WIPO Domain Name Decision D2009-0017 for aliengolf.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION NB Trademarks, Inc. v. BWI Domains Case No. D2009-0017 1. The Parties

Complainant is NB Trademarks, Inc. of Delaware, United States of America, represented by Jacobson Holman PLLC, United States of America.

Respondent is BWI Domains of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar

The disputed domain name is registered with R Corp. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2009. On January 9, 2009, the Center transmitted by email to R Corp. a request for registrar verification in connection with the disputed domain name. On January 9, 2009, R Corp. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on January 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 9, 2009.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on February 19, 2009. 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

Complainant is the owner of the ALIEN GOLF trademark for a wide variety of golf sporting goods, golf clothing and golf umbrellas. Additionally, Complainant owns other marks comprising the term “alien”, including the marks ALIEN, ALIEN TUTCH, and ALIEN SPORT (collectively, the “ALIEN Marks”) in connection with, inter alia, golf clubs, golf sporting goods and equipment, golf clothing and golf umbrellas. Moreover, Complainant owns the following (“United States” or “U.S”) U.S. trademark registrations issued, and applications allowed, by the United States Patent and Trademark Office (“USPTO”) comprising Complainant's ALIEN GOLF and ALIEN Marks:

- ALIEN SPORT, registered under number 1,722,170 on October 6, 1992 for golf clubs and first used on February, 1992;

- ALIEN SPORT & Design, registered under number 2,026,089 for golf clubs and first used on July 15, 1995;

- ALIEN TUTCH, registered under number 2,702,377 on April 4, 2003 for golf clubs and first used in January 1996;

- ALIEN, registered under number 3,137,635 on September 5, 2006 in classes 18 and 28 and first used in 1998 for class 18 and in February 1992 for class 28;

- ALIEN GOLF, registered under number 3,143,999 on September 19, 2006 in classes 18, 25 and 28 and first used in 1998;

- ALIEN GOLF & Design, registered under number 3,221,150 on March 27, 2007 in classes 18, 25 and 28 and first used in 1998;

- ALIEN & Design, registered under number 3,221,151 on March 27, 2007 in classes 18, 25 and 28 and first used in 1998 for classes 18 and 25 and on July 15, 1995 for class 28.

It is stated in the WhoIs records that BWI Domains, Respondent in the present case, is the current holder of the disputed domain name . The disputed domain name was created on February 25, 2000 and expires on February 25, 2009.

In the last six months, Respondent has been involved in numerous domain name disputes. The following decisions, involving Respondent have issued ordering the transfer of the disputed domain name: Artful Holdings LLC v. BWI Domain Manager a/k/a Domain Manager, NAF Case No. FA 1231471; Stanworth Development Limited v. BWI Domain Manager, WIPO Case No. D2008-1646; McLaughlin Gormley King Company v. BWI Domains c/o Domain Manager, NAF Case No. FA 1230837; Institut National de la Propriété Industrielle (INPI) v. BWI Domains,WIPO Case No. D2008-1536; Stunt Dynamics c/o John Zimmerman v. BWI Domains c/o Domain Manager, NAF Case No. FA 1226425; Krause Publications, Inc. v. BWI Domains, WIPO Case No. D2008-1352; MacKenzie-Childs Aurora LLC v. BWI Domain Manager c/o Domain Manager, NAF Case No. FA 1218043; Axcan Pharma Inc. v. BWI Domain Manager c/o Domain Manager, NAF Case No. FA 1217153; JPS Manufacturing, LLC v. BWI Domains c/o Domain Manager, NAF Case No. FA 1211095; Bloody Disgusting, LLC v. BWI Domain Manager c/o Domain Manager, NAF Case No. FA 1208358; Les Publications Grand Public PGP v. BWI Domains, WIPO Case No. D2008-0905; National Construction Rentals, Inc. v. BWI Domains, Domain Manager, WIPO Case No. D2008-0915; Chivas Brothers Limited, Chivas Brothers Pernod Ricard Limited, Muir Mackenzie & Company Limited v. BWI Domains/Whois Protection, WIPO Case No. D2008-0722; Hercules Incorporated c/o Sandra D. Dobbs v. BWI Domain Manager c/o Domain Manager, NAF Case No. FA 1199010; Cavaliers Operating Company LLC; Gund Business Enterprises, Inc; and NBA Media Ventures, LLC. v. BWI Domains c/o Domain Manager, NAF Case No. FA 1192083. The website accessible with “www.” is comprised of a single page on which links are displayed to third party websites, some of which sell golf clubs and related equipment and accessories. The website lists numerous “Related Searches”, including: “Discount Golf Club”, “Golf balls”, and “Alien Golf”.

When these links are chosen, the visitor is transported to another page of “Sponsored Listings” where a variety of golf products are promoted and sold but not Complainant's ALIEN GOLF and ALIEN golf products.

On January 9, 2009, Complainant filed a Complaint and asked for the transfer of the disputed domain name . 5. Parties' Contentions A. Complainant

Complainant considers the disputed domain name to be identical or confusingly similar to the trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name. According to Complainant, Respondent has not used the disputed domain name in connection with a bona fide offering of services or a legitimate non-commercial use. Also, Respondent has not been commonly known by the disputed domain name, according to Complainant.

Finally, Complainant considers that the domain name was registered and being used in bad faith. There are several indicia of Respondent's bad faith, according to Complainant. Complainant considers Respondent to be a known cybersquatter, who has registered the disputed domain name in order to prevent Complainant from reflecting the mark. Complainant further argues that Respondent has registered and used the disputed domain name with knowledge of Complainant's marks. Finally, Complainant contends that Respondent intentionally attracted users for commercial gain and that all this indicia show that Respondent has both registered and used the disputed domain name in bad faith. B. Respondent

Respondent did not reply to Complainant's contentions. 6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that complainant must show that all three elements set out in Paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the burden of proof is the balance of probabilities.

Thus for complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:

1. The domain name 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.

The Panel will therefore deal with each of these requirements in turn. A. Identical or Confusingly Similar

Complainant must first establish that there is a trademark or service mark in which it has rights. Since Complainant is the holder of the ALIEN GOLF trademark for a wide variety of golf sporting goods, golf clothing and golf umbrellas, it is clearly established that there is a relevant trademark in which Complainant has rights.

Additionally, Complainant is also the holder of other marks comprising the term “alien”, namely, the ALIEN Marks” in connection with, inter alia, golf clubs, golf sporting goods and equipment, golf clothing and golf umbrellas.

The Panel considers the disputed domain name to be identical to Complainant's trademark ALIEN GOLF. Moreover, the Panel also considers the disputed domain name to be confusingly similar to Complainant's ALIEN Marks, since the suffix “golf” in indicates the sport for which the trademark is used. (See Dr; Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helios Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-0890, where the domain name was held to be confusingly similar to the trademark PORSCHE).

Accordingly, Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the domain name.

It is established in previous UDRP decisions that it is sufficient for complainant to make a prima facie showing that respondent has no rights or legitimate interests in the Domain Name in order to shift the burden of proof to respondent. See Champion Innovations, Ltd. v. Udo Dussling, WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.

The Panel notes that Respondent has not been commonly known by the disputed domain name and that Respondent has not acquired trademark or service mark rights in the same. Respondent's use and registration of the disputed domain name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.

Moreover, the Panel is of the opinion that Respondent is not making a legitimate non-commercial or fair use of the disputed domain name.

Respondent's only use of the domain name has been to divert Internet traffic to third party websites, some of whom sell golf clubs and related goods and accessories. Moreover, Respondent presumably receives referral fees of some sort for the placement of these advertisements on the corresponding website. Such does not constitute a bona fide use or a legitimate non-commercial use, as contemplated by the Policy. See e.g. McLaughlin Gormley King Company v. BWI Domains c/o Domain Manager, NAF Case No. FA 1230837; Stunt Dynamics c/o John Zimmerman v. BWI Domains c/o Domain Manager, NAF Case No. FA 1226425; MacKenzie-Childs Aurora LLC v. BWI Domain Manager c/o Domain Manager, NAF Case No. FA 1218043.

Diverting Internet traffic to third party websites of direct competitors of Complainant can even be considered to be misleading and damaging to Complainant's trademarks. In the present case, the Panel considers that Respondent has misleadingly diverted Internet users and damaged the trademarks at issue.

Moreover, by registering the disputed domain name, Respondent has prevented the use of the domain name by Complainant.

As a result, Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith. See e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052. Bad Faith Registration

Pursuant to paragraph 4(b)(ii) of the Policy, a domain name may be deemed to have been registered in bad faith if the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct.

The starting point in this inquiry must surely be that Respondent must have known of Complainant's prominent ALIEN GOLF trademark. Since both the ALIEN GOLF trademark and the ALIEN marks, to which the disputed domain name is confusingly similar, are known trademarks in golf sport, and since these trademarks are used before the registration of the disputed domain name, there can only be little doubt that Respondent knew of these trademarks. Moreover, by linking the disputed domain name to sponsored links related to golf sport, there can be no doubt that Respondent knew about Complainant's marks.

Respondent's registration of the disputed domain name prevents Complainant, who is the holder of the trademark ALIEN GOLF from registering the disputed domain name composed of the trademark for itself.

Moreover, in the last six months, Respondent has been involved in numerous domain name disputes (Cf. supra), ordering the transfer of the domain name. In the Panel's view, Respondent is a so-called cybersquatter, who is known for this conduct. This is a very clear indication that Respondent not only knew of Complainant's marks, but also shows that he has engaged in a pattern of conduct of registering domain names in order to prevent the owners of trademarks from reflecting the marks in corresponding domain names. As a result, the registration of the disputed domain name must be considered as a registration in bad faith. See Artful Holdings LLC v. BWI Domain Manager a/k/a Domain Manager, NAF Case No. FA 1231471; Chivas Brothers Limited, Chivas Brothers Pernod Ricard Limited, Muir Mackenzie & Company Limited v. BWI Domains/Whois Protection, WIPO Case No. D2008-0722. Use in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, intentionally attempting to attract for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with complainant's mark constitutes evidence of bad faith registration and use of a domain name.

In the present case, the disputed domain name is linked to an active website featuring links to third parties, some of whom sell golf products in direct competition with Complainant. This is a clear indication that Respondent intentionally attempted to attract Internet users for commercial gain. By doing so, Respondent created a likelihood of confusion with Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent's website. It is more than likely that Respondent is profiting off the goodwill associated with Complainant's trademark by accruing click-through fees for each redirected and confused Internet user. See Axcan Pharma Inc. v. BWI Domain Manager c/o Domain Manager, FA 1217153; McLaughlin Gormley King Company v. BWI Domains c/o Domain Manager, NAF Case No. FA 1230837. These circumstances support a finding of bad faith use pursuant to paragraph 4(b)(iv) of the Policy. 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.

Flip Jan Claude Petillion

Sole Panelist

Dated: March 4, 2009

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