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Generic Top Level Domain Name (gTLD) Decisions |
Augusta National Golf Club v. Paulo Cesar
de Souza Peixoto
Claim Number: FA0205000114357
PARTIES
Complainant
is Augusta National Golf Club,
Augusta, GA, USA (“Complainant”) represented by Martin B. Schwimmer.
Respondent is Paulo Cesar de
Souza Peixoto, Macae, BRAZIL (“Respondent”).
The
domain name at issue is <masters.biz>,
(the "Domain Name") registered with Communi Gal Communications LTD.
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.
Clive
Elliott as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (“IP”) Claim Form with
the Registry Operator, NeuLevel. As an
IP Claimant, Complainant timely noted its intent to file a STOP Complaint
against Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on May 20, 2002; the Forum
received a hard copy of the Complaint on
May 22, 2002.
On
May 31, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 20,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance
with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on June 20, 2002.
Complainant’s
first Additional Submission was timely received and determined to be complete
on June 25, 2002. Respondent’s Additional
Submission and Complainant’s second
Additional Submission were received after the deadline established for
submissions and are not
in compliance with STOP Supplemental Rule #7.
On July 22, 2002 pursuant to STOP Rule 6(b), the Forum
appointed Clive Elliott as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant
Complainant
claims to be the organizer of the world-famous MASTERS golf tournament. It
owns both registered and common law rights in the MASTERS mark covering the tournament, dissemination of the
tournament and information about the tournament via a variety of media, and for
merchandised goods relating to the tournament (i.e. golf apparel).
Complainant
owns various U.S. federal trademark registrations for the mark MASTERS, including Regs. Nos. 1069545,
1219958 and 1470536. These
registrations are in the name of Augusta National, Inc. Augusta National Golf Club is the Doing
Business As name for Augusta National, Inc.
Complainant
also maintains a world-wide portfolio of variants of the mark including THE MASTERS and MASTERS/AUGUSTA as well as design versions of the MASTERS mark.
Complainant
uses the MASTERS mark to designate
the MASTERS golf tournament, one of,
if not the most, famous golf tournament in the world. The tournament, the most watched golfing event on TV, has been
run under the name MASTERS for over
60 years.
The
Complainant notes that the Respondent has registered at least 42 .biz names and
2 name names and does not appear to be using any
of them in connection with
offering goods or services. All 44
names appear to be “Traffic-generators” – names that suggest some type of
content. None appear to have originated
with Respondent
B. Respondent
The
Respondent is an individual who creates websites for sale.
Respondent
claims the word MASTERS is a common and generic word
Respondent
admits that it has registered many generic names as websites.
Respondent
claims he is developing a website about great famous painters and his business plan is to sell the art, through
the intermediate of the Art Galleries of
the world and his registered clients.
He says that he will also put other services of electronic trades, with
sale of pointing reproductions and other works of less famous
artists,
biographies and information about the exhibitions of the works in the main
galleries around World. It is for this
website that he has registered the Domain Name.
C. Additional Submissions
As
indicated above, Complainant filed and served an Additional Submission in
accordance with STOP Supplemental Rule #7.
It
is asserted that the Response contains no evidence of ownership of any rights
in the MASTERS mark nor any
documentation or verifiable assertions of an intention to use the mark in
connection with any offering of goods or services.
The
Complainant submits, that in fact, the fabricated nature of the post-complaint
evidence is merely additional evidence of Respondent's
bad faith. Finally, it is asserted that Respondent's
documented assertion that it intended to utilise <masters.biz> to
sell art by old masters is a "hasty after-the-fact fabrication".
It is found that Complainant makes out
its case and succeeds for the reasons identified below.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be
transferred:
(1) the domain name
is identical 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 or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service
mark for which a Complainant
has registered an Intellectual Property (“IP”) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which
a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (“gTLD”) in the
disputed domain name is not a factor for purposes of determining
that a disputed
domain name is not identical to the mark in which the Complainant asserts
rights.
It
is clear from the evidence that Complainant has registered the mark MASTERS, in inter alia, the USA and
that the mark is widely known and closely associated with a famous golf course
and tournament.
Respondent
does not dispute Complainant's rights in the MASTERS mark but asserts that notwithstanding any claim to such
rights the word is generic. This in
itself is no basis for avoiding the conclusion that the MASTERS mark is registered and one in which Complainant has
protectable rights. It is also clear
that the Domain Name is identical to it.
Accordingly,
Complainant makes out this ground.
The question of whether a Complainant
should succeed where it has established a legal entitlement to a particular
mark but where that
mark also comprises a common English word and/or one which
is generic for various descriptions, is not an easy one to resolve. This fact set represents a tension between
trade mark rights and the rights of the public to use common English words to
describe
their goods, services or activities.
The STOP Policy seeks to find a logical
and reasonably consistent standard whereby this issue can be tested. The STOP
Policy thus
set out in paragraph 4(b) and (c) a series of considerations that
can be applied in such a situation, providing Panels and parties
some guidance
to determine whether proprietary or other rights should take precedence.
In the present case, in terms of
paragraph 4(b)(i) of the STOP Policy there is evidence supporting the assertion
that Respondent has
registered the Domain Name primarily for the purpose of
selling, renting or otherwise transferring the Domain Name for commercial
gain
out of proportion to the cost of obtaining the Domain Name.
Respondent has registered a large number
of domain names including <Pink.Floyd.name> and <palm.biz>. This and other evidence suggests that
Respondent is a domain name trader first and foremost and has registered these
domain names
as part of its business activity.
Paragraph 4(c)(i)-(iii) of the STOP
Policy provides a series of circumstances which can be used to find in favour
of a Respondent. These include, having
made demonstrable preparations to use
the domain name, to be commonly known by the domain name or to be making
legitimate non-commercial or fair use
of the domain name. None of these assist Respondent and it
seems, with respect, that there is merit in Complainant's assertion that
Respondent's post-complaint
evidence of use or intended use does not support a
contention of good faith.
Given the notification under the STOP
procedure that the Domain Name was alleged to infringe Complainant's trade mark
rights in its
MASTERS mark, the initial acceptance that Respondent would
transfer the Domain Name to Complainant (a position he subsequently resiled
from) and the determination to proceed notwithstanding, put the Respondent's
position in context.
It is one thing to argue that numerous
other parties use the term "masters" (as undoubtedly they do) it is
another to persist
in the registration, holding or use of the same name/mark
upon notice by an entity that has a longstanding and extensive reputation
in
that name/mark.
Accordingly, it is found that Respondent
lacks a legitimate interest or right to the Domain Name.
For the reasons outlined above, the Panel
finds that Respondent registered the Domain Name in bad faith. The Panel, infers from the evidence, that
Respondent is involved in the business of registering and dealing in domain
names. Given the mechanics of the STOP
procedure, it was on clear notice of Complainant's claim to rights in the
MASTERS mark. Even if it
were not for such notice the Respondent would have had
actual or constructive knowledge of Complainant's rights in the mark and in
his
Response does not submit otherwise.
If Respondent had put forward believable
evidence of actual or intended use of the Domain Name to designate a site for
art masters
he might have established a legitimate interest and therefore
entitlement to registration of the Domain Name. However, the evidence and submissions suggests registration of
the Domain Name was followed by subsequent and rather transparent efforts
to
show legitimate intended use and therefore good faith registration. For the reasons identified above the Panel
is of the view that this material was in all likelihood created to justify his
actions
and is not probative of legitimate and pre-existing efforts to use the
Domain Name in good faith.
Accordingly, it is found that this ground
is made out.
DECISION
In view of the above, it is found that
the Complainant has rights in the identical mark and that the Respondent lacks
rights or legitimate
interests in the Domain Name and that it registered the
Domain Name in bad faith.
Accordingly, the Domain Name shall be transferred
to the Complainant.
Clive Elliott Panelist
Dated: 2 August 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1354.html