The Complainant is Callaway Golf Company of Carlsbad, California, United States of America (“United States” or “US”), represented by Winston & Strawn LLP, United States.
The Respondent is Xian Wei Fa of Hezhou, Guangxi, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2017. On November 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to the Request for Amendment by the Center, the Complainant filed an amended Complaint on November 30, 2017.
On November 29, 2017, the Center transmitted an Email regarding the language of the proceeding to the Parties in Chinese and English. On November 30, 2017, the Complainant requested that English be the language of the proceeding. The Respondent did not reply by the specified due date.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2018.
The Center appointed Jonathan Agmon as the sole panelist in this matter on January 14, 2018. 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 Complainant, Callaway Golf Company, is a golf products company. The Complainant is one of largest companies in the field of golf products, with over USD 164 million in sales in 2016 and over 2,300 employees at facilities and offices in the US and worldwide.
The Complainant is operating under the CALLAWAY GOLF name since 1982 and is the owner of multiple trademark registrations for CALLAWAY GOLF and CALLAWAY, for golf products, including:
- US trademark registration no. 2,160,157, for CALLAWAY GOLF, registered on May 26, 1998.
- US trademark registration no. 2,166,033, for CALLAWAY, registered on June 16, 1998;
- US trademark registration no. 2,941,846, for CALLAWAY GOLF, registered on April 19, 2005;
- Chinese trademark registration no. 699927, for CALLAWAY, issued on July 28, 1994; and
- Chinese trademark registration no. 1234983, for CALLAWAY GOLF, issued on December 28, 1998.
The Complainant uses the marks CALLAWAY GOLF and CALLAWAY since at least the year 1990.
The Complainant also operates a website under the domain name in which it uses the CALLAWAY GOLF trademark.
The disputed domain name currently directs to a website that is presented as owned by the Complainant and promotes and markets what appear to be the Complainant’s products. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s famous and registered marks CALLAWAY GOLF and CALLAWAY because it contains the Complainant’s mark in its entirety.
The Complainant argues that the Respondent started using the disputed domain name long after the Complainant began using its mark and did so due to the international reputation it has acquired in the marks CALLAWAY GOLF and CALLAWAY.
The Complainant further argues that the Respondent uses the disputed domain name to offer the Complainant’s products and misleads Internet users to think that the origin of the products is with the Complainant.
The Complainant argues that the Respondent is not known under the disputed domain name and is not authorized by the Complainant to use the disputed domain name, which is associated with the Complainant.
The Complainant further argues that the fame it has acquired in the CALLAWAY GOLF and CALLAWAY marks makes it impossible for the Respondent to be associated with the disputed domain name.
The Complainant claims that the Respondent registered and used the disputed domain name in bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Paragraph 11 of the Rules provides that:
“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese, as confirmed by the Registrar in its verification email to the Center of November 24, 2017.
The Complainant requested that the language of the proceeding be English.
The Respondent did not respond.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain name consists of Latin letters, rather than Chinese characters;
(ii) The Respondent used the English language in the website under the disputed domain name;
(iii) The Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language;
(iii) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.
Upon considering the above, the Panel determines that English be the language of the proceeding A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the CALLAWAY GOLF and CALLAWAY marks, including US trademark registration no. 2,160,157, for CALLAWAY GOLF, registered on May 26, 1998; US trademark registration no. 2.166,033, for CALLAWAY, registered on June 16, 1998; US trademark registration no. 2,941,846, for Callaway Golf, registered on April 19, 2005; Chinese trademark registration no. 699927, for CALLAWAY, issued on July 28, 1994 and Chinese trademark registration no. 1234983, for CALLAWAY GOLF, issued on December 28, 1998.
The disputed domain name integrates the Complainant’s CALLAWAY GOLF trademark in its entirety. The disputed domain name and the Complainant’s trademark differ in the combination of the words CALLAWAY and GOLF without space, the addition of the component “store”, and the addition of the generic Top-Level Domain (“gTLD”) “.online”.
The lack of space between the words CALLAWAY and GOLF is insignificant as it is common practice to omit a space within domain names. This is evidenced for example by the Complainant’s domain name that combines the words CALLAWAY and GOLF: . The additional component “store” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark.
The addition of the gTLD “.online” to the disputed domain name does not avoid confusing similarity (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The gTLD “.online” iswithout significance in the present case since the use of a TLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks or a variation thereof and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services. Notably, the goods for sale on the Respondent’s website, where clearly unauthorized by the Complainant and seek to take unfair advantage of the Complainant’s trademarks.
The Respondent has not submitted any Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned registrations for the CALLAWAY GOLF and CALLAWAY trademarks since the year 1994. In view of the evidence filed by the Complainant, and the widespread use of the CALLAWAY GOLF and CALLAWAY trademarks, it is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No.
D2009-0735).
Furthermore, the disputed domain name includes the Complainant’s trademark in its entirety with the term “store”. The term “store” is descriptive of the service that the respondent offers under the disputed domain name: sale of golf products. Since the Complainant also sells golf products through its website, the word “store” does not distinguish between the disputed domain name and the Complainant. Previous UDRP panels have ruled that the mere addition of a descriptive element does not serve to avoid a finding of confusing similarity between the domain name and the registered trademark: “The only difference between the Disputed Domain Name and the trademark JACK WOLFSKIN is the addition of a suffix ‘jackets’. This is directly descriptive of the goods of the Complainant. In line with established practice of past UDRP panels, the Panel accepts the Complainant’s submission that the additional word ‘jacket’ does not assist to distinguish the Disputed Domain Name from the Complainant’s trademark JACK WOLFSKIN” (Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Huang Yan Jin,WIPO Case No. D2012-0128; Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. lin feifang,WIPO Case No. D2012-1042). See also Bayerische Motoren Werke AG v. RC a/k/a Sami Salem,WIPO Case No. D2012-0366; Bayerische Motoren Werke AG v. Sabri Hammad,WIPO Case No. D2007-0675; and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Respondent has been using the disputed domain name to promote the sale of what appear to be the Complainant’s goods, or goods bearing the Complainant’s mark, while using the Complainant’s name and mark on the website under the disputed domain name. The Respondent has noted that the website under the disputed domain name is an “official Callaway Golf Store online.” The Respondent also provides that the address for the business under the website is located in the United States although the Respondent seems to reside in China, and the address provided is associated with a residential house in California, United States. The Respondent’s behavior constitutes evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and the Complainant’s trademarks, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. Such actions by the Respondent constitute clear indications of bad faith registration and use of the disputed domain name. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the Complainant’s trademark registration amounts to bad faith.” The Panel also finds that the Respondent’s attempt to attract, for commercial gain, Internet users to its website with the intent to creating a likelihood of confusion with the Complainant’s trademarks and its affiliation with the Respondent’s website falls under paragraph 4(b)(iv) of the Policy.
Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s marks, the confusing similarity between the disputed domain name and the Complainant’s marks and the Respondent’s use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: 26 January 2018
Full & Egal Universal Law Academy