforces the impression that the web site and/or the products promoted on that site are affiliated with Complainant’s GOLFWORKS trademarks or business.
Accordingly, the Panel finds that the domain name is confusingly similar to Complainant’s GOLFWORKS trademarks under Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Complainant submits that the Respondent is not affiliated with the Complainant, and Complainant has never assigned, sold, licensed or transferred any rights in any of its GOLFWORKS marks to Respondent. There is no evidence indicating that Respondent was known by the name “womensgolfworks” prior to registration of the disputed domain name. Indeed, Respondent’s disputed domain name registration was issued in the name of a business named “Women With Balls (W.W.B. Accessories),” and not a name incorporating the term “womens golfworks.”
Finally, Respondent’s offering of golf equipment and accessories at the web site located at the disputed domain name does not create a legitimate interest in the domain name because Respondent’s use of the confusingly similar domain name (as well as use of Complainant’s GOLFWORKS mark in the text of the web site) to promote and sell identical or closely related goods and services constitutes infringing use in the United States. Such infringing use does not give rise to a legitimate right or interest on the part of the Respondent. Chase Manhattan Corp. v. John Whitely, WIPO Case No. D2000-0346 (June 12, 2000); Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (September 18, 2000).
Moreover, based on the Respondent’s failure to respond to the Complainant’s allegations, the Panel may assume that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
All of Complainant’s above-referenced U.S. trademark registrations were issued many years before Respondent’s registration of the disputed domain name. Moreover, Complainant’s domain name was registered in 1995, five years prior to the year in which Respondent registered the disputed domain name. The opportunities for Respondent, also a U.S. business, to become aware of Complainant’s prior U.S. trademark rights were numerous. Indeed, a simple Internet search results in numerous references to Complainant’s GOLFWORKS trademark supporting Complainant’s claims that it is well-known in the field of golf and golf equipment and has established significant customer association in the GOLFWORKS marks in the United States over the last twenty-five years. It is therefore likely that anyone working in the field of golf equipment in the United States has some knowledge of Complainant’s business and its use of the GOLFWORKS marks.
In addition, under U.S. trademark law, Respondent had at least constructive knowledge of Complainant’s rights in the GOLFWORKS marks at the time it registered the contested domain name. (15 U.S.C. Section 1072). Registration of a domain name that is confusingly similar to another’s registered mark that is done with knowledge, whether actual or constructive, has been found to evidence bad faith. See, e.g., Mobil Oil Corporation v. John S. Flynn, WIPO Case No. D2000-1562 (January 27, 2001).
These findings, together with the finding that the Respondent has no legitimate rights or interests in the domain name, lead the Panel to conclude that the domain name has been registered by the Respondent in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Dated: December 27, 2004
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