WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PGA TOUR, Inc. v. Eka Paramartha
Case No. D2012-1904
1. The Parties
The Complainant is PGA TOUR, Inc. of Ponte Vedra Beach, Florida, United States of America (“United States”), represented by Akerman Senterfitt, United States.
The Respondent is Eka Paramartha of Denpasar, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <world-golf-tour.net> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2012. On September 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 26, 2012, the Registrar 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 October 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2012. The Center received email communications from the Respondent on October 11 and 27, 2012. Accordingly, the Center notified the parties about the panel appointment process on October 29, 2012.
The Center appointed Nicholas Weston as the sole panelist in this matter on November 9, 2012. 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 Panel finds that the Respondent has received appropriate notice of this proceeding and that the Center has discharged its responsibility under paragraph 2(a) of the Rules. Prima facie evidence of this is the Respondent’s emails to the Center following physical and electronic notification of the Complaint to the Respondent even though the words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service.
4. Factual Background
The Complainant operates a business involving the organization and international televisation of professional golf tournaments and matches, and provides golf instructional or related services throughout the United States. The Complainant holds registrations for trademarks including WORLD GOLF TOUR and variations of it in the United States, which it uses to designate “entertainment services, namely, providing an online interactive video game”. The United States trademark registration for the mark WORLD GOLF TOUR was first used in 2007 and the mark features prominently on the website located at “www.wgt.com”. The Complainant owns numerous other registered trademarks including the marks WORLD GOLF CHAMPIONSHIPS, WORLD GOLF HALL OF FAME, and a number of variations of a theme involving the word TOUR including the registered trademarks PGA TOUR, THE TOUR CLUB, THE TOUR CHAMPIONSHIP, TOUR ACADEMY and TASTE OF THE TOUR.
The Complainant conducts business on the Internet using numerous domain names containing the words “world”, “golf” and “tour” including the domain names <pgatour.com>, <worldgolfchampionships.com>, <worldgolfvillage.com> and <worldgolfhalloffame.com> with websites resolving from these domain names that promote its tournaments, events, players, awards, history, and offering merchandise for sale.
The disputed domain name was registered on April 29, 2011, which resolves to a web page containing golf related articles, product reviews and links.
5. Parties’ Contentions
The Complainant cites its registration of the trademark WORLD GOLF TOUR in the United States as prima facie evidence of ownership.
The Complainant submits that the trademark WORLD GOLF TOUR is well-known and part of a family of marks synonymous with its golfing contests. The Complainant submits that its rights in that mark predate the registration of the disputed domain name. It submits that the disputed domain name is confusingly similar to its trademark, because the disputed domain name incorporates in its entirety the WORLD GOLF TOUR trademark (citing PGA TOUR, Inc. v. Stu Piddassoh, WIPO Case No. D2007-1591) and that the similarity is not removed by the addition of the hyphens.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent has no trademark rights in or license to use the Complainant’s trademark. The Complainant also contends that use, which “is solely to generate traffic by use of the PGA TOUR’s WORLD GOLF TOUR trademark and PGA TOUR’s WORLD GOLF trademarks and identity in general” can not constitute a bona fide offering of goods or services.
Finally, the Complainant alleges that the registration and use of the disputed domain name was, and currently is, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy, and paragraph 3(b)(ix)(3) of the Rules, as by using the Complainant’s WORLD GOLF TOUR mark in the disputed domain name, and thereby “intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website” (presumably referring to Philip Morris Inc. v. Alex Tsypkin, WIPO Case No. D2002-0946).
The Respondent did not formally reply to the Complainant’s contentions. However, it did forward two email communications.
By email to the Complainant and copied to the Center dated October 11, 2012, the Respondent stated:
“Thank you for contacting me, and I will respond about your lawsuit. To note, I am not a big company that manages golf tour. It is only a website that is managed individually and the purpose to provide information such as news and tutorials to play golf. I got this domain name through research in the Google keywords research tool, which aims just to get traffic from the domain name. At the time I bought this domain I also did not get a warning or a ban from the other party and the domain is still available. I did not want to take down any other company with this website. The purpose of my website is not to make confuse the visitors and come to my website, because this is just a regular article and no facility to book or product sales. This website is non profit website, only about news and articles tutorials of golf. Some articles I get from various websites, but we always put the source of article. I bought the domain of world-golf-tour.net and set up it. After this website running well then I edited together with my friend to fill the content. It has been around 1 year past I never check my website and I do not know what the content was entered. This website is not a priority for me because there was no traffic coming to this website (I know this from Google analytic that I have put on this website). If indeed I am breaking the rules in the copying of articles and pictures from your website. I am sorry that for the amount. Since the first email about disputes domain that I received from (email@example.com), I was immediately shut down this website, by displaying a blank page on the main page and other pages. If the fault is in my domain to be turned off or turned over to the plaintiff, I do not mind. Just follow the rules and regulations.”
By email to the Center dated October 27, 2012, the Respondent stated:
“Hello, What this mean? And what should I do? I’m not really understand about internet law. I have make a response for this on 11 October 2012. I have CC my response to […] The claimant need I to send my domain transfer authority code. But how I can? My domain has locked from Namecheap.com”
6. Discussion and Findings
As it was sent prior to the due date for the Response on October 24, 2012 as determined by paragraph 5(a) of the Rules, the Panel has decided to accept the Respondent’s email dated October 11, 2012 as its Response in this case – but not the subsequent email - and will therefore proceed to analyze whether the Complainant has proven the three elements of a claim for transfer of the disputed domain name having regard to the Respondent’s email of October 11, 2012.
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark WORLD GOLF TOUR in the United States. The Panel finds that the Complainant has rights in the mark WORLD GOLF TOUR pursuant to United States Trademark Registration No. 3,866,287. In any event, under the Policy the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark WORLD GOLF TOUR.
Turning to whether the disputed domain name is identical or confusingly similar to the WORLD GOLF TOUR trademark, the Panel observes that the disputed domain name comprises: (a) an exact reproduction of the Complainant’s trademark; (b) hyphenated; and (c) followed by the generic top-level domain (gTLD) suffix “.net”.
It is well established that the top-level designation used as part of a domain name should be disregarded: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; and Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374). The relevant comparison to be made is with the second level portion of the disputed domain name: “world-golf-tour”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it can be confusingly similar to that mark despite hyphenation of the words comprising the trademark (see: EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036; The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038; InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075; NFL Properties, Inc. v. Rusty Rahe, WIPO Case No. D2000-0128; SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131; EasyJet Airline Company Ltd v. Mr Tim Holt, WIPO Case No. D2000-0465; Dr. Sally Jensen v. Dissertationdoctors.com and Dissertation-doctors.com, WIPO Case No. D2003-0348; Sony Ericsson Mobile Communications International AB, Sony Corporation, Telefonaktiebolaget LM Ericsson v. Dariusz Pietras, WIPO Case No. D2005-0553). This Panel agrees with numerous other UDRP panels such as these which held that the addition of hyphenation is not sufficient to avoid confusion.
Nothing in the Respondent’s reply addresses this issue.
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The disputed domain name is therefore confusingly similar to the WORLD GOLF TOUR trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1).
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see, National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). However, this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words (see, National Trust for Historic Preservation v. Barry Preston, supra.; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2).
On their face the words “world”, “golf” and “tour” are descriptive until one takes into account that fact that these combined are a registered trademark owned by the Complainant and form part of a family of registered trademarks involving the words “world” and “golf” such as WORLD GOLF CHAMPIONSHIPS, WORLD GOLF HALL OF FAME, and a number of variations of a theme involving the word “tour” including the registered trademarks PGA TOUR, THE TOUR CLUB, THE TOUR CHAMPIONSHIP, TOUR ACADEMY and TASTE OF THE TOUR. This Panel accepts that the amalgamation of these three words has trademark value to the Complainant.
Further, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because it is misleadingly directing Internet users to a landing web page dominated by photographic images taken at the Complainant’s tournaments as well as golfing related articles and links and that the website states that “the advertisements you see on this website are here to help the customer to find the best deals and the lowest prices about specific World Golf Tour”. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the disputed domain name.
This Panel finds that the Respondent is making an illegitimate commercial use of the disputed domain name. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its website and has been using the disputed domain name to divert Internet traffic to its PPC web page.
Indeed, the Respondent admits as much, stating in his Reply “I got this domain name through research in the Google keywords research tool, which aims just to get traffic from the domain name”.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
ii. you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The examples of bad faith registration and use in Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another (see Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).
The evidence supports the Complainant’s contention that the Respondent registered and has used the disputed domain name in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”.
In the Reply dated October 11, 2012, the Respondent stated:
“I got this domain name through research in the Google keywords research tool, which aims just to get traffic from the domain name. At the time I bought this domain I also did not get a warning or a ban from the other party and the domain is still available”. The Reply goes on to say “This website is not a priority for me because there was no traffic coming to this website (I know this from Google analytic that I have put on this website).”
The Respondent’s admission that he is only interested in the “traffic” reinforces the perception of an apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademark. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited, WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions (see The Professional Golfers’ Association of America v. Asia Ventures, Inc., WIPO Case No. D2005-0940; The Professional Golfers Association of America v. Mr. Michael Suggs, WIPO Case No. DTV2007-0012; The Professional Golfers Association of America v. RW Smith, WIPO Case No. D2007-1321).
The Respondent’s use of the disputed domain name is apparently for domain monetization unconnected with any bona fide supply of goods or services by the Respondent. In the circumstances the Respondent’s statement that there is “no facility to book or product sales” is not reliable evidence that the website is not for commercial gain. The business model in this case, is for the Respondent to passively collect click-through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s WORLD GOLF TOUR services then driving some of that traffic to the websites of affiliates who pay commission for page views. Exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,supra; Lilly ICOS LLC v. The Counsel Group LLC, WIPO Case No. D2005-0042; and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, supra).
This Panel finds that the Respondent has taken the Complainant’s trademark WORLD GOLF TOUR and incorporated it in the disputed domain name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a PPC parking web page hosted by the Registrar for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <world-golf-tour.net> be transferred to the Complainant.
Dated: November 21, 2012