Augusta National Golf Club v. Paulo Cesar de Souza Peixoto
Claim Number: FA0205000114357
Complainant is Augusta National Golf Club, Augusta, GA, USA (“Complainant”) represented by Martin B. Schwimmer. Respondent is Paulo Cesar de Souza Peixoto, Macae, BRAZIL (“Respondent”).
The domain name at issue is <masters.biz>, (the "Domain Name") registered with Communi Gal Communications LTD.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Clive Elliott as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (“IP”) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on May 20, 2002; the Forum received a hard copy of the Complaint on May 22, 2002.
On May 31, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 20, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on June 20, 2002.
Complainant’s first Additional Submission was timely received and determined to be complete on June 25, 2002. Respondent’s Additional Submission and Complainant’s second Additional Submission were received after the deadline established for submissions and are not in compliance with STOP Supplemental Rule #7.
On July 22, 2002 pursuant to STOP Rule 6(b), the Forum appointed Clive Elliott as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant claims to be the organizer of the world-famous MASTERS golf tournament. It owns both registered and common law rights in the MASTERS mark covering the tournament, dissemination of the tournament and information about the tournament via a variety of media, and for merchandised goods relating to the tournament (i.e. golf apparel).
Complainant owns various U.S. federal trademark registrations for the mark MASTERS, including Regs. Nos. 1069545, 1219958 and 1470536. These registrations are in the name of Augusta National, Inc. Augusta National Golf Club is the Doing Business As name for Augusta National, Inc.
Complainant also maintains a world-wide portfolio of variants of the mark including THE MASTERS and MASTERS/AUGUSTA as well as design versions of the MASTERS mark.
Complainant uses the MASTERS mark to designate the MASTERS golf tournament, one of, if not the most, famous golf tournament in the world. The tournament, the most watched golfing event on TV, has been run under the name MASTERS for over 60 years.
The Complainant notes that the Respondent has registered at least 42 .biz names and 2 name names and does not appear to be using any of them in connection with offering goods or services. All 44 names appear to be “Traffic-generators” – names that suggest some type of content. None appear to have originated with Respondent
The Respondent is an individual who creates websites for sale.
Respondent claims the word MASTERS is a common and generic word
Respondent admits that it has registered many generic names as websites.
Respondent claims he is developing a website about great famous painters and his business plan is to sell the art, through the intermediate of the Art Galleries of the world and his registered clients. He says that he will also put other services of electronic trades, with sale of pointing reproductions and other works of less famous artists, biographies and information about the exhibitions of the works in the main galleries around World. It is for this website that he has registered the Domain Name.
C. Additional Submissions
As indicated above, Complainant filed and served an Additional Submission in accordance with STOP Supplemental Rule #7.
It is asserted that the Response contains no evidence of ownership of any rights in the MASTERS mark nor any documentation or verifiable assertions of an intention to use the mark in connection with any offering of goods or services.
The Complainant submits, that in fact, the fabricated nature of the post-complaint evidence is merely additional evidence of Respondent's bad faith. Finally, it is asserted that Respondent's documented assertion that it intended to utilise <masters.biz> to sell art by old masters is a "hasty after-the-fact fabrication".
It is found that Complainant makes out its case and succeeds for the reasons identified below.
Paragraph 15(a) of the STOP Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (“IP”) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (“gTLD”) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
It is clear from the evidence that Complainant has registered the mark MASTERS, in inter alia, the USA and that the mark is widely known and closely associated with a famous golf course and tournament.
Respondent does not dispute Complainant's rights in the MASTERS mark but asserts that notwithstanding any claim to such rights the word is generic. This in itself is no basis for avoiding the conclusion that the MASTERS mark is registered and one in which Complainant has protectable rights. It is also clear that the Domain Name is identical to it.
Accordingly, Complainant makes out this ground.
The question of whether a Complainant should succeed where it has established a legal entitlement to a particular mark but where that mark also comprises a common English word and/or one which is generic for various descriptions, is not an easy one to resolve. This fact set represents a tension between trade mark rights and the rights of the public to use common English words to describe their goods, services or activities.
The STOP Policy seeks to find a logical and reasonably consistent standard whereby this issue can be tested. The STOP Policy thus set out in paragraph 4(b) and (c) a series of considerations that can be applied in such a situation, providing Panels and parties some guidance to determine whether proprietary or other rights should take precedence.
In the present case, in terms of paragraph 4(b)(i) of the STOP Policy there is evidence supporting the assertion that Respondent has registered the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name for commercial gain out of proportion to the cost of obtaining the Domain Name.
Respondent has registered a large number of domain names including <Pink.Floyd.name> and <palm.biz>. This and other evidence suggests that Respondent is a domain name trader first and foremost and has registered these domain names as part of its business activity.
Paragraph 4(c)(i)-(iii) of the STOP Policy provides a series of circumstances which can be used to find in favour of a Respondent. These include, having made demonstrable preparations to use the domain name, to be commonly known by the domain name or to be making legitimate non-commercial or fair use of the domain name. None of these assist Respondent and it seems, with respect, that there is merit in Complainant's assertion that Respondent's post-complaint evidence of use or intended use does not support a contention of good faith.
Given the notification under the STOP procedure that the Domain Name was alleged to infringe Complainant's trade mark rights in its MASTERS mark, the initial acceptance that Respondent would transfer the Domain Name to Complainant (a position he subsequently resiled from) and the determination to proceed notwithstanding, put the Respondent's position in context.
It is one thing to argue that numerous other parties use the term "masters" (as undoubtedly they do) it is another to persist in the registration, holding or use of the same name/mark upon notice by an entity that has a longstanding and extensive reputation in that name/mark.
Accordingly, it is found that Respondent lacks a legitimate interest or right to the Domain Name.
For the reasons outlined above, the Panel finds that Respondent registered the Domain Name in bad faith. The Panel, infers from the evidence, that Respondent is involved in the business of registering and dealing in domain names. Given the mechanics of the STOP procedure, it was on clear notice of Complainant's claim to rights in the MASTERS mark. Even if it were not for such notice the Respondent would have had actual or constructive knowledge of Complainant's rights in the mark and in his Response does not submit otherwise.
If Respondent had put forward believable evidence of actual or intended use of the Domain Name to designate a site for art masters he might have established a legitimate interest and therefore entitlement to registration of the Domain Name. However, the evidence and submissions suggests registration of the Domain Name was followed by subsequent and rather transparent efforts to show legitimate intended use and therefore good faith registration. For the reasons identified above the Panel is of the view that this material was in all likelihood created to justify his actions and is not probative of legitimate and pre-existing efforts to use the Domain Name in good faith.
Accordingly, it is found that this ground is made out.
In view of the above, it is found that the Complainant has rights in the identical mark and that the Respondent lacks rights or legitimate interests in the Domain Name and that it registered the Domain Name in bad faith.
Accordingly, the Domain Name shall be transferred to the Complainant.
Clive Elliott Panelist
Dated: 2 August 2002
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