Complainant is Martin Golf, LLC of Houston, Texas, United States of America, represented by Carstens & Cahoon, LLP, United States of America.
Respondent is Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Stanley Pace of Flower Mound, Texas, United States of America, represented by Rodenbaugh Law, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2013. On March 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 12, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 13, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 13, 2013.
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 Respondent of the Complaint, and the proceedings commenced on March 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2013. The Response was filed with the Center on April 7, 2013.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on April 18, 2013. 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
Complainant is a provider of golf apparel that is sold in golf pro-shops and with golf-oriented retailers. Complainant was founded on February 22, 2011, initially as Trek Apparel Company, LLC, and changed its name to Martin Golf, LLC, on June 20, 2011. Complainant is the owner of the United States trademark MARTIN, Reg. No.: 4,218,736, which was registered on October 2, 2012 with a date of first use in commerce on November 10, 2011.
The Domain Name was created on January 2, 2011. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar to a Trademark
Complainant asserts that the Domain Name, , is identical to its MARTIN trademark. Complainant further states that it has the exclusive right to use and license its MARTIN trademark for the products and services covered by its trademark registration. Complainant thus claims that it has satisfied the first element of the Policy. Rights or Legitimate Interests in Respect of the Domain Name
Complainant states it has had no relationship with Respondent whatsoever. Complainant has never authorized Respondent to use the Domain Name, nor has it ever authorized or licensed any sort of use of its MARTIN mark.
Moreover, Complainant asserts that there is no indication that Respondent has any rights or legitimate interests in the MARTIN trademark. Prior to this Complaint, Respondent has never made “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” under paragraph 4(c)(i) of the Policy. Complainant has provided a screenshot of the website linked to the Domain Name from February 2013. According to Complainant, the screenshot shows no substantive content to the website. Instead, it is a “pay-per-click” parking site. The hyperlinks were merely dictionary or common words related to golf and nothing that would suggest that they were related to a bona fide offering of goods and services by Respondent.
Complainant also states that Respondent has not been commonly known by the Domain Name. In fact, Respondent conceals its true identity from the public by utilizing a so-called “privacy service” provided by the Registrar. Complainant also contends that Respondent has failed to make a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers to or tarnish Complainant’s trademark under paragraph 4(c)(iii) of the Policy. As noted above, Respondent operates a for-profit, pay-per-click website, which negates any sort of noncommercial use argument. Furthermore, Respondent appears to be in the business of selling off domain names to trademark owners at a profit. Thus, Respondent cannot demonstrate rights or legitimate interests under paragraph 4(c)(iii) of the Policy by alleging a noncommercial or fair use.
Accordingly, Complainant states that it has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name and thus has satisfied the second UDRP element. Registered and Used in Bad Faith
Complainant alleges that Respondent registered the Domain Name primarily to sell it at a profit. Respondent’s website is a typical parking site that is waiting for a trademark owner to show up and purchase the domain name. The website’s title reads, “ – martingolf Resources and Information. This website is for sale!” The screenshot of website clearly shows that it is offering to sell the Domain Name: “Buy this domain. The domain may be for sale by its owner!”
Complainant contends that Respondent likely purchased the Domain Name in bad faith to sell it to Complainant for an excessive sum, which is further evidenced by Respondent’s rejection of Complainant’s good faith offer to purchase the Domain Name. Prior to filing this Complaint, Complainant made an offer through Network Solution to purchase the Domain Name for USD 650. The offer was made on February 7, 2013 and expired 10 days later without a reply from Respondent. The offered amount should have more than compensated for any reasonable out-of-pocket cost of registering and maintaining the Domain Name. Complainant asserts that failure to accept this reasonable offer or make a counteroffer suggests that Respondent wanted to see just how high a price Complainant was willing to pay.
Further, Complainant urges that Respondent has attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s MARTIN trademark as to the source, sponsorship, affiliation, or endorsement. Respondent has maintained the website linked to the Domain Name as a pay-per-click site during its ownership of the Domain Name. As noted above, screenshots of the website show a typical pay-per-click site design where the hyperlinks redirect the Internet user to other online locations. While pay-per-click sites are not per se bad faith in every circumstance, unless Respondent proffers rebuttal to the contrary, such schemes can serve as evidence of bad faith. Respondent uses the services of Sedo, which is in the business of providing domain parking service. Sedo boasts that it can “Make money from your incoming traffic with Sedo’s Domain Parking,” and “Sedo’s Domain Parking enables you to make money from your domains’ natural traffic! Do you have domain names you don’t use? Put their potential to work for you.” Complainant alleges that Respondent profited commercially every time someone clicked on one of its hyperlinks on the website linked to the Domain Name. Presumably, at least some Internet users ended up doing so when they arrived at this website thinking that it is related to Complainant’s MARTIN products and services. Such a scenario is quite likely given that Sedo touts the fact that “Our ad provider displays relevant, targeted ads to your domains’ visitors.” Respondent’s bad faith registration and use of the Domain Name is an attempt to easily profit off of the time, money and effort spent by Complainant to build up the value of its trademark. Thus, Complainant has established a prima facie case that Respondent registered Domain Name and is using it in bad faith. B. Respondent Identical or Confusingly Similar to a Trademark
Respondent asserts that while Complainant’s trademark, MARTIN, for golf shirts and sweaters may be deemed identical or confusingly similar to the domain names or , the Domain Name in this case is , which though it may be similar, is not confusingly similar, and is not identical to the mark. Respondent urges that where the trademark corresponds to a common term or phrase, itself having strong non-trademark significance when combined with another common term or phrase in the domain name, the trademark is not recognizable by a straightforward visual or aural comparison.
According to Respondent, such is the case here where the term “Martin” is not arbitrary, is not a coined term, and is not only a surname, but one that has non-trademark significance in the field of golf. Internet users would never actually believe there is a real connection between the Domain Name and Complainant, or any connection between the Domain Name and Complainant’s golf shirts and sweaters. Here, Complainant’s mark is MARTIN used on golf shirts and sweaters. Complainant’s mark is not “Martin Golf,” nor does Complainant have exclusivity over the name “Martin” in connection with the sport. There are many uses of the surname “Martin” in connection with golf (as opposed to golf shirts and sweaters). For example, “Martin Hall” has over thirty years of experience as a golf professional. He competed on the European Tour and has since turned his career toward teaching the game at a Martin “Hall” for golf. He won the 2008 PGA National Teacher of the Year. Moreover, PGA Tour veteran and former NCAA Champion, “Casey Martin”, has transformed Oregon into a national golf power, and guided the team to four NCAA Championship appearances in the past five years.
Respondent argues that the name “Martin” has had a special non-trademark significance for golf well in advance of Complainant’s adoption of the surname for golf shirts and sweaters, due to the landmark case in which the Supreme Court of the United States took up golf in 2001, ruling that a federal disability bias law gave golfer Casey Martin a legal right to travel in a golf cart between holes in competition. There are over a thousand references in legal jurisprudence to this case, and the Martin name for golf has become a critical part of the public discourse on important issues of legal jurisprudence. The Domain Name does not call to mind Complainant, nor its mark used on golf shirts or sweaters. Rights or Legitimate Interests in Respect of the Domain Name
Respondent argues that pay-per-click ads are a legitimate part of Respondent’s business and cannot be considered bad faith under circumstances where Complainant was not even in existence, let alone had not adopted or used the Martin surname for any goods or services, when Respondent initially registered the Domain Name. Respondent claims the Domain Name has been in the market for over a decade now—since 2001. Respondent acquired it in January 2011 and it was registered because it is intrinsically valuable for its multiple generic and descriptive potential meanings and uses. Its registration is consistent with Respondent’s business model, registering short and inherently valuable domain names for their dictionary, generic, geographic and/or surname significance. Indeed, Respondent has registered thousands of surnames and other generic, intrinsically valuable domain names.
As an investor in intrinsically valuable domain names, Respondent has a clear legitimate interest in the Domain Name. As set forth in the previous section, the surname “Martin” as a keyword in connection with golf can be used for many different legitimate purposes that have nothing to do with golf shirts and sweaters. Pay-per-click advertising is a widely accepted, good faith practice when used in connection with prime, descriptive or generic terms, including surname and/or keyword domain names and terms. Registered and Used in Bad Faith
Absent unusual circumstances, when a domain name is registered by a respondent before a complainant’s relied-upon trademark right is shown to have been first established, the registration of the domain name could not have been in bad faith because the respondent could not have contemplated the complainant’s then non-existent right. In this case, Complainant did not change its company name to include “Martin” until June 2011, filed its trademark in March 2011, and commenced use in November 2011. All of these dates are subsequent to the initial registration by Respondent. They are some ten years after the first registration of the Domain Name. In fact, Complainant concedes it was not even founded until after Respondent registered the Domain Name.
Respondent contends it is meritless for Complainant to argue that the Domain Name listed for sale on Sedo is evidence of bad faith. It is not in itself wrongful to trade in domain names. Investment in the secondary market for domain names can constitute the basis of a legitimate interest in a domain name, provided that the domain name is not being acquired in contexts in which its use is identical or confusingly similar to a complainant’s trademark and the registration is not in bad faith. Respondent has never offered the Domain Name specifically to Complainant or to any competitor of Complainant, and indeed Complainant does not even make such argument.
Respondent claims that the bona fide nature of Respondent’s use of the Domain Name is not affected by whether or not Respondent is interested in selling the Domain Name or the preferred price. If Respondent has legitimate interests in the Domain Name, it has the right to sell it for whatever price it deems appropriate regardless of the value that appraisers may ascribe to it. Respondent is an investor in intrinsically valuable generic or descriptive domain name properties, and there is no law against selling such assets on the open market. Complainant evidently is aware of this, or it would not have initiated contact with Respondent offering to buy it in the open market. In fact, it has been held that the sale of a generic domain name of itself may constitute use in connection with a bona fide offering of goods or services. Reverse Domain Name Hijacking
Respondent states that, although Complainant’s counsel was notified by Respondent on March 21, 2013 that Respondent registered the Domain Name before Complainant was even founded or commenced use of the Martin name, Complainant pursued the Complaint anyway. This compelled Respondent to spend legal fees defending a baseless proceeding and wastes the Center’s resources. Even without Respondent’s specific notice to Complainant, such information is clearly stated in the public WhoIs record. According to Respondent, Complainant desires to use the UDRP process to deprive Respondent of its property because as Complainant itself readily admits, Respondent declined to accept Complainant’s unsolicited bid in the open market. By pursuing and not withdrawing the Complaint after full knowledge that it must fail, Complainant has harassed Respondent. Respondent urges that Complainant has attempted reverse domain name hijacking. Therefore, Respondent states that the Panel should declare in its decision that Complainant has engaged in Reverse Domain Name Hijacking, and that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. 6. Discussion and Findings
As has been recited in many UDRP decisions, in order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
Complainant claims trademark rights in MARTIN, and that the Domain Name is identical this mark. Respondent does not challenge Complainant’s trademark rights but contests whether the Domain Name is identical or confusingly similar to Complainant’s trademark. As noted above, Respondent argues that Complainant’s mark is not “Martin Golf,” nor does Complainant have exclusivity over the name Martin in connection with the sport of golf.
On its face, the Panel finds that the Domain Name is not identical to Complainant’s MARTIN trademark. Instead, the relevant question is whether the Domain Name , which includes the common word “golf” in combination with the name “Martin”, is confusingly similar to Complainant’s MARTIN mark. This question presents a close call; however, on balance, the Panel finds that there is confusing similarity. The threshold test for confusing similarity under the Policy involves a comparison between the trademark and the domain name itself to determine the likelihood of user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of the common or descriptive term typically being regarded as insufficient to prevent the threshold likelihood confusion. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. Moreover, the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant component of the domain name. WIPO Overview 2.0, paragraph 1.9. In this case, particularly with the relevant consuming public in mind, i.e., golfers, confusingly similarity exists.
Accordingly, Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Complainant contends that it has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant submits that it has had no relationship with Respondent and has never authorized Respondent to use the Domain Name, and Respondent is not commonly known by the Domain Name. Moreover, Respondent is not making a legitimate noncommercial or fair use of the Domain Name, but instead has linked it to a pay-per-click” parking site while seeking to sell it.
In response, Respondent has contended that pay-per-click ads are a legitimate part of its business, and Respondent’s use of them cannot be considered bad faith under circumstances where Complainant was not yet in existence when Respondent registered the Domain Name.
The Panel considers that rather than address whether use of the Domain Name in connection with a website offering pay-per-click links supports a legitimate interest on the part of Respondent, this case may be decided appositely under the third element of paragraph 4(a) of the Policy, as discussed below. C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate Respondent has registered and is using the Domain Name in bad faith. Here, Complainant has failed to satisfy this element. As Complainant has acknowledged, it did not change its company name to include the name Martin until June 2011, it filed its trademark in March 2011, and it commenced use of the trademark MARTIN in November 2011. All of these dates are after the registration of the Domain Name by Respondent on January 2, 2011. Generally speaking, when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established, the registration of the domain name would not have been in bad faith because the respondent could not have contemplated the complainant’s then non-existent right. Moreover, there is no evidence that Respondent was somehow targeting Complainant when it registered the Domain Name. Instead, Respondent has submitted that it owns a portfolio of tens of thousands of descriptive, generic, dictionary word, keyword and/or geographic domain names, including thousands of surnames.
Because Complainant has failed to show the Domain Name was registered in bad faith, particularly because Respondent’s registration of the Domain Name predates Complainant’s claimed rights in and use of the MARTIN trademark, Complainant has failed to satisfy the third element of paragraph 4(a) of the Policy.
Finally, the Panel is not persuaded that this is a case where a finding of Reverse Domain Name Hijacking is appropriate. 7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Sole Panelist
Date: May 21, 2013
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