DECISION

Stuart Appleby v. Mercedita Kyamko d/b/a This Domain is For Sale!

Claim Number:  FA0409000326548

PARTIES

Complainant is Stuart Appleby (“Complainant”), represented by Peter Malik of IMG Worldwide, Inc., IMG Center, Suite 100, 1360 East 9th Street, Cleveland, OH, 44114-1782.  Respondent is Mercedita Kyamko d/b/a This Domain is For Sale!  (“Respondent”), P.O. Box 53792, CSEZ Clarkfield, Angeles City, Pampanga 2009, Philippines.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <stuartappleby.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically September 13, 2004; the Forum received a hard copy of the Complaint September 16, 2004.

On September 16, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <stuartappleby.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On September 17, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 7, 2004, 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@stuartappleby.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 14, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name that Respondent registered, <stuartappleby.com>, is identical to Complainant’s STUART APPLEBY mark.

2. Respondent has no rights to or legitimate interests in the <stuartappleby.com> domain name.

3. Respondent registered and used the <stuartappleby.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is a world-renowned PGA golfer who turned pro in 1992 and joined the PGA Tour in 1996.  Complainant has 5 career PGA tournament wins and had 3 top 10 PGA tournament finishes in 2004.  Complainant’s name has become well known through his participation in the PGA Tour and by Complainant’s granting various third parties licenses to use Complainant’s name to endorse their products.

Respondent registered the <stuartappleby.com> domain name June 17, 2002.  The domain name redirects Internet users to an adult-oriented website.  Respondent advertised in the WHOIS information for the <stuartappleby.com> domain name that the registration was for sale by stating “This Domain is For Sale!”

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical to and/or Confusingly Similar

Complainant established with extrinsic proof in this proceeding that he has rights to and legitimate interests in the use of his name as a mark and that secondary meaning is associated with it as a well-known professional golfer. Respondent failed to submit a Response and the Panel will therefore accept all reasonable assertions and inferences in the Complaint as true.  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Complainant further urges that he has established common law rights in the STUART APPLEBY mark by granting third parties licenses to use his personal name to endorse their products.  Respondent’s failure to contest this assertion also permits the Panel to accept it as true.  Therefore, Complainant established common law rights in the STUART APPLEBY mark.  See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that Complainant have rights in a registered trademark and that it is sufficient to show common law rights in holding that Complainant has common law rights to her name); see also Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (finding that a “person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law”).

The domain name that Respondent registered, <stuartappleby.com>, is identical to Complainant’ mark because the domain name fully incorporates the mark and merely adds the generic top-level domain “.com” to the mark.  The addition of the generic top-level domain “.com” is insufficient to distinguish the domain name from Complainant’s mark.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Complainant established rights to and legitimate interests in the mark contained in its entirety in the disputed domain name.  Given Respondent’s failure to respond to the Complaint, the Panel presumes that Respondent lacks rights and legitimate interests in the <stuartappleby.com> domain name.  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

The <stuartappleby.com> domain name is identical to Complainant’s mark and diverts Internet users to adult-oriented websites.  The Panel infers that Respondent receives click-through fees for redirecting Internet users to these adult-oriented websites.  Respondent’s use of the misleading domain name for commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that Respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fee, did not evidence rights or legitimate interests in the domain name); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website).

In addition, Respondent’s <stuartappleby.com> domain name resolves to a website that provides links to adult-oriented websites.  Such use tarnishes Complainant’s mark and does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii).  Therefore, the Panel concludes that such use is evidence that Respondent lacks rights and legitimate interests in the domain name.  See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (stating that the fact that the “use of the disputed domain name in connection with pornographic images and links tarnishes and dilutes [Complainant’s mark]” was evidence that Respondent had no rights or legitimate interests in the disputed domain name); see also McClatchy Mgmt. Serv., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features pornographic material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use).

Moreover, nothing in the record suggests that Respondent is commonly known by the <stuartappleby.com> domain name.  Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Furthermore, Respondent advertised in the WHOIS information for the <stuartappleby.com> domain name that the registration was for sale by stating: “This Domain is For Sale!”  Respondent’s apparent willingness to dispose of the domain name also may be taken as evidence that Respondent lacks rights and legitimate interests in the domain name.  See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant alleges that Respondent acted in bad faith in registering and using the disputed domain name.  The domain name that Respondent registered, <stuartappleby.com>, is identical to Complainant’s mark and redirects Internet users to adult-oriented websites.  The Panel infers that Respondent receives click-through fees for redirecting Internet users to these adult-oriented websites.  Therefore, the Panel finds that Respondent’s use of the misleading domain name for commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that, if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

Moreover, the mere fact that the <stuartappleby.com> domain name is identical to Complainant’s mark and redirects Internet users to adult-oriented websites is sufficient evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also National Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques”).

Furthermore, the Panel finds that Respondent registered and used the <stuartappleby.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i) because Respondent advertised in the WHOIS information that the domain name registration was for sale by stating “This Domain is For Sale!”  See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding bad faith where the Respondent registered the domain name for the purpose of selling it, as revealed by the name Respondent chose for the registrant, “If you want this domain name, please contact me”); see also Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where Respondent’s WHOIS registration information contained the words, “This is domain name is for sale”).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <stuartappleby.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: October 28, 2004

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