Complainant is UTGH Equipment LLC of Dalton, Georgia, United States of America, represented by Kilpatrick Stockton LLP, United States of America.
Respondent is Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America / Tru-turf synthetic lawns of Fresno, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2010. On November 9, 2010, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on November 18, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 19, 2010.
The Center verified that the Complaint together with the amended 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 November 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for response was December 12, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on December 13, 2010.
The Center appointed Robert A. Badgley as the sole panelist in this matter on December 17, 2010. 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 allegations are contained in the Complaint. They are all undisputed by Respondent, and some are supported by annexes in the record. The Panel finds all of the following to be true for purposes of this proceeding.
Complainant and its predecessors, affiliates, and licensees have adopted and used the mark SYNLAWN for more than seven years. The mark was registered on the Principal Register of the United States Patent & Trademark Office on January 31, 2006. Complainant is the assignee of all interest in the mark.
Complainant first used the mark SYNLAWN in 2003 in connection with artificial turf used for lawns and landscaping, playgrounds, putting greens and golf instruction facilities, roof deck and patios, and commercial applications. According to Complainant, SYNLAWN brand turf has been chosen by numerous airports, military bases, shopping centers, and office complexes, commercial architects, and landscape designers.
Complainant has expended millions of dollars marketing and promoting its turfs offered under the SYNLAWN mark, promoting them through its distributors, at trade shows, and in print media. Golf professional Dave Pelz, who operates golf schools around the United States, has endorsed, and promotes, the brand. Almost immediately after adopting the SYNLAWN mark, Complainant also began promoting the brand online through a website at ””. Complainant’s site has received hundreds of thousands of visitors.
The Domain Name was created on April 25, 2009. The website to which the Domain Name resolves reveals that a company named Tru Turf promotes and offers for sale its own brands of synthetic grass for golf and putting greens, lawns and landscaping, and commercial applications. 5. Parties’ Contentions A. Complainant
The salient factual contentions supporting Complainant’s case are set forth in the Factual Background section above. The arguments raised by Complainant are set forth below in the discussion of the three elements under the Policy. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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 rights, through registration and use, in the mark SYNLAWN. The Domain Name is identical to Complainant’s mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited,WIPO Case No. D2001-0122 (March 26, 2001). Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174 (April 22, 2003), rightly observed as follows: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a response and hence did not attempt to rebut any of Complainant’s assertions.
There is no evidence that Respondent has ever been authorized to use Complainant’s mark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Name, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services. The offering of goods that directly compete with Complainant’s services is not a bona fide offering of goods or services under any measure. Finally, Respondent has not claimed any noncommercial or fair use of the SYNLAWN mark in the Domain Name, and the Panel finds no basis for recognizing any such use.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent had Complainant’s mark in mind when registering the Domain Name. This is easily inferred by the fact that Respondent’s website offers goods in direct competition with those offered by Complainant.
The Panel finds bad faith under paragraphs 4(b)(iii) and (iv). The record demonstrates that Respondent is seeking to attract, for commercial gain, Internet users who are seeking Complainant’s website. Respondent offers competing goods for sale at its site. This constitutes bad faith within the meaning of sub-paragraph (iii) and (iv).
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied. 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 Complainant.
Robert A. Badgley
Sole Panelist
Dated: December 21, 2010
Full & Egal Universal Law Academy