The Professional Golfers Association of America v. RW Smith
Case No. D2007-1321
1. The Parties
Complainant is The Professional Golfers Association of America, United States of America, represented by Arnold & Porter, United States of America.
Respondent is RW Smith, of Omaha, Nebraska, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <pga2012.com>, is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on September 4, 2007. On September 10, 2007, the Center transmitted by email to GoDaddy a request for registrar verification in connection with the domain name at issue. On September 10, 2007, GoDaddy transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant, providing contact information for the registrant and administrative and technical contacts, and confirming various details of the registration agreement. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2007. The Respondent submitted a response on October 3, 2007.
The Center appointed Debra J. Stanek as the sole panelist in this matter on October 24, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant owns several United States federal trademark registrations for the mark: PGA in connection with golf activities, golf tournaments, and related items. Complainant provides information and news about golf on its “www.pga.com” website and has registered numerous domain names that include the PGA mark, including <pga2007.com>, <pga2008.com>, <pga2009.com>, and <pga2010.com>, each of which resolve to its primary website.
The disputed domain name was registered on August 25, 2003. The website offers links to other websites, all of which are related to golfing and golf products.
5. Parties’ Contentions
A. Complainant
Complainant makes the following contentions.
Complainant has made extensive use of its PGA mark in connection with golf, golf equipment, golf tournaments, apparel, and related products and services for many years. It owns several federal trademark registrations for the mark PGA (registered in 1953) as well as one for the mark: PGA.COM (registered in 2004). It has registered a number of domain names that consist of the PGA mark combined with another term, such as “golf”, “courses”, “online”, and “championship”, as well as a series of domain names that include a four-digit number (not alleged by Complainant, but understood by the Panel, to refer to a calendar year), including “<pga2007.com>, <pga2008.com>, <pga2009.com>, and <pga2010.com>, each of which resolve to its “www.pga.com” website.
The disputed domain name is confusingly similar to Complainant’s PGA mark because it incorporates it in its entirety and merely adds numbers. Moreover, the additional numbers are similar to those in Complainant’s existing domain name registrations.
Respondent has no legitimate rights or interests in the disputed domain name.
Complainant has not authorized or licensed Respondent’s use and does not believe that Respondent has ever been known by the domain name. The website associated with the disputed domain name is a directory that offers advertising links related to golf and does not shed any light on why “pga2012” is used for the domain name.
Complainant does not believe that Respondent makes any other use of the domain name and therefore asserts that such use in connection with paid advertising links related to golf cannot be a bona fide offering of goods or services under the Policy.
Respondent has registered and is using the disputed domain name in bad faith.
Complainant asserts that, due to its fame in the United States and worldwide, Respondent had to have known of it and its marks at the time it registered the domain name. Further, Complainant’s rights would have been obvious through basic Internet searches or a search of the United States Patent and Trademark Office’s online database. In any case, Respondent had constructive notice of Complainant’s mark.
Respondent’s knowledge of Complainant’s mark is further demonstrated by the fact that the website is “dominated” by links to golf-related activities, services, and products. Thus, it appears that Respondent registered the domain name to profit from visitors intending to visit Complainant’s websites, at a minimum, by creating “initial interest confusion.”
When Complainant objected to Respondent’s registration and use of the domain names in a letter dated July 23, 2007, Respondent denied any wrongdoing, but proposed to sell the domain name to Complainant or to transfer it in exchange for tickets to the PGA Championship. Because those tickets range in cost from $350-700 each, that constitutes an offer to sell for more than Respondent’s “out of pocket costs” and demonstrates bad faith.
B. Respondent
Respondent makes the following contentions.
Respondent concedes that Complainant owns and has right in the mark PGA. However, Respondent argues that Complainant is not entitled to every domain name – regardless of whether it has a connection to the sport of golf – that includes the consecutive letters “p”, “g”, and “a”.
Respondent has rights and legitimate interests in the disputed domain name. Respondent obtained the <pga2012.com> domain name in 2003. Respondent, who is in the business of importing natural sapphires from Sri Lanka into the United States, intends to use the disputed domain name in conjunction with The Professional Gemological Association, which has two major conventions each year. Respondent asserts that the “Professional Gemological Association is an organization that will bring a 24/7, 365 day Internet convention to those in the gem and jewelry business. There will be tremendous efficiencies brought to the marketplace when the worlds gem traders and jewelers are able to easily make contact rather than wait for a bi-annual convention.”
Respondent has not registered and is not using the domain name in bad faith. Respondent offered the <pga2012.com> domain name for sale in an email message to many different entities “that included commercial, social, pharmaceutical, educational as well as golf interests” because Respondent is selling his interest in his sapphire import business.
Complainant learned of Respondent’s registration as a result of his email message. Respondent contends that it is unreasonable for the PGA to contest his registration in light of the fact that the domain name was obtained in 2003.
Respondent has not received any revenue from paid advertising links generated by the website. Pursuant to the registration agreement for the site, the registrar, GoDaddy may advertise on the site, which is currently “parked.”
Respondent acknowledges that it offered to transfer the domain name for tickets to the PGA Championship, believing that to be a reasonable exchange in light of the time and resources involved in a UDRP proceeding. However, Respondent also voluntarily offered to ensure that in the absence of any agreement with Complainant, Respondent would ensure that the domain name would not be used in connection with golf.
Because the site has not been developed, there can be no misdirected Internet traffic. Nor can there be “initial interest confusion” when a Google search for “pga2012” reveals seven responses, none of which are related to golf.
Finally, Respondent points out other entities that use an acronym similar to “PGA”: Plant Growers of Australia (“www.pga.com.au”), Parliamentarians for Global Action (“www.pgaction.org”), Pastoralists and Graiziers Association of Western Australia (“www.pgaofwa.org.au”), Professional Gemological Association (“www.professionalgemologicalassociation.com”), and others.
The domain name <pga2012.com> is a nondescript domain address. A reasonable person could not conclude pga2012 was in any way associated with Complainant. Complainant seems to be asserting rights in all domain names that include PGA plus a year in an annual progression to infinity, even for example, <pga54321.com>.
6. Discussion and Findings
In order to prevail, Complainant must prove:
(i) The <pga2012.com> domain name is identical or confusingly similar to Complainant’s mark; and
(ii) Respondent has no rights or legitimate interests in respect of the <pga2012.com> domain name; and
(iii) The <pga2012.com> domain name has been registered and is being used in bad faith.
Policy, Paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondents’ bad faith registration and use, see Policy, paragraph 4(b).
A. Identical or Confusingly Similar
Complainant must establish that the disputed domain name is either identical or confusingly similar to its mark. Complainant has established its rights in the PGA mark by providing evidence of its United States federal trademark registrations. Complainant has also provided a evidence of its “www.pga.com” website that shows its use of the marks.
While the disputed domain name is not identical to that mark, it does include Complainant’s PGA mark in its entirety followed by the four-digit number “2012”, which the Panel finds Internet users are likely to understand as a reference to the year 2012. The addition of these numbers to Complainant’s mark simply reinforces the trademark function of the PGA portion of the disputed domain name. In considering identity, the “.com” top-level domain is not relevant.
Accordingly, the Panel finds that Respondent’s domain name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the <pga2012.com> domain name by making a primafacie showing that the examples in paragraph 4(c) of the Policy do not apply to Respondent. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that Complainant has made a prima facie showing and that Respondent has not met its burden of showing any rights or legitimate interests in the domain name.
Respondent contends that he has made no substantive use of the disputed domain name since he obtained it in 2003. He indicates that he “intends” to use it in connection with the Professional Gemological Association. However, Respondent has provided no evidence of any demonstrable preparations to use the domain name. Further, Respondent provides no evidence that he is a member of the Professional Gemological Association or that he has any authority to act on its behalf in connection with the domain name. Respondent’s assertions regarding his activities in the gem and jewelry industry, which includes the Professional Gemological Association, do not give Respondent any rights or interests in the acronym “PGA”.
There is no evidence that Respondent is or has been commonly known by the domain name.
There is no evidence that Respondent is making a legitimate noncommercial or fair use of the domain name. Currently, the domain name is being “parked” by the registrar. Typically, parking services generate “click through” revenue when Internet users click on the links on the displayed page. Some parking services provide domain name registrants with some of that revenue; Respondent denies having received any compensation from any advertising on the website. Even if Respondent has not received revenue from the arrangement, such use is neither non-commercial nor “fair” and does not give Respondent any rights or legitimate interests in the domain name.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the <pga2012.com> domain name.
C. Registered and Used in Bad Faith
Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b)(i)-(iv):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, see Policy, paragraph 4(b)(i).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, see Policy, paragraph 4(b)(ii).
(3) Registering the domain name primarily to disrupt the business of a competitor, see Policy, paragraph 4(b)(iii).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement, see Policy, paragraph 4(b)(iv).
Complainant suggests that Respondent’s conduct falls within paragraph 4(b)(i) because he recently proposed to trade the domain name for tickets to the PGA Championship, the cost of which exceed Respondent’s out-of-pocket costs associated with the domain name. The Panel appreciates that the parties’ recent exchange does not shed light on Respondent’s motive when the domain name was registered in 2003. However, the Panel does not find Respondent’s explanation of his intentions regarding the domain name, none of which are supported by any documentary evidence, to be credible. As noted above, the fact that Respondent claims to to be a member of the industry with which the Professional Gemological Association is associateddoes not give him any rights or interests in the acronym of that organization. Thus, the Panel does not credit Respondent’s claim that he obtained the domain name in 2003 for use in connection with that association, but never used it, and then decided to sell it by offering it to a variety of “commercial, social, pharmaceutical, educational [and] golf interests,” including Complainant.
Complainant also argues that Respondent’s conduct falls within paragraph 4(b)(iv). As noted above, the disputed domain name is confusingly similar to Complainant’s PGA mark. It is therefore reasonable to conclude that Respondent’s site would attract visitors who are actually seeking Complainant’s site. Moreover, it is relevant that Complainant’s rights in the PGA marks long predate Respondent’s registration and use of the domain name and the PGA marks are extremely well-known, particularly in the United States where Respondent is located. Under these circumstances, it is not unreasonable to impute to Respondent awareness of Complainant’s rights and that the domain name is intended to, and does, attract visitors who are actually seeking Complainant. Whether Respondent was seeking commercial gain from these activities is less clear.
In any case, the circumstances set out in Paragraph 4(b) of the Policy are not exhaustive. Under these circumstances, the Panel finds that Complainant has established that Respondent has registered and used the domain name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <pga2012.com> be transferred to Complainant.
Debra J. Stanek Sole Panelist
Dated: November 7, 2007
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