DECISION

The Trustees of the Trust Number SR-1 v. Turnberry, Scotland Golf and Leisure c/o International Languages

Claim Number: FA0208000122224

PARTIES

Complainant is The Trustees of the Trust, Number SR-1, Aventura, Florida, USA represented by David A Gast Esq., of Malloy & Malloy PA, Miami, Florida.  Respondent is Turnberry, Scotland Golf and Leisure, c/o International Languages, Inc.,Toronto, Ontario, CANADA represented by Brian D. Albert Esq., of Law Offices of Brian D. Albert, PA, Miami, Florida.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <turnberryonthegreen.com> and <turnberry-on-the-green.com>, registered with Tucows, Inc.

PANEL

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.

Alan L. Limbury as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 23, 2002; the Forum received a hard copy of the Complaint on August 22, 2002.

On September 11, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain names <turnberryonthegreen.com> and <turnberry-on-the-green.com> are registered with Tucows, Inc. and that the Respondent is the current registrant of the names.  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 September 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 1, 2002 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, to postmaster@turnberryonthegreen.com and to postmaster@turnberry-on-the-green.com by e-mail.

A timely Response was received and determined to be complete on October 7, 2002.

Complainant filed a Reply and Additional Submission dated October 11, 2002. Respondent filed an Additional  Response dated 15 October 2002.  Complainant filed a “Sur-Reply” dated October 16, 2002.  Respondent filed a “Response to Sur-Reply” dated October 20, 2002. All of these submissions were unsolicited by the Panel.

On October 23, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is a Florida trust, composed of Donald Soffer and Bernard Redlich, doing business under the name Turnberry Associates as a real estate developer and property manager. It was founded more than 40 years ago. It has developed shopping malls, residential developments, hotels and resorts across the United States. In particular, it has developed several projects bearing names incorporating the name Turnberry, including One Turnberry Place; Turnberry Plaza; Two Turnberry Place and Turnberry Isle Resort and Country Club (all of which are located in Aventura, Florida) and Turnberry Place/Stirling Club in Las Vegas. Projects under way include Turnberry Ocean Colony at Sunny Isles Beach, Florida, Turnberry Village and Turnberry On The Green, both at Aventura, Florida.

The Turnberry On The Green development, due to open in December 2002, overlooks the golf course of the Turnberry Isle Resort and Country Club. It offers for rental apartment homes, penthouses and tower suites with floor plans named after well-known golf courses such as St. Andrews, Spyglass and Augusta. Complainant advertises this project in South Florida and throughout the United States. Complainant advertised the domain name <turnberryonthegreen.com> before taking steps to register it, when it discovered that it was already registered.

Complainant has used the mark TURNBERRY for the last 40 years in respect to various commercial and residential development projects. It has US registrations and applications for TURNBERRY ISLE (registered August 1, 2000; another application filed April 2, 1999); TURNBERRY ISLE design plus words (registered May 22, 1990); TURNBERRY (registered March 28, 2000; two further applications filed March 29, 1999; two further applications filed April 2, 1999); ONE TURNBERRY PLACE (registered March 28, 2000); TURNBERRY PLAZA (registered August 6, 2002); TURNBERRY ASSOCIATES (application filed March 29, 1999); TURNBERRY PLACE in various forms and classes (six applications filed April 2, 1999) and TURNBERRY TOWER SHOPS (application filed January 7, 2002).

Complainant applied on June 5, 2002 for Federal registration of the mark TURNBERRY ON THE GREEN for “apartment rental services”, stating the date of first use as February 19, 2002 and the same date as the date of first use in commerce. Likewise it registered the same mark in Florida on July 29, 2002, for the same services, specifying February 19, 2002 as the date of first use in Florida and the date of first use anywhere.

The disputed domain names were registered on March 15, 2001 in the name International Languages, of 94 Cumberland Street, ste 807, Toronto, Ontario m5rla3, Canada, as registrant, with Mr. Joseph Davidovic, of the same address, as Administrative and Billing Contact. They have not been used.

On behalf of Complainant, Mr. Phil Perko asked Mr. Davidovic in a telephone conversation why he had registered the domain name <turnberryonthegreen.com> and was told that Mr. Davidovic’s partner in South Florida had heard about Complainant’s Turnberry On The Green residential development and said it was a good domain to buy. Mr. Davidovic then offered to sell both disputed domain names for $300. This offer was accepted and on April 21, 2002, Mr. Davidovic prepared, signed and sealed with the seal of International Languages, Inc. an agreement to transfer both disputed domain names and faxed it to Mr. Perko. This was signed on behalf of Complainant and faxed back to Mr. Davidovic.

A WHOIS search conducted on April 22, 2002 revealed the disputed domain name <turnberryonthegreen.com> was still registered in the name International Languages.

The agreement was not honoured. Mr. Davidovic explained to Mr. Perko that this was because his partner in South Florida thought the disputed domain names were worth substantially more than $300.

Some time after April 21, 2002 the name of the registrant of the disputed domain names was changed to Turnberry, Scotland Golf and Leisure, c/o International Languages, Inc. at the Cumberland Street address. The Administrative contact was also changed to Turnberry, Scotland Golf and Leisure, with the same street and email addresses as Mr. Davidovic. Complainant says these changes amounted to ‘cyberflying’ in an attempt to circumvent the Policy.

On May 3, 2002, in response to a formal demand from Complainant’s attorneys, Brian D. Albert Esq., the attorney representing “Mr. Joseph Davidovic (International Languages, Inc.) and the owner of the [disputed] domain names” denied that Mr. Davidovic entered into a contract to sell those names; denied that Mr. Davidovic or International Languages, Inc. was the owner, registrant or authorized licensee of those domain names and asserted that they were not authorized to transfer those names, which were registered in the name of Mr. Davidovic and his company on behalf of and in trust for their owner, to whom Mr. Davidovic provides web development services. Mr. Albert noted the advertising by Complainant of <turnberryonthegreen.com> on a billboard at Complainant’s construction site, claimed that it would cause confusion and asserted that it was placing a burden on his client’s web servers. He demanded Complainant cease use of his client’s trade name.

In a subsequent letter dated June 24, 2002, Mr. Albert noted that Complainant had begun using the domain name <turnberryonthegreen.biz> and asserted that his client’s web and email servers were being overwhelmed with communications intended for Complainant, due to the fact that his client had yet officially to launch its website. He suggested as solutions either payment by Complainant of a monthly fee of $10,000 so long as it used the <turnberryonthegreen.biz> domain name or transfer to Complainant of the <turnberryonthegreen.com> domain name for its fair market value plus his client’s expected profits from its use over the life of the domain name. The value he placed on the domain name was $950,000 and an offer from Complainant was invited. No mention was made of the <turnberry-on-the-green.com> domain name.

Complainant contends that the disputed domain names are identical to its trademark TURNBERRY ON THE GREEN and that Respondent has no rights or legitimate interest in them because it has not used them, is not known by that name and has no trademark or service mark rights in them. Further, Complainant says Turnberry, Scotland Golf and Leisure is not a known legal entity in the United States or Canada and that Respondent’s sole intention for the change in registrant name was to fabricate a basis to renege from the executed agreement to sell the names and to cloud the issue of the actual owner. 

Complainant says the disputed domain names were registered and are being used in bad faith, relying on each of paragraphs 4(b)(i), (ii), (iii) and (iv) of the Policy.

B. Respondent

Respondent is a Canadian start-up organized to develop an informational website about golfing and leisure in the world famous Turnberry region of Scotland.   Respondent began preparing a business plan in February 2001 and engaged Mr. Davidovic’s company, International Languages, Inc. to register the disputed domain names on its behalf. Accordingly, Respondent became the registrant on March 15, 2001 even though International Languages registered the domain names in its own name, as it does for each of its clients, in order to provide trouble-free account management.

Shortly thereafter Respondent commenced its efforts to raise venture capital to fund the development and marketing of the website. This process took longer than expected and has not been as successful as anticipated. Respondent embarked on a yearlong odyssey to raise seed capital at the same time that Internet venture capitalists were closing their coffers. About one year later, in early 2002, Respondent decided to attempt to develop the website on a shoestring and began to re-draft its business plan. At about this time, in late April 2002, Mr. Davidovic received a phone call from Mr. Perko on behalf of Complainant.

Mr. Davidovic was not the registrant of the disputed domain names and did not have the authority to transfer them. In agreeing to sell them, he mistook them for two other domain names that he did have authority to sell, belonging to another of his clients. He did not realize his mistake until he reported to Respondent that he had sold the names for $300, whereupon Respondent immediately told Mr. Davidovic that he had no authority to do so. Respondent also urged Mr. Davidovic to change the registration information to Respondent’s trade name, Turnberry, Scotland Golf and Leisure, to minimize the possibility of such a mistake recurring. This change in the WHOIS registration information took place in late April 2002.

Respondent does not deny that the disputed domain names are identical to Complainant’s mark.  Complainant did not use the corresponding mark until February 19, 2002 and has provided no evidence suggesting that Respondent or anyone else named in the Complaint knew about Complainant’s use or intended use of the corresponding mark at the time Respondent registered the disputed domain names. The fact that Respondent registered the disputed domain names almost one year before Complainant first used the corresponding trademark makes it impossible for the Panel to find for Complainant.

“Turnberry” is a common trade name used globally by many companies for many purposes and in many derivatives, especially in the real estate and golf industries. Complainant does not have an exclusive right to use the Turnberry name nor does it have an exclusive right to all corresponding domain names.

When Mr. Davidovic received a letter from Complainant’s attorney on May 1, 2002, Respondent decided temporarily to cease all further development of its website pending resolution of the matter. Respondent must expend all of its energy and resources on defending its right to retain the disputed domain names, which form the foundation of Respondent’s developing business. Respondent had definitive plans to begin using the disputed domain names at around the time that Complainant began its proceedings. It registered the disputed domain names more than one year in advance of the targeted launch of its website. Respondent has put its plans on hold due to the harassment of Complainant, other than to post some basic information about golfing in Scotland as a public service.

Respondent has chosen not to provide any additional information regarding the specific steps that it has taken in developing its website because it does not believe any further information is necessary in order to prevail and because it believes this proceeding constitutes harassment.  Respondent does not wish to provide any additional information regarding its plans to Complainant.

As to Complainant’s allegation that Respondent is not a known legal entity, Respondent is a company in formation. Its efforts to transcend the formative stage have been stifled by Complainant’s persistent harassment. It operates as a limited partnership. Shortly before the commencement of commercial activities, Respondent plans to incorporate.

Respondent is making legitimate non-commercial or fair use of the disputed domain names because Respondent has created a website providing information about golfing in Scotland.

Because the disputed domain names were registered almost one year before Complainant’s first use of the trademark, Respondent could not have registered the domain names for any of the prohibited purposes and it is impossible to allege and prove bad faith.  As to the alleged agreement by Mr. Davidovic to sell the disputed domain names, he was neither the owner nor the registrant and had no authority to transfer the names.

Complainant should not have used Respondent’s counsel’s letter referring to the amount of $950,000 since it was a confidential settlement communication and therefore inadmissible in evidence for any purpose. The Panel should consider all the correspondence, including that letter, which did not contain an offer but an invitation to make an offer that would compensate Respondent for the fair market value of the disputed domain names, having regard to the burden suffered by Respondent consequent upon Complainant’s use of one of the disputed domain names in its billboard advertising since about February or March 2002.

Respondent had no knowledge of Complainant’s intent to use its corresponding mark until Complainant contacted Mr. Davidovic in April 2002. Complainant has not provided any evidence that the general public had any knowledge of the name of its project before February 2002. Although International Languages has a Miami office about 25 miles from the development site and Respondent’s counsel also has a Miami office, they would have had no way of knowing the name of the project before February 2002 when Complainant first used the name “Turnberry on the Green”.

Respondent has not registered any other domain names that incorporate any of Complainant’s marks or the name “Turnberry”.

Mr. Perko’s allegations are denied on oath by Mr. Davidovic, supported by affidavits of Mr. Franchois and Mr. Albert. 

Mr. Franchois, a partner of Mr. Davidovic in another business, who is intimately familiar with Mr. Davidovic’s business practices, attests to Mr. Davidovic’s honesty and good faith and to his habit of registering domain names on behalf of clients in the name of International Languages, saying that in those circumstances “the client is the registrant and “owner” of the rights to the domain names”, that International Languages retains no property interest in the domain names and that “most web development companies register domain names for their clients in their own name”.

Mr. Albert attests to having conducted an investigation of the issues and allegations raised in the Complaint, after being retained by Respondent in this proceeding, and that “All of the facts in the Response that are not otherwise supported by exhibits to the Response are based on my personal knowledge and are the fruits of my investigation into the issues and allegations raised in the Complaint”.

Complainant’s case is a fantasy and the proceedings amount to attempted reverse domain name hijacking.

C. Additional Submissions

All submissions following the Response were timely, as contemplated by Forum Supplemental Rule 7, but none were requested by the Panel under Rule 12. Accordingly, for the reasons given by the learned 3-member panel in Am. Online, Inc. v. Adrian Paul Miles d/b/a AD2000D.com FA 105890 (Nat. Arb. Forum May 31, 2002) this Panel is not obliged to take any of those unsolicited submissions into account.

Rule 12 does not preclude acceptance of additional uninvited submissions under the Panel’s general powers conferred by Rule 10, particularly having regard to the Panel’s duty under Rule 10(b) to ensure that each party is given a fair opportunity to present its case. If a Respondent raises matter which the Complainant could not have been expected to have addressed in its Complaint, admission of an uninvited reply may be warranted in the interests of fairness. It would be an odd result if the Panel may request a reply in such circumstances under Rule 12 but must refuse an uninvited reply on the same topic, simply because there is no express provision for such a reply in the Rules. Accordingly, it is appropriate to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions. See Viz Communications, Inc., v. Redsun d/b/a www.animerica.com and David Penava,D2000-0905 (WIPO Dec. 22, 2000); see also Rollerblade, Inc. v. CBNO and Ray Redican Jr., D2000-0427 (WIPO Aug. 24, 2000).

Here the Response raised the issue of Reverse Domain Name Hijacking, to which a Reply would normally be appropriate. However, the Reply seeks to address this issue by going over ground already covered in the Complaint. Under these circumstances the Panel does not regard the Reply as warranting admission. Insofar as the Reply seeks to provide evidence of trademark use prior to the initial registration of the disputed domain names by International Languages, Complainant should have addressed that issue in its Complaint. For these reasons the Panel does not admit the Reply or any of the documents attached to it. It follows that none of the subsequent submissions from the parties and their accompanying documents are admitted and the Panel has no regard to them in making its determination.

FINDINGS

Complainant has established all the elements necessary to entitle it to relief.

DISCUSSION

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.

Rights in a Mark

Respondent’s case vigorously asserts that there is no evidence of use by Complainant of the mark TURNBERRY ON THE GREEN prior to February 19, 2002, the “date of first use” nominated in the United States and Florida filings. However, a close reading of the Response (over 11,000 words long, despite complying with the 10-page limit) reveals that Respondent does not contest, and indeed asserts, that the mark was first used on that date. The Panel finds that Complainant has rights at common law to the mark TURNBERRY ON THE GREEN in relation to apartment rental, dating from February 19, 2002, as well as its subsequently registered Florida trademark. The pending U.S. application does not give rise to any trademark rights.

Identical and/or Confusingly Similar

Respondent concedes that the disputed domain names are identical to Complainant’s trademark TURNBERRY ON THE GREEN and the Panel so finds. None of Complainant’s other marks incorporating the word TURNBERRY afford any assistance to Complainant, having regard to the additional elements in the disputed domain names, which distinguish them from those other marks.

Complainant has established this element of its case.

Rights or Legitimate Interests

The disputed domain names were initially registered in March 2001 in the name International Languages, which thereby became the registrant. The registration agreement provides in clause 14 that the person named as registrant on the WHOIS shall be the registered name holder.

The register maintained by an ICANN registrar must provide accurate information as to the identity of domain registrants. The human person or other legal entity shown as the registrant must be assumed to be such by third parties seeking to ascertain a registrant’s identity by such means as a Whois search. There is no place for the registration of bare trustees or agents for unnamed beneficiaries, principals or would-be purchasers. In that respect, a domain name register is like the register for land and shipping under the Torrens system found in many common law jurisdictions. In other words, the register is everything: no unregistered interests can prevail against the interests of bona fide third parties relying on information available on the register for all the world to see. See Univ. of Maryland Univ. College v. Nucom Domain Brokers & Urban Music Underground Club, D2002-0081 (WIPO April 29, 2002); see also Gloria-Werke H. Schulte-Frankenfeld GmbH & Co v. Internet Dev. Corp. and Gloria MacKenzie, D2002-0056 (WIPO April 26, 2002).

Accordingly, whatever might have been the arrangement between Respondent and International Languages or Mr. Davidovic, the Panel finds that Respondent did not become the registrant until its name appeared as registrant on the WHOIS in April 2002.

It is common ground that Mr. Perko represented to Mr. Davidovic in April 2002 that the disputed domain names corresponded to a trademark owned by Complainant: Davidovic ¶16, Perko ¶5. The Response says Respondent had no knowledge of Complainant’s intent to use the corresponding marks until Complainant contacted Mr. Davidovic in April 2002. The Panel infers that Mr. Davidovic so informed Respondent before the name of the registrant in the WHOIS was changed from International Languages to Respondent.

Accordingly, the Panel concludes that Respondent was aware of Complainant’s asserted trademark rights before it registered the disputed domain names in its own name. By that time, as the Panel has found, the mark had been in use by Complainant since February 19, 2002.

Respondent thus became registrant of the disputed domain names at a time when, to its knowledge, Complainant was asserting its trademark rights and actively seeking transfer to Complainant of the disputed domain names from Mr. Davidovic (International Languages). Respondent could have been in no doubt that Complainant gave Respondent no permission to use its mark nor to register the disputed domain names.

Respondent’s name is not the same as either of the disputed domain names.  There is no evidence Respondent made any use of the disputed domain names before the Complaint was filed. There is no evidence to support Respondent’s assertions that it embarked on a year-long odyssey to raise venture capital, drafted any business plan, redrafted any business plan or ever intended, prior to the filing of the Complaint, to establish a website at either domain name devoted to golf in Scotland or anything else. Respondent has chosen not to provide to the Panel any such evidence and it is therefore not surprising that, pursuant to Rules 10(d) and 15(a), the Panel finds, on the admissible statements and documents submitted, that Respondent has not established that it has any rights or legitimate interests in either of the disputed domain names. The affidavit of Respondent’s Counsel attesting to the truth of Respondent’s assertions cannot be given any weight because he was not engaged by Respondent until after the events and cannot therefore have direct knowledge of them.

Under these circumstances the Panel is satisfied that Complainant has established this element of its case.

Registration and Use in Bad Faith

The Panel has found that Respondent became the registrant of the disputed domain names in April 2002, with knowledge of Complainant’s asserted trademark rights.

On May 1, 2002, Complainant’s Counsel wrote a cease and desist letter to International Languages seeking compliance with the alleged contract to sell the disputed domain names for $300. Respondent’s Counsel replied on May 3, 2002, stating that he represented Mr. Davidovic (International Languages) and “the owner of the [disputed] domain names” (without identifying that owner), distinguishing between Mr. Davidovic and the “owner” and denying Complainant’s assertions.

Respondent’s Counsel wrote again to Complainant’s Counsel on June 24, 2002. Objection is taken that this letter was a confidential settlement communication, which should not be admitted in these proceedings on public policy grounds. See Hungry Minds, Inc. v Mall For Dummies, FA 96635 (Nat. Arb. Forum April 4, 2001); Alcoholics Anonymous World Servs., Inc. v. Friends of Bill W and Jimmy K, D2001-1124 (WIPO Dec. 28, 2001); Am. Online, Inc. v. Popixel Art d/b/a Am. Online Latino, D2001-0957 (WIPO Nov. 20, 2001); Media West-CPI, Inc. and Cape Publications, Inc. v. Space Coast Computer Techs., Inc., D2001-1458 (WIPO Feb. 16, 2002).

The Panel is not satisfied that this letter is a confidential settlement communication. It is not so expressed (although this is not determinative). It was not a reply to Complainant’s Counsel. It was written several weeks after the exchange just described. It raised fresh issues, including the alleged adverse effects upon Respondent of Complaint’s use of the domain name <turnberryonthegreen.biz>. The Panel admits the letter.

In it, Respondent’s Counsel stated that his client had authorized him to propose either rental by Complainant of <turnberryonthegreen.com> for $10,000 per month (plus 3 months back rental) or transfer to Complainant of the domain name <turnberryonthegreen.com>:

“for an amount that will fully compensate it for the fair market value of the domain name and the amount of profits that my client expects to generate from the domain name (and its related business) over the life of the domain name. Based on our appraisal of the domain name and an estimate of its profit potential, I have advised my client that the domain name ‘TurnberryOnTheGreen.com” is worth $950,000. As such, I welcome your client to make an offer for the domain name that would fairly compensate my client for the value of the domain name”.

The Panel has no difficulty on the basis of this letter in concluding that Respondent registered the domain name <turnberryonthegreen.com> in April 2002 in its name primarily for the purpose of selling or renting or otherwise transferring that domain name registration to Complainant, the owner of the trademark, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.

Since Respondent became registrant of the domain name <turnberry-on-the-green.com> at the same time, with the same knowledge and under the same circumstances, the Panel makes the same findings in relation to that name also, even though that domain name was not mentioned in the letter of June 24, 2002.

Accordingly the Panel finds the disputed domain names were registered and are being used in bad faith, within the meaning of clauses 4(b)(i) and 4(a)(iii) of the Policy.

Complainant has established this element of its case.

Reverse Domain Name Hijacking

Since Complainant has established all the elements necessary to entitle it to relief, it follows that it had every reason to bring these proceedings and that there is no substance in this allegation.

DECISION

The Panel directs that the domain names <turnberryonthegreen.com> and <turnberry-on-the-green.com> be TRANSFERRED to Complainant.

Alan L. Limbury, Panelist
Dated: November 3, 2002

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