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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Professional Golfers Association of America v. MONIKER460461/ Domain Names Administration/ St Kitts Registry

Case No. D2007-0900

 

1. The Parties

The Complainant is The Professional Golfers’ Association of America, United States of America, represented by Arnold & Porter, United States of America.

The Respondent is Moniker 460461/ Domain Names Administration/ St. Kitts Registry, Olam, St. Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <scpga.org> is registered with Monike Online Services,  LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2007. On June 20, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On July 3, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response advising that MONIKER460461/Domain Names Administration/St. Kitts Registry is listed as the registrant and providing the contact details. On July 10, 2007, Complainant filed an amendment to the Complaint. The Center verified that the Complaint together with the amendment to 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 July 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2007.

The Center appointed Ross Carson as the sole panelist in this matter on August 16, 2007. 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 and its predecessors have conducted business on behalf of golf professionals in the United States of America since 1916. Complainant is the owner of numerous trademark registrations in the United States of America for or including PGA registered in association services and goods related to golf. Examples of such trademark registrations are United States Trademark Registration No. 578653 registered August 11,1953 for the trademark PGA registered in relation to instructing in the game of golf and for an entertainment service in the nature of golfing exhibitions, first used in 1916, and in commerce since 1916; United States Trademark Registration No. 595691 registered September 21, 1954 in relation to employment agency service in finding professional golfing jobs for professional golfers, first use in 1916 and in commerce since 1935; United States Trademark Registration No. 1705683 registered August  4, 1992 for the trademark PROFESSIONAL GOLFERS’ ASSOCIATION OF AMERICA, PGA, design registered in relation to indicating membership in applicant’s organization which is an association of golf professionals, first use in commerce on October 16,1956; United States Trademark Registration No.1678437 registered March 10, 1992 for the trademark PGA, PROFESSIONAL GOLFERS ASSOCIATION OF AMERICA, design registered in relation to jewelry, wearing apparel, namely sweaters, shirts, gloves and coveralls, sporting equipment, namely golf clubs and golf balls, first use in commerce since October 16, 1956; United States Trademark Registration No. 2810446 registered February 3, 2004 for the trademark PGA.COM registered in relation to entertainment services, namely organizing and conducting competitions and tournaments in the field of golf, educational services, namely, conducting instructional programs in the field of golf, providing news and information regarding all aspects of the field of golf through global computer networks, first use in commerce since January 26, 1998.

Complainant conducts many of its events for PGA members, apprentices and amateur golfers through its regional sections. The Southern California Section of the PGA of America is generally referred to as the “SCPGA”. Every year, the SCPGA offers golf-related services under the SCPGA and PGA trademarks, developing and administering junior golf programs in addition to undertaking philanthropic and other community services in Southern California.

To promote such activities, the SCPGA has registered the domain name <scpga.com>, which is used to redirect visitors to the SCPGA webpage on the PGA of America website, and offers information regarding SCPGA’s golfing activities. On this website, information related to the activities of the broader PGA of America is also provided, including members-only PGA information, pro finders, tournaments and employment opportunities.

5. Parties’ Contentions

A. Complainant

A.1 Identical or Confusingly Similar

Complainant submits that the domain name in dispute incorporates the whole of Complainant’s registered trademark PGA and the whole of Complainant’s common law trademark SCPGA. Complainant further submits that numerous UDRP panels have held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety. See, e.g., Am. Online, Inc. v. aolgirlsgonewild.com, NAF Case No. FA0207000117319 (Sept. 19, 2002) (noting that “aolgirlsgonewild” incorporated complainant’s “entire mark” and implied “an affiliation that simply does not exist”). It is equally well-recognized that “the adaptation of a recognized trademark in a Domain Name by the . . . addition or insertion of . . . words or acronyms does not escape a finding of confusing similarity”. See also Am. Online, Inc. v. Yeteck Commc’n, Inc., WIPO Case No. D2001-0055.

Complainant further submits that the addition of a generic top-level domain name such as “.org”, “.net”, or “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. See, e.g., Aous Uweyda v. Abdallah Sheet, NAF Case No. FA165119 (Aug. 1, 2003). Complainant further stases that the domain name in dispute merely adds “.org” but is otherwise identical to or confusingly similar to Complainant’s trademarks PGA and SCPGA..

A.2 No Right or Legitimate Interests in respect of the Domain Name

Complainant states that Respondent has not been licensed or authorized by Complainant to use its registered trademark PGA or its common law trademark SCPGA.

Complainant further submits that upon information and belief, the registrant of the domain name in dispute has never been known by “SCPGA”. The website associated with the domain name in dispute provides no explanation for the use of “SCPGA” in connection with a directory website. Complainant states that UDRP panels has previously held that there is no legitimate interest when there is no evidence that a respondent is commonly known by the domain name. See Marriott Int’ 1, Inc. v. Thomas, Burstein, & Miller, WIPO Case No. D2000-0610.

Complainant submits that Respondent is using the domain name in dispute to misdirect Internet traffic to its own website, which advertises links for different golf services, instructions and products. This cannot qualify as a bona fide, noncommercial, or fair use of the domain name under paragraph 4(c)(iii) of the Policy. Tech. Props., Inc. v. Personal, NAF Case No. FA 96569 (March 26, 2001) (stating that “offering services or products, via a confusingly similar domain name, that are comparable to the products and services of the trademark owner, is not a bona fide use of the domain name”). Specifically, prior UDRP panels have found, offering such a directory of links at a domain name does not constitute a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. See, e.g., Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No. D2003-0758; Hewlett-Packard Company v. Alvaro Collazo, FA0302000144628 (Nat. Arb. Forum).

A.3 Registered and Used in Bad Faith

Complainant submits that Respondents bad faith in registering the domain name in dispute is demonstrated by the fact that Respondent was without a doubt aware of Complainant’s rights in the numerous trademarks for or including PGA. The PGA of America is one of the most recognizable golf-related entities in the United States and worldwide. Complainant further submits that it is simply inconceivable that Respondent was unaware of Complainant’s rights in the numerous trademarks for or including PGA when it chose to wholly incorporate the well known PGA trademark, and did do so in a way that was identical to the trademark SCPGA used by the Southern California chapter of the PGA for its name and website. See e.g., Swarovski A.G. v. Modern Empire Internet Ltd., WIPO Case No. D2006-0148. Such knowledge of Complainant’s rights is further evidenced by the fact that Respondent has directed the domain name in dispute to a directory website dominated by links for golf, golf related activities, golf services and golf products. Respondent has registered a domain name that wholly incorporates the PGA trademark and is identical to the SCPGA mark in an attempt to confuse consumers into visiting the website associated with the domain name in dispute, perhaps believing that the website is affiliated with Complainant.

Complainant submits that that Respondents bad faith registration of the domain name in dispute with knowledge of Complainants trademark rights in the trademark for or including PGA is bolstered by the fact that National Arbitration Forum has demanded a transfer of a domain name from Respondent in the past. See Toyota Motor Sales, U.S.A. v. St. Kitts Registry, NAF Case No. FA0705000980697 (Jun. 21, 2007) (holding that St. Kitts Registry’s registration of <lexusowners.com> for a website with links to competing automobile websites was not permissible).

Complainant further submits that Respondent’s intentional use of the domain name in dispute which is confusingly similar to Complainant’s trademarks PGA and SCPGA in association with a website providing links to golf services and products was an attempt to attract Internet users to Respondent’s website for gain by creating a likelihood of confusion as to source of the website.

Complainant submits that it is well-settled among numerous UDRP panelists that Respondent’s type of use of a domain name confusingly similar to a complainant’s trademark to a competing website demonstrates bad-faith use under the Policy. See, e.g., Popular Enters., LLC v. Am. Consumers First et al., WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect web users away from complainant’s website is evidence of bad faith) (citations omitted); Ameriquest Mortgage Co. v. Phayze Inc., WIPO Case No. D2002-0861 (finding bad-faith registration and use because the respondent was “attracting traffic that he would otherwise not get for his website”).

B. Respondent

The Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The fact that the Respondent did not submit a Response does not automatically result in a decision in favor of the Complainant. The failure of the Respondent to file a Response results in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding, AG v. AAIM, WIPO Case No. D2000-0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy complainant must establish rights in a trademark and secondly prove that the domain names in dispute are confusingly similar to the trademarks in which complainant has rights.

Complainant is the owner of numerous registrations in the United States of America for or including the trademark PGA registered in connection with golf equipment, golf tournaments, wearing apparel, and other related products and services. Complainant’s trademarks for or including PGA have been in use in the United States of America since 1916. Complainant is also the owner of the common law trademark SCPGA as a result of the substantial use of the trademark SCPGA in association with golf related services by the Southern California Section of Complainant. The domain name in dispute incorporates the whole of Complainant’s registered PGA trademarks. Numerous UDRP panels have held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety. See, e.g., Am. Online, Inc., v. aolgirlsgonewild.com, NAF Case No. FA0207000117319 (Sept. 19, 2002) (noting that “aolgirlsgonewild” incorporated complainant’s “entire mark” and implied “an affiliation that simply does not exist”).

The domain name in dispute is identical to Complainant’s SCPGA trademark. The addition of a generic top-level domain name such as “.org”, “.net”, or “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. See, e.g., Aous Uweyda v. Abdallah Sheet, NAF Case No. FA165119 (Aug. 1, 2003). In this case the domain name in dispute merely adds “.org” but is otherwise identical to Complainant’s SCPGA trademark.

The Panel finds that Complainant has proven that the domain name in dispute is confusingly similar to the Complainant’s registered and common law trademarks.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the domain name.

On the material before the Panel Respondent has not used any of the trademarks PGA, SCPGA or any variation thereof in association with any bona fide goods or services offered by Respondent.

The Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s trademarks or any trademarks confusingly similar thereto. The domain names in dispute are used by Respondent for websites which advertise links for different golf services, instructions and products. The use of the domain name in dispute to divert Internet traffic to Respondent’s websites associated with the domain names in dispute is not a legitimate use of the domain names in dispute. Respondent did not file any evidence to demonstrate Respondents rights or legitimate interests in the domain name in dispute as it was entitled to do pursuant to paragraph 4(c) of the Policy.

Complainant has used its registered PGA trademarks in association with golf related services since as early as 1916 and in relation to golf associated goods since 1956 in the United States of America and such adoption and use substantially precedes the registration date of the domain name in dispute in 1998. Through long and substantial use of Complainant’s registered trademarks in association with golf related entertainment services in the United States of America it can reasonably be inferred that the Respondent had notice of Complainant’s trademarks at the time when it registered the domain name in dispute; (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.)

The Panel finds that Complainant has proven that Respondent does not have any rights or legitimate interests in the domain name in dispute.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the domain name in dispute has been registered and used in bad faith.

Having regard to Complainants long standing and extensive use and long standing registrations in the United States of America of the registered trademarks for or including PGA registered and used in relation to golf related services and goods and no evidence of bona fide use of such trademarks by Respondent in association with any goods or services, the Panel infers that Respondent registered the domain names in dispute with knowledge of Complainant’s widely known trademarks.

The registration of domain names identical or confusingly similar to well-known trademarks by a person with no connection to that trademark amounts to “opportunistic bad faith” (see Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137).

Respondent has engaged in a pattern of registering domain names incorporating well-known trademarks as domain names. Toyota Motor Sales, U.S.A. v. St. Kitts Registry, NAF Case No. FA0705000980697 (Jun. 21, 2007) (holding that St. Kitts Registry’s registration of <lexusowners.com> for a website with links to competing automobile websites was not permissible); Columbia Insurance Company, Benjamin Moore v. Whois Data Sheild and St. Kitts Registry, WIPO Case No. D2007-0741 (holding that St. Kitts. Registry’s registration of <benjaminemoore.com> for a website with links to competing websites selling paint and paint related services was not permissible); Lavalife Inc. f/k/a Interactive Media Group (Canada) Limited, NAF Case No. FA0706001011427 ( July 31, 2007) (holding that St. Kitts Registry’s registration of <lavalfe.com> for a website with links to third parties in direct competition with complainant was not permissible); New Strater Cororation, Inc. v. St. Kitts Registry, NAF Case No. FA0706001009019 August 1, 2007) (holding that St. Kitts Registry’s registration of <straterhotel.com> for a website with links to various third-party hotel and travel websites not in direct competition with complainant was not permissible). The registration of multiple domain names incorporating well-known trademarks amounts to bad faith (see Corbis Corporation v. RegisterFly.com/Whois Protection Service/surf advertising company/ Joseph, Graham, WIPO Case No. D2006-0546; First Place Financial Corp. v. Mustneed.com, NAF Case No. 493838).

In registering and using the domain name in dispute, Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s website. The domain name in dispute resolves to webpages that provide links to golf information, golf events, golf magazines and golf products. The links on the website have the appearance of pay-per-click advertising links. The use of well-known trademarks as a domain name to link to pay-per-click advertising websites is a persuasive indication that the Respondent deliberately seeks to capitalize on the identity or close similarity of the domain name in dispute to Complainant’s trademarks and to gain revenue there from (see Alta Vista Company v. Andrew Krotov, WIPO Case No. D2000-1091; MatchNet pk v. MAC Trading, WIPO Case No. D2000-0205).

The Panel finds that Complainant has proven that Respondent registered and used the domain name in dispute in bad faith as setout in paragraph 4(b)(iv) of the Policy.

7. Decision

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 <scpga.org> be transferred to the Complainant.

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Ross Carson
Sole Panelist

Dated: August 30, 2007