Generic Top Level Domain Name (gTLD) Decisions

The Complainant is SportsSoft Golf, Inc., Wall Township, NJ, USA ("Complainant"). The Respondent is playermagazine, London, Great Britain ("Respondent").

The domain name at issue is "PLAYERMAGAZINE.COM", registered with Network Solutions Inc ("NSI").

The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as the panelist in this proceeding.

James A. Crary as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/26/2000; The Forum received a hard copy of the Complaint on 07/26/2000.

On 07/28/2000, NSI confirmed by e-mail to The Forum that the domain name "PLAYERMAGAZINE.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On 07/28/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/18/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts, and to postmaster@playermagazine.com by e-mail.

A response to the complaint was submitted by Respondent on August 17, 2000.

On August 24, 2000, pursuant to Complainantís request to have the dispute decided by a Single Member panel, The Forum appointed James A. Crary as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

The Complainant contends that the domain name in dispute playermagazine.com is confusingly similar to Complainants trademarks "PLAYER" and "PLAYERíS PRIVATE COACH". The Complainant conducts business in the golf industry information and technology field. One of its divisions, The Golf Society of the US ("GSUS") has approximately one hundred and fifty thousand active dues paying members. Members receive the members-only magazine Player. One of the sections of the magazine is known as Playerís Private Coach.

On May 30, 1999 Respondent registered the disputed domain name but did not develop a web site. Respondent offered the disputed domain name for sale at supernames.com, a web site which has over 470 domain names for sale at prices ranging from $10,000 to $5M dollars.

Respondent had no rights or legitimate interests in the disputed domain name, was not a licensee or permitee of the Complainant. Respondent was not known by the name Player or Player Magazine and the Respondent was not using the domain name in connection with a bona fide offering of goods or services. There was no legitimate or fair use of the domain name by the Respondent.

Bad faith was alleged under Paragraph 4b(i) and (ii). Complainant maintained it was apparent that the purpose of the registration was for the sale or other transfer to the Complainant or a competitor. Respondent had not linked the domain name to an active web site and had solicited offers of $500,000 to purchase the disputed domain name.

Further it was maintained that Respondent engaged in the pattern of registering domain names in order to prevent the owners of trademarks or servicemarks from reflecting their marks in corresponding domain names.

B. Respondent

The Respondent operates an on-line commerce company engaged in the business of developing and operating web sites devoted to the casino/gaming industries. Respondent acquired the domain name playermagazine.com as part of its business plan May 30, 1999. Respondent and affiliated companies have developed more than 140 operational sites including gamblingmagazine.com, casinomagazine.com, and gamingmagazine.com as part of a series of "magazine.com" domains.

The term "player" is commonly used to refer to a person who enjoys or succeeds in gambling. The word "player" is incorporated into more than 16 trademarks relating to the casino and gambling industries. Respondent and its affiliated companies operate approximately 140 casino/gaming web sites. The playersmagazine.com was acquired to resolve into a corresponding gaming web site within Respondentís longstanding web site series.

Respondent asserted that the disputed domain name along with other domain names it owns were listed with supernames.com in the effort to discern their market value pursuant to the recommendation of a certified accountant in connection with Respondentís contemplated sale of substantially all of itís assets to an affiliated entity.

Respondent was a legitimate business well within itís rights to acquire domain names for the purpose of launching web sites once funding, design, and development of such web sites is completed. Respondent also operates web sites unrelated to the gaming industry such as creditcardmagazine.com and gossipmagazine.com. Respondent maintained that the evidence supported a finding of a bona fide intention to make commercial use of the domain name and denied bad faith.

The web site in development did not become operational until August 17, 2000. The "Player Magazine" web site has been located at http://209.153.230.243, pending the outcome of these precedings.

1. The Complainant is the owner of the trademarks Players and Players Private Coach associated with Complainantís PLAYER MAGAZINE, a magazine for a golf membership society.

2. The Respondent is engaged in the business of developing and operating web sites devoted to the casino/gaming industries. Respondent and affiliated companies have developed more than 140 operational web sites including a series of web sites in the "magazine.com" domain name format.

According to Websterís Dictionary, the term "player" means 1) a person who plays who plays a game, 2) a performer in a drama, 3) a person who plays a musical instrument, 4) a gambler, 5) an apparatus attached to a musical instrument, as in playerís piano. (Websterís New World Dictionary, Second College Edition, (1982) Simon and Shuster). The word "player" is a common descriptive word of general application. Where a trader uses descriptive name as a trademark, only slight differences will suffice to distinguish another trader and itís business from the first trader and itís business. GATEWAY, INC. v. PIXELERA.COM, INC. WIPO Case D2000-109.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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;

(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.

It was concluded that the domain name playersmagazine.com is confusingly similar to Complainantís trademark "PLAYER". For the question of similarity in the context of the Policy it is not relevant whether the trademark is used, nor whether the trademark is famous. Neither it is relevant for which goods or services the trademark has been registered or that other identical or similar trademarks exist. (Allocation Network GMB H v. Steve Gregory WIPO D2000-0016).

From the various materials submitted by the parties it was concluded that Respondent is in the business of developing and operating web sites in the casino/gaming industry. It has a series of presently operated casino/gaming web sites, which are linked to domain names such as casinomagazine.com, gamingmagazine.com, and gamblingmagazine.com. Some of the sites have been in operation for as much as 22 months, long before notice of a dispute concerning playersmagazine.com. The existence of the web sites together with other evidence support a finding that at the time of registration of the disputed domain name, Respondent had a bona fide intention to use playermagazine.com in connection with itís legitimate business in the casino/gaming industry. Thus the Panel concluded that the Respondent has demonstrated rights to and legitimate interests in the domain name.

The evidence did not indicate that the name playersmagazine.com was selected by Respondent with the intent to profit or otherwise abuse Complainantís trademark rights. Respondent is correct in asserting that the word "player" means gambler in the casino and gaming context. While there are players in innumerable sports and games, the word player has a distinct meaning in the context of gambling, at least according to Webster. The evidence did not support that the word "player" had any particular or distinct meaning associated with the game of golf.

In conclusion, under the circumstances of this case, it should be held that the Respondent has a legitimate interest in the domain name playersmagazine.com in accordance with Article 4c(i) of the Policy.

Since Respondent has a legitimate interest in the domain name playersmagazine.com it is not necessary for the panelist to consider bad faith.

Based on the findings and conclusions set forth above, it was concluded that the Complainant was not entitled to relief under 4(i) of the Policy. It was therefore ordered that the Respondent retain the disputed domain name.