[Indexed as: SportSoft Golf v. Behold]
[Indexed as: GOLFSOCIETY.COM]
National Arbitration Forum
Administrative Panel Decision
Claim Number: FA0006000094976
Commenced: 7 June 2000.
Judgement: 27 July 2000.
Panelist: James Alan Crary
Domain name - Domain name dispute resolution policy U.S. Trademark Identical - Confusingly similar - Bad faith registration - Bad faith use Golf E-mail Generic Term.
Complainants subsidiary Golf Society of the US is a large dues paying
association of golfers. It is the owner of Golf Society of the US, a trademark
registered with the United States Patent and Trademark Office. It also
has a pending trademark for "Golf Society Online".
Respondent is Sites to Behold Ltd., an organization devoted to assist
with the promotion of a golf society portal which would provide on-line
services to golf societies everywhere. Resondent registered GOLFSOCIETY.COM.
Held, Domain name not transferred.
The disputed domain name is neither identical to nor confusingly
similar to complainants trademark. The trademark links together two generic
words golf and society with a geographic entity, the United States. The
disputed domain name incorporates the two generic terms golf and society
with an upper level domain dot.com.
While it is true Respondent has not as yet established a web site,
the evidence supported a finding that there were demonstrateable preparations
to use the disputed domain name before any notice of dispute with the Complainant.
Respondent had created a business plan and obtained funding for an approximate
2-year period from Shannon Free Airport Development Company. That a web
site has not been launched at this time was felt not to be a determinative
factor.
The disputed domain name was not registered in bad faith. The fact
that the domain name is not linked to an active web site did not make it
apparent that Respondent registered the domain name for the purpose of
selling it to Complainant or its competitor. It was noted above that the
evidence supported a finding that Respondent, before any notice of the
dispute, had made demonstrateable preparations to use the disputed domain
name in connection with a bona fide offering of goods or services.
Policies referred to
Uniform Policy for Domain Name Dispute Resolution
Panel decision referred to
--
Crary, Panelist: -
PARTIES
The Complainant
is SportSoft Golf, Inc., Wall Township, NJ, USA ("Complainant"). The Respondent
is Sites to Behold Ltd., ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name
at issue is "GOLFSOCIETY.COM", registered with Network Solutions, Inc.
("NSI").
PANELIST(s) James Alan Crary as Panelist(s).
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum ("The Forum") electronically
on 06/07/2000; The Forum received a hard copy of the Complaint 06/07/2000.
On 06/08/2000,
NSI confirmed by e-mail to The Forum that the domain name "GOLFSOCIETY.COM"
is registered with NSI and that the Respondent is the current registrant
of the name. NSI has verified that Respondent is bound by the Network Solutions
Service Agreement Version 5.0 and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANNs UDRP.
On 06/15/2000,
a Notification of Complaint and Commencement of Administrative Proceeding
(the "Commencement Notification"), setting a deadline of 07/5/2000 by which
Respondent could file a Response to the Complaint, was transmitted to Respondent
via email, post and fax, and to all entities and persons listed on Respondents
registration as technical, administrative and billing contacts by email.
The Forum received
a response on 7/5/2000.
On July 13,
2000, pursuant to Complainants request to have the dispute decided by
a Single Member panel, The Forum appointed James Alan Crary as Panelist.
RELIEF SOUGHT
The Complainant
requests that the domain names be transferred from the Respondent to the
Complainant.
PARTIES CONTENTIONS
A. Complainant
Complainants subsidiary Golf Society of the US is a large dues paying
association of golfers. Since its beginnings in 1995 it has garnered
approximately 150 thousand dues paying members. It is the owner of
Golf Society of the US, a trademark registered with the United States Patent
and Trademark Office (2131470), registered 1/20/1998, it also has a pending
trademark for "Golf Society Online" which was filed November 9, 1999.
On February 21, 1999 the Respondent registered the disputed domain name
golfsociety.com. On August 24, 1999 prior to the Complainants acquisition
of the Golf Society of the US, it attempted to acquire the golfsociety.com
from the Respondent.
Complainant subsequently established the domain name golfsocietyonline.com.
It was alleged that much of the traffic destined for golfsocietyonline.com
mistakenly found its way to the disputed domain name golfsociety.com,
which linked to a website which was under
construction.
In the Complainants additional submission, Complainant submitted e-mails
from members who had been confused by the two sites.
It was alleged that the disputed domain name was almost identical to the
Complainants trademark. This was said to have been admitted by respondent,
it was further maintained the Respondent began collecting e-mail registrations
with the intent of reselling warehouse them for purposes of commercial
exploitation.
It was alleged that Respondent had no rights or legitimate interests in
the domain name. Complainant had established prior rights and a trademark
registration. Respondent was not licensed to use the trademark. Respondent
was not known commonly by the name Golf
Society nor was Respondent using the domain name in connection with a bona
fide offering of
goods or services. Respondent was not making a legitimate noncommercial
or fair use of the
disputed domain name.
Bad faith was alleged under Paragraph 4, b, i of the Uniform Domain Name
Dispute Resolution Policy (the Policy). It was maintained that it was apparent
Respondent registered the domain name primarily for the purpose of selling
or otherwise transferring the disputed domain name to the complainant or
to a competitor of the Complainant. It was noted that 15 months had
passed since registration yet the domain name was not linked to an active
web site.
Respondent knew or should have known the Complainants use of the trademark
before registering the domain name since it knew or should have known of
the probable confusion that would result with Complainants trademark.
Transfer of the domain name was sought by Complainant.
B. Respondent
The Respondent maintained that the term Golf Society is a widely used generic
term. There are uncounted golf societies throughout the world and over
2,000 in Respondents native country, Ireland. Many are local uncomplicated
associations associated with a geographical area. Golf societies are organized
by local pubs and by groups of employees. Respondents organizers are both
members of golf societies as well as other sporting associations.
After registering the domain name, a business plan was developed. Respondents
were approved for a grant of the assistance toward the cost of a feasibility
study in June 1999. The agreement for funding expires in July 2001.
Respondent contended that the disputed domain name was not identical to
Complainants trademark. It was maintained that the words both "golf" and
"society" are generic and the term "golf society" also was generic. The
disputed domain name did not include the term "of the US".
Rather than registering a domain name matching Complainants trademark,
Complainant chose to create a new on-line identity "golfsocietyonline.com".
The confusion that had arisen between the disputed domain name and golfsocietyonline.com
was due to the Complainants actions.
The Respondent admitted that it had collected e-mail registration but not
for the purposes set forth in the complaint. Rather it was to enable Respondent
to advice the registrants when the site was launched, a standard practice
on pre-launch sites.
The term "golf society" pre-existed the trademark by several hundred years.
Many modern golf clubs began their existence as a golf society. The generic
term golf society could not be claimed by anybody thinking to establish
exclusive rights. The domain name was registered to assist with the promotion
of a golf society portal which would provide on-line services to golf societies
everywhere. The business plan dated April 1999 provides evidence of this
legitimate purpose. Respondent denied bad faith maintaining that before
there was any notice of the dispute, Respondent made demonstrateable preparations
for use of the domain
name in connection with the bona fide offering of goods or services. Respondent
sought to retain the domain name.
FINDINGS
1. The Complainant acquired the rights to the US Patent and Trademark Office
registration for Golf Society of the US on September 1, 1999.
2. The Respondent
registered the disputed domain name on February 21, 1999.
DISCUSSION
Paragraph 4(a)
of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that
the complainant must prove each of the following three elements in order
to demonstrate claims 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;
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.
Identical and/or
Confusingly Similar
Based on the
contentions and the evidence submitted by the parties it was concluded
that the disputed domain name is neither identical to nor confusingly similar
to complainants trademark. The trademark links together two generic words
golf and society with a geographic entity, the United States. The disputed
domain name incorporates the two generic terms golf and society with an
upper level domain dot.com.
The Respondent
rightly asserts that the term golf society is used throughout the world
to identify various associations interested in golf.
Rights or Legitimate
Interests
As noted under
the Policy at 4(c), a Respondent may demonstrate rights and legitimate
interests in the domain name if before any notice of the dispute Respondent
has made demonstrateable preparations to use the domain name in connection
with a bona fide offering of goods or services. While it is true Respondent
has not as yet established a web site, the evidence supported a finding
that there were demonstrateable preparations to use the disputed domain
name before any notice of dispute with the Complainant. Respondent had
created a business plan and obtained funding for an approximate 2-year
period from Shannon Free Airport Development Company. That a web site has
not been launched at this time was felt not to be a determinative factor.
Bad Faith
It was concluded
that the greater weight of the evidence supported a finding that the disputed
domain name was not registered in bad faith. The fact that the domain name
is not linked to an active web site did not make it apparent that Respondent
registered the domain name for the purpose of selling it to Complainant
or its competitor. It was noted above that the evidence supported a finding
that the Respondent before any notice of the dispute had made demonstrateable
preparations to use the disputed domain name in connection with a bona
fide offering of goods or services.
The case law
cited by Complainant was not persuasive. In two of the cases cited D 2000-0004
and D2000-0086, no response was filed by the Respondent and the administrative
panelist proceeded to decision on the basis of the complaint alone. In
D 2000-0059, the disputed domain name was clearly identical to the trademark
at issue, which was found not to be true in this case. Also, the Respondent
in D 2000-0059 had made no demonstrateable preparations for use as there
were here.
DECISION
For the reasons
set forth above it was concluded the Complainant was not entitled to relief
under 4i of the Policy, it was therefore ordered that the disputed domain
name be retained by the Respondent.
James Alan Crary
Dated: July 27, 2000
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