WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Professional Golfersí Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association
Case No. D2001-0218
The Complainant in this administrative proceeding is The Professional Golfersí Association 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, U.S.A.
The Respondent is Golf Fitness Inc, which is located at 2187 Newcastle, Suite 101, Cardiff, California 92007, U.S.A.
2. Domain Name and Registrar
The domain name in dispute is as follows: <pgamagazine.com>. The domain name was registered by Respondent with Network Solutions, Inc. (NSI) on December 2, 1999.
3. Procedural Background
On February 9, 2001, the WIPO Arbitration and Mediation Center received from Complainant via e-mail a complaint for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
The Complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.
The instant Administrative Proceeding was commenced on February 22, 2001.
Respondent failed to file a response and a Notification of Respondentís Default, dated March 14, 2001, was sent by WIPO to Respondent.
The decision of the Panel was due to WIPO on or before April 5, 2001.
4. Factual Background
The Professional Golfersí Association of America ("PGA America") is an organization of professional golfers whose members promote the game of golf, organize professional golf tournaments, and provide golf instruction services, golf shop and golf club professional management services, and other golf-related services throughout the U.S.
For over seventy (70) years, PGA of America has made extensive use of various PGA-related marks and has promoted such marks through television and print media, Internet websites, trade show exhibitions, and the like. In addition, since the early 1960ís, PGA of America has used the "PGA MAGAZINE" mark in connection with a magazine devoted to golf enthusiasts.
PGA of America owns a number of U.S. trademark registrations for PGA-related marks, including Registration No. 578,653 for the mark PGA; Registration No. 1,161,168 for the mark PGA CHAMPIONSHIP; and Registration No. 2,240,485 for PGA TOUR PARTNERS OFFICIAL MEMBER MAGAZINE OF THE PGA TOUR PARTNERSí CLUB. PGA of America also owns two pending U.S. trademark applications (Serial Nos. 76/139817 and 76/146900) for the mark PGA MAGAZINE. See Complaint, Annex 6. These and other PGA-related marks are licensed by PGA America to various third parties. PGA America collects annual royalties of over $1 million from these licensees. PGA America also operates several Internet websites under the domain names <pga.com>, <pgaexpo.com>, and <pgalinks.com>, and is in the process of developing a website to complement its "PGA Magazine" publication.
Respondent is a golf and fitness development firm whose business is creating prestigious facilities and designing, constructing, and managing high quality golf and fitness facilities.
As noted above, Respondent registered the domain name pgamagazine.com on December 2, 1999. This website is "Under Construction." See Complaint, Annex 12.
PGA of America first became aware of Respondentís registration of the domain name <pgamagazine.com> on or about November 14, 2000, when Complainant attempted to register such name. On November 20, Complainantís counsel wrote to Respondent demanding the transfer of the disputed domain name to Complainant. See Complaint, Annex 8. The letter was returned as undeliverable due to a change of address. After obtaining another address for Respondent, PGA of Americaís counsel sent another "cease and desist" letter to Respondent on December 14, 2000. See Complaint, Annex 9. On December 19, 2000, Respondentís counsel called counsel for Complainant informing her that Respondent was not willing to transfer the domain name and indicating that Respondent intended to use the domain name in connection with a photography and graphic arts website.
On January 4, 2001, counsel for the parties spoke again, and Respondentís counsel indicated that the domain name might be transferred at a cost and invited PGA of America to make an offer to purchase the name. Thereafter, on January 11, 2001 the parties and their counsel participated in a conference call in an effort to resolve the matter. During the call, Respondent advised that it would be willing to transfer the <pgamagazine.com> domain name if it were compensated for the costs allegedly associated with having to change its domain name, which it estimated to be $75,000. See Complaint, Annex 10 (Affidavit of Christine Garrity, PGA of Americaís General Counsel).
Complainant later discovered that Respondent had registered numerous domain names incorporating the term "PGA," including <pgateetime.com>, <pgateetimes.com>, and <pga-tee-time.com>. See Complaint, Annex 11.
5. Parties' Contentions
Complainant contends that the domain name in issue is identical to the PGA MAGAZINE mark and is confusingly similar to its other PGA-related marks. It argues further that the mere registration of a domain name including a third partyís mark has been held to create consumer confusion among those who might type in the domain name expecting to find the trademark ownerís site. Green Products Co. v. Independence Corn By-Products Co., 992 F. Supp. 1070 (N.D. Iowa 1997) See Complaint, Annex 13. According to Complainant, Respondentís action in registering the domain name <pgamagazine.com> constitutes trademark infringement and unfair competition under Sections 32(a) and 43(a) of the Lanham Act and violates the U.S. dilution statute, codified in Section 43(c) of the Lanham Act, and the "Anticybersquatting Consumer Protection Act," codified in Section 43(d) of the Lanham Act.
Complainant further maintains that Respondent has no rights or legitimate interests in the disputed domain name because: (1) Respondent never sought or obtained any trademark registrations for the term PGA and is not licensed by Complainant to use the mark; (2) Respondent was fully aware of the PGA marks when it registered the disputed domain name; and (3) Respondent registered a number of other domain names incorporating the PGA marks and its action in registering <pgamagazine.com> is part of a deliberate attempt to register names that contain the marks of PGA of America.
Finally, in support of its contention that Respondent registered and uses the domain name in "bad faith," Complainant notes and argues that: (1) the disputed domain name is identical to the PGA MAGAZINE mark and confusingly similar to other PGA marks and that, as a result, the public may be misled into thinking that the disputed domain name is affiliated with PGA of America or that Respondent is endorsed, sponsored, or licensed by Complainant; (2) there is no other conceivable interpretation of Respondentís registration of the disputed domain name other than that of bad faith; and (3) Respondent has refused to transfer the domain name to Complainant unless Respondent is paid far in excess of its documented out-of-pocket costs associated with registering the domain name.
6 . Discussion and Findings
The Panel has carefully reviewed the evidence presented and determines that Complainant clearly has met all the requirements set forth in para. 4.a. of the Policy.
First, there is no question that the domain name in dispute is confusingly similar to Complainant's PGA marks, including the PGA MAGAZINE mark. The inclusion of the top-level domain name .com in Respondent's domain name is without legal significance.
It is also clear that Complainant, through its long use of, and registrations covering, its PGA marks has rights in the marks.
Further, the Panel determines that Respondent has no rights or legitimate interests with respect to the domain name, within the meaning of para. 4.c. of the Policy. As noted above, Respondentís <pgamagazine.com> website is still "Under Construction"; thus, it is clear that Respondent is not using the domain name in connection with the bona fide offering of goods or services. There also is no evidence that Respondent is commonly known by the domain name or that any use is noncommercial or "fair."
Finally, the Panel finds ample evidence of the requisite "bad faith" registration and use of the domain name. The evidence supports a determination that Respondent registered the domain name primarily for the purpose of selling the registration to Complainant for valuable consideration (in this case, $75,000) in excess of Respondent's documented out-of-pocket costs directly related to the domain name, within the meaning of para. 4.b. (i) of the Policy. Given the evidence relating to Respondent's registration of other pga-related domain names, the Panel further concludes that Respondent registered the domain name in issue to prevent Complainant from using the PGA MAGAZINE mark in a corresponding domain name, within the meaning of para. 4.b. (ii) of the Policy. Respondent's passive holding of the domain name, when coupled with the other evidence of "bad faith" and the "fame" of Complainant's PGA marks, provides further support for a determination of "bad faith" registration and use. See Telstra Corp. Ltd. v. Nuclear Marshmallows, Case No. D2000-0003 (Feb. 18, 2000).
In view of the above, the Panel grants Complainant's request for transfer to it of the domain name <pgamagazine.com>.
Jeffrey M. Samuels
Dated: April 3, 2001