WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jerome A. Rich v. Jim Rich
Case No. D2007-1346
1. The Parties
Complainant is Jerome A. Rich, Sugar Grove, Illinois, United States of America, represented by Neal & McDevitt, United States of America.
Respondent is Jim Rich, Dekalb, Illinois, United States of America, who has submitted a Response on his own behalf.
2. The Domain Names and Registrars
The disputed domain names <richharvestlinks.com>, <richharvestlinks.net>, and <richharvestlinks.org> are registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2007. On September 12, 2007, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue, and Wild West Domains, Inc. 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 September 14, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2007. The Response was filed with the Center on October 3, 2007.
The Center appointed Richard G. Lyon as the sole panelist in this matter on October 12, 2007. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On October 17, 2007, Complainant requested permission to file a Reply to the Response. The Panel denied this request by order dated October 19, 2007.
4. Factual Background
Complainant owns and operates a golf course called Rich Harvest Links.1 Rich Harvest Links has been ranked among the top 100 golf courses in the United States of America by Golf Digest Magazine. In January 2007 Complainant applied for United States trademarks in RICH HARVEST LINKS and RICH HARVEST FARMS, in international class 41 for golf courses and golf club services. These applications are currently pending in the United States Patent and Trademark Office. Complainant has used these names for his golf course and related services since 1999.
Respondent, Complainant’s son, owns an undivided one-half interest in the land on which Complainant’s golf course sits. Respondent and a company owned by him are currently the subjects of bankruptcy proceedings in federal court in Chicago, Illinois, United States of America. The real estate interest and the disputed domain names are listed as assets of the bankruptcy estate. Complainant is Respondent’s principal secured creditor.
Respondent registered the disputed domain names on various dates in 2006 through January 2007, in each case prior to Complainant’s trademark applications.
Sometime prior to July 2007 Respondent posted an advertisement on a website accessed by one or more of the disputed domain names that Complainant considered false and misleading. Complainant petitioned the bankruptcy court and the United States Trustee appointed in connection with Respondent’s bankruptcy estate to have the advertisement removed. Respondent removed the advertisement and Complainant withdrew his motion. Complainant also requested Respondent to transfer the disputed domain names to Complainant, but Respondent refused. It does not appear that Complainant requested the bankruptcy court to transfer the disputed domain name.
5. Parties’ Contentions
Complainant contends as follows:
Complainant has rights in RICH HARVEST LINKS and RICH HARVEST FARMS sufficient to invoke the Policy by virtue of his continuous use of them for his golf course and related services since 1999, and by virtue of the pending trademark applications. Each of the disputed domain names is identical to a mark in which Complainant has rights except for addition of a top-level domain.
Respondent lacks rights or legitimate interests in the disputed domain names. He has never owned a trademark including the words RICH HARVEST and has never used that name for any business of his. Respondent uses the disputed domain names for click-through links, including links to Complainant’s competitors. That is not legitimate or bona fide under the Policy. Respondent’s use of the disputed domain names is commercial.
By appropriating Complainant’s marks Respondent has used the disputed domain names to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or one of the products that may be accessed from that website. As Complainant’s son and owner of the real estate on which the golf course sits, Respondent was well aware of Complainant and his rights at the time Respondent registered the disputed domain name.
Respondent is the lawful owner of the disputed domain names. Respondent registered each of the disputed domain names before Complainant even applied for a trademark, and to this day the Complainant holds no registered trademark in RICH HARVEST FARMS or RICH HARVEST LINKS.
Respondent has a legitimate interest in the disputed domain names by reason of his acknowledged ownership in the real estate on which the Rich Harvest Links golf course sits. Respondent held this interest at the time he registered the disputed domain names.
Respondent registered the disputed domain names and has used them as an on-line promotional tool to assist the bankruptcy sale of his assets, including the Rich Harvest Farms real estate. None of the attorneys in the bankruptcy proceeding, including the attorney for Complainant, has objected in that proceeding to Respondent’s registration or ownership of the disputed domain names.
6. Discussion and Findings
A. Identical or Confusingly Similar.
Complainant has established ownership of RICH HARVEST FARMS and RICH HARVEST LINKS and has used the Rich Harvest phrase for his golf course since 1999. A mark need not be registered to enable its owner to commence proceedings under the Policy, seeWIPO Overview of WIPO Panel Views on Selected UDRP Questions(“Overview”), paragraph 1.7. The disputed domain names are identical to the marks except for addition of the top-level domain identifiers. Complainant has established this element of the Policy.
B. Rights or Legitimate Interests.
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove a negative, that the Respondent lacks rights or legitimate interests in the disputed domain names. The consensus view is that if Complainant by a preponderance of the evidence makes out a prima facie case that Respondent lacks rights or legitimate interest, the burden of persuasion shifts to Respondent to establish with competent evidence that it holds a right or legitimate interest. Overview, paragraph 2.1, and cases there cited.
Complainant has made its prima facie showing. Complainant has never authorized Respondent to use its mark in the disputed domain names or otherwise, Respondent has never been known personally or in his business by the phrase Rich Harvest, and Respondent’s use is commercial.
Respondent offers two possible bases for a finding of legitimate interest: his ownership in the land on which the golf course sits, and use of the disputed domain names to maximize a return to his creditors in the bankruptcy proceedings.
Respondent’s real estate ownership, without more, provides no right or legitimate interest to Complainant’s business or mark. Ownership of the real estate does not ipso facto entitle Respondent to anything more than whatever benefits he has negotiated for himself in whatever transaction took place to enable Complainant (or perhaps a third party) eight years ago to develop the property for commercial purposes. Respondent has offered no evidence that any such transaction gave him trademark or other license rights by contract and, as noted, he has no such rights simply by virtue of his ownership.
No one denies that maximizing assets in a bankruptcy estate is a legitimate, indeed praiseworthy activity. What is at issue here, however, is whether Respondent has a right or legitimate interest in the disputed domain names to do so. Respondent has made no such showing. His use has not been sanctioned or approved by the bankruptcy court and he has shown no other legal basis for making use of Complainant’s marks in his domain names.
There is no basis for Respondent’s contention that his use of the disputed domain names for the benefit of his creditors is legitimate. The Panel findings confirm that he had no right to appropriate Complainant’s mark when he registered them and no right to use them or Complainant’s mark for any purpose.2
Respondent’s use of the disputed domain name for click through-advertisements and other revenue-producing activities take him outside the safe harbor of paragraph 4(c)(iii) of the Policy. The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
For similar reasons the Panel finds that Respondent registered and has used the disputed domain names in bad faith, as that term has been consistently interpreted under the Policy. As Complainant has alleged and argued, the evidence in the record demonstrates that Respondent registered the disputed domain names to deprive Complainant, who owns marks incorporated into the disputed domain names, from using his marks, in violation of paragraph 4(b)(ii) of the Policy. Respondent does not really contend otherwise; his denial of bad faith is based on his asserted use of the disputed domain names solely to maximize revenues in the context of a bankruptcy proceeding. Not only has the Panel found that use not in the circumstances of this case a bona fide use of the domain names within the meaning of the Policy, most of the use to which Respondent has put the disputed domain names is commercial activity unrelated to the bankruptcy proceedings and not in any way connected to the names he has chosen.
Respondent cannot deny knowledge of his father’s use of the Rich Harvest marks for legitimate commercial activity well prior to the date on which Respondent registered the disputed domain names. Respondent does not and could not do so in light of his acknowledged ownership of real estate upon which Complainant’s golf course sits. Complainant has established registration and use in bad faith.
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 names, <richharvestlinks.com>, <richharvestlinks.net>, and <richharvestlinks.org>, be transferred to the Complainant.
Richard G. Lyon
Dated: October 21, 2007
1 "Links" is a term used to describe a particular type of golf course. In the United States of America the term is so widely used as to mean any golf course.
2 Under a provision of United States bankruptcy law, 11 U.S.C. §362, no person may commence legal proceedings against the debtor (Respondent) without the permission of the bankruptcy court presiding over the estate. Whether commencement of this proceeding under the Policy or implementation of the Panel's order violates that provision is a matter for the bankruptcy court, not the Panel, to determine; the Panel expresses no opinion on these questions. To the extent that it has discretion under paragraph 18(a) of the Rules "to suspend or terminate the administrative proceeding, or to proceed to a decision," the Panel elects to proceed to decision. Either party may raise any applicable Bankruptcy Act issues with the bankruptcy court or United States Trustee.