The City of
Claim Number: FA0611000836577
PARTIES
Complainant is The City of San Diego (“Complainant”), represented by Tawnya
R. Wojciechowski, 19900 MacArthur Boulevard, Suite 1150, Irvine, CA
92612-8433. Respondent is NA c/o Dr. Barry
Lotz (“Respondent”),
The domain name at issue is <torreypinesgolf.com>, registered
with Go
Daddy Software, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 8, 2006; the
National Arbitration Forum received a hard copy of the Complaint on November 9, 2006.
On November 9, 2006, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <torreypinesgolf.com> domain name is
registered with Go Daddy Software, Inc.
and that the Respondent is the current registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On November 17, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 7, 2006 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@torreypinesgolf.com by
e-mail.
A timely Response was received and determined to be complete on December 7, 2006.
An Additional Submission was received from Complainant on December 13,
2006. The required submission fee was received after the deadline set under the
Policy. The Panel has nonetheless determined, in the interests of justice, to
consider this Additional Submission.
Subsequently, Respondent timely filed an Additional Submission in
response to Complainant’s Additional Submission.
On December 14, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends, among other things, that:
Complainant is a
Complainant’s Torrey Pines Municipal Golf Course has acquired a
worldwide reputation as a preeminent course, benefiting from Complainant’s
extensive advertising and promotion of related trademarks, including TORREY
PINES, TORREY PINES GOLF COURSE and TORREY PINES MUNICIPAL GOLF COURSE
(hereinafter “[the] “TORREY PINES marks”).
Complainant has thus acquired common law rights in these marks.
Respondent registered the disputed domain name long after Complainant
acquired its common law rights in its marks.
Respondent’s domain name is confusingly similar to Complainant’s marks.
Respondent has no right to use any of Complainant’s marks in its domain
name.
Respondent’s website offers a golf page featuring links to various
commercial golf-related websites.
Respondent’s use of its domain name is intended to capitalize on the
confusion of Internet users searching for Complainant’s website when they
encounter Respondent’s
domain name.
Respondent has not been commonly known by the contested domain name.
B. Respondent
Respondent contends, among other things, that:
The domain name here in question was first registered in March of 1998,
before adoption of the Policy, and, as a result, the Complaint is outside the
jurisdiction of the Policy.
Because Respondent’s domain name was first registered more than eight
years ago, the legal doctrine of laches precludes Complainant from prevailing
on its Complaint.
Because Complainant has no trademark registration for any of its
claimed marks, it has no rights in those marks for purposes of the Policy.
The name Torrey Pines is a generic term which cannot qualify for
trademark protection.
Respondent has at all times proceeded in good faith in registering and
using its domain name to further its legitimate business interests.
Respondent has used the contested domain name for years with the
knowledge and consent of Complainant, and, for six months, again with
Complainant’s knowledge and consent, linked its domain name to Complainant’s
website, <sandiego.gov>, for the marketing benefit of both parties.
C. Additional Submissions
In its Additional Submission, Complainant contends, inter alia, that:
Jurisdiction over the Complaint in this proceeding resides in the
Policy without regard to the date of its adoption.
Respondent renewed its registration of the contested domain name in
February of 2006, and, in so doing, it expressly committed to be bound by the
Policy by virtue of the then effective terms of its registrar’s domain
registration agreement.
Respondent has profited commercially from its use of the contested
domain name.
Respondent has offered to sell or lease the disputed domain name to
Complaint for a substantial sum of money.
In its Additional Submission, Respondent contends, inter alia, that:
Respondent does not need Complainant’s permission to register and use
its domain name.
FINDINGS
(1) the domain name registered by Respondent is
confusingly similar to trademarks in which Complainant has rights;
(2) Respondent has rights or legitimate interests
in respect of the domain name; and
(3) the domain name has not been registered or used
in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “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 Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
i. the domain name registered by the Respondent
is identical or confusingly similar to a
trademark 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.
Preliminary Issue: Temporal Jurisdiction of the Policy
Before considering the substantive questions presented by the evidence,
we must first address a preliminary matter raised by Respondent. This is its contention that there is no
jurisdiction over this matter under the Policy because the disputed domain name
was initially registered in 1998, prior to the 1999 effective date of the
Policy. This question has been raised in
other panel decisions, including that in the matter of Furrytails Ltd. v. Mitchell, D2001-0857 (WIPO Sep. 6, 2001). There the presiding panel found the
controversy before it to be within the jurisdiction of the Policy
notwithstanding a similar objection. We agree
with that panel and others that have ruled to the same effect. See R&A Bailey & Co. v. WYSIWYG, D2000-0375 (WIPO Jul. 4,
2000). Our conclusion in this regard is
buttressed in the instant case by the undisputed fact that Respondent’s
registration was renewed as recently as February of 2006, in connection with
which Respondent expressly committed to be bound by the terms of the Policy by
virtue of its domain registrar’s domain registration agreement. That being so, we need not
dwell further on this issue.
Turning to the substantive questions presented for decision, we first observe that Respondent claims that Complainant has no rights under the Policy because none of its TORREY PINES marks has ever been registered with a pertinent trademark authority. Respondent cannot prevail on this point because it is well established that common law rights in a mark are sufficient to satisfy Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Policy does not require that a complainant's trademark or service mark be registered by a government authority for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names.”).
Moreover, Complainant has
adequately demonstrated that its marks have acquired secondary meaning so that
it may assert its common law rights in opposition to Respondent’s continued
possession of the disputed domain name. See Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL
BANK] in connection with its banking business, it has acquired rights under the
common law.”).
Finally under this head, Complainant argues
that Respondent’s domain name is confusingly similar to its TORREY PINES
marks. We agree, particularly as to the
marks TORREY PINES GOLF COURSE and TORREY PINES MUNICIPAL GOLF COURSE. We reach
this conclusion despite Respondent’s objection that Complainant’s marks are
composed of merely generic or descriptive terms. While there may be
circumstances in which generic terms should not qualify for shelter under the Policy,
we are satisfied that Complainant’s long association with the mark elements
TORREY PINES and GOLF makes these compound marks distinctive enough to merit
protection. See Direct
Selling Ass’n v. Michele Dinoia c/o SZK.com,FA 417063 (Nat. Arb. Forum Apr. 5, 2005).
For these reasons, the Panel finds that
Complainant has met the proof requirements of Policy ¶ 4(a)(i).
Complainant has made a prima facie showing that Respondent lacks rights or interests in its domain name within the meaning of Policy ¶ 4(a)(ii). Such a showing shifts the burden to Respondent to demonstrate that it does have such rights or legitimate interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain name, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue.”).
Respondent addresses its burden by reference
to Policy ¶ 4(c)(i), which provides that a respondent may demonstrate rights or
interests under Policy ¶ 4(a)(i) by proving “before any notice to you of the dispute, your use of, … the domain
name… in connection with a bona fide offering of goods or services.”
The facts with regard to this provision of
the Policy are hotly contested, and the question is a close one. However,
taking into account all of the contentions and proofs offered by the parties,
the Panel is convinced that Respondent has the better of this issue. We are particularly persuaded by the lengthy
period of existence of Respondent’s domain without objection from Complainant
despite their close association with the same field of endeavor in the same
geographic community, and by the apparent legitimacy and openness of
Respondent’s business operations, particularly during the latter portion of
this period when its domain name was most active.
Accordingly, we cannot conclude that
Respondent has no rights or interests within the contemplation of Policy
¶ 4(a)(ii), and Complainant has therefore failed to
make out this element of its obligations of proof.
Complainant is obliged to satisfy all three
of the elements of Policy ¶ 4(a) in order to succeed in its Complaint. As noted immediately above, it has failed to meet the proof requirements
of Policy ¶ 4(a)(ii). Accordingly, our inquiry
need not proceed further. We may
note, however, that, as was said in Schneider
Electronics GmbH v. Schneider UK Ltd., D2006-1039 (WIPO Oct. 21, 2006):
In situations such as the present case, where the parties have entered
into and maintained a long-standing commercial relationship, Panels tend to
impose on the Complainant a heavier burden of proof for bad faith, generally
requiring more comprehensive evidence than that which may be necessary in the
typical dispute between unrelated adversaries.
Suffice to say that, on the facts before us, it cannot fairly be concluded that Respondent both registered and uses the disputed domain name in bad faith as that term is used in Policy ¶ 4(a)(iii). Complainant’s proofs therefore fail on this element as well, and the parties are left to their remedies at law.
DECISION
Complainant having failed to establish two of the three elements
required to be proven under the ICANN Policy, the Panel concludes that the
relief requested must be, and it is, hereby, DENIED.
Terry F. Peppard, Panelist
Dated: December 28, 2006
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