Generic Top Level Domain Name (gTLD) Decisions

The Complainant is James H. Boudreau LadysGolf.com, Inc., Framingham, MA, USA ("Complainant"). The Respondent is Taylor & Pond Corporate Communications, San Diego, CA, USA ("Respondent"), represented by Cindy Pond of Taylor & Pond Corporate Communications.

The domain name at issue is "ladiesgolf.com", registered with Tucows, Inc.

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

Judge Irving H. Perluss (Retired) is the Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on May 2, 2001; the Forum received a hard copy of the Complaint on May 2, 2001.

On May 3, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain name "ladiesgolf.com" is registered with Tucows, Inc. and that the Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On May 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 11, 2001 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 Respondent’s registration as technical, administrative and billing contacts, and to postmaster@ladiesgolf.com by e-mail.

A timely response was received and determined to be complete on June 11, 2001. Complainant made an untimely additional submission which was considered by the Panel.

On June 19, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

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

A. Complainant

1. Complainant registered the domain name "ladysgolf.com" on September 17, 1997, and began using the name in commerce in late 1998. He provides golf products and services to women through a retail store and an on-line business.

2. As a consequence, Complainant has achieved common law trademark rights in the name "ladysgolf.com," and he has taken steps to register the mark formally.

3. The disputed domain name is confusingly similar to Complaint’s mark in sound, appearance and connotation.

4. By withholding the disputed domain name, Respondent is causing confusion with Complainant’s customers and is disrupting his business.

5. Respondent is in the advertising business and, since registering the domain name in 1996, has shown no intent of using the disputed domain name in commerce, or in connection with a bona fide offering of goods and services.

6. Respondent is not commonly known by the disputed domain name.

7. Respondent is using the disputed domain name in bad faith for it is intentionally attracting and diverting customers for commercial gain, i.e., Internet users who are seeking Complainant’s website.

8. Since there has been no formal use of the disputed domain name, Respondent is passively holding the domain name in bad faith.

B. Respondent

1. Respondent registered the disputed domain name on December 15, 1996, prior to Complainant’s use of the name "ladysgolf.com" in commerce, and if there is confusing similarity, it was created by Complainant.

2. Respondent has done extensive work for clients in the golf industry in connection with its marketing services.

3. The disputed domain name was originally planned to be utilized and presently is being used for the creation of a website for a nonprofit purpose, i.e., for the Executive Women’s Golf Association (ladiesgolf.com).

4. Complainant himself is responsible for any confusion among his customers, for he elected to register a domain name, incorporate, and enter business with a name confusingly similar to Respondent’s domain name.

C. Additional Submissions

The Panel has considered the additional submission of Complainant, although it did not meet the requirements of Forum Supplemental Rule 7 (no fee was received).

In the additional submission, Complainant asserts:

1. Respondent is not in the golf business, in that it does not sell golf products and services.

2. During the proceedings, the website for Executive Women’s Golf Association was created.

3. Complainant will trade a domain name it has registered, i.e., "ladiesgolf.org" ( which is better suited for a nonprofit organization) for the disputed domain name.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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;

(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.

There is a very short answer to Complainant’s contentions in this dispute.

It is to be recalled that Respondent registered the domain name "ladiesgolf.com" on December 15, 1996. Complainant registered the domain name "ladysgolf.com" on September 17, 1997, and began using the name in commerce in late 1998.

Both Complainant’s domain name registration and its use of the name in commerce were substantially subsequent to Respondent’s registration of the disputed domain name.

Obviously then, Complainant had acquired no rights in a common law trademark or service mark at the time of Respondent’s registration of the disputed domain name.

It may be assumed, arguendo, that Complainant’s domain name and the disputed domain name are confusingly similar (which they are).

It may also be assumed, arguendo, that Respondent does not have a legitimate interest or rights in the disputed domain name (which it does have). It may even be assumed, arguendo, that Respondent is using the domain name in bad faith (which it is not).

Nevertheless, the essential prerequisite which Complainant cannot demonstrate is bad faith registration of the disputed domain name by Respondent. The disputed domain name was registered before Complainant’s business began, and, indeed, before he had even commenced acquiring a common law trademark. (See Interep National Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000), wherein on page 5 it is said: "6.4 Although the Panel has found that Complainant has satisfied Policy 4(a)(i) and 4(a)(ii), it cannot find bad faith use and registration pursuant to Policy 4(a)(iii) on this record. The fact that Respondent registered its domain name two (2) years before the intent to use application of Complainant was filed and three (3) years before Complainant started using the mark is persuasive to the Panel that none of the bad faith factors in Policy 4(b) apply.")

Based on the above findings and conclusions, it is decided that the claim of Complainant to the domain name of "ladiesgolf.com," be and the same is, denied.