21st Sep 2012

national arbitration forum

 

DECISION

National Golf Foundation, Inc. v. Mediablue

Claim Number: FA1207001453899

 

PARTIES

Complainant is National Golf Foundation, Inc. (“Complainant”), represented by Judith L. Grubner of Arnstein & Lehr LLP, Illinois, USA. Respondent is Mediablue (“Respondent”), represented by Ari Goldberger of ESQwire.com Law Firm, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ngf.com>, registered with Korea Information Certificate Authority, Inc. d/b/a DomainCA.com.

PANEL

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

Kyung Jik Kwak (Chair)

The Honourable Neil Anthony Brown QC

Carol Stoner, Esq.

as Panelists of the three-member Panel.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 18, 2012; the National Arbitration Forum received payment on July 18, 2012.

On July 22, 2012, Korea Information Certificate Authority, Inc. d/b/a DomainCA.com confirmed by e-mail to the National Arbitration Forum that the <ngf.com> domain name is registered with Korea Information Certificate Authority, Inc. d/b/a DomainCA.com and that Respondent is the current registrant of the name. Korea Information Certificate Authority, Inc. d/b/a DomainCA.com has verified that Respondent is bound by the Korea Information Certificate Authority, Inc. d/b/a DomainCA.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On July 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ngf.com. Also on July 30, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on August 20, 2012.

On August 27, 2012, Additional Submissions by Complainant were received, which were timely.

On September 7, 2012, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Kyung Jik Kwak (Chair), The Honourable Neil Anthony Brown QC and Carol Stoner, Esq. as Panelists for the three-member Panel.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration 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” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification. Due to the receipt of an English language Response, the Panel determines that the remainder of the proceedings may be conducted in English.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <ngf.com> domain name is identical or confusingly similar to Complainant’s NGF mark.

2. Respondent does not have any rights or legitimate interests in the <ngf.com> domain name.

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

B. Respondent

1. Complainant should be barred by the doctrine of laches.

2. Complainant’s mark is identical or confusingly similar to Respondent’s <ngf.com> domain name.

3. Respondent has rights and a legitimate interest in <ngf.com> domain name.

4. Complainant has not demonstrated that <ngf.com> domain name was registered and is being used in bad faith.

C. Additional Submissions by Complainant

1. Respondent has no rights or legitimate interests in NGF.

2. Respondent registered or is using NGF in bad faith.

3. Laches does not apply to this proceeding.

FINDINGS

Complainant is a nonprofit corporation that conducts surveys of members of the golf industry to collect information and prepare various reports based on that information. Complainant is primarily known in the U.S. and holds the registered trademarks NGF (U.S. Reg. Nos. 3,103,138 and 3,500,567). The marks were registered with the Principal Register of the United States Patent and Trademark Office (“USPTO”) on November 8, 2005 and September 16, 2008, respectively.

Respondent registered the <ngf.com> domain name on July 28, 2005. Respondent is in the business of registering common word domain names and combined letter domain names for investment and development. Respondent uses <ngf.com> to host a parking service, which is a pay-per-click website that features hyperlinks to various sites based on keyword advertising inventory and user search behavior.

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.”

Paragraph 4(a) of the Policy requires that Complainant must 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 and/or Confusingly Similar

The Panel finds that Complainant’s trademark registrations with the USPTO (Reg. Nos. 3,103,138 and 3,500,567) are valid proof of Complainant’s rights in the mark NGF under the Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

The Panel also finds that <ngf.com> domain name is identical to Complainant’s NGF mark under Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

While Respondent is not commonly known by the <ngf.com> domain name nor can Respondent claim noncommercial or fair use in this case, “NGF” is a combination of three letters, a common acronym that many different companies use and that has many different meanings. See Respondent’s Exhibit 2. Respondent is in the business of registering common word domain and combined letter domain names for investment and development and <ngf.com> is one of these common word/combined letter domain names that it chose to register for this business. Because <ngf.com> displays hyperlinks that vary based on keyword advertising, inventory and user search behavior, some hyperlinks displayed are related to the golf industry while others are totally unrelated to golf. The hyperlinks displayed on <ngf.com> that are related to the golf industry are not of the type Complainant’s NGF trademarks are registered for, nor for the type of service Complainant provides. Complainant is a private industry and lobby group, and its NGF trademarks are accordingly registered for conducting business research and surveys for the golf industry and for association services, such as promoting the interests of golf enthusiasts, etc. The type of golf-related hyperlinks on <ngf.com> are for golf lessons or related goods and services.

Based on the above, the Panel finds that Respondent is making a bona fide offering of goods or services under Policy ¶ 4(c)(i). See INVESTools Inc. v. KingWeb Inc., FA 598845 (Nat. Arb. Forum Jan. 9, 2006) (holding that the respondent’s use of the disputed domain name to operate a web directory with links to investment-related websites in competition with the complainant constituted a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i)); see also Elec. Arts. Inc. v. Abstract Holdings Int’l LTD, FA 1415905 (Nat. Arb. Forum Jan. 4, 2012) (concluding that the respondent established rights and legitimate interests in the disputed domain name when the respondent did not intend to host competing hyperlinks and quickly removed them once it was notified). It is thus the finding of the Panel that Respondent has rights or legitimate interest in <ngf.com>.

Registration and Use in Bad Faith

Because the Panel found that Respondent has rights or legitimate interests in the <ngf.com> domain name pursuant to Policy ¶ 4(a)(ii), there is no need to further analyze whether the Respondent registered or is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).

However, the Panel found no evidence that Respondent was aware of Complainant’s rights to the NGF mark. Considering that knowledge of Complainant is more or less limited to the U.S., especially more so at the time of registration of the <ngf.com> domain name, knowledge cannot be inferred for Respondent who resides in South Korea. It is thus the conclusion of the Panel that Respondent did not register the <ngf.com> domain name in bad faith under Policy ¶ 4(a)(iii). See It Takes 2 v. C.,J., FA 384923 (Nat. Arb. Forum Feb. 15, 2005) (“[I]n the absence of any evidence of knowledge on the part of Respondent of Complainant, its mark or its services at the time Respondent acquired the domain name, the Panel finds Complainant has failed to establish registration in bad faith.”).

Since the Panel has already found that Respondent has rights or legitimate interest in the <ngf.com> domain name and that there was no bad faith in the registration thereof, there is no need to review the applicability of the doctrine of laches in this case.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <ngf.com> domain name REMAIN WITH Respondent.

Panelists

Kyung Jik Kwak (Chair)

The Honourable Neil Anthony Brown QC

Carol Stoner, Esq.

Dated: September 21, 2012