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The Professional Golfers’ Association of America (PGA) v. Provisions, LLC [2004] GENDND 1217 (13 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Professional Golfers’ Association of America (PGA) v. Provisions, LLC

Case No. D2004-0576

1. The Parties

The Complainant is The Professional Golfers’ Association of America (PGA), Palm Beach, Florida, United States of America, represented by Arnold & Porter, United States of America.

The Respondent is Provisions, LLC, Bingham Farms, Michigan United States of America, represented by Bliss McGlynn, P.C., United States of America.

2. The Domain Name and Registrar

The disputed domain name <ryder2004.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2004. Also on August 3, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. Again on August 3, 2004, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 5, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2004. The Response was filed with the Center on August 25, 2004.

The Center appointed Dennis A. Foster as the Sole Panelist in this matter on September 1, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant, the Professional Golfers’ Association or PGA, is a well-known organization whose members promote the game of golf, organize professional golf tournaments and matches, and provide other golf-related services throughout the United States. The Complainant markets a wide variety of golf-related products and services under the mark RYDER CUP. Every other September, the Complainant sponsors the well-known RYDER CUP MATCHES. Since its inception in the 1920’s, this three-day competition has matched top-ranked professional golfers in the United States against their counterparts from Europe.

The Complainant owns the following federally registered trademarks and service marks in connection with its goods and services (the “RYDER CUP marks”): RYDER CUP, registration No. 1,694,491 in international classes 25 and 28 dated June 16, 1992; RYDER CUP MATCHES, registration No. 2,840,191 in international class 41 dated May 11, 2004 (Complaint Annex D).

The Respondent registered the disputed domain name, <ryder2004.com>, on December 3, 2003.

5. Parties’ Contentions

A. Complainant

- In the past, viz. in April 2004, at the domain name <rydercupconcierge.com>, the Respondent misused the Complainant’s trademark to advertise tickets and hospitality packages for the RYDER CUP MATCHES.

- The disputed domain name, <ryder2004.com>, is visually and aurally identical to the first word of the well-known RYDER CUP mark followed by the year of the next matches.

- Internet users who intend to visit one of the official PGA websites may intentionally, or even inadvertently, type <ryder2004.com> into the address bar of their web browser only to be misdirected to Respondent’s website. For at least this reason, the <ryder2004.com> domain name clearly is confusingly similar to the famous RYDER CUP marks. This confusing similarity is compounded by the fact that the Complainant has registered and uses the <rydercup.com> domain name to direct Internet users to its official site for the RYDER CUP MATCHES.

- Moreover, the addition of a generic top-level domain name such as “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. (Aous Uweyda v. Abdallah Sheet, NAF Claim No. FA00165119).

- Respondent has no rights or legitimate interests in the <ryder2004.com> disputed domain name. Respondent has no connection with the PGA or any PGA affiliate and has not been granted any form of license or consent to use the RYDER CUP marks in a domain name or in any other manner.

- The Respondent has never sought or obtained any trademark registrations for RYDER or RYDER CUP and, indeed, could never do so because the RYDER CUP mark belongs uniquely to, and is registered to, the Complainant.

- Further, Respondent has never made any noncommercial or fair use of the <ryder2004.com> domain name, without intending to mislead the public for commercial gain.

- The Complainant believes that Respondent has never been known by the disputed domain name <ryder2004.com>.

- The website associated with the <ryder2004.com> domain name merely acts to repackage and sell tickets and hospitality packages, which Respondent is not authorized to do. Such a use demonstrates neither a bona fide offering of goods or services nor a legitimate interest (Harcourt, Inc. v. Henry Chan, NAF Claim No. FA00214531).

- Finally, Respondent’s misappropriation of the <ryder2004.com> domain name, not to mention its previous misappropriation of the <rydercupconcierge.com> domain name, were not accidents. Where a mark is famous, as in the instant case, it is “not one traders would legitimately choose unless seeking to create an impression of an association” with the Complainant. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Accordingly, a “trader” such as Respondent could have no legitimate interest in the RYDER CUP mark.

- Even if Internet users do not immediately associate Respondent with the Complainant, Respondent nonetheless unfairly benefits from the good will associated with the Complainant’s well-known RYDER CUP mark by misdirecting Internet traffic to its site. Respondent thus intentionally co-opted the disputed domain name <ryder2004.com> to divert users to its site.

B. Respondent

- Only one term, “ryder”, of “ryder2004” is common to either RYDER CUP or RYDER CUP MATCHES. As such, from a visual perspective, only one half and one third of the terms in “Ryder Cup” and “Ryder Cup Matches”, respectively, are included in “ryder2004”.

- Stated another way, one half and two thirds of the terms in the respective marks are missing from the domain name. One half and two thirds are very substantial amounts in this regard, especially considering that the marks consist of only two and three terms respectively.

- Also, “ryder2004” includes a term, “2004”, that is not included in either RYDER CUP or RYDER CUP MATCHES. From a visual perspective, “2004” comprises half of the terms and nearly half of the characters in “ryder2004”. Alternatively, from an aural perspective, “2004” comprises at least two-thirds of the syllables in “ryder2004”.

- In view of the above, it is clear that “ryder2004” neither looks nor sounds like RYDER CUP or RYDER CUP MATCHES. As such, Respondent respectfully asserts that “ryder2004” is neither identical nor confusingly similar to RYDER CUP or RYDER CUP MATCHES.

- As evidenced by a copy of a portion of Respondent’s website attached hereto as Annex A, Respondent is a “501(c)(3)” organization pursuant to the Internal Revenue Code for the United States of America and provides help to children with developmental disabilities and autism and their respective families.

- Since at least 2002 (long before Respondent received any notice of the dispute), Respondent has been using <ryder2004.com> in connection with a bona-fide offering of goods and services. Respondent is giving its prospective customers an independent and unique entertainment opportunity to support charitable causes.

- Respondent is making goods and services of substantial value available to its customers on a part-gift/part-sale basis.

- In view of the above, Respondent is making a legitimate non-commercial or fair use of <ryder2004.com>, without intent for commercial gain, and in no way misleadingly to divert consumers or to tarnish the marks RYDER CUP or RYDER CUP MATCHES.

- Respondent has never offered to sell, rent, or otherwise transfer <ryder2004.com> to Complainant or a competitor of Complainant for consideration.

- Also, <ryder2004.com> was not registered to prevent Complainant from reflecting its marks in a corresponding domain name and, in connection therewith, Respondent has never engaged in such conduct.

- Furthermore, Complainant and Respondent are not competitors. More specifically and as evidenced by the copy of the portion of Respondent’s website attached hereto as Annex A, Respondent’s mission is to provide proven and appropriate treatment to children with autism while expanding the research base educating the public and disseminating information related to the disorder.

- The disputed domain name, <ryder2004.com>, was not registered by the Respondent primarily to disrupt the Complainant’s business. Respondent met numerous times from 2002-2004 with officials of Complainant and others on this and other topics. At the request of Complainant and others, Respondent included the following language on its website and marketing materials: “Respondent is not affiliated with …….the 2004 Ryder Cup and/or the [Complainant]”.

- The disputed domain name was not registered by Respondent in an intentional attempt to attract for commercial gain Internet users to Respondent’s website or other on-line location by creating a likelihood of confusion with RYDER CUP or RYDER CUP MATCHES as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

- More specifically, contrary to Complainant’s assertion, to follow the upcoming 2004 Ryder Cup, Internet users are much more likely to type in “www.2004rydercup.com”, not “www.ryder2004.com” as Complainant states. As an analogy, to follow the upcoming 2006 World Cup (of soccer), Internet users are much more likely to type in “www.2006worldcup.com”, not “www.world2006.com”.

6. Discussion and Findings

In order for the Complainant to prevail and have the disputed domain name transferred to it, per Policy paragraphs 4(a)(i-iii) the Complainant must show:

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in the disputed domain name; and

- the Respondent has registered and is using the disputed domain name in bad faith

A. Identical or Confusingly Similar

At Complaint Exhibit D, the Complainant has exhibited copies of two United States trademark registrations: >No. 1694491 dated June 16, 1992 for RYDER CUP in international class 25 for apparel and in international class 28 for golf clubs. The Complainant also has exhibited the registration for its trademark RYDER CUP MATCHES, No. 2840191, dated May 11, 2004, in international class 41 for organizing and conducting golf tournaments.

The disputed domain name is <ryder2004.com>. The only distinctive part of the Complainant’s trademark registrations is “Ryder”, and that name is contained in the disputed domain name. The question, then, is whether adding the date 2004 to the distinctive component of the Complainant’s trademark creates a distinctive new name, or whether it is confusingly similar to the Complainant’s trademark.

The Respondent has argued at length that the disputed domain name is not confusingly similar to the disputed domain name. It argues that RYDER CUP and RYDER CUP MATCHES are visually and aurally distinct from the disputed domain name <ryder2004.com>. The Respondent even argues that one half and one third are all that can be said to be taken from the Complainant’s two trademarks.

The Panel is not persuaded by the Respondent’s arguments. The date 2004 is merely a descriptive add-on since it only gives us the year of the tournament: every event that takes place during the year 2004 will be dated 2004. (cf. Aventis Pharmaceuticals Inc., Aventis Pharma SA v. Goldie Fishero, WIPO Case No. D2004-0094, where “cheap” and “on-line” added to a drug name were merely descriptive add-ons; and also Mattel, Inc. v. Good Time Tickets a/k/a GTT a/k/a Marc Simon, NAF Claim No. FA00282802, where in the domain name <hotwheeltrader.com>, “trader” was merely descriptive of an entity that dealt in HOT WHEELS model cars.)

Contrary to the Respondent’s arguments, the number of words or syllables in the descriptive add-on does not matter much: adding United States of America would be quite a long add-on, but if used in its descriptive geographic sense, it still would not create a new, distinctive name any more than using 2004 to denote the year does.

Thus, the only distinctive part of the disputed domain name <ryder2004.com> is Ryder, which also is the distinctive component of the Complainant’s trademark. The Panel therefore finds the disputed domain name is confusingly similar to the Complainant’s trademarks RYDER CUP and RYDER CUP MATCHES, and that the Complainant has discharged its burden of proof under Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant states that the Respondent does not have permission to use its RYDER trademarks in the disputed domain name. The Respondent alleges it reached some type of understanding with the Complainant, but there is no written evidence that this is true.

The Respondent also makes an at-length argument that it is making a fair use of the disputed domain name not for commercial gain as permitted by paragraph 4(c)(iii) of the Policy. The Respondent bases this on the fact that it has been classified by the United States Internal Revenue Service as a charitable organization to help autistic children and their families (Response Exhibit A). The Respondent reasons that, since it devolves some of its profit onto charitable causes, it should be free to use the trademarks it needs to generate income. In this case, it means using the Complainant’s RYDER trademarks to sell tickets and hospitality services to the 2004 Ryder Cup Match Complainant has organized.

Other than its own contentions, the Respondent has offered no basis in the Policy or Rules, or previous decisions under the Policy, or any basis in U.S. law, for its contentions on fair use. In fact, the Panel finds that previous UDRP decisions have not recognized commercial use of a trademark by a charitable organization to be a “fair use” under the Policy at paragraph 4(c)(iii). This is because the charitable organization is still running a business to make money. What the charitable organization does with the money after it makes it does not concern the Policy, but using the Complainant’s trademark and identity at the disputed domain to derive income is a commercial use under the Policy, not a fair use.

This was well stated by a panel in an early UDRP decision as follows:

“Respondent asserts that its activities constitute a legitimate noncommercial use of the domain name without intent for commercial gain to misleadingly divert consumers, within the meaning of paragraph 4(c)(iii) of the Policy because all its income goes to medical research. However, the evidence indicates that the Respondent is engaged in a commercial activity, i.e., the selling of advertising space on its website. The fact that Respondent ‘donates’ all its income to activities associated with medical research does not convert its ‘commercial activity’ into a ‘noncommercial activity’.” (AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927, for a similar reasoning and result, see also International Olympic Committee and United States Olympic Committee v. Guy Boyden, NAF Claim No. FA00201977.)

The Panel thus finds the Complainant has carried its burden of proof to show the Respondent has no rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant contends that its RYDER CUP and RYDER CUP MATCHES trademarks are so famous that any use not authorized by the Complainant is in bad faith. The Panel does not find the Complainant has demonstrated its trademark is as strong as this argument implies, and the Panel is not independently aware that this is the case.

The Complainant has also contended that the Respondent in the past registered and used the domain name <rydercupconcierge.com> just as it is now using <rydyer2004.com>. While this might constitute a pattern of behavior, it is not apparent these names were registered with the aim of preventing the Complainant from registering them in contravention of paragraph 4(b)(ii) of the Policy.

However, the Panel agrees with the Complainant that the Respondent’s conduct in this case squarely violates the bad faith Policy provisions at paragraph 4(b)(iv): the Respondent surely is using the Complainant’s RYDER trademarks in the disputed domain name, <ryder2004.com>, to attract members of the public who would be looking for the Complainant. The Respondent then attempts to sell tickets and other services to the golf events the Complainant has organized, all for the Respondent’s commercial gain. The Respondent was well aware of Complainant’s rights at the time it registered the disputed domain name. As the Panel has already stated, it does not matter that the Respondent may later give some or all of its earnings to charity.

The Panel finds the Complainant has carried its burden of proof under the Policy to show that the Respondent has registered and is using the disputed domain name in bad faith per Policy paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <ryder2004.com>, be transferred to the Complainant.

Dennis A. Foster
Sole Panelist

Dated: September 13, 2004