Generic Top Level Domain Name (gTLD) Decisions

P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com

MARK MARNEY,
THE GOLF WAREHOUSE
COMPLAINANT

vs.

GOLF WAREHOUSE
RESPONDENT

DECISION
Forum File No.: FAA0004000094419

The above-entitled matter came on for an administrative hearing on May 9, 2000, before Paul A. Dorf, Arbitrator, on the Complaint of Mark Marney, the Golf Warehouse, hereafter "Complainant" against Golf Warehouse, hereafter "Respondent.", represented by Richard J. Thomas, Esquire, Burke & Thomas. Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Name: golfwarehouse.com

Domain Name Registrar: Network Solutions

Domain Name Registrant: Greg Anda, Golf Warehouse

Date of Domain Name Registration: July 7, 1997

Date Complaint Filed: April 7, 2000

Response Due Date: May 2, 2000

The Complainant filed its complaint with the National Arbitration Forum on the above-referenced date. In compliance with the rules, The Forum transferred the Complaint to the Respondent . The Respondent did submit a response to The Forum within twenty (20) day period pursuant to the rules.

That the Respondent registered the domain name with Network Solutions, the entity that is the Registrar of the domain name. By registering its domain name with said Registrar, Respondent agreed to resolve any dispute regarding its domain name through ICANN'S Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT
The manner in which the domain name(s) are identical or confusing are set out herein below:

The Complainant registered the domain name thegolfwarehouse.com with Network Solutions on September 29, 1997. In April, 1998 the Complainant launched its website and began operating as an on-line golf store.

The Respondent registered the domain name golfwarehouse.com on July 7, 1997 and launched his website in August, 1997 for the purpose of offering custom made golf clubs for sale on-line. The Respondent operated this site from the summer of 1997 through the summer of 1998, but began having difficulties with his equipment supplier. In the summer of 1998, Respondent suspended his website while he began looking for a new supplier and locate business capital to develop a larger and more interactive commercial website.

The Complainant alleges that Golf Warehouse has continually changed his web page to give customers the impression that it is either an on-line golf store or will be an on-line golf store.

In August, 1999, the Respondent renewed his registration for the golfwarehouse.com domain name, and at that time re-opened his website offering golf books and instructional videos for same through an association with Amazon.com while he finalized his plans to add custom made golf clubs and other golf merchandise to his site. In the early winter of 1999, the Respondent located a supplier who was interested in working with Respondent. The Respondent then became to redesign his website and had intended to re-launch his website in April, 2000.

The Complainant alleges that it spends millions of dollars every year branding its name. The Respondent has attached to its response as Exhibit A the October/November 1999 edition of Golf Retailer, which contains within an article entitled Golf-Course Retail Registry - Internet Retailers, in which The Golf Warehouse is listed. A quote from Mark Marney, one of the owners of The Golf Warehouse, states "We'll do in excess of $6 million in sales with only $150,000 in advertising." This is contradictory to the Complainant's allegations regarding its advertising expenditures.

The Complainant also alleges that Mr. Anda of Golf Warehouse is a typical cyber-squatter and refuses to direct customers to their site. The Complainant admits that they have offered Mr. Anda $75,000 to purchase the URL; however, he throws out higher numbers and then refuses to return calls and e-mails.

The Respondent acknowledges that he was contacted by "Paul" who indicated that a group of people wanted to start an on-line golf store and wanted to buy the domain name golfwarehouse.com for $500.00. The Respondent indicated that he was not interested. It was later revealed that "Paul" was an agent of Complainant. Mark Marney, one of the owners of The Golf Warehouse, made various offers to purchase the domain name. While Respondent considered these offers, he decided to maintain the domain name and open his own site as originally intended.

The Respondent has placed the re-opening of his website on hold until the outcome of this Arbitration.

CONCLUSIONS
The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected and being impartial, the undersigned makes the following findings and conclusions:

It is clear that Complainant has failed to establish any of the three necessary elements to prevail in this arbitration. First Complainant has failed to establish that it has any trademark or service mark in its name. Although Complainant alleges that "golfwarehouse.com" is confusingly similar to its domain name, this confusion was crated when it registered and developed an online business based on a domain that is nearly identical to Respondent’s previously registered domain name. Additionally, it is clear that Respondent has used this site for commercial purposes and after temporarily suspending the site. has continued to take substantial and concrete steps to reopen a fully functional site. Finally, Complainant has failed to produce any evidence that Respondent registered and used its domain name in bad faith.

The undersigned has reviewed all the evidence presented in this case by both parties and has concluded to believe the facts and circumstances as set forth by the Respondent. For that reason, the undersigned decides that:

1. while the domain names as registered by the Respondent are similar to the domain name registered by the Complainant, the Complainant registered its domain name after the Respondent and any confusion created by the similar domain names was the result of the Complainant registering a name which was nearly identical to the name already registered and being used by Respondent;
2. the Complainant has no rights to a trade mark or service mark bearing the domain name; and
3. the Respondent has rights or legitimate interests with respect to the domain name; and
4. the Respondent domain name has not been registered and is not being used in bad faith.

It is therefore just, right and proper that the domain name golfwarehouse.com remain registered to the Respondent.

DECISION

aBased upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME GOLFWAREHOUSE.COM REGISTERED BY RESPONDENT, GOLF WAREHOUSE, REMAIN WITH THE RESPONDENT.

Dated: May 9, 2000, by Judge Paul A. Dorf, (ret.), Arbitrator