The Complainant is St Andrews Links Ltd of St Andrews, Fife, the United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Nixon Peabody, LLP, United States of America (“US”).
The Respondent is Peter Arnold of Edinburgh, Scotland, UK / SC202991 Limited f/k/a St A Ltd of St Andrews, Scotland, UK. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Webfusion Ltd trading as 123-reg (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2013. On October 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 17, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On October 22, 2013, the Center sent an email communication to the Complainant requesting it to submit the Complaint and Annexes in accordance with paragraph 12(a) of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). The Complainant complied with the Center’s request on October 25, 2013.
The Center verified that the 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 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 October 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2013.
The Center appointed Nick J. Gardner as the sole panelist in this matter on November 28, 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
St Andrews is a town in Scotland. It possesses several world famous golf courses, which are widely regarded as the original home of golf, where the game was first developed (possibly as long ago as the 15th century). The name “St Andrews” enjoys extremely high recognition around the world in this respect, particularly amongst golfers. One or more of the golf courses at St Andrews is named St Andrews Links – the word “links” in this context derives from old Scottish, and refers to a type of golf course found amongst sand dunes. The Complainant, St. Andrews Links Limited, is a wholly owned subsidiary of St Andrews Links Trust (the “Trust”), which was established in 1974 by an Act of the United Kingdom Parliament to assume running of the public golf courses at St Andrews Links.
The golf courses at St Andrews have hosted many famous championships and are widely regarded by the world’s top golfers as amongst the world’s great golf courses. By way of example Jack Nicklaus, the world famous golfer, wrote in the foreword to “St Andrews Links - Six Centuries of Golf” written by Tom Jarrett and Peter Mason: “St Andrews Links is steeped in the history, lore and legends of the game of golf. Indeed, for many centuries the history of the game was made on the Links… I hope that reading this book will give you a greater insight into why St Andrews Links holds such a unique place in golfers’ hearts all over the world. Just as it does in mine.”
The Complainant is the owner of numerous applications and registrations worldwide for the mark ST ANDREWS and marks comprising and incorporating the words “St Andrews” (hereinafter the “ST ANDREWS Marks”). By way of example United States trademark registration No. 2169765 (of June 30, 1998) is for the mark ST. ANDREWS having a constructive priority (filing) date of April 5, 1990 for use with Class 25 goods.
The exploitation of the ST ANDREWS Marks has been undertaken by the Trust and is extensive. From January 1, 2001, to December 31, 2012, for example, the turnover of the Trust’s revenue was approximately GBP 142 million, of which GBP 30.7 million accounted from retail sales of merchandise items, sold both online and in the Trust’s retail shops. In the mid-1990s, the Trust’s licensing income took off with the advent of computer games based on golf. More than GBP 1.5 million of revenue was generated from 1996 to 2006 from companies such as Nintendo, Sega, Microsoft and Electronic Arts, who have been licensed to use the ST ANDREWS Marks.
A website (“www.sta”) has been associated with the Domain Name and has offered for sale golf related merchandise and equipment and golf related services including a booking service for the Complainant’s golf courses. That website has conducted such activity apparently continuously from 2003 until earlier in 2013. At some stage in 2013 the previous contents of that website appear to have been removed and it presently bears a message “This site is in hibernation and is currently inactive”.
The Respondent as at the date of filing of this Complaint is identified by WhoIs records as Peter Arnold. Previously, as at July 15, 2011, the Respondent was identified by WhoIs searches as “StA Ltd Peter Arnold”. StA Ltd is a Scottish limited company which was dissolved on September 2, 2011. However, on January 24, 2012, StA Ltd. submitted an application to Companies House in the UK for administrative restoration (which was successful) and at that time, it changed its company name to SC202991 Limited. Peter Arnold and SC202991 Ltd appear to share the same address. SC202991 Ltd under its former name StA Limited, was incorporated on January 14, 2000. The date of registration for the Domain Name, July 30, 1995, predates the company’s incorporation date. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are straightforward and can be summarized as follows:
The Domain Name is identical and/or confusingly similar to its ST ANDREWS Marks in which it clearly has rights.
The Complainant says the Respondents are to be treated as single entity as they are clearly associated and acting together. The Complainant says the Respondent has no rights or legitimate interests in the term “St Andrews”.
The Complainant says that the Respondent is using the Domain Name in relation to a website which offers golf related goods and services, and that this is use in bad faith, and refers to various previous UDRP decisions in this regard. It further relies on the fact that the Respondent at its website has offered services under or by reference to the Complainant’s ST ANDREWS Marks, and in a manner which would confuse the public into thinking that it was the Complainant’s own website, or was authorized by the Complainant, when that is not the case. B. Respondent
The Respondent or Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Issue
A preliminary issue arises in relation to the identity of the Respondent(s). It is not clear to the Panel in whose name the original registration of the Domain Name in 1995 was effected, although it cannot have been in the name of SC SC202991 Limited f/k/a St A Ltd as that company did not exist then. By 2011 the registration was apparently in joint names, Peter Arnold and St A.ltd. As at the date of filing of the Complaint the registration stood in the name of Peter Arnold. The Center has served details of these proceedings in accordance with the Supplemental Rules upon both Mr. Arnold and SC202991 Limited f/k/a St A Ltd. Hard copies of proceedings were delivered to both these parties and according to the filed evidence were signed for – in Mr. Arnold’s case by a recipient recorded by the courier as “Arnold” and in the company’s case by a recipient recorded by the courier as “Robertson”. In these circumstances the Panel concludes that in the absence of any Response from either Mr. Arnold or the company each of them are to be treated as the Respondents and for present purposes they can be assumed to be jointly responsible for the Domain Name when the Domain Name was jointly registered, and Mr. Arnold can be held responsible for it when it was registered in his name. Whilst it is not clear to the Panel which person or organization was responsible for the original registration and use of the Domain Name prior to 2011 it does not matter – the filed evidence establishes this use has all been of the same type and part of a consistent pattern, as discussed below. For present purpose the Panel proposes to adopt the same terminology as the Complainant has used and to refer to the “Respondent” to include each of the identified Respondents and (if applicable) any entity involved at any earlier date. B. Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. (i). Identical or Confusingly Similar
The Panel finds that the Complainant has rights in ST ANDREWS Marks. The filed evidence establishes the Complainant has a very extensive reputation in that mark in relation to golf and golf related products and services. Goods and services have been sold on a substantial sale on a world-wide basis under this trade mark by the Complainant or its authorized licensees and are very well known. The Complainant has a wide range of registered trademarks for the words “st andrews”.
The Domain Name is identical to the ST ANDREWS Marks. It is well established that the “.com” suffix is to be ignored in making this assessment and the only difference between the Domain Name and the Complainant’s trade mark is the omission of the space between “st” and “andrews” – however, this does not amount to a relevant difference given the inability to include spaces in a domain name is a limitation imposed by technical reasons concerned with the domain name system, and the domain name and the trademark will be read, and sound identical – see e.g., Eidos Interactive Ltd v.Moniker Privacy Servs./Taranga Servs. Pty Ltd,WIPO Case No. D2009-0124.
Accordingly, the Panel finds that the Domain Name is identical to the Complainant’s trade mark. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled. (ii). Rights or Legitimate Interests
“St Andrews” is a Scottish place name and as such is clearly a term capable of having a number of meanings, for example in relation to the town itself, or other organizations associated with the town, for example the famous Scottish University of the same name located in the town. In such circumstances it may well be that there are other entities or organizations in existence which could claim rights or legitimate interests in that name. However, in the present case there is no evidence to suggest that the Respondent has any independent rights in the name. Indeed the evidence clearly indicates that the Domain Name was selected by the Respondent because of its association with the Complainant and as part of a plan to offer golf related products and services at a website associated with the Domain Name. A wealth of evidence has been filed showing the use the Respondent has made of the term, all of which is clearly intended to convey a reference to golf and the golf related business of the Complainant or its parent. By way of example (one amongst many) at one stage the title bar to the Respondent’s web page referred to ““St Andrews - The home of golf, golf packages, golf vouchers, golf gifts, golf products…”
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, 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) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Domain Name or to use the ST ANDREWS Marks. The Complainant has prior rights in the ST ANDREWS Marks which precede the Respondent’s registration of the Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. (iii). Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the ST ANDREWS Marks, and the evidence as to the extent of the reputation the Complainant enjoys in the ST ANDREWS Marks, and the identical nature of the Domain Name to the ST ANDREWS Marks, and the lack of any explanation from the Respondent as to why it registered the Domain Name lead the Panel to conclude the registration and use was in bad faith.
In the present case, the Panel concludes the Respondent was aware of the Complainant’s ST ANDREWS Marks when it registered the Domain Name. The Panel concludes that the Respondent selected the Domain Name because of its identity with the Complainant’s ST ANDREWS Marks and as part of a plan to establish a website offering for sale golf related products and services in a manner which suggested such offer was by, or was authorized by or connected with, the Complainant. Further, the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.
As a result, the Panel finds that the Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled. C. Other Considerations
Two further matters merit discussion. As indicated above whilst the Panel concludes that the Respondent has no legitimate interest in the name “St Andrews” it may well be that there are other entities or organizations which could claim such an interest. Nothing in this Decision by this Panel should be taken to involve any determination as to the respective rights of the Complainant and any such entity.
Second, the Panel notes that the use complained of in this Complaint has been going on for a very considerable time, namely since 2003. The Panel has been furnished with no detail of whether or not such use has been the subject of earlier complaint of any type. As a general rule, previous UDRP panels have recognized that the doctrine or defense of laches as such does not apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. There are however some circumstances where laches may be a relevant consideration, although these will inevitably be fact specific. In the present case, where the Respondent has not availed itself of the opportunity it has been provided with to submit a Response, the Panel declines to find that any relevant laches related issues need to be considered. 7. Decision
For 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.
Nick J. Gardner
Sole Panelist
Date: December 12, 2013.
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