Complainant is The Professional Golfers' Association of America of Florida, United States of America, represented by Arnold & Porter LLP, United States of America.
Respondent is Registration Private, Domains By Proxy, LLC of Arizona, United States of America / David Reddick, PGA Golf Passport of Oklahoma, United States of America, represented by Brenda J. Huff, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Wild West Domains, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 23, 2015. On June 24, 2015, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On June 25, 2015, the Registrar transmitted by e-mail 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 e-mail communication to Complainant on June 30, 2015 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 July 1, 2015. On the same date, the Center received an e-mail communication from Respondent.
The Center verified that the Complaint and 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 July 3, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2015. The Response was filed with the Center on July 24, 2015. On July 28, 2015, the Center received Complainant's supplemental filing.
The Center appointed Robert A. Badgley as the sole panelist in this matter on August 5, 2015. 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 the largest golf association in the United States, and for decades has used in commerce the mark PGA or other PGA-formative marks to identify and distinguish its well-known offerings. One of Complainant's many registered trademarks is the word mark PGA, registered in 1953 with the United States Patent and Trademark Office in Class 41 for "instructing in the game of golf and for an entertainment service in the nature of golfing exhibitions."
Complainant operates a website accessible via its principal domain name, "". At this site, Complainant provides information about its golf events and offers its trademarked products.
According to the WhoIs record, the Domain Name was registered on October 29, 1997. In his Response, Respondent states that he "obtained the domain name in 1995".
At the time the Complaint was filed, the Domain Name resolved to a website featuring the greeting "Welcome to the Golf Passport." The "Golf Passport" is described as "the greatest deal in golf today." The site solicits online memberships for USD 39.95, and advertises over 320 "participating facilities," steep discounts on green fees, year-round golfing opportunities, and courses in several states. Based on the website evidence put into the record by the parties, there is no reference to PGA anywhere on the website, and there appears no disclaimer of affiliation between the purveyor of the website and Complainant.
At some point between the initial Complaint and Complainant's supplemental submission, the Domain Name ceased to resolve to an active website.
The parties in this case have a prior relationship. According to Respondent, his company Diversified Partners Group, LLC ("Diversified") had a contract with the South Central Section of the PGA ("SCS-PGA"), executed in May 2008, pursuant to which Diversified cooperated with SCS-PGA in "the production, marketing and sales of "2008 GOLF PASSPORT." Under the contract, Diversified agreed to pay USD 3.00 for each membership sold, with a minimum of USD 10,000 payable during the 2009, 2010, and 2011 calendar years. Among Diversified's responsibilities under the contract were the creation of an "on-line purchase opportunity on the PGAGolfP website" and the creation of an "on-line enrollment opportunity for golf facilities on the PGAGolfP website."
Complainant does not dispute the existence or terms of this contract between Diversified and SCS-PGA. Nor does Complainant assert that Respondent had no rights to register the Domain Name in furtherance of the goals of this contract. Rather, Complainant asserts that the Diversified contract with SCS-PGA expired in May 2011 and "any permission to use [the Domain Name] expired in 2011."
There is additional background in the record, and there are additional points raised by the parties, but the Panel need not record them here because they are not essential to the disposition of this case. 5. Parties' Contentions A. Complainant
Complainant maintains that it has satisfied all elements of the Policy and that it is therefore entitled to a transfer of the Domain Name. B. Respondent
Respondent disputes the Complaint, arguing chiefly that he had a legitimate, good-faith basis for registering the Domain Name. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name at issue in this case:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The Complaint fails if one or more of these elements is not established by Complainant. A. Identical or Confusingly Similar
The Panel would have no difficulty finding for Complainant on this point, but need not do so in view of the Panel's finding in the "bad faith" section below. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
Again, the Panel would conclude that Respondent currently has no rights or legitimate interests in respect of the Domain Name, but need not make such a finding. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of a Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The Panel rejects this Complaint because there is no evidence that Respondent registered the Domain Name in bad faith in 1995 or in 1997. Furthermore, the Domain Name was expressly referred to in the May 2008 contract between Diversified and SCS-PGA. The non-renewal of the contract in May 2011 does not alter the apparent initial legitimacy of the registration.
The Policy is not designed to serve as a clearinghouse for any and all disputes that happen to involve a domain name. Rather, it was set up to deal essentially with clear cases of cybersquatting. In the present dispute, it would appear that Complainant may have a viable cause of action against Respondent in a court of law, but the expedited relief under the Policy is not available because an essential element – bad faith registration of the Domain Name – is wanting. 7. Decision
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Sole Panelist
Date: August 16, 2015
Full & Egal Universal Law Academy