The Complainant is St Andrews Links Ltd of St Andrews, Fife, United Kingdom of Great Britain and Northern Ireland, represented by Nixon Peabody, LLP, United States of America.
The Respondents are Nial Chapman/Blue Square E-business Ltd of Dundee, United Kingdom of Great Britain and Northern Ireland; and St Andrews International Private Members Golf Club Limited of St Andrews, Fife, United Kingdom of Great Britain and Northern Ireland, represented by Jirehouse Capital, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain names and are registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2012. At this point, the only disputed domain name was . On November 15, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Nial Chapman/Blue Square E-business Ltd is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 20, 2012.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Nial Chapman/Blue Square E-business Ltd of the Complaint, and the proceedings commenced on November 21, 2012. On November 20, 2012, an email communication from a “Keith” was received by the Center stating “I am no longer working at Blue Square. My workload has been passed on to colleagues and so please contact either […] Conway ([…]@) for technical issues or Nial Chapman ([…]@) for anything else”. The Center acknowledged receipt of this email on the same day.
In accordance with the Rules, paragraph 5(a), the due date for the Response was December 11, 2012. The Respondent Nial Chapman/Blue Square E-business Ltd did not submit a Response by that date and accordingly, the Center notified the Respondent’s default on December 12, 2012.
The Center appointed Jon Lang as the sole panelist in this matter on December 17, 2012. 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.
Before a decision was made by the Panel, a letter was received by the Center (on January 8, 2013) from Jirehouse Capital acting on behalf of St Andrews International Private Members Golf Club Limited stating that the dispute domain name is owned by their client and that their client intends to defend the proceedings. An extension of time was requested to January 15, 2013, so that an application could be made to intervene in the proceedings and a Response lodged. In response, the Panel, in the interests of enabling a decision to be made on the best available record, made a Procedural Order dated January 9, 2013 (“Procedural Order No. 1”), granting an extension of time to January 15, 2013, for the Respondent to submit any statement or evidence it may wish to make in response to the Complainant’s claims. The Response was to include, (further to the assertions made in the communication of January 8, 2013 referred to earlier), evidence of the relationship (if any) between the named Respondent “Nial Chapman/Blue Square E-business Ltd” and any entity (such as St Andrews International Private Members Golf Club Limited) claiming to be the beneficial owner of or have an interest in the disputed domain name . The Panel noted in the Procedural Order No.1 that any final determination of the proper Respondent(s) will be solely a matter in its discretion. Consequential orders were also made, including an order allowing the Complainant to submit a Sur-Reply by no later than January 21, 2013.
On January 10, 2013, a letter was received from a company called Blue Square Design Limited, a successor company to the Respondent Blue Square E-business Ltd, stating that St Andrews International Private Members Golf Club Limited is its client and that it had purchased various domain names on their behalf. Attached to the letter was an invoice listing four domain names that had been purchased - , , and .
On January 15, 2013, a Response was submitted on behalf of St Andrews International Private Members Golf Club Limited followed, the next day, by the submission of a ”Notice of defence and counterstatement”. This Notice had been filed in the trade mark registry proceedings referred to in the Responses (being in relation to St Andrews International Private Members Golf Club Limited trade mark application No. 2626277 and the Complainant’s opposition thereto).
The letter of January 10, 2013 from Blue Square Design Limited prompted the Complainant’s attorneys to seek to add three additional domain names (not included in the Complaint) to the proceedings, namely , and and a (further) amended Complaint (the “Amended Complaint”) was submitted on January 16, 2013. The covering letter of the same date, whilst explaining the addition of the three additional domain names, made clear that, as far as the Complainant was concerned, the Respondent remained the listed registrant alone, namely Blue Square E-business Ltd.
In the light of the Response submitted on behalf of St Andrews International Private Members Golf Club Limited and also the Amended Complaint seeking to add to the proceedings three additional domain names, the Panel made a further Procedural Order on January 21, 2013 (“Procedural Order No. 2”). Procedural Order No. 2, inter alia, refused the addition of the domain names and to these proceedings on the basis that disputes concerning abusive registration and use of domain names in the “.” space are not governed by the UDRP. However, in relation to the domain name the Panel, mindful of the administrative efficiency to be gained by considering that domain name in these proceeding, provisionally accepted its inclusion, (subject to verification of registrant details by the concerned Registrar).
Given the (voluminous) Response submitted on behalf of St Andrews International Private Members Golf Club Limited and the addition (on a provisional basis) of the domain name , the Panel extended time for the Complainant to provide a Sur-Reply to January 25, 2013 and the Respondent was given an opportunity to submit, by January 30, 2013 a further a statement or evidence in response to the Complainant’s additional claims in its Amended Complaint.
Following Procedural Order No. 2, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name on January 21, 2013. On January 22, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Nial Chapman/Blue Square E-business Ltd is listed as the registrant and providing the contact details. The Complainant submitted a Sur-Reply on January 25, 2013 and a Respondent’s Statement was submitted on behalf of St Andrews International Private Members Golf Club Limited on January 30, 2013. As a result further correspondence on behalf of the Complainant (its letter of January 30, 2013 objecting, inter alia, to the scope of the Respondent’s Statement) and on behalf of St Andrews International Private Members Golf Club Limited, (its letter of January 31, 2013 objecting to the Complainant’s letter of January 30, 2013), the Panel made Procedural Order No. 3 on February 1, 2013 accepting the Respondent’s Statement of January 30, 2013 and providing, inter alia, for the Complainant to submit a further Sur-Reply by February, 7, 2013, which it duly did (on February 7, 2013). 4. Factual Background A. The Complainant
The following is taken from a document entitled ”Background and History of the Complainant”, at Annex 3 of the Amended Complaint. Its precise content may be disputed by the Respondent, but the Panel borrows from it only to provide general background rather than to found any decision it makes.
St Andrews Links in the town of St Andrews, Fife, Scotland, and is recognized worldwide as the "Home of Golf". Golf has been played there since the 15th century. The first golf course on St Andrews Links is now known as The Old Course. The Old Course has long held a leading position in international golf course rankings and is widely considered one of the finest, and most famous and traditional courses in the world. In 1974 the St Andrews Links Trust (the “Trust”) was established by an act of Parliament to ensure that St Andrews Links would continue to be run as a public park and place of public resort and recreation for the residents of the town of St Andrews and others. The golf courses of St Andrews Links, including The Old Course, are operated by the Trust, under and by reference to the trade mark ST ANDREWS LINKS.
Established in 1994, the Complainant is one of three unlisted limited companies wholly owned and directly controlled by the Trust. The Complainant was set up for the express purpose of developing and holding intellectual property rights, including goodwill. The Complainant registers and protects the ST ANDREWS LINKS (and ST ANDREWS) brands and related marks and receives royalties and other income derived from their exploitation.
The Trust expanded online in 1996 by setting up a website at “” to provide information to the rapidly growing number of golfers around the world who were becoming connected through the Internet. At first the website was purely for information purposes, providing information on such matters as the courses, prices, history and facilities at St Andrews Links. The Trust then moved into online bookings. The online booking system has become popular, accounting for around 20 percent of total visitor rounds on some of the courses. The Trust also launched an online shop so that customers around the world could purchase products bearing the ST ANDREWS LINKS marks and OLD COURSE logos (mentioned below).
The Trust engages in providing golf-related services, including but not limited to operating facilities for playing golf, clubhouses, a golf practice centre and academy, and organising golf tournaments. It also provides food and beverage to golfers and members of the public at the clubhouses. Further, it sells a variety of high quality retail merchandise including gift items, menswear, ladies wear, headwear and golf accessories through another wholly-owned company (of the Trust), St Andrews Links Golf Shops Limited.
The Complainant and its wholly owned subsidiary, Tom Morris Limited, are the owners of numerous trade mark applications and registrations comprising or including ST ANDREWS under which services and goods have been and are provided, including United States Trade Mark Registration No. 2169764 for ST. ANDREWS and Community Trade Mark Registration No. 004939351 for ST ANDREWS LINKS. B. The Respondent - Nial Chapman/Blue Square E-business Ltd
The entire share capital of Blue Square E-business Ltd (BSE) was acquired by Blue Square Design Limited (BSD). BSE no longer trades. BSD purchased various domain names on behalf of St Andrews International Private Members Golf Club Limited including the two the subject of these proceedings. It is no more than the agent of St Andrews International Private Members Golf Club Limited.
Nial Chapman was a director of BSE and is now a director of BSD. C. The Respondent - St Andrews International Private Members Golf Club Limited
St Andrews International Private Members Golf Club Limited was incorporated in the United Kingdom on April 28, 2010. It is currently engaged in the development of a golf course and resort at Feddinch Mains, St Andrews, Fife, Scotland. It has annexed to its Response dated January 15, 2013 a certificate of incorporation for a St Andrews Private International Members Golf Club Limited. The Panel notes however that the Respondent has been referred to in these proceedings as St Andrews International Private Members Golf Club Limited i.e. with the word “International” before, rather than after, the word “Private”.
During the course of development of the golf course and resort a number of planning applications have been made. St Andrews International Private Members Golf Club Limited has also been involved in trade mark registry proceedings in the United Kingdom Intellectual Property Office over its trade mark application No. 2626277 for ST ANDREWS INTERNATIONAL (stylized and with logo), which is opposed by the Complainant. In a witness statement filed on behalf of St Andrews International Private Members Golf Club Limited and dated August 29, 2012, in relation to trade mark application No. 2626276, it is said that the trade mark ST ANDREWS INTERNATIONAL (a stylized version different from the trade mark the subject of trade mark application No. 2626277, being without the logo element) was first used in 1992, by a predecessor company, (St Andrews International Golf Club Limited), when an application was first made to Fife Council for planning permission and that the names St Andrews International and St Andrews International Golf Club were incorporated into the planning application. Moreover, it is said that these names have been frequently used by Fife Council members and the press when the golf course and resort development was discussed or written about.
In the Response, it is said that the “St Andrews International Golf Club” name was used by the ”International Golf Club of St Andrews Limited” from 1992 to 2006 i.e. a company having a different name to the predecessor company, “St Andrews International Golf Club Limited” referred to in the witness statement. The Panel assumes they are one and the same company. (It also assumes that St Andrews International Private Members Golf Club Limited and St Andrews Private International Members Golf Club Limited are one and the same). In any event, in the Response, a lengthy chain of transactions involving the development and associated intellectual property rights is described, culminating, it is said, in the rights to use the name “St Andrews International Golf Club” being vested in St Andrews International Private Members Golf Club Limited. It is also suggested that a considerable amount of money has been spent on the development.
The disputed domain names and were both registered on November 18, 2011. 5. Preliminary matters A. Procedural Order No.1- Respondent’s Identity
The Panel noted in Procedural Order No.1 that any final determination of the proper Respondent(s) will be solely a matter in its discretion. The Panel hereby determines that St Andrews International Private Members Golf Club Limited is a proper Respondent herein and bound by the decision of the Panel. It also determines that the original Respondents shall remain as the Respondents given that they are noted as registrants. However, hereafter, when the Panel refers to the Respondent, it shall be a reference to St Andrews International Private Members Golf Club Limited only. B. Procedural Order No. 2 – Addition of Domain Name
The Panel, mindful of the administrative efficiency to be gained by considering the disputed domain name in these proceeding, provisionally accepted its inclusion, (subject to verification of registrant details by the concerned Registrar). The registrant details were subsequently verified and the Panel hereby includes the disputed domain name in these proceedings. The disputed domain names and are hereafter referred to together as the ”Domain Names” although in the summary of the Complainant’s contentions, the focus is primarily on the disputed domain name (also referred to on its own as the “Domain Name”). 6. Parties’ Contentions
A brief summary of the contentions of the parties is set out below. In the interests of brevity, only those contentions that the Panel considers appropriate to record in this decision have been included. A. Complainant – the Amended Complaint dated January 16, 2013
(i) The Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights
The Complainant’s ST ANDREWS LINKS and ST ANDREWS marks are virtually identical to the Domain Name and . “St Andrews” is the dominant term in respect of each. As is evident from the website to which the Domain Name resolves, the addition of the letters “igc” is intended to represent the phrase “International Golf Course”, and thus far from diminishing confusing similarity between the Complainant’s marks and the Domain Name, their addition only serves to increase it.
The Complainant’s marks have been used extensively by the Trust and its wholly owned companies, including the Complainant, in respect of the Trust’s businesses and on its goods and services in the United Kingdom for many years, and now also in many countries throughout the world.
The website to which the Domain Name resolves provides information in the field of golf, including golf course services and falls squarely within the services protected by the Complainant’s marks, thus compounding the likelihood of confusingly similarity. Moreover, the website provides information and images that suggest an association with Complainant.
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names
The Respondent is unable to associate itself with any of the activities under paragraph 4(c) of the Policy, (being a non-exhaustive list of factors which may demonstrate that a respondent has rights or legitimate interests in respect of a domain name).
The Complainant’s business is focused on the provision of golf facilities, entertainment and tourism and its trade mark registrations are directed to such services. The Respondent has attempted to offer services identical to those of the Complainant’s in connection with a domain name (i.e. the Domain Name) confusingly similar to the Complainant’s marks.
The Respondent was aware of the Complainant’s trade mark rights and its activities are designed to capitalise on the fame and goodwill associated therewith. Such is not a legitimate use of the Domain Name but instead an attempt to improperly trade on the goodwill of the Complainant developed in its marks.
There is no evidence that the Respondent has been commonly known under the Domain Name () or that the Respondent has built any goodwill in connection with the name “St Andrews”.
The Respondent can present no evidence demonstrating that it is making a legitimate noncommercial or fair use of the Domain Name. On the contrary, the services advertised on the website to which the Domain Name resolves are intended to directly compete with the Complainant and was created with the intent to sell such services for profit under the Complainant’s marks. Such activity does not qualify as noncommercial or fair use.
Registration of the Complainant’s marks predate the Respondent’s registration of the Domain Names.
The Respondent is not, and has never been, a licensee of the Complainant and has never asked, or been permitted in any way to register or use the Complainant’s marks or to apply for or use any domain name incorporating them.
Accordingly, the use of the Domain Name is not legitimate use in connection with a bona fide offering of goods and services.
(iii) The Domain Names were registered and are being used in bad faith
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 marks as to the source, sponsorship, affiliation or endorsement of that website (or online location) or of a product or service thereon, and such is one of the (non-exhaustive) indicia of bad faith registration listed in paragraph 4(b) of the Policy.
The website to which the Domain Name resolves markets services in such a way as to associate itself with the Complainant. For example, the website includes a picture of the Complainant’s The Old Course, including the world-famous Swilcan Bridge, on its “Location, About St Andrews and the area” page. The same page also refers to the “home of golf”. The Complainant’s famous Swilcan Bridge and the mark HOME OF GOLF are the subject of numerous trade mark registrations owned by the Complainant and its wholly owned subsidiary, Tom Morris Limited, in numerous jurisdictions.
The Respondent chose to register a domain name nearly identical to the Complainant’s ST ANDREWS mark, adding only the descriptive abbreviation “igc”. The Respondent is engaged in selling golf-related services. It is also aware of the Complainant’s golf courses offering services under its marks. This gives rise to a strong inference that the Respondent chose the Domain Name precisely because it is confusingly similar to the Complainant’s marks.
Moreover, the website to which the Domain Name resolves advertises a “Morris Membership”, which is undoubtedly a reference to Old Tom Morris, a golfing legend who won The Open Championship at St Andrews Links numerous times, and served as a green keeper. The Complainant and Tom Morris Limited are also the owners of numerous registrations for the mark TOM MORRIS in many jurisdictions throughout the world. These references indicate the Respondent’s intent to associate itself with the Complainant, as well as its bad faith in registering the Domain Name. B. Respondent – the Response dated January 15, 2013
(i) Is the Domain Name identical or confusingly similar to a trade mark in which the Complainant has rights?
The Respondent denies that the Domain Name is identical to or confusingly similar to a trade mark in which the Complainant has rights and are plainly not identical to the Complainant’s domain name .
By its Complaint, the Complainant is seeking to monopolise the use of St Andrews name in connection with the classes of goods and services in which the Complainant’s trade marks are registered and in connection with golfing activities.
(ii) Rights or legitimate interests in respect of the Domain Name
The Respondent has legitimate rights and/or interests in respect of the Domain Name. The Respondent and its predecessors have legitimately used the ”St Andrews International Golf Club” name in connection with the development of a golf course and resort situated at Feddinch Mains, St Andrews, Fife since 1992.
The Respondent (and its group) has expended substantial resources on the development.
The Respondent believes that the Complainant was or alternatively ought to have been aware of the use of the name “St Andrews International Golf Club” by reason of the various planning applications that have been made, notices of which were publicly advertised. The development, and use of the name “St Andrews International Golf Club”, have been well known in St Andrews and elsewhere.
The Respondent contends that there is evidence of use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services before it received any notice of the dispute and also that it has been or is commonly known by the Domain Name.
(iii) Registration and use in bad faith
The Respondent denies that the Domain Name has been registered and is being used in bad faith. In particular, it was not registered or acquired to sell, rent, etc, to prevent the Complainant from using it, or to disrupt the Complainant’s business, or to attempt to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks. C. Complainant – Sur-Reply dated January 25, 2013
The Complainant has long-held trade mark rights based on its long-standing use of the ST ANDREWS marks with identical services to those proposed to be offered by the Respondent, and with the consuming public’s understanding that such services are offered by the Complainant. The Complainant’s registered trade marks for both the ST ANDREWS and ST ANDREWS LINKS marks worldwide provide the Complainant with the presumptive right to use these terms in connection with the same and similar services to the exclusion of others, including the Respondent.
The ST ANDREWS mark has acquired distinctiveness through the Complainant’s long and substantial use of the ST ANDREWS and ST ANDREWS LINKS marks, such that consumers associate the ST ANDREWS mark with goods and services offered by the Complainant. Whilst the Respondent claims that the ST ANDREWS mark is descriptive, the Respondent itself has filed an application for registration of the trade mark, ST ANDREWS INTERNATIONAL (with design).
As to the Respondent’s contention that the Complainant was, or should have been aware of the use of the name ”St Andrews International Golf Club”, based on the various planning applications that were a matter of public record in Fife, the Complainant states that it actively monitors trademark registries worldwide and the filing of both the trade mark opposition and the current UDRP proceeding are evidence that the Complainant acted quickly and decisively.
The Domain Names are confusingly similar to Complainant’s trade marks.
As to legitimate interest, the documentation exhibited by the Respondent regarding its incorporation and that of its various predecessors, assignment documents and planning permissions relating to the proposed golf course, do not evidence any rights in the ST ANDREWS trade mark, nor the related ST ANDREWS INTERNATIONAL mark.
As to the Respondent’s assertion that it has used the name “St Andrews International Golf Club” since 1992, the Complainant highlights its rights and the numerous registrations it owns including United Kingdom Trade Mark Registration No. 1227472 for the ST ANDREWS LINKS mark (filed October 2, 1984); United Kingdom Trade Mark Registration No. 1249350 for the ST ANDREWS LINKS & Design mark (filed August 30, 1985); United Kingdom Trade Mark Registration No. 133061 for the ST ANDREWS LINKS & Design mark (filed November 26, 1988); and United States Trade Mark Registration Nos. 2169764 (referred to earlier) and 2169765 for the ST. ANDREWS mark (both filed April 5, 1990). In these circumstances, the Complainant believes that the Respondent’s use of the ST ANDREWS mark was a violation of the Complainant’s registered rights as long ago as 1992.
Moreover, the Complainant’s use of the ST ANDREWS mark pre-dates 1992.
Whilst the Respondent alleges that it has legitimate interests because it is opening a golf course in St. Andrews, the golf course is in fact being established outside of St. Andrews and the Complainant refers to a number of documents to support this contention. For instance, the homepage of the Respondent’s website states, “St Andrews International Golf Club lies to the south of St Andrews, and is only one and a half miles from the heart of the 'Home of Golf'”. The golf course is in fact to be located in Feddinch.
Even where there have been preparations to use a domain name in offering services, there can be no legitimate interest where the domain name was registered with the intention of taking advantage of an association with someone else’s business.
As to bad faith, the Respondent’s alleged use of the “St Andrews International Golf Club” name in connection with the development of a golf course and resort does not absolve it of culpability. In fact the creation of a golf course under that name only serves as further evidence of intent to ”pass off on” the goodwill of the Complainant.
The Respondent was aware of the Complainant’s offering of identical services under the ST ANDREWS mark but opted to proceed in an effort to misappropriate goodwill associated with the Complainant’s mark. The Respondent’s preparations to use the ST ANDREWS INTERNATIONAL mark prior to acquisition of the Domain Names is of no consequence when such preparations involved the unauthorised use of the Complainant’s marks.
The Complainant refers to a brochure advertising the services of the Respondent (exhibited by the Respondent) as evidence of bad faith intent to pass off the goodwill and reputation of the Complainant and its famous golf courses. The brochure uses various of the Complainant’s trade marks and images of the Complainant’s golf courses to advertise its own services. For instance, the opening pages of the brochure include a picture of Old and Young Tom Morris, a statement referring to the Club’s location at “The Home of Golf”, and a picture of the Complainant’s The Old Course, including the Swilcan Bridge. The TOM MORRIS, HOME OF GOLF, and SWILCAN BRIDGE DESIGN trade marks are all registered by the Complainant. Page 3 of the brochure also refers to the “Home of Golf” and specifically discusses the course’s “impressive views over the famous Old Course in the foreground”. The Respondent also relies on other references in the brochure, such as the description of the proposed golf course on page 5, namely that the “[r]evetted bunkers on every hole and a double green will remind players that they are at St Andrews”. The Complainant maintains that the language evokes the well-known features of the Complainant’s own golf courses and is intended to imply an association with Complainant. At pages 8 and 12 of the brochure are full-page images of the Complainant’s Old Course golf course, evidencing an intent to benefit from the goodwill of the Complainant’s intellectual property. A quote on page 12 states that “[p]laying golf at St Andrews is an ambition of golfers the world over[.]” It is well-known that this ambition is specific to playing the world’s oldest and most famous course, the Complainant’s The Old Course, which is associated with the ST ANDREWS trade mark.
There is no doubt that the Respondent was aware at the time of registration of the Domain Names that the ST ANDREWS mark was associated with Complainant’s business and acted in a way to benefit from goodwill rightfully belonging to the Complainant.
The Respondent has chosen domain names that incorporate and are confusingly similar to the Complainant’s registered trade marks, advertised its services in connection with images of the Complainant’s world famous golf courses, and is using a mark and domain names that suggest to consumers that they are based in St. Andrews, Scotland, which is not the case. Such use of the terms St Andrews and St Andrews International is clearly misleading and deceptive and further evidences the Respondent’s bad faith intent.
The parties are direct competitors for golf course services within a similar geographic region and the evidence supports the contention that the Respondent is acting in a way to create a likelihood of confusion between the parties, and “to pass off on” the goodwill and fame of the Complainant and its world famous golf courses, indicating bad faith in the registration and use of the Domain Names. D. Respondent – the Response dated January 30, 2013
As a preliminary point, the Respondent states that the Complainant’s claim to trade mark infringement is a matter in respect of which the competent judicial authorities is already seized and therefore, insofar as the Panel may rely on this ground, it should withhold its decision pending determination (of the trade mark dispute) and should not seek to pre-empt any finding of the Registrar in the United Kingdom trade mark registry proceedings (which in any event, is the appropriate forum for determination of the dispute between the parties in relation to the rights asserted by the Complainant in the ST ANDREWS mark).
The Respondent has legitimate rights in the “St Andrews International Golf Club” name, inter alia, by reason of its having traded with the name for over 21 years. The Complainant knew or ought to have known of this in the light of the numerous public filings in the St. Andrews area in relation to the Respondent’s business activities.
The Domain Names and trade marks that the Complainant relies on are not identical and the previous decisions relied on in relation to identity or confusing similarity by the Complainant are distinguishable. In particular, they were plainly instances of cybersquatting, where the respondent failed to respond and furthermore where there was no suggestion that the respondent had any substantial trading history using the relevant name. Moreover, there was no suggestion of trade mark disputes regarding the underlying right to use the name from which the domain names were derived.
As to rights and interests, the Respondent contends that the extensive documents submitted by it indicate approximately of 21 years’ trading using the “St Andrews International Golf Club” name and denies that use of that name was in violation of any of the Complainant’s marks.
The golf course development is legitimate and is located in St. Andrews. The address for the site is stated to be “Feddinch Mains, St Andrews, Fife” as set out in the various planning documents and maps. The Respondent’s business is based in St. Andrews and there is no misleading impression being given as to its location. In any event, it is submitted that the Respondent’s golf course development has a sufficiently close connection with St Andrews to distinguish it from the authority relied on by the Complainant. The Complainant’s authority was
Yell Limited v. Weborcus Software Systems Pvt. Ltd., WIPO Case No. D2004-0008 where the panel found that the respondent had no legitimate interest in “’’ being based in India, it holding that “Consequently the Domain Name is capable of misleading customers as to the geographical origin of the services provided by the Respondent, and the Respondent does therefore not have a legitimate interest let alone a right to the Domain Name”.
The Respondent denies that it seeks to take advantage of any association with the Complainant’s business.
As to the Complainant’s argument and authority in relation to the Respondent’s preparations to use the Domain Names in offering services, (namely St Andrews Links Ltd v. Refresh Design,WIPO Case No. D2009-0601, a decision in which the panel found that use of images of the complainant’s golf course and trade mark was evidence of the respondent’s lack of a legitimate interest in the mark), the Respondent distinguishes this decision too. In the Refresh Design decision, the respondent’s business related to the giving of tours of The Old Golf Course in respect of which the respondent had registered the domain . The respondent in that case appeared to accept that the site was identical to or confusingly similar to the relevant mark whereas identity or confusingly similarity is denied in this case by the Respondent. Furthermore, the Respondent submits that the use of the words “St Andrews” in the name “St Andrews International Golf Club” is descriptive (i.e. as to location of the golf course development).
In short, the Respondent submits that it has a legitimate interest in the “St Andrews International Golf Club” name and Domain Names.
As to bad faith, the Respondent denies the allegation and any claim of “passing off” and further submits that the Panel is not the appropriate forum for determination of such a claim. The marketing brochure referred to above “does not appear on” the Domain Names and the statements and images referred to are statements of fact which qualify as fair use of the relevant material.
Finally, the Respondent denies that the marketing materials referred to are capable of informing the Panel as to its intention, being created ex post facto.
In summary, the Respondent contends that the Complainant has failed to discharge its burden under the UDRP as the Domain Names are neither identical nor confusingly similar to the Complainant’s registered mark, the Respondent has legitimate interests in the Domain Names, inter alia, by reason of approximately 21 years’ trading using the “St Andrews International Golf Club” name and the Respondent is not using the Domain Names in bad faith. E. Complainant – Sur-Reply dated February 7, 2013
The Complainant rejects the suggestion made by the Respondent that these proceedings be suspended pending the outcome of the trade mark registry opposition proceedings given that it would circumvent the purpose of receiving a prompt decision under the UDRP (which it is intended to provide), noting also that “In addition, the UDRP process is in place to address a distinct issue from trademark disputes in different jurisdictions”.
The Complainant re-asserts that the Domain Names are confusingly similar to its long-established trade marks, in which it has valid rights.
As to rights or legitimate interests, the Respondent’s incorporation under the “St Andrews International Golf Club” name does not establish valid trade mark rights, the Complainant’s established trade mark rights in various jurisdictions pre-date the Respondent’s use, and St Andrews Links and its famous courses have been existence long before any of the Respondent’s activities. Therefore, use of the ST ANDREWS mark, was a violation of the Complainant’s registered and common law rights, even as long ago as the asserted first use in 1992.
As to the Respondent’s assertion that the Complainant was, or should have been, aware of the use of the name, “St Andrews International Golf Club” based on its incorporation and other matters, the Complainant reiterates that it actively monitors trade mark registries worldwide and took appropriate action once it learned of the Respondent’s presence. In any event, the Complainant asserts that the Respondent’s assertion has no bearing on whether the Respondent has a legitimate interest in the ST ANDREWS mark and Domain Names.
As to the Respondent’s alleged legitimate interests on the grounds that it is located in St. Andrews, the Complainant lists a number of references from documents provided by the Respondent, demonstrating that the proposed golf course is located outside of the town of St. Andrews.
In any event, the fact that the Domain Names have a geographic connotation does not mean that the Respondent would have legitimate interests in them, even assuming the Respondent were located within the town of St. Andrews, given that the St Andrews designation is not only a geographical location, but also a business name and a term in which the Complainant has trade mark rights.
Furthermore, in the absence of any licence or permission from a complainant to use a well-known trade mark in a domain name, no actual or contemplated bona fide or legitimate use (of a domain name) could reasonably be claimed. Furthermore, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [holder of the mark]”. (Drexel University v. David Brouda,WIPO Case No. D2001-0067). This is the case here, where the Respondent has clearly used the ST ANDREWS mark in the Domain Names to associate itself with the Complainant and its world-famous golf courses.
As to bad faith (in adopting and using the “St Andrews International Golf Club” name and the Domain Names), the Respondent was aware of the Complainant’s rights in the ST ANDREWS trade mark when the Domain Names were registered, and of their world-wide fame, and no further evidence, other than registration, is required for a finding of bad faith where a domain name contains a well-known trademark.
It is obvious that the Respondent has sought to associate itself with the Complainant because of the fame of Complainant’s ST ANDREWS marks worldwide, and especially in the golfing community. The Respondent merely notes that the marketing brochure referred to by the Complainant does not appear on the website at the Domain Names. However, the Complaint notes much of the same information can be found on the Respondent’s website (referred to earlier) and refers, in particular, to use of the Complainant’s registered HOME OF GOLF mark, the assertion that “[r]evetted bunkers on every hole and a double green will remind players that they are at St Andrews”, an image of the Complainant’s world-famous Old Course golf course and details of the Morris Membership. The Respondent’s misuse of the Complainant’s intellectual property is evidence of its bad faith intent.
The Respondent is using its Domain Names to advertise its proposed services in a manner that clearly shows its bad faith intent to create a false suggestion of a connection with St Andrews Links and its world-famous courses. Therefore, the Domain Names, the dominant element of each being “St Andrews”, should be transferred to the Complainant because (1) the Domain Names are confusingly similar to the Complainant’s registered trade mark for ST ANDREWS; (2) the Respondent has no rights or legitimate interests in the Domain Names; and (3) the Respondent has registered and is using the Domain Names in bad faith. 7. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is
(i) identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements. A Preliminary Matter – the Relationship between Trade Mark Law and the UDRP
The Respondent has urged the Panel to tread with caution in relation to the Complainant’s claim of trade mark infringement and, to the extent the Panel might rely on the assertions of the Complainant in this regard, suggests that the Panel should withhold its decision pending determination of the underlying trade mark dispute by the competent authorities. A similar point is made in relation to the Complainant’s suggestion of passing-off, the Respondent noting that the UDRP is not the appropriate forum for determination of such a claim. The Complainant rejects any suggestion that these proceedings be suspended given that it would circumvent the very purpose of the UDRP i.e. to provide parties with a prompt decision, noting also that the UDRP deals with different issues from trade mark disputes.
The Panel agrees with the thrust of both arguments. In fact, there is not much contest between the parties on this issue. Proceedings under the UDRP are not trade mark proceedings and panels should be cautious about straying into areas of national trade mark law which are not pertinent to the required elements under consideration in Policy proceedings (as opposed to determining whether rights exist in the hands of a complainant for the purposes of paragraph 4(a) of the Policy).
In La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grozea Romica, WIPO Case No. D2008-1377, the Panel stated “[…] this Panel would suggest that the questions of trade mark infringement, passing off and other similar national laws are typically quite distinct from any assessment of bad faith under the Policy. They may overlap but are not the same. Therefore, even if it is correct that any conceivable use of a domain name would involve trade mark infringement, it does not necessarily follow that there is bad faith use under the Policy.
[…] This was, for example, the approach that was followed by the three-person panel in Mr. Talus Taylor, Mrs. Anette Tison v. Vicent George Warning/Fayalobi Interaction Management,WIPO Case No. D2008-0455. In that case the panel stated at paragraph 6.21 as follows:
[…] The Panel is not saying that all and any use of the Domain Name would necessarily involve some form of trade mark infringement. The issues of trade mark infringement and abusive registration, whilst they often overlap, are separate and one does not necessarily follow from the other (see for example, Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule [D]e Souza,WIPO Case No. D2003-0372; and 1066 Housing Association Ltd. v. Mr. D. Morgan,WIPO Case No. D2007-1461).”
In summary, the Panel makes no finding on trade mark infringement or passing off and this is particularly important to note in relation to its finding on confusing similarity set out below. B. Identical or Confusingly Similar
The Complainant clearly has rights in its trade marks.
The Domain Name incorporates the Complainant’s trade mark ST ANDREWS in its entirety and contains the first part of the ST ANDREWS LINKS trade mark. Given the addition of the letters “igc” after “standrews”, it cannot be said that the Domain Name is identical to a mark of the Complainant. It is, however, similar to both the ST ANDREWS and ST ANDREWS LINKS marks and so the issue of confusing similarity must be considered. The position is similar in relation the Domain Name .
Under the UDRP, the test for confusing similarity involves a comparison between the trade mark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trade mark to which the domain name is said to be confusingly similar would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trade mark and the domain name.
Before deciding this issue, and having made clear that the Panel makes no finding on trade mark infringement or passing off, it is sensible to set out the general approach to confusing similarity under the UDRP. This can best be done by referring to the earlier UDRP decision in Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227, where the Panel said:
”[…] It is necessary to recognise that the term of confusing similarity is a low threshold test the purpose of which is effectively to assess whether a complainant has sufficient rights so as to give it standing to bring a complaint (see, for example, Aubert International SAS and Aubert France SA v. T Co.,WIPO Case No. D2008-1986). It involves a simple comparison of the mark relied upon with the domain name in issue. The geographical location of that mark is not important and normally neither is the degree of fame or reputation that a registered mark has achieved. Similarly, reference to local case law on confusing similarity or likelihood of confusion, is also unlikely to be that helpful.
[…] It is against this “standing” requirement that the word “confusing” is to be understood. So for example, even in cases where the domain name in issue takes the form of a trade mark combined with the pejorative term such as “sucks”, there is still likely to be confusing similarity (see for example, Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647).”
The ST ANDREWS mark is clearly recognisable within the Domain Names and the Panel is satisfied that, for the purposes of the Policy only and applying this low threshold test thereunder, that they are confusingly similar to the Complainant’s trade mark, ST ANDREWS. The Panel is also satisfied that the Domain Names are confusingly similar, on the same basis, to the ST ANDREWS LINKS mark.
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purposes of the Policy such that it needs to go on and consider the next limb of the three part test, namely whether the respondent has rights or legitimate interests in respect of the Domain Names. C. Rights or Legitimate Interests
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. Paragraph 4(c) of the Policy provides:
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
A wealth of evidence has been provided by both parties on this issue but the Respondent appears to rely on two grounds – preparations to use the Domain Names and that it is commonly known by the Domain Names.
(i) Preparations to use the Domain Names
The Respondent says that it and its predecessors have legitimately used the “St Andrews International Golf Club” name in connection with the development of a golf course and resort situated at Feddinch Mains, St Andrews, Fife since 1992. The evidence submitted certainly does suggest that much work has been done in relation to the development going back many years and that rights in that development, including in relation to intellectual property and names, (such as they are), are now vested in the Respondent. Thus, if the Respondent can show that a predecessor company whose rights now vest in the Respondent, or the Respondent itself, carried out work on the development that included preparations to use the ”[…] domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services […]”, it will be able to show rights to or legitimate interests for the purposes of this part of the Policy.
So, what was done? Much work was carried out in relation to planning. For instance, the evidence includes a Landscape and Visual Impact Assessment Report dated July 2003. The subject of the report, the development, is stated to be the “Feddinch Golf Course Development”. In documents accompanying the report, the project is referred to as the “SAIGC Feddinch Golf Course Development”. It should be mentioned that the proposed site is said to be approximately 3.5 kilometers south of St. Andrews. The “client” is said to be SAIGC Feddinch Ltd. The development has also been referred to, in the press, as the Feddinch Golf Development. In an application for outline planning consent submitted in October 2003 for a “Proposed Golf Club at Feddinch Mains, St Andrews”, the application is headed “St Andrews International Golf Club”. Other documents too, going back some considerable time, refer to “St Andrews International Golf Club”.
The Respondent suggests the Complainant was or ought to have been aware of the use of the name “St Andrews International Golf Club” by reason of the various planning applications, noting that the development and use of the name “St Andrews International Golf Club” have been well known in St Andrews and elsewhere. The Complainant provides no real answer to this other than to say it actively monitors trade mark registries worldwide and took appropriate action once it learned of the Respondent’s presence i.e. very recently. The Complainant also asserts however that this issue has no bearing on whether the Respondent has a legitimate interest in the ST ANDREWS mark and Domain Names because, it says, that use of the ST ANDREWS mark was a violation of the Complainant’s rights as long ago as the asserted first use by the Respondent in 1992. It also says that the Respondent’s incorporation under the “St Andrews International Golf Club” name does not establish valid trade mark rights.
Whether or not the Respondent’s use constitutes trade mark infringement is a matter that cannot be determined in these proceedings and, in any event, is not determinative of the issue that the Panel has to decide in these Policy proceedings. The immediately relevant point of concern for this Panel on the available record in this case is whether the Respondent had notice of the dispute with the Complainant before making “preparations to use, the domain name or a name corresponding to the domain name”. On the available evidence the Panel finds on balance that it did not.
The next and final issue to consider in relation to the Respondent’s assertion that it has sufficient rights for the purposes of the Policy based on its preparations is whether such preparations were “in connection with a bona fide offering of goods or services”.
The Complainant asserts that even where there have been preparations to use a domain in offering services, there can be no legitimate interest where the domain name was registered with the intention of taking advantage of an association with someone else’s business or where the preparations involve the unauthorised use of the someone else’s marks.
Whether the Respondent’s use is trade mark infringement is a matter to be determined elsewhere. As to “association”, again the Panel needs to tread carefully. The Complainant complains about use of certain references to it and its golf courses and history on the Respondent’s website and in its brochure. The Respondent maintains that the statements and images referred to by the Complainant’s are statements of fact which qualify as fair use of the relevant material. Again, the Panel makes no finding in relation to these matters in terms of passing off or trade mark infringement. It must, however, consider whether the Domain Names are used in connection with a bona fide offering for purposes of the Policy on the available record before it.
The apparent services offered or to be offered by the Respondent is or will be golf and ancillary services. There is no evidence before the Panel to suggest that the proposed services themselves (as opposed to the way they may be marketed, about which no finding is made) will be anything other than bona fide or genuine. Will golfers believe they are playing golf on one of the courses at St Andrews Links as opposed to St Andrews International, particularly when the Respondent’s marketing material (home page of its website) refers, for instance, to the fact that “St Andrews International Golf Club lies to the south of St Andrews, and is only one and a half miles from the heart of the 'Home of Golf'.”? Perhaps not. Will golfers feel misled because they are purchasing services from an entity describing itself as St Andrews International Golf Club, but it is not in St Andrews itself, but a few kilometers outside, such that it could be said that the goods and services are not a bona fide offering for purposes of the present Policy proceedings? Again, probably not. The Respondent’s development has been described, variously, as being “near” St Andrews or “on the outskirts of St Andrews” or (in a recent planning document) “by St Andrews”.
The Panel wishes to make clear that it makes no finding as to the bona fides or otherwise of the Respondent’s development plans more generally, such as, for example, as these may be assessed for the purposes of trade mark law, or a passing off action, or any other action under any potentially applicable national law , which may be brought before a court equipped with more extensive procedures to interrogate the evidence of record, and which are beyond the remit of this Panel in these expedited proceedings under the Policy. The Policy is intended to be an administrative mechanism directed at addressing a relatively narrow class of abusive conduct (being cyber squatting) and the Panel finds insufficient evidence before the Panel of such conduct on the part of Respondent here. The Panel further notes that the present, apparently on-going trade mark dispute between the parties, bears few of the hall-marks of a so-called “typical” case of cybersquatting, and the Respondent does not appear to have a history of prior decisions rendered against them under the Policy.
In these circumstances, on the record before it, this Panel would be reluctant not to give the apparent bona fides of the Respondent’s demonstrated preparations the benefit of the doubt for the purposes of these Policy proceedings. The onus of proof is ultimately on the Complainant under the Policy, and the Panel finds the Complainant has not carried that burden on the record presently before it.
(ii) Commonly known by the Domain Names
On the record before it in these Policy proceedings, it does appear to this Panel that the Respondent (and some of its predecessors in title) have apparently been known as, and referred to publicly, as St Andrews International Golf Club. There is no need under the UDRP for the Respondent to have acquired any trade mark rights as such in that term to potentially qualify for safe-harbor protection under paragraph 4(c)(ii) of the Policy.
This Panel does find support on the record before it for the Respondent’s claim to be commonly known by the term “St Andrews International Golf Club” for purposes of the Policy. The Domain Names appear to this Panel to reflect, in one case, replication of this term, and in the other, a recognizable abbreviation of it, the latter being directly used by the Respondent (as in it resolves to the Respondent’s website) in connection with a golf course to be called “St Andrews International Golf Club”.
The Panel finds sufficient evidence before it to enable the Respondent to qualify, on balance, for safe-harbor protection under the second element of the Policy. Ultimately, the onus of proof, especially in a vigorously contested case under the Policy, falls on the Complainant, and the Complainant has not succeeded in persuading this Panel that the Respondent lacks rights or legitimate interests in the Domain Names, at least for purposes of the UDRP.
In making this finding under the Policy, the Panel again notes that its Decision is limited in scope to the terms of the Policy and the evidence of record before it, and in no way precludes either party (both of which are located in the United Kingdom) from pursuing any dispute they may have with the other, including in connection with the law of trade marks, or passing off, or otherwise, via an appropriate national tribunal or court of competent jurisdiction.
On a strict application of the UDRP, the Respondent has shown evidence in accordance with paragraph 4(c)(i) and (ii) that it has rights to or legitimate interests in the Domain Names. D. Registered and Used in Bad Faith
Given that a Complainant must satisfy all three elements of paragraph 4 of the Policy and it has failed to satisfy the second, namely that the Respondent lacks rights to or legitimate interests in the Domain Names, there is no purpose in going on to consider bad faith. 8. Decision
For the foregoing reasons, the Complaint is denied.
Jon Lang
Sole Panelist
Dated: February 14, 2013
Full & Egal Universal Law Academy