DECISION

ETW Corp. v. Jim Mallamo d/b/a Kids Golf

Claim Number: FA0302000145284

PARTIES

Complainant is ETW Corp., Cleveland, OH (“Complainant”) represented by Mark S. Lee of Manatt Phelps & Phillips LLP.  Respondent is James Mallamo d/b/a Kids Golf, North Palm Beach, FL (“Respondent”) represented by James Mallamo of Kids Golf.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <tigerwoodsfoundation.org> and <tigerwoodslearningcenter.org> registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Timothy D. O’Leary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 13, 2003; the Forum received a hard copy of the Complaint on February 18, 2003.

On February 24, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <tigerwoodsfoundation.org> and <tigerwoodslearningcenter.org> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the names.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On February 28, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 20, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@tigerwoodsfoundation.org and postmaster@tigerwoodslearningcenter.org by e-mail.

A timely Response was received and determined to be complete on March 20, 2003.

A timely Additional Submission was received from Complainant on March 24, 2003.

On April 1, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Timothy D. O’Leary as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant contends that:

1) The domain names <tigerwoodsfoundation.org> and <tigerwoodslearningcenter.org> are identical or confusingly similar to Complainant’s federally-registered trademarks;

2) Respondent has no rights to or legitimate interest in the domain names; and

3) The domain names were registered and are being used in bad faith.

As to Contention number 1: Complainant states that:

The <tigerwoodsfoundation.org> is identical to Complainant’s Tiger Woods Foundation mark.  It is the exact spelling of the mark. 

The <tigerwoodslearningcenter.org> merely adds a generic phrase, namely “learning center” to the exact spelling of the mark.  The addition of the “com” suffix and the omission of a space between the words of a trademark do not sufficiently distinguish a domain name from a trademark in determining whether a domain name is identical or confusingly similar to a trademark. 

Further, Respondent’s use of the identical and confusingly similar domain names is likely to confuse the public into wrongly believing that Respondent and Respondent’s web pages are sponsored by or associated with Complainant.

As to Contention number 2: Complainant states that:

Respondent has no rights or legitimate interest in the domain names for the following reasons: Respondent has not made any legitimate use of the domain names in connection with a bona fide offering of goods and services.  Respondent secured advertising on <tigerwoodsfoundation.org> and linked to a website with advertising.  Unauthorized solicitation of donations does not constitute a bona fide offering of goods and services.

Respondent has no independent right to the domain names.  Respondent is not commonly known by and does not offer goods and services under the names Tiger Woods or Tiger Woods Foundation.

Respondent is not making any legitimate non-commercial or fair use of the domain names.

As to Contention number 3:  Respondent demonstrates bad faith registration and use of the domain names by trying to sell them for a profit to Complainant for the sum of $350,000.

By using the domain name <tigerwoodsfoundation.org> Respondent has intentionally attempted to attract internet users to its web page by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its website for commercial gain.

B. Respondent contends that:

Response of Respondent to Contention No. 1:  Respondent states that there is no evidence of trademark infringement or confusion between Respondent’s domain names and Complainant’s marks.

Response of Respondent to Contention No. 2:  Respondent states that he had a conversation during a lunch in 1997 with a member of Complainant’s Board of Directors, Mr. Grant, in which Respondent proposed a business opportunity for Complainant wherein Respondent would help raise $500,000 for the Tiger Woods Foundation.  Respondent states that he ordered the <tigerwoodsfoundation.org> with the pure intention of making it available to Complainant once he got the go-ahead from Mr. Grant.  Respondent states that this represents a legitimate interest in these domain names.

Response of Respondent to Contention No. 3:  Respondent states that Complainant through Mr. Ory wrote and told Respondent Complainant was interested in the domain names and asked what Respondent was looking for in return for assignment.  Respondent answered $350,000 for an assignment and explained the need to be compensated for expenses.  Respondent states the $350,000 was for the assignment and that this does not constitute a sale.  There is no bad faith here.

Respondent states that the purchase of the domain name <tigerwoodslearningcenter.org> was not in secret but was consistent with the objective of the business proposal presented to Mr. Grant.

Respondent contends it did not register the disputed domain names in bad faith but with the intention of making the domain names available to Complainant.

Respondent states there has been no intention to attract Internet users and divert traffic to Respondent’s own web page for commercial gain.  Respondent states that Infoback transfers viewers to its own website as a courtesy and as a matter of its normal course of business.

FINDINGS

Identical or Confusingly Similar  Policy ¶ 4(a)(i).

Finding for the Complainant

Complainant provides evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TIGER WOODS mark (Reg. No. 2,306,354 registered January 4, 2000) and the TIGER WOODS FOUNDATION mark (Reg. No. 2,193,919 registered October 6, 1998). Complainant uses the marks in relation to the famous golfer Tiger Woods’ golf activities and charitable activities. Complainant operates websites at both <tigerwoods.com> and <twfound.org>.

I find that Complainant has common law rights in its name because the name “Tiger Woods” has sufficient secondary association with Complainant. See Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (Complainant held common law trademark rights in his famous name MICK JAGGER); see also MPL Communications Ltd v. Hammerton, FA 95633 (Nat. Arb. Forum Oct. 25, 2000) (Complainant owned common law rights to the name Paul McCartney).

Complainant argues that the <tigerwoodsfoundation.org> domain name is identical to its TIGER WOODS FOUNDATION mark because the disputed domain name incorporates the entire mark, omits the spaces between the words and adds the generic top-level domain (“gTLD”) “.org” to the end of the mark. I find that the omission of spaces between the words and the addition of a gTLD to the end of a mark do not sufficiently distinguish the disputed domain name from Complainant’s mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

Complainant also argues that the <tigerwoodslearningcenter.org> domain name is confusingly similar to Complainant’s TIGER WOODS mark because the domain name incorporates Complainant’s entire mark and adds the generic words “learning center” to the end of the mark. I find that the addition of generic words to the end of a famous mark does not sufficiently differentiate the disputed domain name from the famous mark in which Complainant has rights. See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

Rights and Legitimate Interests   Policy ¶ 4(a)(ii).

Complainant asserts that Respondent has no rights to or legitimate interests in the <tigerwoodsfoundation.org> and <tigerwoodslearningcenter.org> domain names.  ¶ 4(a)(ii). I find that Respondent’s offer to sell or assign the disputed domain names is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

The website at the disputed domain name notes that the website is “under construction.” I find that Respondent’s failure to develop a website demonstrates Respondent’s lack of any rights to or legitimate interests in the disputed domain name.  Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).

Complainant contends that Respondent is not commonly known by the disputed domain names and has never been authorized to use Complainant’s marks. I conclude that Respondent lacks any rights or legitimate interests because Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”).

Registration and Use in Bad Faith   Policy ¶ 4(a)(iii).

Complainant contends that Respondent registered and used the disputed domain name registrations to sell them to Complainant in exchange for a business relationship or $350,000. Despite the fact that Complainant initiated the contact with Respondent regarding the assignment of the domain name registrations, I find that Respondent registered the domain names primarily for the purpose of selling, renting or otherwise transferring the domain name registrations to Complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain names, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent’s offer to sell the domain name at issue to Complainant was evidence of bad faith).

Complainant also argues that Respondent is using the <tigerwoodsfoundation.org> and <tigerwoodslearningcenter.org> domain names to divert Internet traffic to its website for its commercial gain. I find this use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant).

DECISION

Having established all three elements required under ICANN Policy, I conclude that relief shall be GRANTED.

Accordingly, it is Ordered that the <tigerwoodsfoundation.org> and <tigerwoodslearningcenter.org> domain names be TRANSFERRED from Respondent to Complainant.

Timothy D. O’Leary, Panelist
Dated: April 17, 2003

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