WIPO Domain Name Decision D2004-0543 for antiguasport.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Antigua Group, Inc. v. Vanilla, Ltd.

Case No. D2004-0543

1. The Parties

The Complainant is The Antigua Group, Inc., Peoria, Arizona, United States of America, represented by Nelson & Roediger, United States of America.

The Respondent is Vanilla, Ltd., Sharja, United Arab Emirates, represented by ESQ Law Firm, United States of America.

2. The Domain Name and Registrar

The disputed domain name is registered with BulkR.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July�22,�2004. On July�22,�2004, the Center transmitted by email to BulkR a request for registrar verification in connection with the domain name(s) at issue. On July�29,�2004, BulkR 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�4,�2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August�24,�2004. The Response was filed with the Center on August�24,�2004 .

The Center appointed Dawn Osborne as the sole panelist in this matter on August�31,�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, a producer of clothing, sportswear and golf equipment is the owner of a registered trademark for ANTIGUA in twelve countries around the world. It has used the ANTIGUA SPORT trademark since 1994.

The Respondent operates a news content website on the Internet . It registered the Domain Name on August�18,�2002.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

Complainant, The Antigua Group, Inc. (“Complainant” or “The Antigua Group”) is the owner of the famous marks “ANTIGUA” and “ANTIGUA SPORT” used to identify, among other things, Complainant’s golf apparel (such as shirts and pants), hats, sport bags and numerous other products advertised and sold internationally.

The Antigua Group has been using the ANTIGUA SPORT Mark since February�1,�1994. In addition, The Antigua Group has applied for registration of the ANTIGUA SPORT Mark in the United States under International Classes 25 and 18 covering clothing items and sporting accessories. The time for opposition has run without any opposition filed by a third party. Accordingly, the United States registration for the ANTIGUA SPORT Mark should be issued to the Complainant shortly.

In addition, The Antigua Group has otherwise used the ANTIGUA Mark in the United States since January�25,�1980, and internationally since approximately June�1,�1986. The Antigua Group has registered the ANTIGUA Mark for use in Men’s and Ladies’ sportswear, such as shirts, sweaters and jackets, and/or golf accessories, such as golf head covers and golf gloves, in twelve (12) countries as follows:

(1) France: Reg. No. 96612460 (February�13,�1996)

(2) Germany: Reg. No. 2,075,051 (August�17,�1994)

(3) Japan: Reg. No. 2,426,398 (May 1990)
Japan: Reg. No. 2,608,773 (December 1993)

(4) Hong Kong, SAR of China: Reg. No. B4857(A-B) (April�30,�2002)

(5) Ireland: Reg. No. 168,692 (September�17,�1993)

(6) Italy: Reg. No. 681,817 (July�27,�1996)

(7) China: Reg. No. 1,725,176 (March�7,�2002)

(8) Peru: Reg. No. 00162718 (May�5,�1999)

(9) Sweden: Reg. No. 259,283 (July�1,�1994)

(10) Taiwan, Province of China: Reg. No. 977,502 (December�16,�2001)

(11) United Kingdom: Reg. No. 1,566,114 (March�18,�1994)

(12) United States: Reg. No. 1,242,152 (June�14,�1983).
United States: Reg. No. 1,480,871 (March�15,�1988).

In the past three years alone The Antigua Group has spent in excess of US$6 million in worldwide promotion of the ANTIGUA and the ANTIGUA SPORT Marks. The Antigua Group will spend approximately US$2.3 million in the year 2004 for such promotions, with more than one-fourth of those dollars going toward promotion of the ANTIGUA SPORT Mark. Among various advertising and promotional activities, The Antigua Group sponsors numerous professional golfers so that the shirts, hats and other apparel they wear display the ANTIGUA and ANTIGUA SPORT Marks during internationally televised golfing tournaments. Golf clothing bearing the ANTIGUA SPORT Mark is worn by golfers on the PGA and LPGA tours, respectively. The Antigua Group also sponsors golfers in Long Drive and World Championship events. (For example, clothing bearing the ANTIGUA and ANTIGUA SPORT Marks was worn by golfer Darren Clarke during the July and August 2003 World Championship events, and in turn broadcast internationally.)

The Antigua Group promotes the ANTIGUA SPORT Mark through advertising at Major and Minor League Baseball stadiums, including Bank One Ballpark (home of the Major League Baseball (“MLB”) Arizona Diamondbacks), Shea Stadium (home of the MLB New York Mets) and 3-Com Park (home of the MLB San Francisco Giants). All of this sponsorship results in international broadcast of the ANTIGUA SPORT Mark.

The Antigua Group also promotes its ANTIGUA SPORT Mark through catalog sales, with catalogs sent to over sixteen (16) countries. Moreover, The Antigua Group, through distributors, sells products throughout Europe bearing the ANTIGUA SPORT Mark.

Since May�18,�1997, The Antigua Group has held and used the domain name . The Antigua Group’s homepage, while constantly featuring different images as part of its promotional activities, always prominently displays the ANTIGUA Mark and often the ANTIGUA SPORT Mark. Among other things, the “www.” site provides information about The Antigua Group and its products, including assisting people in the purchase of those products. (See, Annex 8.)

The Domain Name Is Confusingly Similar To Complainant’s ANTIGUA and ANTIGUA SPORT Marks.

Here, the domain name is identical to The Antigua Group’s ANTIGUA SPORT Mark. In addition, the domain name obviously includes The Antigua Group’s other trademark, ANTIGUA. Therefore, the domain name is confusingly similar to marks in which the Complainant has rights.

The Respondent Has No Rights Or Legitimate Interests With Respect To The Domain Name .

The Respondent is a known cybersquatter, Respondent goes by an entirely different name (“WorldNews Network”), Respondent has otherwise shown no use of the domain name in the offering of goods or services, and Respondent registered the domain name for the purpose of misleadingly diverting consumers to obtain more “hits” and thus more advertising revenue.

There is simply nothing to suggest that Respondent used or was prepared to use the ANTIGUA SPORT Mark prior to notice of this dispute. Other panels have found that this very Respondent is a known cybersquatter. E.g., Mackie Industrial, Inc. v. Vanilla, Ltd, NAF Claim No. FA0004000094668 (June�13,�2000). Respondent’s only use of the disputed domain name before the filing of the Complaint is that the domain name resolves to Respondent’s website, which has no connection with the ANTIGUA SPORT Mark and/or Complainant.

Respondent is not known by the ANTIGUA Mark and/or the ANTIGUA SPORT Mark. Respondent purports to operate an online news and information service, the “WorldNews Network.”

The domain name at issue in this case, , at the time of the Complaint resolved to Respondent’s home page, “”. Thus, Respondent is not now using, nor has ever used for over a year since registration, the name “antiguasport”, and goes by an entirely different name. Accordingly, Respondent does not meet the first two considerations for a legitimate interest as set forth by the Policy, paragraph 4(c).

Respondent has no legitimate commercial or fair use of the domain name. There is no legitimate, commercial reason for Respondent to use the ANTIGUA SPORT Mark as a domain name in connection with providing news or information. There is simply nothing about the ANTIGUASPORT Mark that suggests the provision of news or information.

Instead, Respondent uses to divert customers to , which is a commercial enterprise that contains a prominent link to the selling of domain names and charges for banner advertising. As noted above, Respondent is a known cybersquatter. Most tellingly, Respondent’s site contains a prominent link in which viewers are invited to bid on domain names. Thus, Respondent registered to drive web traffic to its website for the purpose of increasing “hits” for numerous commercial reasons, including: (1) Trolling for more customers for its business of selling domain names; and (2) increasing advertising revenue by being able to tout more “hits.”

In addition, throughout a previous “WorldNews Network Media Kit”, Respondent touts its “viewership growth rate” and boasts in its “Advertising Options” section of its “Media Kit” that there are “over 2,500,000 viewings per week. . . .” (Perhaps for the very reason that Respondent has been found by other Panels to be a cyber-squatter, Respondent labels the pages of its website addressing advertising as a “Media Kit.” Whether called a “Media Kit,” or some other inapplicable name, Respondent’s web pages are obviously for the purpose of soliciting paying advertisers). Respondent’s misleading diversion of Internet customers through the use of to obtain a greater number of “hits,” and corresponding greater number of advertisers, is not a legitimate interest.

The Domain Name was registered and is being used In Bad Faith.

Applying some of the factors stated in Policy, paragraph�4(a), as well as other factors that have been cited by other Panels in finding bad faith registration and use, and looking at the totality of the circumstances, Respondent registered and uses the domain name in bad faith.

The following circumstances show bad faith registration and use:

For nearly two years, Respondent has not used the domain name except to have the domain name resolve to its purported news site. As discussed immediately below, there is no connection between Respondent and the ANTIGUA SPORT Mark.

There is no evidence that prior to the Complaint the Respondent engaged in any business related to the name “antiguasport,” or otherwise had a legitimate business interest in the domain name at issue. In fact, other than to drive traffic to its commercial enterprise, Respondent had at the time of the Complaint not used the domain name since obtaining it. Rather, Respondent operates under the “World News” and “” Marks. Given that Respondent at the time of the Complaint had not used the mark in any manner in connection with the mark itself and has no real interest or purpose in the use of the ANTIGUA SPORT Mark as a domain name, Respondent registered the name in bad faith.

Bad faith is shown where the Respondent intentionally attempts to attract web traffic for its commercial gain by the deceptive use of another’s mark. Respondent drives traffic to its website through the use of a Mark for which it has no legitimate interest or relationship, and does so to be able to sell other domain names and boast increased “hits” in connection with selling advertising. Such conduct squarely falls within the definition of bad faith under Policy, paragraph 4(b)(iv).

Where the Respondent knew or should have known prior to registration of the Complainant’s trademark at the time of registration of the Domain Name, such actual or constructive knowledge goes toward a finding of bad faith. Here, had Respondent prior to seeking domain registration run a USPTO trademark search, Respondent would have learned that The Antigua Group had applied for registration of the ANTIGUA Mark on June�20,�2002, application date for US registration which predates August�18,�2002, the date Respondent obtained the domain name at issue. In addition, an Internet search would have revealed the domain name and website.

Respondent is a well-known cybersquatter who hoards domain names, and that pattern of infringing upon others’ famous and registered trademarks is evidence of bad faith registration and use. Morning Call, Inc. v. Denise De Brito, NAF Claim No.�FA111000102248 (January�17,�2002) (finding that the Registrant of the domain name , who was also the previous administrative contact for Vanilla, Ltd., is a known cybersquatter) [Vanilla, Ltd. sometimes registers domain names under the names of “Denise de Brito” and “Celia Ng,” who may or may not be actual, living individuals]; Mars, Inc. v. Vanilla, Ltd, WIPO Case No. D2000-0586 (“It appears that Complainant has met its burden of proof under Paragraph 4(b)(ii) of the Policy, considering the effect of Respondent’s [Vanilla, Ltd.’s] conduct in registering numerous domain names that prevent others from using their trademark as a domain name”). See also, Parfums Christian Dior v. Javier Garcia Quintas and C, WIPO Case No. D2000-0226 (Panel infers from hoarding of domain names with no apparent commercial connection with Respondents, and other facts, that Respondents are really in the business of acquiring and selling domain names).

Preventing a Complainant from legitimate use of its trade name is a factor toward a finding of bad faith. Here, Respondent has and will disrupt The Antigua Group’s business. The Antigua Group cannot use the domain name with obvious connections with its business and an extension of its long standing and well-used domain name. If the name is not transferred, then The Antigua Group’s business will remain disrupted until the inevitable time in which is listed for sale on Respondent’s website.

Respondent failed to respond to The Antigua Group’s communications, including a cease and desist letter, which is further evidence of bad faith, particularly combined with Respondent’s warehousing of domain names such as that constitute the trademarks of others. E.g., Mackie Industrial, Inc. v. Vanilla, Ltd, NAF Claim No. FA0004000094668 (“Respondent’s [Vanilla, Ltd.’s] warehousing of dozens of domain names, especially including a widely registered trademark in this case [RCF], and its failure to respond to Claimant’s ‘cease and desist’ letter, reflects that it has registered the domain name in question primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant or to a competitor of Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name”); Europay International S.A. v. Domaines Ltd. and Cecilia Ng, WIPO Case No. D2000-0513 (Panelist found that this Respondent’s failure to respond to a cease and desist letter was evidence of bad faith). An Antigua Group employee sent emails and faxes to Respondent who did not respond to any of The Antigua Group’s communications. On July�16,�2003, The Antigua Group’s attorneys, on behalf of The Antigua Group, sent a cease and desist letter to Respondent Vanilla, Ltd. (the “Cease and Desist Letter”) via mail, email and facsimile. Respondent received the Cease and Desist Letter, but chose to ignore it.

Respondent is well aware of this dispute process as it has been a Respondent in numerous cases. Put differently, Respondent Vanilla, Ltd. is well aware that it registers literally thousands of domain names such as without any connection to such Marks, that it has lost numerous WIPO decisions (many of which note that Vanilla, Ltd. is a cybersquatter), yet chose to ignore Complainant’s Cease and Desist Letter. Legitimate domain users simply do not engage in that kind of conduct.

B. Respondent

The Respondent’s contentions can be summarised as follows:

There is no basis for transferring the domain name (the “Disputed Domain”) to Complainant. Antigua is the name of an island in the Caribbean and the Disputed Domain incorporates the geographically descriptive term “Antigua sport”. Respondent has a legitimate interest in the Disputed Domain because it incorporates this descriptive term, and was registered to be used for an informational website about the Antigua and sports. Anyone has the right under the UDRP and under trademark law to register a geographically descriptive domain name. There can be no doubt that Respondent’s intent was to register a country name as a domain name and not one incorporating a trademark owned by Complainant. The Disputed Domain is just one of many geographic domain names owned by Respondent and its wholly-owned subsidiaries. Respondent operates a network of geographic websites under the umbrella sites “” and its WN World News Network. Respondent operates a website at “www.”, which provides news, information and links to other sites about sports and the Island of Antigua. Although the dedicated website “www.” was not developed prior to the initiation of this dispute, Respondent registered the Disputed Domain with the intent to use it for such a dedicated website. Prior to the development of the dedicated website, the Disputed Domain redirected to Respondent’s “WorldN” website.

While Complainant points to other decisions referencing domain names owned by Respondent’s affiliated organizations, Respondent filed no response in those proceedings. Moreover, one of the proceedings involved a word in the dictionary, and another involved a descriptive term domain name for which no trademark (common law or registered) existed at the time Respondent registered it. Had Respondent put forth a defence in those cases it is unlikely that bad faith registration would have been found. Moreover, an equal number of past UDRP decisions have ruled in favor of Respondent. There certainly is no evidence of bad faith registration here. There is no evidence Respondent registered the Disputed Domain to sell to Complainant or to any other party. There is no evidence that Respondent registered the Disputed Domain to disrupt Complainant’s business. There is no evidence that Respondent registered the Disputed Domain to prevent Complainant from reflecting its trademark in a domain name. There is no evidence that Respondent is using the Disputed Domain to derive commercial benefit by confusing users seeking Complainant’s website.

Complainant does not have exclusive rights to the term “Antigua” or “Antigua Sport”. There is substantial third party use of the term. A G search for “Antigua Sport” yielded 2,990 web pages, most of which use the term in a descriptive fashion and not to refer to Complainant.

Respondent owns many Internet domain names, but Respondent is no cybersquatter. Respondent has registered thousands of domain names, however, they are predominantly generic, common words, or city names, and they have all been registered for development in connection with one or more sites which are a part of Respondent’s WorldNews, Inc. network of websites located at “”. Respondent builds websites for its city domain names primarily in connection with the “WorldN” website networks. Other city domain names registered by Respondent include , , , , , , , , , , , , , , , , . Other generic domain names owned by Respondent include: , , , , , , , , , and . “WorldN” includes over 3,000 different sites that receive approximately 5 million unique visitors per month, and a total of approximately 12 million visitor sessions per month.

Respondent did not register the Disputed Domain to sell to Complainant or to any other party. Respondent did not register the Disputed Domain to disrupt Complainant’s business. Respondent did not register the Disputed Domain to prevent Complainant from reflecting its trademark in a domain name. Respondent is not using the Disputed Domain to derive commercial benefit by confusing users seeking Complainant’s website.

Complainant’s Trademark and the Disputed Domain are Identical

Respondent does not dispute this element of the Policy. However, the Panel need not reach a determination on this issue because, as described below, Complainant has failed to satisfy the two other requisite elements under the Policy.

Respondent has rights and a Legitimate Interest in the Domain Name

Respondent registered the Disputed Domain because it incorporates the name of the island Antigua followed by the common word “sport”, to use for a website about Antigua and sports. Respondent uses the website to offer news and information about Antigua and Antigua sports. There is no evidence that Respondent registered the Disputed Domain with Complainant in mind, or that it has ever registered any domain name with a trademark owner in mind. It has not.

Utilizing a geographically descriptive domain name for a website constitutes a legitimate interest under the Policy. Although contains more than just the name of a geographic region, the dominant portion of the domain name is Antigua and the domain name, nonetheless, incorporates a geographically descriptive term composed of the name of the Island and the common word sport.

While there was a period of time during which the domain name was undeveloped and pointed directly to Respondent’s “WorldN” website, Respondent’s legitimate interest is not diminished. Its intent to develop the dedicated websites at the time it registered the Disputed Domain establishes its legitimate interest. It is the Respondent’s intent to use the domain name at the time of registration that matters. Moreover, as admitted in the Complaint, Respondent has used the Disputed Domain in connection with its World News network and this constitutes use in connection with the bona fide offering of goods and services.

Accordingly, for all of the above reasons, Respondent has a legitimate interest in the Disputed Domain.

The Disputed Domain was not registered and is not being used in bad faith

Because a complainant cannot claim exclusive rights to a geographic descriptive term, it cannot establish bad faith registration of a domain name incorporating that term. There are numerous third party uses of the geographically descriptive term “Antigua sport”. It matters not that Complainant may not be using the Disputed Domain in a geographically descriptive manner.

Bad faith also cannot be established simply because “Antigua Sport” is a term not exclusively associated with Complainant. Absent direct proof that the domain name was registered or acquired solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration and use.

Complainant has proffered no evidence of any kind that Respondent registered the Disputed Domain with its trademark in mind. All the evidence demonstrates that the domain name was registered because it is a geographically descriptive term. Had Respondent registered only the domain name and no other city domain names, perhaps the inference could be raised that Respondent had targeted Complainant’s trademark. However, here Respondent has registered numerous geographic domain names and developed hundreds of geographic websites.

To support its argument for bad faith, Complainant points to other cases involving Respondent. However, Respondent did not file a response in the cited cases, and a close review of the cases reveals that they do not contain facts prejudicial to Respondent.

The Panel in Europay International S.A. v. Domaines Ltd. And Cecelia Ng, WIPO Case No. D2000-0513, did not make any finding with respect to any other domain name registered by Respondent. The Panel simply drew an adverse inference against Respondent due to its failure to respond to the complaint, and determined that its non-use of the domain name with mere banner advertisements constituted bad faith. That case involved the domain name , which is arguably a geographically descriptive domain name, which does not evidence bad faith registration its face. The domain name in Mars Inc. v. Vanilla, Ltd, WIPO Case No. D2000-0586 was . “Aquarian” is a common word in the English language meaning “one who is born under the sign of Aquarius”. The panel there simply ruled against Respondent because it did not respond to the Complaint. The panel did seem to hold against Complainant the simple fact that it owned numerous domain names. But the panel did not have before it the evidence that Respondent’s domain names are generally generic (, , , , , , , , ). There mere registration of common word domain names is entirely lawful under the Policy.

Accordingly, for all the above reasons, this Panel should find that Respondent has not engaged in bad faith registration and use of the Disputed Domain and, accordingly, deny the Complaint.

6. Discussion and Findings

A. Identical or Confusingly Similar

Absent the generic .com part of the Domain Name, the Domain Name is identical to the Complainant’s ANTIGUA SPORT mark in which it has unregistered trade mark rights. The Respondent does not dispute that the Domain Name is identical and/or confusingly similar to a trade mark owned by the Complainant and the Panel finds that the Complainant has satisfied the first requirement under the Policy. B. Rights or Legitimate Interests

While the Respondent claims that it registered the Domain Name to use for a website about Antigua and sports, it has been unable to produce any evidence of this or any preparations towards this goal prior to the Complaint. At the time of the Complaint, the Respondent’s only use of the Domain Name was to drive traffic to its online news and information service which has no obvious link to Antigua or sport and has links to domain name registration and Internet advertising services. As such the Panel holds that the Respondent had not used the Domain Name in connection with the bona fide offering of goods and services before the Complaint or for a non-commercial or fair use, nor is it commonly known by the name Antigua Sport. The Panel holds that the Respondent has not produced evidence of rights or legitimate interest in the Domain Name. B. Registered and Used in Bad Faith

Paragraph 4(b) of the Rules sets out non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:

“the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name”; or

“by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.”

The Respondent has admitted it is affiliated with businesses connected with the registration of domain names. Links on the Respondent’s main website to which the Domain Name was connected at the time of the Complaint lead to pages where domain names are sold. While the majority of these are generic domain names, they include names such as which would conjure up strong links with trademarks of third parties. However, there is no evidence here that the Respondent has sought to sell the Domain Name to the Complainant.

The Respondent claims that “Antigua” and “Sport” are both common generic words and the Panel agree; however the Respondent does not acknowledge the obvious that the combination of these two words may be somewhat more unusual and specialized. The Panelist does not agree with the Respondent that “Antigua Sport” is a geographically descriptive term. Given the number of fields of interest the list of domain names registered by the Respondent reveals and the fact that the Respondent operates an international news website, the Panel thinks that it is highly likely that the Respondent was aware of the links between the term “Antigua Sport” and the Complainant, especially if, as claimed, the Respondent is interested in sports news on an international scale.

Further, as at the date of the Complaint, the Respondent was using the Domain Name to point to its on line news website with links to other commercial services none of which appeared to have any connection with “Antigua” or “Sport”. Accordingly, the Panel holds that, by using the Domain Name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location.

For these reasons the Panel holds that the Domain Name was registered and is used in bad faith.

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 be transferred to the Complainant.

Dawn Osborne
Sole Panelist

Date: September�13,�2004

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