The Complainant is PGA TOUR, Inc., Ponte Vedra Beach, Florida, United States of America, represented by Akerman Senterfitt, United States of America.
The Respondent is Stu Piddassoh, Valencia, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <tpcvalencia.com> is registered with InnerWise, Inc. d/b/a ItsYourDomain.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2007. On October 29, 2007, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the domain name at issue. On October 29, 2007, InnerWise, Inc. d/b/a ItsYourDomain.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “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 October 31, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2007.
The Center appointed Frank L. Politano as the sole panelist in this matter on November 30, 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 is a world renowned membership organization of professional tournament golfers that sanctions, co-sponsors and promotes certain professional golf tournaments for multiple tours. For many years, Complainant has extensively used the mark “TPC” in connection with providing golf course and golf club facilities, entertainment in the nature of golf tournaments and golf related sporting goods and clothing. The initials “TPC” apparently stand for Tournament Players Club, another mark that Complainant has extensively used. Significantly, Complainant owns an incontestable federal registration of TPC for entertainment services, namely conducting a golf tournament, which has been registered for over a quarter of a century (Reg. No. 1,132,399), an incontestable federal registration of TPC for sporting goods relating to golf, such as golf clubs and golf balls (Reg. No. 1,393,313), and an incontestable federal registration of TPC for men’s and women’s athletic and casual clothing, namely shirts, sweaters, jackets, trousers and headwear (Reg. No. 1,289,142). Complainant also owns other TPC registrations covering golf entertainment services and men’s and women’s casual clothing (Reg. Nos. 2,843,120; 2,821,381). Through many years of use and promotion, the TPC marks have come to be associated solely with Complainant for a wide variety of golf-related goods and services.
For over 25 years, Complainant has used TPC as the prefix for the names of its golf courses. For example, in 1980, Complainant opened its first golf course under the service mark “TPC SawGrass.” It has 23 other courses operating or about to operate under the TPC marks, including a course denominated “TPC Valencia,” which is located in Valencia, California. Given their long and extensive use and Complainant’s iconic reputation for providing high quality services and goods under its own and the TPC marks, the TPC marks, including TPC Valencia, have acquired secondary meaning and identify Complainant as the sole source of goods and services provided under those marks.
Respondent registered the domain name <tpcvalencia.com> and at one time that name resolved to a website that was prominently labeled TPC Valencia. The website featured a picture of a scantily clad young woman dancer and the expression “The Party Center,” the apparent source of Respondent’s use of the TPC initials. The website also featured the expression “Party Hard! Because Golf Is For Pussies”. Complainant’s copyrighted article about its TPC Valencia Club appeared on printed versions of Respondent’s website. Currently, <tpcvalencia.com> resolves to a website entitled “Total Players Camps of Valencia.” It states that it is “The Premier Youth Sports Camps of Valencia” and offers, among other things, golf. The website is listed as still being under construction.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Respondent’s domain name <tpcvalencia.com> is confusingly similar to the TPC marks and the TPC Valencia mark. Complainant notes that incorporating a strong mark in its entirety as the prefix to a geographically descriptive term is sufficient to show that the domain name is identical or confusingly similar to a registered mark. Because the TPC mark is placed in a prominent position, namely at the beginning of <tpcvalencia.com>, and because Complainant is using TPC Valencia, Complainant believes that the <tpcvalencia.com> is confusingly similar to the TPC marks and TPC Valencia.
Complainant also submits that Respondent has no rights or legitimate interests in the domain name <tpcvalencia.com>. It points out that the Respondent has not used TPC Valencia in connection with a bona fide offering of goods and services, that Respondent is not commonly known as TPC Valencia, that Respondent has not made a legitimate noncommercial or fair use of TPC Valencia and that Respondent is in no way licensed, sponsored by or associated with Complainant.
Complainant also alleges that the Respondent has used the domain name <tpcvalencia.com> in bad faith. Complainant points out that Respondent used a bogus and vulgar contact name to register the instant domain name. In Complainant’s view, the Respondent’s former website was in bad taste and casts a damaging imputation upon golfers. Moreover, Complainant alleges the website that once appeared at <tpcvalencia.com> had been coded to hide text, the copyright to which is owned by Complainant and which was used to draw Internet traffic to Respondent’s site. In addition, Complainant points out that a certain version of the website used the uncouth expression “Party hard! Because golf is for pussies”. Complainant submits that all of those factors compel a finding of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the elements the Complainant must prove to obtain a decision in its favor:
(i) That the domain name registered by Respondent is identical or confusingly similar to the marks owned by Complainant; and
(ii) That Respondent has no rights or legitimate interests in respect to the domain name; and
(iii) That the domain name has been registered and used by Respondent in bad faith.
After reviewing the submissions and the facts, this Panel finds as follows.
Complainant has strong rights in the TPC and TPC VALENCIA marks. For 25 years, it has used the TPC mark for entertainment services in the golfing field and for related goods and services. It has 23 courses operating or about to operate under the TPC marks, including a TPC VALENCIA course, and throughout the years has spent millions of dollars to advertise, promote and offer services under its name, trademarks and service marks.
Complainant owns several federal registrations of TPC, including three incontestable ones: TPC for entertainment services, namely conducting a golf tournament (Reg. No. 1,132,399); TPC for men’s and women’s athletic and casual clothing, namely shirts, sweaters, jackets, trousers and headwear (Reg. No. 1,289,142); and TPC for golf sporting goods (Reg. No. 1,393,313). Under the Lanham Act, these registrations serve as conclusive evidence of the validity of the registered marks and their registration, as well as Complainant’s ownership of the marks and exclusive rights to use the marks on the goods and services covered by the registrations.
Complainant has also registered and used the domain name <tpc.com> to provide its services and offer its services and products over the Internet.
The dominant element of the <tpcvalencia.com> domain name is the “TPC” mark. As numerous panels have ruled, “the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark.” Trip.com, Inc. v. Daniel Deamone,
WIPO Case No. D2001-1066 (November 4, 2001); Wal-Mart Stores, Inc. v. MacLeod,WIPO Case No. D2000-0662 (September 19, 2000). Complainant uses a number of marks comprising the TPC mark followed by geographic terms. Potential consumers are thus likely to believe there is some connection between Complainant and Respondent. Respondent’s addition of the geographic designation “Valencia” does not prevent the domain name from being confusingly similar to the TPC marks. Credit Industrial et Commercial S.A. v. Spiral Matrix,
WIPO Case No. D2006-0271 (April 23, 2006). Indeed, the addition of the words “Valencia” to the end of Complainant’s widely known mark actually serves to increase any confusing similarity, particularly given Complainant’s common law rights in TPC VALENCIA. Further, Respondent’s former website, which expressed an attempt to disparage golfers, can only be considered a means to create confusion. Respondent’s current website, which appears to be intended for youthful golf players, is further evidence of the confusion engendered by the Respondent’s domain name.
We thus hold that <tpcvalencia.com> is confusingly similar to Complainant’s TPC marks.
Complainant alleges that Respondent has no rights or legitimate interests in the <tpcvalencia.com> domain name. It is not Respondent’s name and Respondent has never been licensed or permitted to use TPC in any manner. Moreover, the domain name, at least at the time the Complaint was filed, linked users to a website that used uncouth language and aspersed golf players. Respondent has not, and currently does not, use <tpcvalencia.com> in connection with any bona fide offering of goods or services. The current name it uses on its website, Total Players Camps, appears to be contrived solely as an excuse to use the TPC initials. Respondent is not known as TPC Valencia and has made no legitimate use of TPC or TPC VALENCIA. Moreover, given the arbitrary combination of letters in TPC, this Panel is led to the ineluctable conclusion that Respondent has no rights in using TPC in <tpcvalencia.com>. The Complainant alleges, and this Panel agrees, that the Respondent has registered the domain name to bait Internet users to Respondent’s website for financial gain. Such use cannot be considered bona fide within the meaning of paragraph 4(c)(i) of the Policy. The Sutton Corporation v. Spiral Matrix,WIPO Case No. D2006-0167 (March 29, 2006).
Respondent has not responded to these allegations and they will thus be accepted as true for purposes of this decision. Pavilion Agency, Inc., Cliff Greenhouse and KeithGreenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,
WIPO Case No. D2000-1221 (December 4, 2000).
Given the Complainant’s many United States’ registrations, Respondent is charged with constructive notice of Complainant’s broad rights in TPC (cf. 15 U.S.C. �1072). Moreover, the use of Complainant’s copyrighted materials on the “www.tpcvalencia.com” website to stimulate Internet traffic to Respondent’s website is compelling evidence of knowledge of Complainant’s marks and resultant bad faith use. Intentional diversion of consumers to a website that harms the goodwill represented by a mark for commercial gain or to tarnish or disparage a mark constitutes bad faith under the Anticybersquatting Consumer Protection Act, 15 U.S.C. �1125(d)(1)(B)(i)(V).
Respondent provided false and misleading contact information by using a false name to obtain the subject registration. This is further indication of bad faith. Lincoln PropertyCo. v. LPC,
WIPO Case No. D2001-0238 (April 11, 2001). Salomon Smith Barney,Inc. v. Salomon Internet Services,
WIPO Case No. D2000-0668 (September 4, 2000). Such provision of false contact information also constitutes bad faith as defined by the Anticybersquatting Consumer Protection Act, 15 U.S.C. �1125(d)(1)(B)(i)(VII).
In light of the above discussion, the Panel finds that the domain name was registered and is being used in bad faith within the meaning of paragraph 4(b) of the Policy.
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 <tpcvalencia.com> be transferred to the Complainant.
Frank L. Politano Sole Panelist
Dated: December 13, 2007
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