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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Professional Golfers' Association of America v. Geoff Watson

Case No. D2000-1779

 

1. The Parties

The Complainant is The Professional Golfers' Association of America, a not-for-profit organization, incorporated under the laws of Florida with its principal place of business located at 100 Avenue of the Champions, Palm Beach Gardens, Florida 33410, USA.

Represented by Arnold & Porter.

The Respondent is Geoff Watson of 34 Woodside Road, Bowenend, Bristol VS16 2SL, United Kingdom.

Respondent is not represented.

 

2. The Domain Name and Registrar

The domain name with which this dispute is concerned is: <ryder-cup.org>.

The Registrar with which the domain name is registered is Easyspace Limited, of 32 St. Leonard's Terrace, London, SW3 4QG, United Kingdom. The record was created on July 11, 2000.

 

3. Procedural History

3.1 The Complaint was first submitted electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on December 21 and December 27, 2000 respectively.

3.2 On January 4, 2001 the Registrar verified that:

(i) that the domain name is registered with it;

(ii) that the current registrant of the domain name is the Respondent;

(iii) that the current status of the domain name is "locked" and no active services are associated with it.

(iv) Respondent's Administrative Contact and Billing Contact is Mr Geoff Watson.

(v) The Technical Contact is Easyspace Hostmaster

3.3 On January 4, 2001, all formal requirements for the establishment of the Complaint were checked by the WIPO Center and found to be in compliance with the applicable ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and WIPO Supplemental Rules. The Panel has checked the file and confirms the WIPO Center's finding of proper compliance with the Rules and establishment of the Complaint.

3.4 On January 5, 2001, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding as follows.

(i) by courier, facsimile and by e-mail to Respondent, the Administrative Contact, the Billing Contact and the Technical Contact;

(ii) by e-mail to the postmaster at the domain name.

3.4.1 The record shows that:

(i) the Center has satisfied the provisions of each of paragraphs (i)(A), (B), (ii)(A), (ii)(B) and (iii) of the Rule 2(a);

(ii) the domain name did not resolve to an active web-site;

(iii) Respondent has not notified any preferred address to WIPO Center;

(iv) A Response has been filed.

3.4.2 The Panel therefore finds that the obligation imposed on the Center with respect to Notification of the Complaint and the Commencement of the Administrative Proceeding has been satisfied, and that there has been actual service on Respondent.

3.5 The Administrative Proceeding commenced on January 5, 2001 and the Response was timely filed on January 23, 2001 by e-mail. No hardcopy of the Response was filed.

3.6 Panelist D.J. Ryan, having filed the Statement of Acceptance and Declaration of Impartiality and Independence, was appointed as sole panelist on

February 6, 2001.

3.7 The Panel therefore proceeds to its determination in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the applicable rules and principles of law on the basis of the Complaint and the Response.

 

4. Factual Background

4.1 Complainant is The Professional Golfers' Association of America, a not-for-profit organization.

4.2 Complainant is the registered owner of the following United States trade mark registrations.

No. 1,658,555 "Ryder Cup" filed August 22, 1990, registered

September 24, 1991 in Class 41 in respect of "organizing and conducting golf tournaments in the United States between British and American professional golfers";

No. 1,694,491 "Ryder Cup" filed July 16, 1990, registered June 16, 1992 in Class 28 in respect of "sporting equipment; namely golf clubs".

Complainant claims use of the mark since 1927.

4.3 Complainant is the registrant of domain name <ryder-cup.com>.

4.4 Complainant is a U.S. corporation and is an organization of professional golfers whose members promote the game of golf and provide a range of services relating to golf. In particular, Complainant has for many years used the name "Ryder Cup" as a trade or service mark in connection with an international golf tournament of that name. It is asserted by Complainant, and is a matter of common knowledge, that the Ryder Cup competition is one of the world's most widely known and promoted golf tournaments. In addition to the promotional and other services it provides under the "Ryder Cup" mark, Complainant also markets a range of golf related goods and services and licenses others to use the mark in relation to golf related goods. Complainant derives substantial revenue from these activities.

4.5 Respondent is an individual resident in the United Kingdom.

4.6 Complainant has not authorized Respondent to register or use the trade mark or domain name.

4.7 On August 4, 2000, Complainant's attorneys wrote to Respondent asserting violation of Complainant's rights in the trade mark "Ryder Cup" and demanding transfer to it of the domain name.

4.8 By his reply of August 25, 2000, Respondent denied infringement of Complainant's rights and asserted that he was only interested in establishing a "fansite" for golf fans. Respondent stated that he had spent time, money and thought in registering the domain name but he would be willing to relinquish the name for a reasonable consideration.

4.9 On September 19, 2000, Complainant's attorney wrote to Respondent advising him that sometimes trade mark owners were prepared to meet out-of-pocket expenses and Complainant may be prepared to pay a nominal amount for transfer of the domain name and asking him to advise what he would deem to be reasonable consideration. Respondent replied on September 27, 2000, quoting a price of $2,000.

4.10 On November 9, 2000, in response to an e-mail reminder from Respondent, Complainant's attorneys advised Complainant was not prepared to pay $2,000, and called for unconditional transfer of the domain name. On November 10, 2000, Respondent replied suggesting further negotiation to reach a compromise solution.

4.11 Complainant did not negotiate further and filed the Complaint on

December 21, 2000.

 

5. Applicable Dispute

5.1 The dispute is one to which the Policy applies. By registering the domain name Respondent accepts the dispute resolution policy adopted by the Registrar. Registrar's current policy set out in its domain name registration agreement is the Policy.

5.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:

(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in the domain name;

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

 

6. Parties Contentions

A. Complainant

6.1 Complainant contends that the domain name is identical or confusingly similar to a trade mark in which it has rights

6.1.1 Complainant contends that Respondent has infringed Complainant's service mark and committed several substantive violations of the U.S. Lanham Act.

6.1.2 Complainant further contends that the domain name is identical to its trade mark and that its use and registration is highly likely to cause confusion as to the source or sponsorship of Respondent's site and lead to an assumption of association with Complainant's goods or services offered under its Ryder Cup trade mark.

6.1.3 Complainant further contends that Respondent has engaged in unfair competition and that Respondent's use and registration of the domain name violates the U.S. Federal Trademark Dilution Act and cites a number of U.S. Federal Court and District Court decisions in support of this contention.

6.2 Complainant contends that Respondent has no rights or legitimate interests in the domain name.

6.2.1 Complainant contends that Respondent has no right in trade marks for Ryder Cup, and could not do so in view of Complainant's rights and registrations, and has not been licensed or authorized by Complainant or its European counterpart.

6.2.2 Complainant further contends that Respondent is not making a legitimate non-commercial use of the domain name. Complainant cites Telstra Corporation Ltd. v. Nuclear Marshmallows, - WIPO Case No. D2000-0003 in support of its contention that its trade mark is distinctive and not one which traders would legitimately choose "unless seeking to create an impression of an association with the Complainant". Complainant contends that Respondent's deliberately chose the name in an attempt to trade on the goodwill of Complainant and to thus divert users to his site. Complainant cites Respondent's letter of September 27, 2000, (Complaint Annex 8) as evidence that Respondents ought to obtain commercial gain.

6.3 Complainant contends that Respondent registered and is using the domain name in bad faith.

6.3.1 Complainant contends that adoption by Respondent, who is not licensed by, or in any way affiliated with Complainant, of Complainant's well known trade mark is itself evidence of bad faith. Complainant cites in support the Telstra Case referred to above.

6.3.2 Complainant points to Respondent's offer to sell the domain name to Complainant for $2,000 as evidence of bad faith and cites several panel decisions in support.

B. Respondent

6.4 Respondent, by letter dated January 22, 2001 to the Center contends:

(i) He had no intention of "blackmailing" Complainant. His intention was to set up a web site for fans of golf;

(ii) It was reasonable for him to believe that no-one else, including Complainant, had an interest in the name "as no-one had taken the trouble to register it".

(iii) Other similar domain names are owned by persons other than Complainant, citing <ryder-cup.net> and <ryder-cup.co.uk>.

(iv) There is no hyphen in Complainant's trade mark.

(v) His request for $2,000 for transfer of the name was made in the light of Complainant's offer of out-of-pocket expenses which he took to mean "something over and above the cost of the name itself".

(vi) That if an order for transfer of the name is made he seeks an award of $200 for out-of-pocket expenses.

6.5 In addition to the above submissions Respondent criticised the conduct of Complainant and its attorneys in relation to the matter.

 

7. The Panel's Findings

Identical or Confusingly Similar Trade Marks

7.1 Complainant has clearly established rights in the trade mark "Ryder Cup". The mark is distinctive and well and widely known. Complainant has established rights not only through extensive use but also through registration in the United States. The fact that the domain name includes a hyphen between "Ryder" and "Cup" does not serve to distinguish the domain name from the trade mark.

Respondent's Rights or Legitimate Interests

7.2 Complainant has made a prima facie showing of absence of legitimate right or interest on the part of Respondent on the basis of its well established and extensive rights in the trade mark Ryder Cup. As further explained below, in the face of such showing the burden shifts to Respondent to rebut Complainant's contention.

Given the notoriety of Complainant's trade mark Respondent faces a difficult taskin establishing any rights or legitimate interests in the domain name in any field relating to sport and golf in particular. Respondent's assertion that he registered it for the purpose of establishing a golf fans web site is unsupported by any evidence of activity or preparations for this. Respondent has not attempted to establish rights or interests by reference to paragraph 4(c)(i) or 4(c)(ii) of the Policy. Respondent's letter of September 27, 2000 indicates that Respondent was motivated by commercial gain and the inevitable consequence of the establishment of a web site under the domain name would be to direct to that web site, consumers seeking to contact Complainant. Complainant has not authorized Respondent's use of the domain name and no other basis for the establishment of legitimate rights or interest is apparent, see ISL Marketing AG and FIFA v. JY Chung and others- WIPO Case No. D2000-0034.

The Panel therefore finds that Respondent has failed to rebut Complainant's prima facie showing that Respondent has no rights or legitimate interests in the domain name.

Bad Faith Use and Registration

7.3 As with all of the requirements of paragraphs 4(a) of the Policy the primary onus of proof in establishing bad faith registration and use rests with Complainant. However, as has been pointed out in a number of cases, the establishment of this ground, strictly construed, would require an enquiry as to the subjective state of mind of the respondent. The burden is therefore a shifting one. The Complainant having presented a prima facie showing, the burden shifts to the respondent – see for example Hoblaw v. Carlow Borbosa – AFO163; Dow Jones v. Hephzabah Intro-Net Project Ltd – WIPO Case No. D2000-0704.

Complainant's evidence and the mere fact of the registration makes it clear that Respondent, when adopting the domain name, must have been aware of the reputation attaching to Complainant's trade mark. Respondent's letter of September 27, 2000, (Complaint Annex 8) makes it clear that Respondent was motivated by the prospect of commercial gain and Respondent's demand, in that letter, for $2,000 strongly suggests that Respondent contemplated selling the domain name to Complainant or another, such as a competitor, for valuable consideration substantially in excess of his documented out-of-pocket expenses (Policy para. 4(b)(i)). In the alternative, the use of Complainant's trade mark as the domain name indicates an intention to attract Internet users to Respondent's site by creating a likelihood of confusion with Complainant's mark (Policy para. 4(b)(iv)). The fact that Respondent has not yet actually activated its web site does not negative a finding of bad faith use. Respondent has used the domain name in his attempt to negotiate payment from Complainant. Complainant's "passive holding" of a domain name based on the well-known and distinctive trade mark of a third party is further evidence of bad faith – see Telstra Case supra.

The Panel therefore finds that Complainant has established a prima facie showing of bad faith use and registration.

Respondent has failed to rebut Complainant's prima facie showing. His submission that he was "reasonable in believing that no one else had an interest in the name, as no one had taken the trouble to register it" is clearly untenable. By definition Respondent, to obtain registration, must have beaten others to the gun. The mere fact that a domain name is available does not excuse its appropriation by another in bad faith in the absence of legitimate right or interest.

Respondent's reference to other sites containing the words "Ryder" and "Cup" does not assist. The Panel has no information as to what relationship if any, exists between Complainant or its European counterpart and those names, or whether Complainant is taking any action with respect to them. This proceeding is concerned with Respondent's domain name and not others.

It is also to be noted that by Clause 11.1 of its contract with the Registrar, Respondent as "The Customer":

"confirms and warrants that it is the owner of, or that the Customer has been and is duly authorized by the owner to use, any trade mark or name requested or allocated as its Name".

It cannot be seen how Respondent could, in good faith, give this warranty in the face of his clear knowledge of Complainant's trade mark and its notoriety, at least in golfing circles, in England.

The Panel therefore finds that Respondent has failed to rebut Complainant's prima facie showing of bad faith registration and use.

The Panel further states, for the record, that it finds nothing to support Respondent's allegations of arrogance or improper conduct by Complainant or its attorneys. The Panel would not, even if it were in its power to do so, recommend payment of any compensation to Respondent.

 

8. Decision

The Panel decides and orders that:

(i) The domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights.

(ii) Respondent has no rights or legitimate interests in respect of the domain name.

(iii) The domain name has been registered and is being used in bad faith.

(iv) The domain name should be transferred to Complainant.

 

 

D.J. Ryan
Sole Panelist

Dated: March 8, 2001