WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shakespeare Company LLC v. Bob Pflueger
Case No. D2010-1126
1. The Parties
Complainant is Shakespeare Company LLC of Columbia, South Carolina, United States of America, represented by Davis Wright Tremaine LLP, United States of America.
Respondent is Bob Pflueger of Moon Township, Pennsylvania, United States of America, represented by Behrend & Ernsberger, United States of America.
2. The Domain Name and Registrar
The disputed domain name <pflueger.com> (“the Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2010. That same day, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On July 12, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 13, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to amend the Complaint. Complainant filed an amended Complaint on July 16, 2010. The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on July 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for a Response was August 8, 2010. The Response was filed with the Center on August 8, 2010.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on August 13, 2010. 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.
4. Factual Background
Complainant Shakespeare Company LLC is a limited liability company having a principal place of business in Columbia, South Carolina. In 1969, Complainant acquired all of the assets owned by the Pflueger Corporation, including all right, title, and interest in and to the PFLUEGER marks. Complainant now operates Pflueger Company as one of its divisions. Complainant’s rights in the PFLUEGER marks date back to 1881, when Ernest F. Pflueger founded a fish hook company called the Enterprise Manufacturing Company. When his son Earnest A. Pflueger took over the family business and founded the E.A. Pflueger Company, he expanded the company from a hook manufacturer to all aspects of fishing tackle & gear. Since 1881, Complainant and its predecessors in interest have produced, advertised, sold, and distributed fishing rods, fishing reels, and related products under the PFLUEGER mark.
Complainant owns various United States trademark registrations for the PFLUEGER mark including: U.S. Reg. No. 0,071,940 (PFLUEGER) for use with reels and reel parts, in International Class 28, registered on December 22, 1908; U.S. Reg. No. 0,718,896 (PFLUEGER SUPREME) for use with fishing reels, registered on July 25, 1961; U.S. Reg. No. 3,320,649 (PFLUEGER) for use with fishing lures, registered on October 23, 2007; and U.S. Reg. No. 3,630,374 (PFLUEGER) for use with fishing reels and fishing tackle, registered on June 2, 2009.
On August 14, 1996, Respondent registered the Domain Name.
5. Parties’ Contentions
The PFLUEGER marks and trade name have achieved widespread recognition and secondary meaning as a result of Complainant’s extensive advertising and promotion. In the years 2006, 2007 and 2008, Complainant spent USD 1.3 million, USD 1.5 million and USD 1.15 million respectively promoting its Pflueger products. In 2009, Complainant spent USD 935,000 promoting its brands, most of which was spent on its PFLUEGER mark. Complainant’s advertising efforts include Complainant’s website at “www.pfluegerfishing.com”. Last year, for instance, Complainant’s website received 252,521 visitors from January 1, 2009 to December 31, 2009. As one indication of the strength of the mark PFLUEGER, a search on the Web search engine “www.google.com” for the words “Pflueger” and “fishing” returns approximately 108,000 results, of which the first five pages refer to “Pflueger” in the trademark sense as a mark that identifies Complainant and/or Complainant’s products.
United States trademark registrations evidence established rights under the Policy. PFLUEGER is a strong, well-known mark that enjoys widespread consumer recognition as the identifier of fishing rods and related goods that originate from Complainant. Previous panels have ruled that when a third party registers a domain name that is identical to Complainant’s trademark and/or trade name, Complainant has satisfied its burden under the Policy. Respondent’s use of the Domain Name creates a likelihood of confusion with Complainant’s trade name and PFLUEGER mark. The only difference between Complainant’s PFLUEGER mark and Respondent’s Domain Name is the generic Top Level Domain (gTLD) name, which is without legal significance in determining identity or similarity. Moreover, because Respondent’s Domain Name incorporates Complainant’s trade name and mark, consumers will incorrectly assume that the owner of the Domain Name is affiliated with Complainant.
Complainant has not granted Respondent a license nor has it otherwise permitted Respondent to use its trade name or trademark, or to apply for any Domain Name incorporating the mark. Until Complainant began this proceeding, Respondent used the Domain Name to link to “www.fishusa.com”, which offers products that compete directly with Complainant. Commercial benefit is derived from payment of click-through fees by a linked website owner. Respondent is not making a legitimate noncommercial or fair use of the Domain Name because Respondent is clearly using the Domain Name with the intent of commercial gain to intentionally divert consumers from Complainant’s website.
After Respondent received notice of this action, Respondent removed the improper link. However, the UDRP action is decided based on the website as it existed when the Complaint was filed. Respondent will likely argue that because his last name is Pflueger he has a legitimate right to the Domain Name. Merely claiming to be known by the name “Pflueger” is not sufficient. Respondent must show he has a right to use the Domain Name in connection with fishing reels, tackle and related equipment. He is not likely to be able to do that.
Knowingly registering a domain name that completely incorporates a well-known trademark is clear evidence of bad faith. Using the Domain Name for a website that offers links to sites offering competing products or services is evidence of bad faith. Customer confusion has occurred. Someone seeking to contact Complainant sent a message to “email@example.com”, an email address that is listed on the “www.pflueger.com” website. The individual or entity responding did nothing to inform the customer that it was not affiliated with Complainant but, rather, responded rudely. The customer said he was insulted and would not use Complainant’s products again. Thus, Complainant has been harmed by Respondent’s registration of the Domain Name.
Further evidence of bad faith registration and use is that Respondent violated its Registrar’s policy by registering a domain name that violates the rights of a third party. And Respondent changed his website after receiving notice of the present dispute.
No one is the sole and exclusive owner of the name “Pflueger.” There are at least 192 individuals named “Pflueger” in the United States. Pflueger is a trade name that is used by several manufacturers, for example: Homoopathisches Laboratorium Alexander Pfluger t/a/d/b/a Pflueger in the sale of Homeopathic machines and Pflueger Honda t/a/d/b/a Pfluegerhonda.com in the sale of motor vehicles.
Complainant has a registered trademark in the name “Pflueger”. Complainant does not do Internet sales at “www.pfluegerfishing.com” but refers Internet customers to any one of several independent retail stores who sell Pflueger fishing equipment. Many independent retail stores use the Pflueger name to attract customers to their retail stores where they sell fishing equipment made by Pflueger and other companies.
Bob Pflueger is an individual and he is one of at least 192 individuals named “Pflueger” in the United States. He owns the <pflueger.com> domain name that he purchased on August 14, 1996. No one objected to his purchase at the time. Bob Pflueger created the website as a family photo album. Bob Pflueger’s first use of the Domain Name can be found on the Internet Archive’s Wayback Machine on April 17, 1997. It was a display of family photos.
Bob Pflueger does not use the Domain Name for retail sales including fishing equipment. He is not one of the many retailers that have used the Pflueger name to attract customers to their website or to sell products that are in direct competition to Complainant. The Domain Name does not appear in Complainant’s search results because he does not promote fishing products.
The original website dated April 17, 1997 contained a disclaimer: “**Please note that this web page is not affiliated with Pflueger Corporation (the fishing rod people). You may still send us email, but we probably can not help you.” The website was amended on April 8, 2000. This too can be found on the Wayback Machine. The new disclaimer said: “Type me a message ... but NOT about Pflueger fishing stuff. It does not take a genius to figure out this site has nothing to do with fishing.”
Occasionally people (other than family members) discover the “www.pflueger.com” website. Rather than insulting them and telling them that they are something less than a genius for thinking that there is a connection between <pflueger.com> and <pfluegerfishing.com>, Respondent thought it best to direct the consumers back to Pflueger fishing. Because the “www.pfluegerfishing.com” website is not an Internet retail store there was no reason to send them to it. The paid Internet advertising and retail store for Pflueger fishing is “www.fishusa.com” so Bob Pflueger referred people outside his immediate family to them.
Bob Pflueger has a legitimate interest in the Domain Name because his name is Bob Pflueger. Bob Pflueger purchased the Domain Name in good faith and has used it to post family photos. Bob Pflueger has used disclaimers and referrals in good faith to send non-family members away from his website. Complainant does not have the exclusive right to use the name Pflueger.
“Pflueger” and “Pflueger fishing” are two different names. “Pflueger” is used for family photos. “Pflueger fishing” is used for the commercial sale of fishing equipment. Complainant has rights to the use of the name with fishing equipment and has no exclusive rights to the use of the name for family photos. Respondent has used his name in connection with family photos since April 17, 1997. The continuous use of his name in connection with family photos for more than five years has established a presumption of secondary meaning; 15 U.S.C. 1052(f), that is to say, the public has come to associate family photos with Bob Pflueger and not Complainant. Here, Bob Pflueger is the presumptive owner of the trademark for family photos. The Pflueger name is used for homeopathic machines, Honda motor vehicles, used motor vehicles, hay fever remedies, architectural services, photo media, investments, and fishing equipment. The use of the Pflueger name for family photos is also acceptable. The public is not confused by “Pflueger” and “Pflueger fishing” because: an Internet search of the first twenty pages of “Pflueger fishing” fails to produce the “www.pflueger.com” website; and, because those few people who do discover <pflueger.com> should reasonably understand that family photos and fishing equipment are different.
The use of one’s own surname in a domain name corresponds to a legitimate customary practice and is, as a rule, sufficient evidence of a legitimate right or interest in the domain name. Bob Pflueger has a right to use his own name in connection with family photos, because he has used the name in connection with family photos for more than five years. He has made a legitimate noncommercial and fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant. He placed disclaimers on his website and then referred consumers to Complainant’s retail stores. He did not divert them away from Complainant’s retail stores.
Bob Pflueger registered and has used his Domain Name in good faith. He did not register it to divert customers. He registered it to publish family photos. He published a disclaimer to tell everyone that he is not “Pflueger Fishing”. He directed consumers to the Internet retail store for “Pflueger Fishing”; that is, Fish USA. He did not intentionally divert customers away from “Pflueger Fishing.” If it is proven that Fish USA is not a licensed Internet retail store for “Pflueger Fishing” than it is not his fault.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has established its rights to the PFLUEGER mark through longstanding use and its numerous U.S. Trademark registrations. Furthermore, Complainant has shown that the Domain Name <pflueger.com> is identical to Complainant’s PFLUEGER mark. For purposes of these proceedings, the addition of the gTLD “.com” is without legal significance in determining identify or similarity. Digitronics Inventioneering Corporation v. @Six.Net Registered, WIPO Case No. D2000-0008 (gTLD is to be ignored in comparison).
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant asserts, and Respondent does not contest, that it has not granted Respondent a license or other form of permission to use its PFLUEGER mark for any purpose including in a registered domain name. Under paragraph 4(a)(ii) of the Policy, Complainant has the initial burden of proving this allegation. Once, Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests in the Domain Name. The Panel finds that Complainant made a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (holding that, where complainant has asserted that respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Paragraph 4(c) of the Policy sets out circumstances, any of which, if proved, establish the registrant’s rights or legitimate interests to the domain name, they are:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent submitted the following evidence:
(1) Respondent’s current driver’s license showing Respondent’s name – Robert Philip Pflueger and a recent photo;
(2) a “Wayback Machine” print out with search results for “www.pflueger.com”. There are stored pages from the website dating 1997 through 2008;
(3) a webpage from the website associated with the Domain Name dated April 17, 1997 that includes the following text: “Welcome to the Pflueger Home Page!! …………. Here are some fascinating pictures and stuff . . If you know us from somewhere and would like to send email to say hi, click HERE.”
Clicking on the “HERE” text takes the public to this email address: firstname.lastname@example.org. The webpage further indicates that it was accessed 445 times since August 17, 1996. And it has five photographs of individuals which, from the context of the website and the photos themselves, appear to be Respondent’s family and/or friends. At least one photo seems to picture Respondent based on the similarity of that image with Respondent’s photographic image in his driver’s license.
At the bottom of the page there is text stating: “go to MetroIndex.com for interesting information on up and coming Basketball and Football high school athletes”. At the top of the page, the first text on the page states: “**Please note that this web page is not affiliated with the Pflueger Corporation (the fishing rod people). You may still send us email, but we probably can’t help you...”; and
(4) a webpage from the website associated with the Domain Name dated April 8, 2000 that includes the following text: “PFLUEGER.com . . . Type me a Message . . . but NOT about Pflueger fishing stuff . . . It doesn’t take a genius to figure out this site has nothing to do with fishing . . .” followed by a cartoon-like sketch.
Based on this undisputed evidence, Respondent has established that his surname is “Pflueger” and it appears to the Panel that he registered the Domain Name to identify a website about him and/or his family (the Pflueger family) pursuant to paragraph 4(c)(ii) of the Policy. See Hoogendoorn Groep B.V. v. Onno Hoogendoorn, WIPO Case No. D2006-1064; José de Jesus Velásquez Jiménez v. Velasquez-Perez, CPA, WIPO Case No. D2001-0342. The use of one’s own surname in a domain name is in accordance with a legitimate customary practice and is, as a rule, sufficient evidence of a right or legitimate interest in the domain name. The scope of the Policy is limited to cybersquatting. Trademark owners shall not be allowed to use the Policy to dispossess summarily a third party of a domain name reflecting his or her surname (G.A. Modefine S.A. v. A.R. Mani, WIPO Case No. D2001-0537).
Complainant claims that until it began this proceeding, Respondent used the Domain Name to link to “www.fishusa.com”, which offers products that compete directly with Complainant. Evidently, at some point in time Respondent had on the webpage associated with the Domain Name the text: “Hello, this is pflueger.com . . . Find special discounts at this website:”. What follows the colon is a text box having in it a logo for “FishUSA.com” with the following slogan underneath it: “AMERICA’S TACKLE SHOP” and to the right of the logo/slogan, the text: “WEEKLY SPECIALS CLICK HERE” Outside and under the text box is the text: “Send email to email@example.com.”
Complainant suggests that Respondent was deriving commercial benefit (i.e., click-through fees) from having the “CLICK HERE” link to the “www.fishusa.com” website and argues that Respondent could not be making a legitimate noncommercial or fair use of the Domain Name. Respondent maintains that he used disclaimers to inform the public his site was not associated with Complainant and inserted the text box described above to direct consumers to what he believed was the Internet retail store for “Pflueger Fishing” – Fish USA – because Complainant does not sell its products directly from its website. In this regard, Respondent claims he did not intentionally divert customers away from “Pflueger Fishing.”
Looking at Respondent’s webpage alone, it is not entirely clear to the Panel exactly what Respondent had in mind by using the text box with the “CLICK HERE” link, but the Panel is not convinced it was to obtain click-through fees. Furthermore, based on all of the evidence of record, including Respondent’s webpages from August 1996 and April 2000 described above, the Panel is not convinced that Respondent has been using the Domain Name with intent for commercial gain (by click-through fees or otherwise) and to misleadingly divert consumers away from Complainant’s website. Rather, it appears to the Panel that Respondent was using the Domain Name on a personal website intended for familial purposes and tried to avoid, rather than encourage, any diversion of consumers away from Complainant’s website.
For the aforementioned reasons, the Panel finds that Respondent succeeded in proving that he has rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Since the Panel has held that Respondent demonstrated his rights or legitimate interests in the Domain Name, the issue of bad faith need not be addressed.
For all the foregoing reasons the Complaint is denied.
Harrie R. Samaras
Dated: August 19, 2010