WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Professional Golfers' Association of America v. Domainanalyst.Com, I.G. Communication Inc., and Youngchul Chang
Case No. D2000-1469
1. The Parties
1.1 The Complainant is The Professional Golfers’ Association of America (the "PGA of America"), an international sports 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. The Complainant’s authorized representatives in this proceeding are Roberta L. Horton and Sherrese M. Smith, of Arnold & Porter, 555 Twelfth Street, N.W., Washington, D.C. 20004, USA.
1.2 The Respondents are as follows:
For the Domain Names "pgaweb.com" and "pgainfo.com": Registrant, DomainAnalyst.com (Domain For Sale!!!!), 27 Pungsan-dong, Hanam, Kyunggi-do, 465-170 KR (Korea). Administrative and Billing Contact, YoungChul Chang, 27 Pungsan-dong, Hanam, Kyunggi-do, 465-170 KR.
For the Domain Names "pgaopen.org" and "pgaopen.net": Registrant, IG (Domain For Sale!!!!!), 27 Pungsan-dong, Hanam, Kyunggi-do, 465-170 KR. Administrative and Billing Contact, YoungChul Chang, 27 Pungsan-dong, Hanam, Kyunggi-do, 465-170 KR.
1.3 The Respondents will be referred to individually and collectively as the Respondent.
2. The Domain Names and Registrar
2.1 The Domain Names subject to this Complaint are: "pgaweb.com"; "pgainfo.com"; "pgaopen.org"; and "pgaopen.net"; they may be referred to in this Decision as the "disputed PGA Domain Names".
2.2 The Registrar of the Domain Names is Network Solutions, Inc., (NSI), 505 Huntmar Park Drive, Herndon, Virginia, 20170, USA.
3. Procedural History
3.1. The Complaint in respect of eight Domain Names was received by the World Intellectual Property Organization Arbitration and Mediation Center (WIPO Center) by email on October 27, 2000, and in hard copy on October 30, 2000. A copy of the Complaint was sent by the Complainant to the Respondent by fax and mail on October 27, 2000, and to the Registrars NSI and BulkRegister by fax on October 27, 2000.
3.2. The Amended Complaint (referred to below as the Complaint) in respect of four Domain Names was received by WIPO Center in hard copy on November 17, 2000, and by email on November 20, 2000. A copy of the Complaint was sent by the Complainant to the Respondent by fax and mail on November 15, 2000, and to the Registrar NSI by fax on November 15, 2000.
3.3. On November 13, 2000, verification was received from the Registrar NSI that the disputed PGA Domain Names are registered by that Registrar in the names, administrative and billing contacts listed under Paragraph 1.2 above and that all are in active status. The Registrar stated that Network Solutions’ 5.0 Service Agreement is in effect.
3.4. On November 21, 2000, WIPO Center determined (and the Administrative Panel has subsequently accepted) that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (Uniform Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (Uniform Rules) and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules) all as approved by the Internet Corporation for Assigned Names and Numbers (ICANN).
3.5. The Formal Notification of Complaint and Commencement of Administrative Proceeding was sent by WIPO Center to the Respondent on November 21, 2000, by courier and to various email addresses of the Respondent and attempts were made to send it by fax. The deadline for the receipt of a Response was set as December 10, 2000. The Formal Notification was copied to the Complainant by email and to ICANN and to the Registrar, NSI.
3.6. On December 13, 2000, Notification of Response Default was sent by WIPO Center to the Respondent by courier and email.
3.7. On December 20, 2000, Dr Clive Trotman, having provided the WIPO Center with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and notification was sent by email to the Complainant, the Respondent and the Administrative Panel. An electronic copy of the Complaint was emailed to the Administrative Panel on December 20, 2000, and the hardcopy of the Case File was sent by courier.
4. Factual Background
4.1. The Complainant is the Professional Golfers' Association of America. The Complainant is commonly known world-wide as the PGA of America or the PGA. The initials PGA are widely recognized as designating golfing tournaments, activities, promotional materials and merchandise having a legitimate connection with the PGA of America.
4.2. The PGA of America has made extensive use of PGA marks for more than 70 years. The PGA of America owns numerous federal registrations with the United States Patent and Trademark Office for marks incorporating the initials PGA, including "PGA" (Reg. No. 578,653); "PGA" and "Professional Golfers’ Association of America" with the distinctive PGA of America medallion logo (Reg. No. 1,705,683); "PGA International Golf Show" (Reg. No. 2,238,786); "PGA Merchandise Show" (Reg. No. 2,238,784); "PGA National" and Design (Reg. No. 1,741,394); "The Academy of Golf at PGA National" (Reg. No. 2,277,521); and "PGA Championship" (Reg. No. 1,661,168); these being for use in connection with the PGA of America's professional organization services, sporting goods and apparel, on-line sales and trade show exhibits of golf-related products, and organizing and conducting golf tournaments.
4.3. The PGA of America licenses its PGA marks to certain other parties for use in connection with golf and golf-related goods and services and thereby receives royalties in excess of one million US dollars annually.
4.4. The disputed PGA Domain Names "pgaweb.com" and "pgainfo.com" were registered on or before May 24, 2000, and "pgaopen.org"; and "pgaopen.net" were registered on or before April 6, 2000, being the dates of records created by NSI.
4.5. The facts stated in Paragraphs 4.1-4.4 above are supported by documents submitted as Annexes to the Complaint.
5. Parties’ Contentions
A. Contentions of Complainant
5.1. The contentions of the Complainant include (paragraphs 5.2-5.8 below) that:
5.2. The Administrative Panel has jurisdiction to hear in a single Mandatory Administrative Proceeding the Complaint in respect of the four PGA Domain Names cited. The dispute is properly within the scope of the Uniform Policy. The registration agreements, pursuant to which the Domain Names being the subject of this Complaint were registered, incorporate the Uniform Policy.
5.3. The disputed PGA Domain Names are confusingly similar to the trade, service or other marks (trademarks) in which the Complainant has clearly established and long held exclusive rights.
5.4. The Respondent has no rights or legitimate interest in the disputed PGA Domain Names.
5.5. The disputed PGA Domain Names were registered by the Respondent primarily for the purpose of selling them to the Complainant or to other parties at a profit. The Respondent has attempted to sell the disputed PGA Domain Names. The Respondent has engaged in a pattern of registering and offering for sale domain names containing the trademarks of others.
5.6. The Respondent’s registration and use of the disputed PGA Domain Names is in bad faith. A person searching the Internet for a bona fide PGA of America site could well try combinations of the initials PGA with other terms, such as PGAopen, and with common Internet directory terms such as ".com". The searcher could be misled to a site not authorized by the PGA of America.
5.7. The Complainant attempted to resolve the dispute amicably by writing to the Respondent by mail, email and fax on June 1, 2000, and October 13, 2000, stating the Complainant's position. No reply was received.
5.8. The Complainant requests that the disputed PGA Domain Names be transferred to the Complainant.
B. Contentions of Respondent
5.9. The Respondent has not submitted any Response.
6. Discussion and Findings
Jurisdiction of Administrative Panel
6.1. The registration agreement between the Registrar and the Respondent, at Section 8 Domain Name Dispute Policy, states:
"If you reserved or registered a domain name through us, you agree to be bound by our current domain name dispute policy that is incorporated herein and made a part of this Agreement by reference."
Paragraph 4 (a) of the Uniform Policy states:
"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
6.2. The Complainant has made the relevant assertions as in 6.1 above, therefore this dispute is properly within the scope of the Domain Name Dispute Policy and the Administrative Panel has jurisdiction to decide the dispute.
6.3. Paragraph 3 (c) of the Uniform Rules states:
"The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder."
6.4. The Complainant has provided convincing evidence to the effect that the controlling mind behind the registration of all four disputed PGA Domain Names is the same YoungChul Chang. The Administrative Panel decides that it is appropriate to proceed in a single administration proceeding (Yahoo! Inc. and GeoCities v. Cupcakes, Cupcake City, Cupcake Confidential, Cupcake-Party, Cupcake Parade and John Zuccarini, WIPO Domain Name Case. No. D2000-0777).
Whether the Domain Name is Identical or Confusingly Similar to a Trademark
6.5. The Domain Names that are the subject of the Complaint are "pgaweb.com"; "pgainfo.com"; "pgaopen.org"; and "pgaopen.net". Each of these contains the letters PGA that are identical to the element PGA of trademarks held by the Complainant. That fact in itself does not suffice to make the disputed Domain Names confusingly similar to a trademark since any acronym could be represented coincidentally in another word (for example the word stopgap contains ...pga...). The question to be decided is whether each of the Domain Names complained about creates confusing similarity on the facts of the present case. The Administrative Panel has taken into account among other matters the long existence and wide recognition of the acronym PGA, the prominence of the letters PGA in the disputed PGA Domain Names, the similarity of those Domain Names to the PGA of America's own Domain Name "pga.com", and in two relevant Domain Names the use together of the terms PGA with OPEN. The Administrative Panel finds all four disputed PGA Domain Names to be confusingly similar to the trademark of the PGA of America; in the case of "pgaopen.org" and "pgaopen.net" blatantly so, in the case of "pgainfo.com" unquestionably so, and in the case of "pgaweb.com" convincingly so. The Complainant succeeds under element 4 (a) (i) of the Uniform Policy.
Whether Respondent Has Rights or Legitimate Interests in Respect of the Domain Names
6.6. The Complainant has submitted that the Respondent does not have any rights or legitimate interest in the disputed PGA Domain Names since the PGA of America holds such rights exclusively and has not licensed them to the Respondent. It is for the Respondent to refute this submission by establishing any applicable rights or legitimate interest in the Domain Names, in particular but without limitation under Paragraph 4 (c) (i) or (ii) or (iii) of the Uniform Policy. The Respondent has made no such submission and has not refuted the Complaint.
6.7. Specifically, in respect of Paragraph 4 (c) (i) of the Uniform Policy, there is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services.
6.8. In respect of Paragraph 4 (c) (ii) of the Uniform Policy there is no evidence that the Respondent as an individual or business has been commonly known by any of the Domain Names.
6.9. In respect of Paragraph 4 (c) (iii) of the Uniform Policy there is no evidence that the Respondent is making a legitimate non-commercial or fair use of the Domain Names.
6.10. Having regard to the conclusions reached in 6.7, 6.8 and 6.9 above and recognizing that the circumstances listed under Uniform Policy Paragraph 4 (c) are without limitation, the Panel finds that the Respondent does not have any rights or legitimate interest in the Domain Names. The Complainant therefore succeeds under Paragraph 4 (a) (ii) of the Uniform Policy.
Whether Domain Name Has Been Registered and Is Being Used in Bad Faith
6.11. The Complainant has provided evidence that the Respondent attempted to sell the disputed PGA Domain Names to Robert Dennis Enriquez, President of Ace Golf Cars. Although no price was given in the evidence, the Administrative Panel infers from the evidence as to the nature of the Respondent's activities that a profitable sale was the Respondent's primary intention in the terms of Paragraph 4 (b) (i) of the Uniform Policy.
6.12. A communication given in evidence that had been sent on May 26, 2000, from the Respondent to the President of Ace Golf Cars offered for sale not only a total of eight Domain Names containing the acronym PGA (including the four disputed PGA Domain Names the subject of the present Complaint) but also sixteen Domain Names each incorporating the letters LPGA, being the acronym for the Ladies Professional Golf Association (for example "lpgaopen.com"). The evidence is clear that the Respondent has engaged in a pattern of conduct of registering a domain name in order to prevent the owner of a trademark from using it in the same way, in the terms of Paragraph 4 (b) (ii) of the Uniform Policy.
6.13. There can be no other reasonable interpretation of the Respondent's activities than a primary intention to divert Internet users to sites having the disputed PGA Domain Names through confusion with the genuine PGA of America for purposes of commercial gain, which would disrupt the business of the Complainant (Uniform Policy Paragraphs 4 (b) (iii) and (iv).
6.14. Paragraph 4 (b) of the Uniform Policy states, "For the purposes of Paragraph 4 (a) (iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: " and then presents Paragraph 4 (b) clauses (i), (ii), (iii) and (iv) as alternatives. The Administrative Panel finds (6.11, 6.12 and 6.13 above) all four clauses of Paragraph 4 (b) to be proven, any one of which is "evidence of the registration and use of a domain name in bad faith". The Complainant therefore succeeds under Paragraph 4 (a) (iii) of the Uniform Policy.
6.15. In summary, as stated in 6.5 above the Complainant succeeds under element 4 (a) (i) of the Uniform Policy. As stated in 6.10 above, the Complainant succeeds under element 4 (a) (ii) of the Uniform Policy. As stated in 6.14 above, the Complainant succeeds under element 4 (a) (iii) of the Uniform Policy. The Complainant therefore has proven its case in total and the Decision is made in favor of the Complainant and against the Respondent.
7.1 The Decision of the Administrative Panel is that the disputed Domain Names "pgaweb.com", "pgainfo.com", "pgaopen.org", and "pgaopen.net" are confusingly similar to the trademarks containing the element PGA in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed Domain Names; and that the Respondent has registered and is using the disputed Domain Names in bad faith. The Decision of the Administrative Panel is that the Domain Names "pgaweb.com", "pgainfo.com", "pgaopen.org", and "pgaopen.net" shall be transferred to the Complainant.
Dr Clive N. A. Trotman
Dated: January 8, 2001