Professional Golfers Association of America, Inc.
[Indexed as Professional Golfers Association of America v. Robert Baldwin]
[Indexed as: PGADeals.com]
WIPO Arbitration and Mediation Center
Case No: D2000 - 0339
Judgment: 30 June, 2000.
Sole Panelist: Richard G. Lyon
Domain name - Domain name dispute resolution policy - Trademark - Identical - Confusingly similar - Other similar marks - Different meaning - Auction alone indicates bad faith - Bad faith registration - Bad faith use.
Complainant is the owner of the trademark PGA representing Professional Golfers Association. Respondent registered PGADeals.com as well as NHLDeals.com, NHLplaybook.com, NBADeals.com, and NFLDeals.com. Respondent alleges that his use of PGA represented the acronym Pro Game Auction and in the alternative the letters PGA are used by many organizations.
Held, Name Transferred to Complainant.
The use of the letters PGA' followed by the term deals.com is clearly likely to create confusion with the Complainants trademark. Furthermore, given the Respondent's registration of several sports' domain names - it is obvious that this confusion was intended by the Respondent.
That the Respondent had not been licensed by the PGA or had not registered the domain name as a trademark is indicative that the Respondent had no legitimate right or interest in the domain name.
Respondent's acknowledgment that the Domain name was intended in part to divert prospective customers to the Respondent's website - and thereby cause confusion with the Complainants site indicates bad faith use. The fact that other organizations may use that acronym is irrelevant. Furthermore, Respondent's attempt to auction off the name to the highest bidder "alone is enough to support a finding of bad faith". This was also illustrated by his registration of - and intent to profit from - the trademarks of others.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Registration Agreements referred to
Cases referred to
Panel Decision referred to
1. The Parties
Complainant is Professional Golfers Association of America, Inc., a Florida (USA) corporation, 100 Avenue of the Champions, Palm Beach Gardens, Florida (USA), represented by Robert L. Horton and Carol Lally, Arnold & Porter, 555 Twelfth Street, N.W., Washington D.C. 20004 (USA), hereinafter the "Complainant."
Respondent is Robert Baldwin, 1809 Beth Bridge Circle, Forest Hill, Maryland 21050 (USA), hereinafter the "Respondent."
2. The Domain Name and Registrar
The domain name at issue is PGADeals.com. It is referred to as the Domain Name. The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant's complaint on April 27, 2000 (electronic version) and April 28, 2000 (hard copy). The Center verified that the complaint satisfies the formal requirement of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is May 12, 2000.
On May 5, 2000, the Center transmitted via email to Network Solutions, Inc. a request for registrar verification in connection with this case. On May 10, 2000, Network Solutions, Inc. transmitted via email to the Center, Network Solutions' Verification Response, confirming that the Respondent Robert Baldwin is the registrant and that the contact for both administrative, billing, and technical is Robert Baldwin.
Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on May 12, 2000, to the Respondents Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier, facsimile and e-mail. The postal addresses used for Respondent was as follows:
1809 Beth Bridge Circle
Forest Hill, Maryland 21050 (USA)
A response was received by May 31, 2000 (electronic version) and June 2, 2000 (hard copy).
On June 16, 2000, in view of the Complainant's designation of a single panelist (but without prejudice to any election to be made by the Respondent) the Center invited Mr. Richard G. Lyon to serve as a panelist.
Having received Mr. Lyon's Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date was June 29, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint, the Response, the e-mails exchanged, the evidence presented, the Policy, the Rules and Supplemental Rules.
4. Factual Background
Complainant is a world-famous organization of professional golfers whose members promote the game of golf, organize professional golf tournaments, and provide golf instruction services, golf shop and golf club professional management services, and other golf related services throughout the United States. The PGA is perhaps the preeminent organization for professional golf in the world. Its well-known initials are included within several registered United States trademarks for these purposes. A list of Complainant's registered U.S. trademarks is set forth in paragraph 12 of the Complaint. Complainant has used these trademarks for more than seventy years and claims a substantial investment in and strong secondary meaning of these marks in connection with golf products and related services.
In e-mail correspondence with Complainant, Respondent stated his intent to establish and operate a sports-related website which would contain information about auctions, trips, schools, sales, and other sports related websites, which he planned to operate using the Domain Name.. Respondent has also registered the domain names NFLDeals.com, NBADeals.com, NHLDeals.com, and NHLplaybook.com. Before a complaint was filed but after correspondence between the parties had begun, Respondent posted all of these domain names, including the Domain Name, for sale on GreatDomains.com, a web site designed specifically for the auction and sale of domain names. During ongoing correspondence, Respondent stated that he no longer intended to use PGADeals.com in any manner associated with golf. However, he was unwilling to transfer the domain name for only his cost of registration. Currently, the web site states "This domain name has been reserved."
5. Parties' Contentions
Complainant. Complainant contends that the Respondent has acquired a domain name that incorporates the identifying portion of Complainant's registered trademarks; that Respondent has taken this action to take advantage of the Complainant's trademarks and the goodwill associated with those trademarks by diverting potential buyers from the websites of Complainant and its authorized licensees to the Respondent's website; and that the Domain Name was registered in bad faith.
Respondent. Respondent claims a legitimate right to use the Domain Name. He avers that he originally registered the Domain Name in an effort to establish a golf related website for informational purposes. In addition, the Respondent offered to provide a direct link to the official website of the PGA. Respondent envisioned utilizing the Domain Name as part of a network of sports related websites that would also include his other sports league domain names. After discussions with the Complainant, Respondent now contends that the Domain Name will be used to establish Pro Game Auction Deals, and that he will not include any golf related materials. Because his new business plan will not be golf related, he contends that his use of the mark PGA is analogous to other companies not associated with golf that also use the moniker.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall 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."
Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the Domain Name is registered by the Respondent is identical to the trademark in which the Complainant has right, and,
(2) that the Respondent has no legitimate interests in respect to the Domain Name; and,
(3) that the Domain Name has been registered and used in bad faith.
The Domain Name uses the principal letters in Complainant's trademark followed by the word "Deals." It is clearly likely to cause confusion with Complainant's marks. Given Respondent's registration of other domain names incorporating initials used by other leading sports authorities, it is difficult to escape the conclusion that, should Respondent actually use such names for sports-related businesses, that this confusion was intended by Respondent.
B. Legitimate Interest
Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks in any manner, including use in its domain name. The Administrative Panel finds that the Respondent has no right or legitimate interest in the Domain Name.
C. Use in Bad Faith
Respondent has acknowledged that he registered the Domain Name in part to divert prospective customers to Respondent's website. Despite Respondent's contention that the initials PGA are used by others, Complainant's use of Domain Name, even with the addition of the word Deals, is likely to cause confusion with Complainant's marks. This was Complainant's intent. In this respect, Respondent has acted in bad faith. Furthermore, Respondent's public attempt to auction the Domain Name to the highest bidder is a separate and independent attempt to profit from Complainant's marks. This alone is enough to support a finding of bad faith, and Respondent's registration of other well-known sports marks further illustrate his intent to profit from the established marks of others. Respondent has offered nothing to counter these conclusions. Bad faith has been clearly established.
For these reasons, the Administrative Panel finds that the Respondent has registered and used the Domain Name in bad faith.
The Administrative Panel finds that the Domain Name listed above registered by Respondent incorporates a registered trademark of Complainant; that the Respondent has no right or legitimate interest in respect to the Domain Name; and that the Respondent's Domain Name has been registered and is being used in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy, the Administrative Panel requires that the registration of the Domain Name be transferred to the Complainant.
Richard G. Lyon
Dated: June 30, 2000
Domain Name Transferred