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The Professional Golfers’ Association of America v. Asia Ventures, Inc. [2005] GENDND 1960 (9 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Professional Golfers’ Association of America v. Asia Ventures, Inc.

Case No. D2005-0940

1. The Parties

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

The Respondent is Asia Ventures, Inc., Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <southwestpga.com> is registered with The Registry at Info Avenue d/b/a IA Registry.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2005. On September 2, 2005, the Center transmitted by email to The Registry at Info Avenue d/b/a IA Registry a request for registrar verification in connection with the domain name at issue. On September 6, 2005. The Registry at Info Avenue d/b/a IA Registry 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 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 September 26, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2005.

The Center appointed Anthony R. Connerty as the sole panelist in this matter on October 28, 2005. 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 is the registered owner of various trademarks on the Principal Register of the United States Patent and Trademark Office. Those trademarks were registered between August,  1953 and February 2004. They include PGA and PGA.COM (the dot being in the form of a golf ball on a tee: ‘the mark consists of the stylised representation of “PGA.COM”’).

The disputed domain name <southwestpga.com> is shown by the “WhoIs” database maintained by Info Avenue as having been registered by Asia Ventures, Inc., Central, Hong Kong on December 25, 2001.

5 Parties’ Contentions

A. Complainant

The Complainant’s History

The Complainant says that it is a well-known organisation of professional golfers whose members promote the game of golf, organise professional golf tournaments and matches, and provide golf instruction services and golf-related services throughout the United States of America. The Complainant markets golf tournaments and exhibitions under the mark PGA and other marks incorporating PGA. These include “SOUTH WEST PGA”.

The Complaint states that substantial sums are invested by the PGA of America in promoting and developing its marks through, amongst other things, television and print media, Internet websites, and tradeshow exhibitions.

The Complainant’s PGA marks are “among the most famous marks for sports-related products and services - or indeed any consumer products and services in this country”. The PGA of America has spent “substantial time, effort and money advertising and promoting the PGA trademarks throughout the United States and the PGA of America has thus developed substantial goodwill in PGA trademarks. Through such widespread, extensive efforts, the PGA trademarks have become distinctive and are uniquely associated with the PGA of America and its products and services. These trademarks are amongst the most recognisable trademarks in the sports world”.

In addition to the various registered trademarks listed in the Complaint, the PGA of America states that it is also the owner of a number of common law trademarks, including SOUTH WEST PGA.

The Complainant has various local sections, one of which is the Southwest Section of the PGA of America that uses the mark SOUTHWEST SECTION OF THE PGA OF AMERICA. The Southwest Section markets extensively in literature and on its website. The address of the website is “www.southwest.pga.com”. The Southwest Section has been in existence since 1972 and has used the mark, SOUTHWEST PGA in its website since about 1999.

The Complainant says that “…thousands, perhaps millions, of golfers and golf fans use the Internet as a source of information about the PGA itself and other products, services and facilities that the PGA of America provides, such as the PGA Championship tournament, PGA events and the PGA.com store”. Additionally, the Complainant carries information about its local sections - such as the Southwest Section of the PGA of America - on its website: “the Southwest Section has its own website located at Southwest.pga.com.”

Respondent’s Conduct

The Complainant’s contention is that the Respondent is using the disputed domain name <southwestpga.com> in connection with a website whose homepage advertises links to other golf-related websites and services, including links to “PGA Tour“, “PGA”, and “PGA Golf”. Those links take the user to websites selling golf-related products and services such as golf balls and golf travel packages “many of which are purported to be affiliated with the PGA of America”.

The Complainant’s lawyers wrote to the Respondent on June 16, 2005, stating that the registration and use of the disputed domain name infringed the Complainant’s rights and violated Lanham Act and the Anticybersquatting Consumer Protection Act. The letter was not successfully delivered. On August 16, 2005, the Complainant’s lawyers wrote a second and similar letter that was sent by Federal Express and by e-mail. No response was received.

Breaches of the ICANN Policy

The Complainant contends that the Respondent’s conduct breaches the Policy, and alleges:

(1) That the disputed domain name is confusingly similar to the PGA trademarks because it wholly incorporates the mark PGA, and is almost identical to the website address of the Southwest Section’s “www.southwest.pga.com“.

(2) That the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has never sought trademark registrations based on PGA or any variation of PGA: the Complainant’s trademark is famous and distinctive and is not one that a trader could legitimately choose “unless seeking to create an impression of an association with the Complainant”.

(3) (i) That the Respondent registered the disputed domain name in bad faith, knowing of the Complainant’s rights in the PGA trademarks, and knowing that those trademarks had achieved world-wide fame. The PGA championship is televised worldwide “including in Hong Kong, where the Respondent is located. It is simply inconceivable that the Respondent was unaware of the PGA of America’s rights in the PGA trademarks”.

(ii) That the Respondent has used the disputed domain name in bad faith in connection with an active, golf-related website: “the Respondent has attempted to attract, for commercial gain, Internet users to the infringing website by creating a likelihood of confusion with PGA trademarks.”

In relation to bad faith the Complainant relies also upon a pattern of infringement, referring to the following cases involving the Respondent:

AstraZeneca AB v. Ventures Inc, Asia, WIPO Case No. D2005-0264;

Museum of Science v. Asia Ventures, Inc., WIPO Case No. D2003-0691;

Six Continents Hotels, Inc v. Asia Ventures, WIPO Case No. D2003-0659;

The Sportsman’s Guide, Inc v. Asia Ventures, Inc, WIPO Case No. D2002-1116.

The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three matters that the Complainant must prove in order to satisfy a claim that the domain name registered by the Respondent be transferred to the Complainant:

(1) the domain name 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.

A. Identical or Confusingly Similar

Previous panel decisions indicate that, where a domain name incorporates a distinctive mark in its entirety, that is enough to create a sufficient similarity between the mark and the domain name so as to render that domain name confusingly similar. See for example Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774.

In the absence of any submissions or explanations from the Respondent, the Panel is satisfied on the evidence submitted by the Complainant that the requirements of paragraph 4(a)(i) of the Policy have been proved.

B. Rights or Legitimate Interests

The Complainant has submitted clear evidence of its rights in relation to various PGA trademarks registered over a period exceeding 50 years.

The requirement that the Complainant show that the Respondent lacks rights involves the difficult task of proving a negative. Panels have taken the view that it is therefore sufficient for the Complainant to prove a prima facie case: the burden is then on the Respondent to show that it does have rights or legitimate interests in respect of the domain name. The matter is dealt with by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”

Given the absence of any submissions or explanations from the Respondent, the Panel is satisfied that the Complainant has proved the requirements of paragraph 4(a)(ii) of the Policy, namely, that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C Registered and Used in Bad Faith

The third and final element that must be proved by the Complainant is that the domain name was registered, and is being used, in bad faith.

Paragraph 4(b) gives a number non-exhaustive circumstances which may constitute evidence both of the registration and the use of a domain name in bad faith. One such circumstance is that set out in paragraph 4(b)(iv), namely that the Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website.

It is that particular circumstance that is relied upon by the Complainant: “Respondent has used the domain name at issue to capitalise on the fame of the PGA Trademarks and attract Internet users to a website that is a commercial directory containing links to other websites that sell and advertise golf related products and services”.

In the absence of any explanation from the Respondent, the Panel is satisfied that the Complainant has proved to the requirements of paragraph 4(a)(iii) of the Policy.

U.S. Law

Finally, mention should be made of the fact that the Complainant has relied upon provisions of the Lanham Act and of the Anticybersquatting Consumer Protection Act. Attached to the Complaint are copies of a number of decisions of U.S. Courts on trademark infringement.

In accordance with the Rule, paragraph 15, a Panel shall decide a complaint on the basis of the documents submitted and in accordance with the Policy, the Rules, and “any rules and principles of law that it deems applicable”.

Were both parties U.S. residents, it might be appropriate to consider and apply U.S. law: see for example EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

However, that is not the case here, and the Panel finds that it is not necessary to consider the U.S. law provisions relied upon by the Complainant. For the reasons given earlier, the Panel is satisfied that the Complainant has proved the three requirements set out in paragraph 4(a) of the Policy.

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 <southwestpga.com> be transferred to the Complainant.

Anthony R. Connerty
Sole Panelist

Dated: November 9, 2005