Gary J. Player and Gary Player
Enterprises, LLC v.
Domains Admin / Gary Player Group, Inc.
Claim Number: FA2202001985985
Complainant is Gary J. Player and Gary Player Enterprises, LLC (“Complainant”), represented by Mark D. Rasch, Maryland, USA. Respondent is Domains Admin / Gary Player Group, Inc. (“Respondent”), represented by Rupert Morris of Walkers (Guernsey) LLP, Channel Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <garyplayer.com>, registered with Tucows Domains Inc.
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.
David H. Bernstein as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 25, 2022; the Forum received payment on February 25, 2022.
On February 28, 2022, Tucows Domains Inc. confirmed by e-mail to the Forum that the <garyplayer.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on March 3, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 28, 2022.
On April 5, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David H. Bernstein as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant Gary J. Player is an individual who is widely known for his career as a professional golfer, as well as for his role as a spokesperson for an assortment of causes, authorship of several books, and appearances in various television and film productions. Complainant Gary Player Enterprises, LLC is a Delaware registered limited liability company, formed by Gary J. Player in 2020 to receive assets, including intellectual property, from Respondent Gary Player Group and Marc Player pursuant to a stipulated arbitration award and subsequent settlement agreement between, inter alia, Complainant and Respondent.
Complainant claims ownership of both the common law mark in his famous name and numerous registered trademarks related to the GARY PLAYER name and logo, including U.S. Trademark Reg. 1,860,178. Complainant further contends that the domain name at issue, <garyplayer.com>, is functionally identical to the GARY PLAYER name in which Complainant possesses trademark rights.
Complainant claims that Respondent lacks rights or legitimate interests in the domain name. Although Complainant had granted Respondent Gary Player Group the right to use the GARY PLAYER trademarks and the <garyplayer.com> domain name in 2013 through an “Ownership Rights Agreement,” Complainant terminated that agreement in January 2019. At that point, all rights granted by the Ownership Rights Agreement reverted back to Complainant. Complainant claims that the termination of the Ownership Rights Agreement was stipulated to in an arbitration in May 2020, which award was confirmed by a Florida Circuit Court in July 2020. According to Complainant, Respondent no longer has any “right, claim, title, license or valid and enforceable interest” in the GARY PLAYER trademark or the <garyplayer.com> domain name.
Complainant claims that Respondent has “re-registered” and is currently using the domain name <garyplayer.com> in bad faith. Specifically, Complainant argues that Respondent continues to use the domain name to market goods and services that infringe on trademarks in which Complainant now has exclusive rights. Complainant further claims that Respondent’s failure to surrender control of the domain name constitutes bad faith because it violates an August 2021 settlement agreement between the parties. Complainant also asserts that Respondent’s retention of the domain name prevents Complainant’s rightful use of the <garyplayer.com> domain name and results in a substantial likelihood of confusion and dilution.
Respondent Gary Player Group, Inc. is a Florida corporation that has, for years, conducted business related to the career and reputation of Gary J. Player. The principal of the Gary Player Group is Gary J. Player’s son, Marc Player.
Respondent does not dispute that the <garyplayer.com> domain name is identical or confusingly similar to the GARY PLAYER trademark. But Respondent does contest Complainant’s ownership of that trademark. Respondent argues that the many trademark registrations for GARY PLAYER actually are owned by the Black Knight Trust, a Guernsey based entity to whom Complainant assigned the trademarks in 2000, and that Marc Player (who is also the principal of Respondent Gary Player Group) is the beneficiary of that trust. Respondent also contends that all subsequent trademarks related to the GARY PLAYER name and logo were registered in the name of the Black Knight Trust.
Respondent argues that it has rights in the domain name because, for over twenty years, the Black Knight Trust has licensed Respondent to commercialize the GARY PLAYER trademark and logo. In contrast, Respondent contends, the Black Knight Trust has not licensed Complainant to commercialize the GARY PLAYER trademark. Rather, Respondent alleges, the Black Knight Trust has granted Complainant a limited license only “in relation to certain very limited personal rights.”
Complainant Gary J. Player is a world-renowned professional golfer and public figure. Complainant Gary Player Enterprises, LLC is a Delaware-registered limited liability company formed by Gary J. Player to receive various intellectual property assets related to the GARY PLAYER name. Respondent Gary Player Group, Inc. is a Florida corporation whose principal is Marc Player. For years prior to this dispute, Complainant Gary J. Player and Respondent Gary Player Group enjoyed a business arrangement through which Respondent was licensed to commercialize the GARY PLAYER name and logo.
The domain name <garyplayer.com> was first registered on July 1, 1996. Its current registrant is Gary Player Group.
Prior to 2000, Complainant Gary J. Player was the owner of various trademarks in his natural name and logo. In May 2000, Complainant assigned the rights to many of these trademarks to the Black Knight Trust. The assignment agreement named Marc Player as agent of the Black Knight Trust. In subsequent years, the Black Knight Trust registered additional trademarks related to the GARY PLAYER name and logo.
On September 28, 2013, Complainant Gary J. Player and Respondent Gary Player Group entered into an Ownership Rights Agreement, which granted Respondent exclusive rights to use the GARY PLAYER name, with the exception of those rights already held by the Black Knight Trust.
On January 21, 2019, Complainant gave notice that he was revoking the Ownership Rights Agreement. Respondent challenged that revocation through arbitration. In May 2020, the parties stipulated to the validity of the revocation and to the reassignment to Complainant Gary J. Player of all rights that had been granted to the Gary Player Group through the Ownership Rights Agreement. On July 2, 2020, a Florida Circuit Court confirmed the award in a Final Order, writing: “Player validly terminated the Ownership Agreement as of January 21, 2019, and as of that date all Ownership rights that were the subject of the Ownership Rights Agreement reverted back to the sole and exclusive ownership and possession of [Gary J.] Player, and [Gary Player Group] ceased to have any rights or claim to those Ownership Rights.”
On August 23, 2021, various parties—among them Complainants Gary J. Player and Gary Player Enterprises, Respondent Gary Player Group, Marc Player, and the Black Knight Trust—entered into a settlement agreement in order to resolve all outstanding disputes between the parties. The settlement agreement provided for assignment by Respondent Gary Player Group to Complainant Gary Player Enterprises of “all right, title and interest in any and all intellectual property rights of whatever nature . . . that include Gary Player’s name, image, logos, marks, or likeness.” This assignment explicitly included the rights to any use of the term “Gary Player,” as well as “all marks and trademark registrations referred to in the Ownership Rights Agreement . . . and referred to in that document as being held by the Black Knight Trust.”
In a provision particularly relevant to this dispute, the settlement agreement also required that Respondent “cease any and all use, including through company names, domain names, social media and email addresses,” of the GARY PLAYER trademarks. Although the agreement allowed Respondent’s temporary use of email accounts using the disputed domain name following execution of the settlement agreement, it otherwise required that Respondent “expeditiously transfer to Gary Player or an entity he designates the domain GaryPlayer.com.”
Although that settlement agreement was supposed to resolve all disputes between the parties, it regrettably did not do so. The parties have indicated that they have several pending disputes, including in South Africa and in the Royal Court of Guernsey. Neither party has provided any details on the claims and defenses that are being disputed in those proceedings.
In the meantime, pursuant to the terms of the 2021 settlement agreement, Complainant sought the transfer of the <garyplayer.com> domain name from Respondent. In a series of correspondences, Respondent’s representatives failed to promptly effectuate the transfer, citing privacy concerns related to email addresses using the domain name. Complainant has offered to accommodate Respondent’s concerns to no avail. While Respondent refuses to transfer control of the domain name to Complainant, the record shows that Respondent continued to use the <garyplayer.com> domain name to market various goods and services bearing trademarks owned by the Complainants.
Paragraph 15(a) of 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 Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel’s adjudication of this dispute has been hampered by the parties’ failure to address a number of critical facts in their submissions, and by the parties’ submission of incomplete copies of key documents. Most notably, neither Complainant nor Respondent has submitted evidence related to the initial registration of the domain name, including when it was registered; by whom it was registered; whether the domain name has been transferred since its initial registration; and when and by whom the domain name registration was renewed. Complainant also has failed to provide a complete copy of the 2021 settlement agreement between the parties, including the portion of the agreement that addresses how disputes under the agreement should be resolved. Respondent, for its part, submitted a Response that provided confusing assertions about the ownership of the various GARY PLAYER trademarks and purported to rely on the Black Knight Trust’s ownership of certain trademark registrations despite the fact that the Black Knight Trust agreed in the settlement agreement to assign those registrations to Complainant.
Given the incomplete record, the Panel considered issuing a procedural order to request supplemental submissions to address these deficiencies. The Panel ultimately elected not to do so for two reasons. First, under the Policy, complainants have the burden of submitting evidence sufficient to support their claim; Complainant’s failure to do so in this case, especially where Complainant is represented by counsel, is a problem of Complainant’s own making. Second, and in any event, after reviewing the record, the Panel concluded that supplemental submissions were very unlikely to change the outcome of this case (even if they might provide greater clarity and certainty). Accordingly, the Panel opted not to request supplemental submissions but rather rules on the record as submitted by the parties.
As the facts recounted above make clear, this is not a standard cybersquatting case. In fact, it is not a cybersquatting case at all. Rather, this case is a contractual dispute between parties with a long business and personal relationship. As this Panel has held in other cases, the UDRP does not create
a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crated to apply to a particular type of abusive cybersquatting. . . . To attempt to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy. See Latent Technology Group, Inc. v. Bryan Fitchie, File No. FA0007000095285 (Forum Sept. 1, 2000) (dispute concerning employee’s registration of domain name in his own name and subsequent refusal to transfer it to employer raises issues of breach of contract and breach of fiduciary duty that are more appropriately decided in court, not before a UDRP panel).
Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470; see also UTVG Europe Holding B.V. v. Vitali S, WIPO Case No. D2014-1345; NH Resources LLC, Vaughn Crowe v. Andrew Holmes, WIPO Case No. D2015-0064; Lacamas Shores Homeowners Association v. Catherine Arnold, WIPO Case No. D2017-0855. See generally WIPO Decision Overview 3.0, Paragraph 4.14.6.
Nevertheless, it is the Panel’s obligation to assess whether the allegations constitute cybersquatting by reference to the three elements of the Policy. LLC «Vocord SoftLab» v. Perfect Privacy, LLC / Dmitry Zavarikin. WIPO Case No. D2018-2734. As discussed below, a fundamental failure of the Complaint is that Complainant has not submitted any evidence whatsoever to support the essential element that the domain name was registered in bad faith. Although Complainant has made a powerful showing that it now possesses exclusive rights to the GARY PLAYER trademarks and that Respondent is guilty of wilful bad faith in its failure to abide by its contractual obligations to transfer the domain name to Complaint, the UDRP does not provide a forum to adjudicate that dispute, which more appropriately should be brought either as a breach of contract claim or, potentially, under the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125 (d).
Respondent does not dispute that the domain name is identical to the GARY PLAYER trademark. Respondent does, however, claim that this is not a trademark in which Complainant has rights.
Respondent’s assertion is utterly without merit. Even if the Black Knight Trust is still the listed owner of various trademark registrations, the settlement agreement between the parties and the Black Knight Trust makes clear that all trademarks have been assigned to Complainant (even if the assignments of registrations have not yet been recorded or effectuated in the various trademark offices[i]). Furthermore, even if Black Knight Trust were the owner of those trademark registrations, the revocation of the Ownership Rights Agreement resulted in the reversion of all rights covered by that agreement to Complainant. At the minimum, then, once the Ownership Rights Agreement was revoked, Complainant regained certain personality rights to, inter alia, the GARY PLAYER name. Because the first element of the Policy requires only that the domain name be identical or confusingly similar to a “mark in which the complainant has rights,” and does not require that the Complainant be the owner or have exclusive rights, WIPO Decision Overview 3.0, paragraph 1.4, the personality rights that Complainant reacquired were sufficient to constitute “rights” for purposes of paragraph 4(a)(1) of the Policy. In any event, the 2021 settlement agreement explicitly granted Complainant exclusive rights to all intellectual property related to the GARY PLAYER name and trademarks. Thus, Complainant has met its burden under Paragraph 4(a)(i) of the Policy.
In light of the revocation of the Ownership Rights Agreement and the 2021 settlement agreement, it is clear that Respondent no longer has any rights or legitimate interests in respect of the <GaryPlayer.com> domain name.
Although Respondent at one time enjoyed rights to the GARY PLAYER name as set out in the Ownership Rights Agreement, Respondent lost those rights in 2019 and therefore has no such rights today. As the WIPO Decision Overview 3.0 explains at paragraph 2.11, in assessing rights and legitimate interests, the Panel is charged with considering the Respondent’s rights “in the present, i.e., with a view to the circumstances prevailing at the time of the filing of the complaint. . . . [A] respondent claiming a right or legitimate interest in a domain name . . . based on a prior agreement or relationship between the parties . . . would not necessarily have rights or legitimate interest in the domain name, at the time a decision is rendered.”
The evidence presented also shows that Respondent has no rights in respect of the domain name from any other source. Although Respondent alleges that it is licensed by the Black Knight Trust to make use of the GARY PLAYER name, the existence of the 2021 settlement agreement completely contradicts that assertion. That agreement—which Respondent Gary Player Group, Marc Player, and the Black Knight Trust all joined—provided for the assignment to Complainant Gary Player Enterprises of all intellectual property rights in the GARY PLAYER name or logo, including any rights that had been owned by the Gary Player Group or the Black Knight Trust. Respondent did not dispute the validity or terms of the settlement agreement, and did not explain how it possibly could maintain its claim of having rights in the face of that agreement.
Thus, Complainant has satisfied its burden under Paragraph 4(a)(ii) of the Policy.
Although Complainant has met its burden with regard to the first two elements of its claim and has shown that Respondent is guilty of willful bad faith in connection with its use of the domain name, the Panel finds that Complainant failed to show that the domain name was registered in bad faith.
Complainant does not address in the Complaint whether the Respondent registered the domain name in bad faith. In fact, the Complainant does not indicate when the domain name was registered, by whom it was registered, and the history of any transfers of the domain name since its registration (which the Panel has determined from the WHOIS search results submitted in Complainant’s annexes was in 1996).
Complainant does include a cryptic reference to the fact that Respondent has “re-registered” the <garyplayer.com> domain name, but it fails to include any information whatsoever about when it was “re-registered” and why such “re-registration” constitutes bad faith registration. If Complainant is suggesting that the domain name was acquired by Respondent subsequent to the 2019 revocation of the Ownership Rights Agreement, Complainant has included no facts to support that allegation. If Complainant is suggesting that the renewal of the domain name by Respondent constitutes bad faith registration, that argument is foreclosed by paragraph 3.9 of the WIPO Decision Overview 3.0, which explains that “the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith.”
Because Complainant has failed to make an adequate showing on this element, the Panel must deny Complainant’s claim in this proceeding. However, this denial of relief should not be construed as an approval, explicit or implied, of Respondent’s use of the <garyplayer.com> domain name. The fact that Respondent has continued to use the domain name and has refused to transfer the domain name as required by the settlement agreement constitutes wilful bad faith. Although Complainant’s failure to prove that Respondent registered the domain name in bad faith bars relief under the UDRP, it does not prevent Complainant from seeking vindication of its ownership rights in a more appropriate forum. The Panel encourages Respondent to voluntarily transfer the domain name to Complainant to avoid the need for this unfortunate dispute between a father and son to continue in yet another forum.
Because Complainant failed to submit any evidence to support a finding of registration in bad faith, the Panel considered whether to enter a finding of reverse domain name hijacking. Such a finding should be considered by a panel regardless of whether the respondent requested it if the circumstances show that the complaint was brought “in a bad faith to attempt to deprive a registered domain name holder of a domain name.” Rules, Paragraph 1. See generally NH Resources LLC, Vaughn Crowe v. Andrew Holmes, WIPO Case No. D2015-0064. Such a finding may be particularly appropriate in a case where a complainant is represented by counsel. WIPO Decision Overview 3.0, Paragraph 4.16.
Although the Complaint in this case was deficient, this was not an effort to hijack a domain name in which Respondent has rights; rather, as discussed above, Respondent quite clearly has no rights to the domain name. See Billy Bob's Texas IP Holding LLC v. Domain Administrator, Name Administration Inc. (BVI),
WIPO Case No. D2016-1221.
Moreover, reverse domain name hijacking is an equitable remedy, and it should not be entered in a case where the respondent itself has acted in bad faith and with unclean hands. Breazy Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / VR PRODUCTS I LLC, WIPO Case No. D2021-1486; Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462. In its submission to the Panel, rather than address Complainant’s legitimate allegations of Respondent’s bad faith conduct, Respondent attempted to obfuscate its bad faith use by falsely implying that Respondent still had rights in the trademark. Respondent also tried to suggest that Complainant lacked rights in the GARY PLAYER trademark despite its own participation in the settlement agreement that proves to the contrary. Under these circumstances, the Panel finds that it would not be appropriate to enter a finding of reverse domain name hijacking in this case.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <garyplayer.com> domain name REMAIN WITH Respondent.
David H. Bernstein, Panelist
Dated: April 20, 2022
[i] Complainant states in the Complaint that it is the owner of, inter alia, U.S. Trademark Registration No. 1,860,178. The records of the United States Patent and Trademark Office, however, list Black Knight Trust as the owner of that registration, by virtue of an assignment from Complainant Gary J. Player that was recorded in 2001. As noted above, though, whether the assignment of this registration has technically been recorded is irrelevant given that the settlement agreement provides that these marks have in fact been assigned back to Complainant.
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