The Complainant is Parsons Xtreme Golf, LLC, of Scottsdale, Arizona, United States of America (“United States”), represented by Loeb & Loeb, LLP, United States.
The Respondent is Rabia El hajji, PXG clubs, of Fez, Morocco/Contact Privacy Inc. Customer 0152740777, of Toronto, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2018. On October 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 17, 2018 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 19, 2018.
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 October 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on November 21, 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 was founded in September 2014. It is based in the United States and is a manufacturer and seller of golf-related products, namely equipment (including golf clubs), apparel and accessories. Its products are advertised through a variety of media, including television, magazines, social media and the Internet, as well as through sponsorship of professional golfers and golf tournaments.
The Complainant trades as PXG and uses Parsons Xtreme Golf as part of its trading style. It has many registered trade marks for both PXG, as well as for PARSONS XTREME GOLF, including the following;
- European Trade Mark, number 13652541, for PXG (word), registered on May 4, 2005, in classes 9,18, 24, 25 and 28;
- United States trade mark, number 4,779,101, for PXG (standard characters), registered on July 21, 2015, in Class 28;
United States trade mark, number 4,966,446, for PXG (stylized), registered on May 24, 2016 in Class 25;
United States trade mark, number 5,443,575 for PARSONS XTREME GOLF (standard characters), registered on April 10, 2018, in class 25.
The Complainant also owns the domain name which was registered on April 3, 2000 and, since 2015, has resolved to a website offering for sale a variety of the Complainant’s goods and services. The strapline on the home page of the Complainant’s website is “Luxury that performs”.
The disputed domain name was registered by the Respondent on September 21, 2018. Up until October 16, 2018, it pointed to a website which offered for sale a variety of golfing-related headwear, bags, apparel and accessories. The strapline which appeared on the home page was “Luxury that performs”. Beneath that were the words “Parsons Xtreme Golf PXG is a global golf equipment company that designs, manufactures, markets and sells a line of custom fitted golf equipment, golf accessories and golf lifestyle-related products”. The logo used on the products depicted on subsequent pages of the website was identical to the Complainant’s logo.
As a result of a complaint made by the Complainant to the reseller of the disputed domain name, the Respondent’s website is presently offline. 5. Parties’ Contentions A. Complainant
The Complainant says that the disputed domain name is confusingly similar to its PXG trade mark, the only difference being the addition of a hyphen after “pxg”, followed by the word “clubs”. A domain name which incorporates a complainant’s trade mark in its entirety and couples it with a generic or descriptive term will not prevent a likelihood of confusion. The word “clubs” is simply generic or descriptive of the goods that PXG offers. Furthermore, the addition of a hyphen between “pxg” and “clubs” does not make the disputed domain name more distinctive.
The Complainant asserts also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the name “Pxg” and has not made any legitimate or noncommercial or fair use of the disputed domain name. The Respondent is not affiliated with the Complainant and the Complainant has never assigned, sold, licensed or transferred any rights in any of its PXG marks to the Respondent, nor has it ever consented to the Respondent’s use of them. Moreover, the Respondent’s use of the disputed domain name to sell golf-related apparel, headwear, bags and accessories, which are competing goods to those of the Complainant, does not comprise a bona fide offering of goods; see Option One Mortgage Corporation v. Option One Lending,WIPO Case No. D2004-1052.
The Complainant says that it has made out a prima facie case that the Respondent lacks rights or a legitimate interests in the disputed domain name and the burden of production shifts to the Respondent to show that it has.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. There is a presumption of bad faith when a respondent should have been aware of a complainant’s trade marks, whether actively or constructively. The Respondent had both actual and constructive knowledge of the Complainant’s PXG marks as at the time of registration of the disputed domain name in September 2018. In particular, the Respondent’s website refers to itself as PXG and claims to be “a global golfing equipment company” which offers for sale the same ranges of products as the Complainant. It also uses the same tagline on its website, namely “Luxury that performs”, as well as its trade marks, including the Complainant’s stylized PXG logo. Accordingly, the Respondent must have been aware of the Complainant and its marks as at the date of registration of the disputed domain name in September 2018. As was the position in, for example, Bridgestone Corporation v. Horoshiy, Inc.,WIPO Case No. D2004-0795, the registration by the Respondent of the disputed domain name in the knowledge of the Complainant’s rights, demonstrates its bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence of its trade mark registrations for PXG; see the details of three of these registrations, set out above. These establish its rights in the mark.
For the purpose of considering whether the disputed domain name is identical or confusingly similar to PXG the generic Top-Level Domain (“gTLD”) “.com” is disregarded as this is a technical requirement of registration. The disputed domain name accordingly comprises the Complainant’s trade mark in full together with the addition of a hyphen and the word “clubs”. The hyphen is of no practical significance and the word “clubs”, will be perceived by those Internet users aware of the Complainant’s focus on golf-related products as descriptive of some of its goods. These additional components of the disputed domain name do not serve to render it dissimilar to the Complainant’s trade mark. As explained at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trade mark…the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
As the disputed domain name incorporates the entirety of the Complainant’s PXG trade mark, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely;
(i) before any notice to it of the dispute, it has used or made 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) it is commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Paragraph 4(c)(ii) of the Policy is inapplicable; there is nothing to suggest that the Respondent has been commonly known by the disputed domain name. Paragraph 4(c)(iii) is also inapplicable; the Respondent’s website is commercial in character.
So far as paragraph 4(c)(i) of the Policy is concerned, section 2.2 of the WIPO Overview 3.0 provides examples of factors which might point to a bona fide offering of goods and services by a respondent. These include “other evidence generally pointing to a lack of indicia of cybersquatting intent”. The evidence in these proceedings points in the other direction; the Respondent’s use of the disputed domain name to resolve to a website is clearly intended to deceive Internet users into believing that it is the Complainant’s website, or is operated with its authorization and demonstrates a cybersquatting intent. As the panel found in Philipp Plein v. Privacy Protection Service INC d/b/a PrivacyP / Norma Brandon, cheapphilippplein,WIPO Case No. D2015-1050; “The Respondent’s use of a domain name that is confusingly similar to the Complainant’s trade marks in order to attract Internet users looking for genuine products of the Complainant’s company and to offer them unauthorized copies instead is a “bait and switch” strategy that lacks bona fides and does not give rise to rights or a legitimate interests under the Policy”. A similar view was taken by the panel in Option One Mortgage Corporation v. Option One Lending,WIPO Case No. D2004-1052: “It is undisputed that Complainant and Respondent operate in the same field. Respondent’s use of a confusingly similar Domain Name on a website offering for sale overlapping products and services is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use pursuant to Policy”. Essentially the same considerations apply in these proceedings.
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the burden of production on this element of the Policy shifts to the Respondent. The Respondent has not submitted a response and so it has, inevitably, failed to satisfy it. The Panel therefore finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The disputed domain name contains the Complainant’s PXG trade mark in full and adds a hyphen and the word, “clubs”, which is descriptive of some of the products sold by the Complainant. In combination, these factors point to an awareness by the Respondent of the Complainant and its PXG-branded products as at the date of registration of the disputed domain name.
The form and content of the website to which the disputed domain name resolved shortly after its registration, prior to being taken offline, further evidences the Respondent’s bad faith intent. In particular, the Respondent has used the Complainant’s word and stylized PXG and PARSONS XTREME GOLF trade marks as well as its “Luxury that perfoms” strapline and has offered goods for sale which are identically branded to those of the Complainant. These factors, coupled with the Respondent’s claim to be “a global golf equipment company”, evidence an intention by the Respondent to register the disputed domain name in order to host a website which masqueraded as being operated by, or with the approval of, the Complainant.
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(iv) of the Policy are if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The use to which the Respondent has put the disputed domain name falls precisely within these circumstances. The belief of Internet users that the Respondent’s websites is operated by, or on behalf of, the Complainant will be reinforced because of the confusing similarity between the disputed domain name and the Complainant’s PXG trade marks. The fact that the disputed domain name also incorporates the word “clubs”, which is descriptive of some of the goods sold by the Complainant, accentuates the false impression of a connection with the Complainant’s business and increases the likelihood of confusion to Internet users. Furthermore, there is no conceivable good faith use which the Respondent could make of the disputed domain name. Finally, the Respondent has not made any attempt to justify its conduct or to rebut the Complainant’s assertions. Each of these factors points to bad faith registration and use; see, in similar circumstances, the decision of the panel in Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person,WIPO Case No. D2014-1447.
The Panel therefore finds that the disputed domain name was both registered and is being used in bad faith. 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.
Antony Gold
Sole Panelist
Date: December 5, 2018
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