The Complainant is Ladies Professional Golf Association (LPGA) of Florida, United States of America, represented internally.
The Respondent is Kevin Soper of Canada.
The disputed domain name <lpgatour.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2009. On August 17, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On August 17, 2009, GoDaddy.com, 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” or “UDRP”), 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 August 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2009. The Response was filed with the Center on September 8, 2009.
The Center appointed James A. Barker as the sole panelist in this matter on September 16, 2009. 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.
The Complainant was founded in 1950. It is an organization of professional golfers established to establish, promote, develop and maintain high standards for women's professional golf activities.
The Complainant is the owner of registered marks for LPGA and LPGA TOUR. The most recent of the Complainant's word marks for LPGA was first registered on January 16, 2001 on the principal register of the United States Patent and Trademark Office; however it is evident that earlier forms of that mark have been registered over a significant period. The Complainant has also registered that mark in various other countries. The Complainant's LPGA TOUR mark was first registered on October 24, 2000, also on the principal register of the USPTO. (The Complainant also claims common law rights in that mark since it first began using it in commerce in 1966.)
The Complainant operates a website at “www.lpga.com”.
The disputed domain name was first registered on December 8, 1998 (as shown by the “creation date” in the WhoIs record). At the date of this decision, the disputed domain name is parked at a Sedo “pay-per-click” (“PPC”) landing page. The website contains a variety of links relating to golf. Also on the website is the statement “The domain <lpgatour.com> may be for sale by its owner!”
The Complainant claims that the disputed domain name is identical or confusingly similar to its marks, because the LPGA mark is incorporated entirely in the disputed domain name with the addition of the generic or descriptive term “tour”.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no such rights because he does not use, or show demonstrable preparations to use, the disputed domain name with a bona fide offering of goods and services. The Respondent is not commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent is only using the disputed domain name in connection with the PPC landing page, which previous panels have consistently held is neither legitimate nor bona fide and generally constitutes abusive cybersquatting. Further, UDRP precedents have held that, in order to be bona fide, the Respondent must, among other things, “use the site to sell only the trademarked goods; otherwise it could be using the trademark to bait Internet users and then switch them to other goods.” Nikon, Inc. and Nikon Corporation v. Technilab Inc., WIPO Case No. D2000-1774. The Respondent does not sell or offer any good or service trademarked as “LPGA” or “LPGA Tour”. Instead, the Respondent uses the Complainant's name recognition and goodwill to bait Internet users into visiting the website at the disputed domain name, and subsequently switches users to other, unrelated goods.
The Complainant argues that the registration of the disputed domain name which contains the name of a well-known business suggests an intent to profit from that registration and is inconsistent with an intent to engage in any legitimate use of the domain name. Caterpiller Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275. The Respondent is intentionally misleading Internet consumers and diverting them away from the Complainant's website.
The Complainant also argues that the disputed domain name was registered and has been used in bad faith, for the purpose of paragraphs 4(b)(i) and (iv) of the Policy. The Respondent registered the disputed domain name at a time when the Complainant's marks had already attained worldwide recognition and, given the Complainant's trademark registrations, the Respondent knew or had reason to know that it was infringing the Complainant's trademarks. The Respondent also registered the disputed domain name with the primary purpose of attempting to sell or transfer it to the Complainant. The Respondent's attempts to sell the disputed domain is itself enough to demonstrate bad faith. The Complainant approached the Respondent and offered to purchase the disputed domain name for consideration in the amount of the Respondent's out-of-pocket registration costs, however the Respondent rejected that offer, as well as a subsequent offer in excess of those costs.
The Respondent notes the Complainant's registered marks but claims that, as a Canadian citizen, he is not bound by United States law. (The Panel notes that both the registrar's WhoIs and registrar confirmation note an address in Washington, United States but that the Respondent claims to be a Canadian citizen living in Canada). He notes that, while the Complainant has a mark registered in Canada for “LPGA”, it does not have a mark registered in Canada for “LPGA Tour”.
In relation to the Complainant's claims that he lacks rights or legitimate interests, the Respondent says that he purchased the disputed domain name with the intention of creating a non-profit informational website about the LPGA Tour. He says that he is an avid golfer, golf fan, and website designer. Four years ago, he decided that he was too busy (at least for now) to create a website. So he put up the disputed domain name for sale in case someone else wanted to use it to create a website about the LPGA Tour. His full-time employment is operating a house cleaning business. In his free time, he create websites for himself and for others.
In relation to whether he registered and used the disputed domain name in bad faith, the Respondent says that the disputed domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant. The domain name was purchased nearly 11 years ago with the intention of creating a non-profit informational website about the LPGA Tour. Four years ago, he decided he was too busy to create an associated website, and so put the disputed domain name up for sale with Sedo as the domain name broker. The Respondent argues that, if it was his intention to sell the domain name when he purchased it, he would not have waited 7 years to put it up for sale. He never contacted the LPGA to ask if they wanted to purchase the domain name. At the time of registration, the LPGA had a well developed website, and he always assumed that if they wanted to use the disputed domain name, they would have registered it soon after registering <lpga.com>.
When you put a website up for sale on Sedo, you park the domain name with Sedo. Sedo then creates a webpage that says your domain name may be for sale and they also put general links/ads related to your domain name. The Respondent says that he does not have any control over this webpage including the links/ads Sedo put on the webpage. He admits to have earned about USD1,000 per year resulting from Internet users clicking on the golf related links/ads. However it was his intention to find someone who wanted to put the domain name to good use, not earn any money. Most Internet domain name brokers put related links/ads on the for sale page.
The Respondent says that he did not transfer the disputed domain name to the Complainant because of its accusatory attitude and because, in their first phone conversation, accused him of being dishonest and threatened legal action if he didn't accept USD100 for the disputed domain name. The Complainant later offered USD1,000 but the Respondent says he was still angry about being accused of dishonesty.
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed below. In doing so, the Panel notes that it considers the Respondents submission honest and plausible. There is no evidence that the Respondent is a habitual cybersquatter or has acted dishonestly in a general sense. In this case however, the Panel finds that the Complainant has established each of the elements of paragraph 4(a) of the Policy. In large part, this is because the evidence indicates that the Respondent registered the disputed domain name primarily because of its association with the Complainant and its mark, and intended to use it in that connection. The Panel considers that, on balance, the Respondent's conduct falls within paragraph 4(a) of the Policy, which is incorporated (by reference) into the Respondent's registration agreement.
The Complainant clearly “has rights” in its registered LPGA and LPGA TOUR marks for the purpose of paragraph 4(a)(i) of the Policy. Evidence of those rights was attached to the Complaint and undisputed by the Respondent.
The Complainant also claims to have common law rights in LPGA TOUR, but provides little direct evidence to support that claim. For such an argument to be established, the Complainant would need to show that by virtue of extensive use of the mark, a significant proportion of relevant consumers have come to associate the mark exclusively with the services provided by the Complainant. (See e.g. Hotels Unis de France v. Christopher Dent / Exclusivehotel.com, WIPO Case No. D2005-1194.) The evidence which is required to demonstrate rights in an unregistered mark is also outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. In this respect, the consensus of prior UDRP panels is that “Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” The Complainant provided no such evidence but had it done so, the Panel would likely have little difficulty finding common law rights from at least prior to the domain name registrant. Accordingly, though not dispositive to the instant case, and based on the record before the Panel the Panel does not find that the Complainant has established common law rights in LGPA TOUR.
Accordingly, the relevant comparison is between the Complainant's registered marks. It is well-established under the Policy that the gTLD extension is to be disregarded for the purpose of comparison. As such, the Panel considers that the disputed domain name is self-evidently identical to the Complainant's LPGA TOUR mark. The Panel also considers that the disputed domain name is confusingly similar to the Complainant's LPGA mark. That mark is wholly incorporated in the disputed domain name, and includes the dictionary term “tour”. That term is closely associated with the Complainant, as well as being a component of its more recently registered LPGA TOUR mark.
The Respondent's arguments based on the territoriality of the Complainant's marks is not relevant to this ground. Under paragraph 4(a) of the Policy, the Complainant need only establish that it “has rights” in a mark in any jurisdiction, which is what it has done.
The Respondent bases his rights or legitimate interests, on his stated intention of creating a non-profit informational website about the LPGA Tour. Such an intention, on its own, does not constitute evidence of a right or legitimate interest of a kind set out in paragraph 4(c) of the Policy. That paragraph relates to evidence of a concrete state of affairs. It refers to “use” or “demonstrable preparations” in connection with a bona fide offering; to being “commonly known” by a disputed domain name; or “making” a legitimate noncommercial or fair use. None of these circumstances can be arrived at by an intention on its own, even if genuinely held. In this case, the Respondent himself admits to never having had the time to carry out his intention to use the disputed domain name.
For these reasons, the Panel finds that the Complainant has established this element.
A finding of bad faith may be made where the Respondent knew of the Complainant, and registered and used the disputed domain name because of its association with the value of the Complainant's trademarks. By his own admission, this is what the Respondent has done.
The Panel accepts that the Complainant and its LPGA mark is relatively well-known in its field (although the Complainant did not provide much direct evidence of this, it was not disputed by the Respondent). The Respondent himself says that he is an avid golf fan, and registered the disputed domain name because of its association with the Complainant's activities, that is, the LGPA tour.
This does not mean that the evidence establishes many of the things which the Complainant claims. Contrary to the claims in the Complaint, the evidence does not strongly suggest that the Respondent registered the disputed domain name with the “primary purpose” of selling it to the Complainant – the long period for which the domain name has been held by the Respondent, and the Respondent's refusal to sell it despite an approach from the Complainant suggests otherwise. The evidence also does not strongly suggest that the Respondent registered the disputed domain name with an intent to profit from it.
Be that as it may, the Respondent admittedly has profited at least from the PPC landing page to which the disputed domain name now reverts while also admitting knowledge of the Complainant at the time of registration. While it may be true, as the Respondent claims, that he did not intend that profit, the nature of the links on the website are based on the trademark value of the Complainant's mark and its golfing association. Where the links on a portal website are based on the trademark value of the domain name, rather than any descriptive value, the trend in decisions under the Policy is to recognize that such practices generally do establish bad faith. (See e.g., mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Ranbaxy Laboratories Ltd v. Jucco Holdings, WIPO Case No. D2007-1562, and the cases cited in those ones). Such a finding does not require the Respondent to have direct control over the selection of links on the PPC webpage. Here the Respondent says that he had no such control. But the ultimate ownership of the disputed domain name, and therefore responsibility for its use, rests with the Respondent. It is important to note that this subsequent use reinforces a finding of bad faith in this case, but is not necessary for it. Had the Respondent continued to passively hold the disputed domain name, a finding of bad faith for the purpose of paragraph 4(c) of the Policy would still result. This reason is that, ultimately, the Respondent registered and held the disputed domain name because of its trademark association with the Complainant.
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 <lpgatour.com> be transferred to the Complainant.
James A. Barker
Dated: September 30, 2009