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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
SportSoft Golf, Inc. v. Sites to Behold Ltd.
Claim Number: FA0006000094976
PARTIES
The Complainant is SportSoft Golf, Inc., Wall Township, NJ, USA ("Complainant"). The Respondent is Sites to Behold Ltd., ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is "GOLFSOCIETY.COM", registered with Network Solutions, Inc. ("NSI").
PANELIST(s) James Alan Crary as Panelist(s).
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/07/2000; The Forum received a hard copy of the Complaint 06/07/2000.
On 06/08/2000, NSI confirmed by e-mail to The Forum that the domain name "GOLFSOCIETY.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 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On 06/15/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/5/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.
The Forum received a response on 7/5/2000.
On July 13, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed James Alan Crary as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant’s subsidiary Golf Society of the US is a large dues paying association of golfers. Since it’s beginnings in 1995 it has garnered approximately 150 thousand dues paying members. It is the owner of Golf Society of the US, a trademark registered with the United States Patent and Trademark Office (2131470), registered 1/20/1998, it also has a pending trademark for "Golf Society Online" which was filed November 9, 1999.
On February 21, 1999 the Respondent registered the disputed domain name golfsociety.com. On August 24, 1999 prior to the Complainant’s acquisition of the Golf Society of the US, it attempted to acquire the golfsociety.com from the Respondent.
Complainant subsequently established the domain name golfsocietyonline.com. It was alleged that much of the traffic destined for golfsocietyonline.com mistakenly found it’s way to the disputed domain name golfsociety.com, which linked to a website which was under construction.
In the Complainant’s additional submission, Complainant submitted e-mails from members who had been confused by the two sites.
It was alleged that the disputed domain name was almost identical to the Complainant’s trademark. This was said to have been admitted by respondent, it was further maintained the Respondent began collecting e-mail registrations with the intent of reselling warehouse them for purposes of commercial exploitation.
It was alleged that Respondent had no rights or legitimate interests in the domain name. Complainant had established prior rights and a trademark registration. Respondent was not licensed to use the trademark. Respondent was not known commonly by the name Golf Society nor was Respondent using the domain name in connection with a bona fide offering of goods or services. Respondent was not making a legitimate noncommercial or fair use of the disputed domain name.
Bad faith was alleged under Paragraph 4, b, i of the Uniform Domain Name Dispute Resolution Policy (the Policy). It was maintained that it was apparent Respondent registered the domain name primarily for the purpose of selling or otherwise transferring the disputed domain name to the complainant or to a competitor of the Complainant. It was noted that 15 months had passed since registration yet the domain name was not linked to an active web site.
Respondent knew or should have known the Complainant’s use of the trademark before registering the domain name since it knew or should have known of the probable confusion that would result with Complainant’s trademark. Transfer of the domain name was sought by Complainant.
B. Respondent
The Respondent maintained that the term Golf Society is a widely used generic term. There are uncounted golf societies throughout the world and over 2,000 in Respondent’s native country, Ireland. Many are local uncomplicated associations associated with a geographical area. Golf societies are organized by local pubs and by groups of employees. Respondent’s organizers are both members of golf societies as well as other sporting associations.
After registering the domain name, a business plan was developed. Respondents were approved for a grant of the assistance toward the cost of a feasibility study in June 1999. The agreement for funding expires in July 2001.
Respondent contended that the disputed domain name was not identical to Complainant’s trademark. It was maintained that the words both "golf" and "society" are generic and the term "golf society" also was generic. The disputed domain name did not include the term "of the US".
Rather than registering a domain name matching Complainant’s trademark, Complainant chose to create a new on-line identity "golfsocietyonline.com". The confusion that had arisen between the disputed domain name and golfsocietyonline.com was due to the Complainant’s actions.
The Respondent admitted that it had collected e-mail registration but not for the purposes set forth in the complaint. Rather it was to enable Respondent to advice the registrants when the site was launched, a standard practice on pre-launch sites.
The term "golf society" pre-existed the trademark by several hundred years. Many modern golf clubs began their existence as a golf society. The generic term golf society could not be claimed by anybody thinking to establish exclusive rights. The domain name was registered to assist with the promotion of a golf society portal which would provide on-line services to golf societies everywhere. The business plan dated April 1999 provides evidence of this legitimate purpose. Respondent denied bad faith maintaining that before there was any notice of the dispute, Respondent made demonstrateable preparations for use of the domain name in connection with the bona fide offering of goods or services. Respondent sought to retain the domain name.
FINDINGS
1. The Complainant acquired the rights to the US Patent and Trademark Office registration for Golf Society of the US on September 1, 1999.
2. The Respondent registered the disputed domain name on February 21, 1999.
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements in order to demonstrate claims 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.
Identical and/or Confusingly Similar
Based on the contentions and the evidence submitted by the parties it was concluded that the disputed domain name is neither identical to nor confusingly similar to complainant’s trademark. The trademark links together two generic words – golf and society with a geographic entity, the United States. The disputed domain name incorporates the two generic terms golf and society with an upper level domain dot.com.
The Respondent rightly asserts that the term golf society is used throughout the world to identify various associations interested in golf.
Rights or Legitimate Interests
As noted under the Policy at 4(c), a Respondent may demonstrate rights and legitimate interests in the domain name if before any notice of the dispute Respondent has made demonstrateable preparations to use the domain name in connection with a bona fide offering of goods or services. While it is true Respondent has not as yet established a web site, the evidence supported a finding that there were demonstrateable preparations to use the disputed domain name before any notice of dispute with the Complainant. Respondent had created a business plan and obtained funding for an approximate 2-year period from Shannon Free Airport Development Company. That a web site has not been launched at this time was felt not to be a determinative factor.
Bad Faith
It was concluded that the greater weight of the evidence supported a finding that the disputed domain name was not registered in bad faith. The fact that the domain name is not linked to an active web site did not make it apparent that Respondent registered the domain name for the purpose of selling it to Complainant or it’s competitor. It was noted above that the evidence supported a finding that the Respondent before any notice of the dispute had made demonstrateable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The case law cited by Complainant was not persuasive. In two of the cases cited D 2000-0004 and D 2000-0086, no response was filed by the Respondent and the administrative panelist proceeded to decision on the basis of the complaint alone. In D 2000-0059, the disputed domain name was clearly identical to the trademark at issue, which was found not to be true in this case. Also, the Respondent in D 2000-0059 had made no demonstrateable preparations for use as there were here.
DECISION
For the reasons set forth above it was concluded the Complainant was not entitled to relief under 4i of the Policy, it was therefore ordered that the disputed domain name be retained by the Respondent.
James Alan Crary
Dated: July 27, 2000
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URL: http://www.worldlii.org/int/other/GENDND/2000/776.html