WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Mr. Severiano Ballesteros Sota, Fairway, S.A. and Amen Corner, S.A.

v. Patrick Waldron

Case No. D2001-0351

 

1. The Parties

The Complainants are Mr. Severiano Ballesteros Sota, Fairway, S.A. and Amen Corner, S.A. The contact details provided for all of the Complainants collectively are Alto de las Cabanas 7, 28230 Las Rozas, Madrid, Spain (c/o Adolfo Morales Price). The Respondent is Patrick Waldron of 3 Thormanby Lawns, Howth, Ireland.

 

2. The Domain Name and Registrar

The domain name in issue is "seveballesterostrophy.com" ("the domain name"). The Registrar is Internet Domain Registrars.

 

3. Procedural History

3.1 The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail on March 12, 2001 and in hardcopy on March 13, 2001.

3.2 On March 13, 2001, Internet Domain Registrars transmitted via e-mail its verification response confirming that the Respondent is the Registrant of the domain name.

3.3 On March 19, 2001, the Center notified the Respondent that a complaint had been filed against him.

3.4 On March 30, 2001, the Center received by e-mail from the Complainantsí attorneys certain additional allegations (the "Additional Allegations"). The Respondent has not objected to the filing of these Additional Allegations. The Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") do not provide for a further document of this nature. Under the Rules it is for the Panel in its sole discretion to request any additional information. Had the document caused the Panel to alter its decision adversely to the Respondent it would have invited the Respondent to file a Response. However, having received and reviewed the Additional Allegations, the Panel is of the opinion that it does not alter the Panel's decision and is indeed irrelevant (see 4.6 below). The Panel therefore discounts the Additional Allegations.

3.5 On April 6, 2001, solicitors acting for the Respondent sent an e-mail to the Center attaching two letters relating to possible negotiations between the Complainants and the Respondent for the transfer of the domain name. The first of these letters indicates that the Respondentís solicitors were "entering negotiations" with the Complainantsí lawyers, and "will not be making a response to the Complaint". The second letter also from the Respondentís solicitors says that they feel the Respondent has a strong case (referring to the decision in the <brucespringsteen.com> determination). The letter goes on to say it is not in the parties interests to dispute this, invites the opening of negotiations, and suggests "without wishing to pre-empt anything" that 4 complimentary tickets for the Seve Bellesteros Trophy each year might be something the Complainants would be willing to provide "or some such other gesture whether monetary or otherwise".

3.6 On April 9, 2001, the Center sent an e-mail to the Respondentís solicitors acknowledging receipt of the e-mail sent on April 6, 2001 but stating that it was not a response to the Complaint and that the Center was therefore obliged to and was issuing a Notification of Respondent Default.

3.7 On April 16, 2001, the Center received by e-mail a copy of a letter sent by the Complainantsí attorneys to the Respondentís solicitors in response to the letter dated April 6, 2001 from the Respondent's attorneys.

3.8 On May 3, 2001 the Respondentís attorneys notified the Center that this matter was being discussed between the lawyers and said that transfer of the name had been agreed subject to "one minor issue".

3.9 On May 8, 2001 the Complainants' attorneys requested the suspension of the proceedings pending attempts to negotiate a settlement. On May 23, 2001, this Panel ordered the suspension of the proceedings until June 5, 2001.

3.10 On June 4, 2001, the Complainantsí attorneys requested the re-institution of the proceedings. The revised scheduled date for the Panel to render its decision is June 18, 2001.

3.11 A statement of acceptance and declaration of impartiality and independence has been filed by the Panel.

3.12 The Complainants are represented by Mr. Carlos Moran Medina of Elzaburu, Miguel Angel 21, 28010, Madrid, Spain. The Respondent is represented by Lennon, Heather & Company, City Quay House, City Quay, Dublin 2, Ireland.

 

4. Factual Background

4.1 One of the Complainants is the well-known Spanish golfer, Severiano Ballesteros. The other Complainants are Fairway, S.A. and Amen Corner, S.A (companies of which Mr Ballesteros is the Managing Director and Chairman).

4.2 Fairway, S.A owns a number of device marks for "Seve Ballesteros" in Spain and Amen Corner, S.A. owns a Community Trade Mark for a "Seve Ballesteros Trophy". This mark was applied for after the filing of the domain name. The other marks pre-date the filing.

4.3 Amen Corner, S.A. organizes a golf tournament called "Seve Ballesteros Trophy". The first tournament was held in England between April 14 and April 16, 2000. It was widely publicised both in the Spanish press and the English-speaking press in early February 2000.

4.4 On February 6, 2000, the Respondent registered the domain name. As at July 7, 2000, and February 19, 2001, the website at the domain name address stated that "www.seveballesterostrophy.com is under construction".

4.5 On June 30, 2000, the Complainants through their attorneys, sent a letter to the Respondent by e-mail informing him of the rights held by the Complainants in the trade mark "Seve Ballesteros Trophy" and asking him to transfer the domain name to their clients. This letter was also sent by fax and by registered post. When no response was received, the Complainantsí attorneys sent another e-mail to the Respondent on July 18, 2000, attaching their previous e-mail. They received a reply from the Respondentís solicitors dated August 9, 2000, requesting that the Complainants identify the Respondentís lack of legitimate interest in the domain name and clarification of how the registration of the domain name would constitute an infringement of the Complainantsí trade mark rights. On October 10, 2000, the Complainantsí attorneys wrote to the Respondentís solicitors setting out the Complainantsí right to the domain name. The Complainantsí attorneys received a letter from the Respondentís solicitors dated November 21, 2000, in which they stated that they were taking their clientís instructions.

4.6 On March 20, 2001, in response to an e-mail from the Center attaching the Notification of Complaint and the Complaint, an e-mail was received by the Center from "Patricia Waldron" as follows: "I have no idea what this is about, perhaps you have the wrong name please stop sending me these e-mails". The Complainantsí attorneys filed the Additional Allegations in response. Subsequent correspondence shows that material (including e-mailed material referred to above) had been in error e-mailed to an unconnected Patricia Waldron who had a similar e-mail address to that of the Respondent. Nothing turns on this as the Respondent has clearly had notification of these proceedings, and the relevant material has been received by him or his solicitors.

4.7 Following the institution of this determination, the letter sent by the Respondentís solicitors to the Complaintsí attorneys dated April 6, 2001, suggested that the Complainants consider providing the Respondent with "4 complimentary tickets for the Seve Ballesteros for every year that the Seve Ballesteros Trophy takes place or some such other gesture whether monetary or otherwise". By way of letter dated April 16, 2001, the Complainantsí attorneys responded that the only offer their clients were prepared to make was to pay the Respondentís out-of-pocket costs related to registration of the domain name.

 

5. Partiesí Contentions

A. Complainants

The domain name is identical to the Community Trade Mark "Seve Ballesteros Trophy" owned by Amen Corner, S.A. The fact that this trade mark is a device mark is not relevant in these proceedings.

The domain name is confusingly similar to the trade marks "Seve Ballesteros" in the name of Fairway, S.A. and to Severiano Ballesterosís rights in his own name.

The Respondent has failed to show that he has any legitimate interest in the domain name.

The Respondent registered the domain name in bad faith. This is evidenced by the timing of his registration of the domain name.

The Respondent is using the domain name in bad faith. He is not using it and his ownership of it prevents its registration by the Complainants. Moreover, the counter recording the number of visits at the website at the domain name address and the link to www.thecounter.com is evidence that the Respondent intends to sell the domain name for more than out of pocket costs.

B. Respondent

The Respondent has not provided any formal submissions to this Panel. The Panel takes account of the letters referred to at 3.5 and 4.6 above as constituting the Respondents case.

 

6. Discussion and Findings

6.1 The Panel has reviewed the Complaint and the documents exhibited. The Panel has also considered the letter dated April 6, 2000, sent by the Respondentís attorneys to the Complainantsí attorneys. In the light of this material, the Panel finds as set out below.

6.2 Amen Corner, S.A. has rights in the name "Seve Ballesteros Trophy" by virtue of its Community Trade Mark registration. However, this post-dates the domain name and the Panel discounts it. Both Fairway, S.A. and Mr Severiano Ballesteros have rights in the name "Seve Ballesteros", in the case of the former by virtue of its trade mark registrations and in the case of the latter by virtue of his common law rights in his own name. The domain name is confusingly similar to these trademarks.

6.3 The Respondent has failed to put forward any legitimate interest to the domain name.

6.4 The Respondentís registration of the domain name at the time of the announcement of the Seve Bellesteros Trophy golf tournament strongly indicates an opportunistic registration.

(i) The offer by the Respondentís solicitors to transfer the domain name for "4 complimentary tickets for the Seve Ballesteros for every year that the Seve Ballesteros Trophy takes place or some such other gesture whether monetary or otherwise" combined with the lack of any proper account from the Respondent, supports a finding that the Respondentís intention was to sell the domain name to the Complainants, and hence was in bad faith. The Panel received no direct evidence of the consideration sought but takes the view that the 6 April 2000 letters (above) clearly showed an attempt to solicit an offer from the Complainants of more than the Respondent expended to register the domain name.

(ii) The Panel does not find it necessary to consider in detail the <brucespringsteen.com> case, referred to by the Respondentís solicitors, in any detail. That case has been widely commented on but it is neither appropriate nor necessary in this case for the Panel to consider whether the case was rightly decided. Suffice it to say in the present case there is evidence of an offer to sell the domain name in question as set out in the Respondentís solicitorís letter of April 6, 2000 Ė no such evidence existed in the <brucespringsteen.com> case.

 

7. Decision

In the light of the above findings, the Panelís decision is as set out below.

So far as paragraph 4(a)(i) of the Policy is concerned, this Panel concludes that the domain name is identical to the mark "Seve Ballesteros Trophy" and confusingly similar to the device marks "Seve Ballesteros" and to Mr Severiano Ballesterosís common law rights in his own name.

As far as paragraph 4(a)(ii) of the Policy is concerned, the Panel is satisfied that the Respondent has no rights to and/or a legitimate interest in the domain name.

So far as paragraph 4(a)(iii) of the Policy is concerned, the domain name was registered and has been used in bad faith.

The Panel directs that the domain name should be transferred to Amen Corner, S.A., as the registered proprietor of the trade mark "Seve Ballesteros Trophy".

 


 

Nick Gardner
Sole Panelist

Dated: June 18, 2001