Complainant is Taylor Made Golf Company, Inc. of Carlsbad, California, United States of America, represented by Klos Morel Vos & Schaap, The Netherlands.
Respondent is Lotom Group S.A. of Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with SIDN through the registrar EPAG Domainservices GmbH. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2010. On November 17, 2010 the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On November 17, 2010, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 17, 2010. In accordance with the Regulations, article 7.1, the due date for Response was December 7, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 8, 2010.
The Center appointed Willem J.H. Leppink as the panelist in this matter on December 22, 2010. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
Complainant is a leading company in golf hardware and accessories. Complainant is the owner of an extensive trademark portfolio, including inter alia the following trademark registrations:
1. Community trademark registration (no. 1901495) for the combined word/device trademark TAYLORMADE of October 12, 2000, registered for goods in classes 18, 25, 28 for (amongst others) golf equipment;
2. Benelux trademark registration (no. 459761) for the word trademark TAYLOR MADE of September 14, 1988, registered for goods in classes 18, 24, 25, 28 for (amongst others) golf equipment.
Both registrations are hereinafter referred to as “the Trademarks”.
In addition, Complainant uses the domain names and .
Respondent registered the Domain Name on June 13, 2008. 5. Parties’ Contentions A. Complainant
Complainant bases its Complaint on its Trademarks. The Domain Name is identical or confusingly similar to Complainants Trademarks
Complainant argues that the most distinctive element of the Domain Name is “taylormade”, which is identical to Complainant’s Benelux trademark registration. Complainant alleges that the element “golf” is merely descriptive for the sport for which Complainant’s goods are offered. Consequently, according to Complainant, the Domain Name is confusingly similar to the Trademarks. Respondent has no rights or legitimate interest in the Domain Name
Complainant argues that Respondent:
(a) does not use, nor has used, the Domain Name in connection with the bona fide offering of goods and services, as the website under the Domain Name (hereinafter “the Website”) merely contains a list of sponsored links to golf-related products and services;
(b) is not commonly known under the Domain Name as Respondent does not have a company that involves the words “taylor made”;
(c) is not making a legitimate non-commercial use of the Domain Name without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant. Complainant has registered the Trademarks well before Respondent registered the Domain Name.
In addition, Complainant argues that as the Website consists solely of paid links to competitors of Complainant and the Domain Name is being offered for sale, Respondent has no rights or legitimate interest in the Domain Name. Respondent has registered or is using the Domain Name in bad faith.
Complainant alleges that three out of four situations of bad faith indicated in article 3.2 of the Regulations apply.
Firstly, the Domain Name is registered primarily for the purpose of selling, renting or transferring it to Complainant or to Complainant’s competitors.
Secondly, as the Domain Name was registered a long time after the Trademarks registrations, Complainant alleges that it is clear that Respondent has registered the Domain Name in order to prevent Complainant from using it.
Complainant furthermore argues that, once the Internet users have entered the Website they will click on one of the sponsored links, redirecting them to the websites of Complainant’s competitors. Complainant argues that the Domain Name is thus being used for commercial gain, by attracting Internet users to the Website through the likelihood of confusion which may arise with the Trademarks. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
According to article 10.3 of the Regulations, the complaint shall be granted unless the panelist considers it to be without basis in law or fact.
Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:
A. The disputed domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law, or other name mentioned in article 2.1 sub a (II) of the Regulations;
B. The respondent has no rights or legitimate interest in the disputed domain name;
C. The disputed domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
The Panelist finds that Complainant has sufficiently demonstrated its rights in the Trademarks by submitting copies of its trademark registrations.
It is established case law that the top level domain “.nl” can be disregarded in assessing the similarity between the invoked trademarks on the one hand and the disputed domain name at the other hand (Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
The Panelist finds that the Domain Name is likely to confuse Internet users with Complainant’s Trademarks, because it incorporates “taylormade” in its entirety. The Domain Name differs from the Trademarks only in that it contains the descriptive term “golf”. The addition of such descriptive term does not prevent confusion (Seiko EPSON Corporation v. ANEM Computers / ANEM,WIPO Case No. DNL2010-0024).
Therefore, the Panelist finds that the Domain Name is confusingly similar to the Trademarks pursuant to article 2.1 sub a of the Regulations. B. Rights or Legitimate Interests
According to article 2.1 sub b of the Regulations, Complainant must demonstrate that Respondent has no rights or legitimate interest in the Domain Name.
Complainant has made a prima facie case that Respondent lacks right or legitimate interest by demonstrating that Respondent (i) has not used the Domain Name for the bona fide offering of goods, (ii) is not commonly known by the Domain Name and (iii) is not making a legitimate non-commercial use of the Domain Name. As the prima facie case is made, it is Respondent’s burden to demonstrate rights or legitimate interest in the Domain Name. The Respondent has not rebutted the aforementioned prima facie showing.
The Panelist accordingly finds that the second element of article 2.1 of the Regulations has been sufficiently demonstrated. C. Registered or Used in Bad Faith
Complainant has alleged that three out of the four situations indicating bad faith as included in article 3.2 of the Regulations would apply. This has not been contested by Respondent.
The Website includes only links that refer to golf. Such combined with the fact that Complainant’s trademark rights date back to 1988, leads the Panelist to conclude that Respondent most likely was aware of the Trademarks when registering or starting to use the Domain Name. It also follows from such that the Domain Name is thus being used for commercial gain, by attracting Internet users to the Website through the likelihood of confusion which may arise with the Trademarks. As this also hasn’t been rebutted by Respondent, this is in itself sufficient for a finding of bad faith on the part of Respondent.
Therefore, the Panelist finds that Complainant has also established the third element of article 2.1 of the Regulations. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name be transferred to Complainant.
Willem J.H. Leppink
Sole Panelist
Dated: January 3, 2010
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