WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Golf Town Operating Limited Partnership v. Steve Petter, Kevin Irvine
Case No. D2012-1973
1. The Parties
The Complainant is Golf Town Operating Limited Partnership of Markham, Ontario, Canada, represented by Cassels Brock & Blackwell LLP, Canada.
The Respondents are Steve Petter and Kevin Irvine, of New York, New York, United States of America.
2. The Domain Names and Registrar
The disputed domain names <golftownuk.com> and <newgolftown.com> were both registered with GoDaddy.com, LLC. As discussed below the disputed domain name <golftownuk.com> is currently registered with Safenames Ltd.
3. Procedural History
The Complaint regarding the disputed domain name <golftownuk.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2012. On October 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <golftownuk.com>. On October 9, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent “Petter Steve” is listed as the registrant and providing the contact for the disputed domain name <golftownuk.com>. The Complainant filed an amended Complaint adding the disputed domain name <newgolftown.com> on October 15, 2012. On October 15, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <newtowngolf.com>. On October 17, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent “kevin irvine” is listed as the registrant and providing the contact for the disputed domain name <newgolftown.com>. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the amended Complaint on October 23, 2012.
The Center verified that the Complaint together with the amended Complaint and the amendment to 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 the Respondents of the Complaint, and the proceedings commenced on October 31, 2012. The notification was sent by email and by post to the contact details provided in respect of both disputed domain names. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 20, 2012.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on November 27, 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.
On December 7, 2012, the Center received a communication from the Complainant, which was forwarded to the Panel, stating that the United States District Court, Southern District of Florida (the “District Court”), in Case No.: 1:12-cv-23726-UU, had issued a temporary injunction dated November 7, 2012, encompassing the disputed domain name <golftownuk.com>, among others, in favour of non-parties to the present proceeding. In so far as the temporary injunction impinges on the present proceeding, its ultimate effect included the transfer of the disputed domain name <golftownuk.com> from registrar GoDaddy.com, LLC into the custody of registrar Safenames Ltd., under the registrant name as: “In trust for the USDC, S.D. Fla., Case No. 12-23726-Civ-UNGARO /TORRES”. On December 13, 2012, the Registrar confirmed that the transfer had been effected to Safenames Ltd. by the registry, VeriSign in accordance with the aforementioned court order.
4. Factual Background
The Complainant, founded in 1999, operates in the business of golfing supplies and services in Canada and North America. It has a number of retail stores and also operates through websites on-line. The Complainant maintains an online presence through the use of social media, including Twitter, Facebook, YouTube and GT-TV, a video-streaming website located at “gttv.golftown.com”.
The Complainant owns numerous registered trademarks in which the words “golf town” are the common element, for goods or services related to golf. Specimen registrations include:
GOLF TOWN, Canadian Intellectual Property Office (CIPO), registration number TMA5253487, registered March 22, 2000;
GOLF TOWN, United States Patent and Trademark Office (USPTO), registration number 3859118, registered October 12, 2010;
GOLF TOWN, design in which a golf pennant protrudes into the word “golf” above from the word “town” below, USPTO, registration number 3953134, registered May 3, 2011.
Nothing of significance is known about the Respondents, except for the information placed on the registration documents of the disputed domain names. The disputed domain names <golftownuk.com> and <newgolftown.com> were registered on March 9, 2012, and October 8, 2012, respectively. It will be convenient to refer hereafter to the Respondent in the singular.
5. Parties’ Contentions
The Complainant contends that the Complaints in respect of the disputed domain names <golftownuk.com> and <newgolftown.com>, which have been registered in the names of different registrants, should be consolidated into a single Complaint. The Complainant says that contemporaneously with the placement of the disputed domain name <golftownuk.com> into registrar-lock status, the disputed domain name <newgolftown.com> was registered and <golftownuk.com> was re-directed to it. The business previously conducted through <golftownuk.com> was continued in all material respects, with essentially the same website content, at the redirection website at <newgolftown.com>.
The Complainant asserts that the registrants of both disputed domain names are in fact the same party, in the terms of paragraph 3(c) of the Rules, and contends that the Panel has discretion to consolidate separate Complaints under paragraph 10(e) of the Rules. The Complainant cites prior UDRP decisions in support of its motion for the consolidation of the Complaints.
As to the merits of the Complaints, the Complainant’s contentions include the following:
The Complainant has produced a copy of an on-line search of the CIPO Trademark Data, and a copy of an on-line search of the USPTO, in evidence of the Complainant’s rights in the trademarks listed in section 4 above.
The Complainant contends that the disputed domain names are each identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It submits that differences of punctuation and domain designation are of no consequence for the determination of confusing similarity under the Policy.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant’s trademark predates the registration of the disputed domain name <golftownuk.com> by more than 12 years. The Complainant has never had any business relationship with the Respondent or authorised the use of the Complainant's trademark by the Respondent. The Respondent does not appear to have rights in a trademark GOLF TOWN whether registered or otherwise. The Respondent’s business in connection with the disputed domain names relies on the Complainant’s trademark and therefore cannot be considered bona fide. The Respondent must have known or ought to have known of the existence of the Complainant’s trademark.
The Respondent further contends that the disputed domain names were registered and are being used in bad faith. The Complainant proposes that the Respondent had constructive knowledge of the Complainant’s trademark. The Respondent is trading on the Complainant’s trademark in the disputed domain names for the purpose of commercial gain by the confusion of Internet users. The Respondent uses the Complainant’s trademark GOLF TOWN, but additionally the Respondent displays a logo similar in many respects to the Complainant’s stylised trademark. The letters “uk” in the disputed domain name <golftownuk.com> create a false impression that the Respondent’s business is conducted in the United Kingdom of Great Britain and Northern Ireland (“UK”).
The Complainant sent a cease and desist letter to the Respondent on July 31, 2012 in respect of the disputed domain name <golftownuk.com>. The Respondent replied on July 31, 2012, writing: “If you would like to pay us 10,000 GBP, we are glad to sell this domain name to your company”. This is an amount clearly in excess of the Respondent’s out of pocket costs associated with the registration of the disputed domain name.
The Complainant has submitted a number of previous decisions under the UDRP that the Panel was invited to consider as possible precedent.
The Complainant requests the transfer to itself of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Consolidation of the Complaints
Initially this Complaint was brought in respect of the disputed domain name <golftownuk.com> registered in the name of “Petter Steve”. The Complaint was dated October 4, 2012; it was received by the Center on October 5, 2012, and according to the certification of the Complainant, was sent or transmitted to the Respondent on October 5, 2012.
On October 8, 2012, the disputed domain name <golftownuk.com> was locked by the registrar pursuant to the Center’s request for Registrar verification. On the same date the disputed domain name <newgolftown.com> was registered in the name of “kevin irvine". By October 10, 2012, visitors to <golftownuk.com> were being redirected to the website at <newgolftown.com>, which portrayed essentially the same detailed content, including initially the same masthead banner “GOLF TOWN uk.com” with its characteristic stylised design.
The Complainant seeks to consolidate the Complaints in respect of <golftownuk.com> and <newgolftown.com> into a single Complaint.
According to paragraph 1 of the Rules, a Respondent in a proceeding is “the holder of a domain-name registration against which a complaint is initiated”. This is reiterated in paragraph 3(b)(v) of the Rules, which requires the Complainant to provide “the name of the Respondent (domain-name holder)” and the Respondent’s contact details. The Rules make clear that a Complaint may relate to a number of disputed domain names but only a single controlling entity, stating at paragraph 3(c): “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”.
The Complainant requests the Panel in this case to consolidate the two disputes on the basis that they are in reality against the same party in terms of paragraph 3(c) of the Rules. Alternatively, the Panel is asked by the Complainant to act “pursuant to the Panel’s discretion to consolidate separate respondents, under paragraph 10(e) of the Rules”. Paragraph 10(e) of the Rules reads: “A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”. With respect, this does not give the Panel “discretion to consolidate separate respondents”; on the contrary, it requires the Panel to observe the Rules, including paragraph 3(c) of the Rules cited above. It does, however, make clear that a decision to consolidate Complaints, or otherwise, lies with the Panel.
In order to allow the consolidation of the two disputed domain names as one Complaint, the Panel requires to be satisfied on the balance of probabilities that a single guiding mind or entity is their ultimate proprietor (Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281: “The Panel concludes from its review of the relevant UDRP panel decisions discussed above that the consolidation of multiple domain name disputes under paragraph 3(c) or 10(e) of the Rules may be appropriate, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve.”)
In the exercise of its powers to consult public records (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 4.5), the Panel could not readily locate the New York street address specified by the registrant of <golftownuk.com>, and the associated telephone area code 477 did not appear to exist. The registrant address for <newgolftown.com> could not readily be found and the area code 574 was traced to Indiana rather than to New York.
The Panel concludes on the balance of probabilities that false physical and telephone contact details have been provided by the registrants of both disputed domain names <golftownuk.com> and <newgolftown.com> (however, a letter from the Complainant to the email address of the registrant of <golftownuk.com> was replied to). Where registrant contact details are false, a distinction is thereby created in the mind of the Panel between the words placed on the registration document, which may be meaningless, and the true identity of the effective holder of the domain name, which necessarily is a real person or entity. The wording of paragraph 1 of the Rules is consistent with an interpretation that a respondent in a proceeding may also include the real “holder of a domain-name registration” as distinct from any fictitious details created for the purposes of a registration document.
In its determination whether to allow the consolidation of these two disputes, and without prejudice to the merits of the Complaints, the Panel notes in particular that:
1. the disputed domain name <newgolftown.com> was registered almost immediately after a Complaint was made in respect of <golftownuk.com>;
2. the detailed content and format of the <newgolftown.com> website was virtually identical to that previously displayed at <golftownuk.com>, including business descriptions and linguistic idiosyncrasies;
3. the banner logo or masthead proclaiming “GOLF TOWN uk.com”, previously displayed on the <golftownuk.com> website, was initially displayed on the <newgolftown.com> website, following the commencement of the redirection of visitors from <golftownuk.com>;
4. neither of the purported Registrants of the two disputed domain names has contested the motion to consolidate the proceedings.
Having regard to all available evidence including points 1-4 above, the Panel is persuaded on the balance of probabilities that a single, albeit possibly unidentified, guiding mind or entity is behind the registration and use of both disputed domain names <golftownuk.com> and <newgolftown.com>.
In the particular circumstances of this case only, and prior to being informed by the Complainant through the Center on December 10, 2012, of the District Court injunction, the Panel was minded to allow the consolidation of the Complaints in respect of the disputed domain names <golftownuk.com> and <newgolftown.com>. The Panel would have done so with some reluctance because the preferred and least fraught solution to the Complainant’s predicament may have been simply to present separate Complaints in respect of each disputed domain name if the Complainant had indeed been aware of the injunction at the time it requested the consolidation of the Complaints.
The District Court injunction has, however, made it no longer necessary for the Panel to address the issue of consolidation. The present status is that the disputed domain name <golftownuk.com> is no longer active and is redirected to a source of the relevant District Court documents at “http://servingnotice.com/gwgpp/index.html”.
Paragraph 18(a) of the Rules governs the Panel’s options in the event that either Party engages in court action, as follows:
“Effect of Court Proceedings
(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
Although the matters before the District Court are not those before this Panel, and the Panel would be in a position to make a decision on the merits, any order the Panel might possibly make for the transfer of <golftownuk.com> to the Complainant would be unenforceable without reference to the District Court that has frozen the disputed domain name.
On the other hand, the disputed domain name <newgolftown.com> is presently in apparently active business and is held in registrar lock pending the Panel’s decision. A proceeding under the UDRP is intended to provide the Parties with a timely decision, which in the case of <newgolftown.com> is more pressing. In order to expedite matters in the circumstances the Panel has decided that the Parties would not be best served by consolidation of the two Complaints, the efficiency of which seems questionable also in light of the court proceedings and injunction issued in relation to <golftownuk.com>. The Panel finds it appropriate in the present case to order the termination of the present UDRP dispute pursuant to the Panel’s discretion under paragraph 18 of the Rules, being mindful of the concerned court proceedings and injunction apparently granted concerning the disputed domain name <golftownuk.com>.
Accordingly, the Panel orders the present UDRP proceedings to be terminated insofar as the disputed domain name <golftownuk.com> is concerned. This finding is without prejudice to the Complainant’s capacity to bring a separate UDRP proceeding at a future time in connection with the disputed domain name <golftownuk.com>, especially in the event that the court-ordered injunction concerning this domain name would be lifted.
B. Identical or Confusingly Similar
The Panel finds on the evidence that the Complainant has rights in the registered trademark GOLF TOWN. The disputed domain name <newgolftown.com> incorporates the Complainant’s trademark GOLF TOWN as the most conspicuous element, the prefix “new” being inconsequential and non-distinguishing in the context. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark within the meaning of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has asserted that it has not granted to the Respondent any license or authority to use the Complainant’s trademark or to register any domain name containing the Complainant’s trademark. The Complainant states there is no evidence of the Respondent holding any trademark related to GOLF TOWN or of being known by a similar name. The Respondent has not availed itself of the opportunity to refute the Complainant’s prima facie case by demonstrating any circumstances as provided by paragraph 4(c) of the Policy, and has not replied formally at all. The Panel finds under the circumstances that the Respondent does not have any rights or legitimate interests in the disputed domain name <newgolftown.com> in the terms of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a Respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(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 web site or other on-line 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 provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found alternatively.
According to the screen capture produced in evidence by the Complainant, the disputed domain name <newgolftown.com> was used for the purpose of a website that facilitated trade in golfing goods and services. The website appeared to be sophisticated, professional, comprehensive, and in every respect an on-line resource with extensive links for the sale of golfing requisites. Whilst it may be inherently legitimate to trade in goods on the Internet or to earn commissions through links, the proprietor needs to attract visitors to the website. In this case the Respondent evidently has sought to attract visitors by appropriation of the Complainant’s trademark GOLF TOWN without authority, and has compounded the deception by the display on the website of a logo uncannily reminiscent of the Complainant’s registered stylised trademark. The Panel finds the Respondent to have attempted intentionally to attract Internet visitors for commercial gain by confusion with the Complainant’s trademark, constituting bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel finds on the evidence and on the balance of probabilities that the disputed domain name <newgolftown.com> was registered specifically for the bad faith purposes for which it was used, constituting registration in bad faith.
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 <newgolftown.com> be transferred to the Complainant. As reasoned above, the Complaint in respect of the disputed domain name <golftownuk.com> is terminated without prejudice.
Dr. Clive N.A. Trotman
Date: December 13, 2012