RG Golf, Inc. v. The Golf Warehouse, Inc.
Claim Number: FA1511001647486
Complainant is RG Golf, Inc. (“Complainant”), represented by Alexander J. Farrell, Minnesota, USA. Respondent is The Golf Warehouse, Inc. (“Respondent”), represented by Patrick J. Rooney of Fafinski Mark & Johnson, P.A., Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <thegolfwarehouse.com> and <tgw.com>, registered with CSC Corporate Domains, Inc.
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.
Hon. R. Glen Ayers was been appointed as the Chair of the requested three-member Panel. The other panelists appointed were Prof. Kenneth L Port and Mr. David P. Miranda.
Complainant submitted a Complaint to the Forum electronically on November 17, 2015; the Forum received payment on November 17, 2015.
On November 19, 2015, CSC Corporate Domains, Inc. confirmed by e-mail to the Forum that the <thegolfwarehouse.com> and <tgw.com> domain names are registered with CSC Corporate Domains, Inc. and that Respondent is the current registrant of the names. CSC Corporate Domains, Inc. has verified that Respondent is bound by the CSC Corporate 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 November 19, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 2015 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, email@example.com. Also on November 19, 2015, 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 December 8, 2015.
Complainant’s Additional Submission was received and determined to be compliant on December 14, 2015.
Respondent’s Additional Submission was received on December 18, 2015 and determined to be timely.
On December 18, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Hon. R. Glen Ayers as the Chair of the three-member Panel, and appointed Prof. Kenneth L Port and Mr. David P. Miranda as the other members.
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 names be transferred from Respondent to Complainant.
Complainant holds a domain name, <golfwarehouse.com> , and asserts that it has rights in the “GOLFWAREHOUSE” mark under the common law. Complainant has pending applications for the mark, both of which assert first use in 1997. Respondent’s disputed domain names are confusingly similar to the mark as <thegolfwarehouse.com> merely adds the article “the” to the beginning of the mark; the second domain name, is also disputed, and Complainant asserts that <tgw.com> seems to be a mere acronym of the “the golf warehouse.”
In a previous domain name arbitration in 2000, initiated by Respondent, Respondent (as Complainant) argued that the two domain names were “confusingly similar” or “identical.” While the arbitrator agreed, it found that any confusion resulted because the then Complainant, now the Respondent in this dispute, had registered its domain name after registration by (this) Complainant of <golfwarehouse.com>. See Mark Marney, The Golf Warehouse v. Golf Warehouse, FA A0004000094419 (Nat. Arb. Forum May 9, 2000).
Thereafter, Complainant filed a trademark cancellation action against Respondent requesting cancellation of Respondent’s mark, THE GOLF WAREHOUSE ™. Relief was granted on November 5, 2015. Respondent voluntarily surrendered its mark. (See Cancellation No. 92060767.)
Complainant asserts that the domain names are identical to or confusingly similar under Policy ¶ 4(a)(i).
Based upon this factual background, Complainant asserts that Respondent has no rights or legitimate interest in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has it offered a bona fide offering of goods or services or any legitimate noncommercial or fair use. Respondent and Complainant are competitors, and Respondent uses the disputed domains in conjunction to compete with Complainant.
Also, based upon these same facts, Complainant asserts that Respondent has no rights or legitimate interests in the two domain names under Policy ¶ 4(b)(ii). Complainant also asserts that the use of both domain names are “inexorably linked,” bringing
Respondent’s domain name <tgw.com> into play.
Complainant assets use of both disputed domain names in bad faith. Under Policy ¶ 4(b)(iv), it says that Respondent has attempted to attract Internet users, for commercial gain by creating a likelihood of confusion in the minds of Internet users through the similarity of the domains to Complainant’s mark (and corresponding domain name).
Respondent begins by asserting that Complainant has failed to adequately demonstrate its rights in any trademark, as required under Policy ¶ 4(a)(i). Further, says Respondent, <tgw.com> cannot be considered confusingly similar to any mark asserted by Complainant. It also asserts that it is commonly known by the domain names.
Respondent asserts that for two decades, Complainant did not maintain a web presence. Complainant made no attempt to register a domain name which it could use to attack business from internet users.
Respondent argues that Complainant has noted a single trademark cancellation, Respondent in fact holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”), including the “TGW” mark (Registry No. 4,459,251, registered December 31, 2013) and the “TGW.COM THE GOLF WAREHOUSE” mark (Registry No. 3,323,225, registered October 30, 2007). Respondent says that it has owned and used both disputed domain names since September 29 and 30, 1997.
In fact, says Respondent and Complainant were involved in a referral agreement in which Complainant’s website would redirect Internet users to Respondent’s website where a bona fide offering is made, while netting Complainant commercial profit from the redirection. See, e.g., Resp., at Attached Exs. 2, 5 (advertising <tgw.com> through catalogs).
This dispute arose after termination of the referral agreement.
Respondent believes that Complainant fails to substantiate any bad faith registration by Respondent, as Respondent has used the disputed domain names since 1997. In fact, Complainant’s filing of its Complainant constitutes an abuse of the UDRP and therefore a finding of reverse domain name hijacking is appropriate.
C. Additional Submissions
Complainant filed a timely and qualifying addition submission. Complainant seeks to rebut the allegations that it has no trademark rights. Complainant asserts facts supporting a common law mark. It also asserts that the alleged mark or marks are not generic.
As to Respondent’s alleged rights, Complainant asserts that these were surrendered. In fact, the prior opinion from 2009, cited above, reflects that the “Forum has already ruled that the domain names <thegolfwarehouse.com> and <golfwarehouse.com> were confusingly similar and “nearly identical ….” <tgw.com> is also “confusingly similar” and “synonymous.”
Complainant wishes the Panel to ignore the referral agreement between the parties, particularly since Respondent terminated the agreement.
Respondent also filed a timely additional submission, which the Panel has also considered.
That additional submission goes into great detail in an attempt to show that Complainant has failed in its burden of proof. It attempts to show rights and legitimate interests in the names by reference to the long history of litigation between the parties. Included is a discussion of the referral agreement between the parties.
Respondent shows that it registered the two domain names at issue seventeen years ago as evidence of the length of its interest in the domains.
Respondent next asserts that the names are not identical or confusingly similar.
Respondent notes that Complainant has candidly admitted that termination of the referral agreement stimulated this attempt to have the two domain names transferred.
Respondent attempts to show that Complainant has no rights in the name and that “bad faith is not present, relying largely on the use of the referral agreement and its own registration and use of the domains.
Much of this argument also includes a discussion of whether the two names, “The Golf Warehouse” and “Golf Warehouse,” are so generic that protection under the legal principles relating to domain names and their relationship to the existence of registerable marks.
Additional submissions were also filed by both parties, which have been reviewed and considered by the Panel and the Forum.
Complainant has failed to show the facts necessary to establish claims under the UDRP, and the request to transfer is denied.
The Panel unanimously agrees that the status quo should be maintained and that the relief requested - be denied. The Panel will now address and discuss the elements of Policy ¶ 4, as required under the Rules.
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.
Complaint alleges that it has common rights in and to the trademark GOLFWAREHOUSE.COM. It provides scant evidence of such common law rights, no evidence of a trademark registration anywhere in the world that predates Respondent’s registration of the disputed domain names, and certainly no evidence of such alleged common law usage prior to the registration of the disputed domain names 17 years ago. As such, the Panel finds that Complainant has no enforceable rights in the trademark GOLFWAREHOUSE.COM.
Recognizing that the standard for establishing trademark rights under the UDRP is low, for the sake of argument, and even if we accept this argument, the Complainant still cannot not prevail.
The alleged trademark rights must be applied separately to the two disputed domain names. When applied to each domain name, we come to inconsistent results. There is no doubt that GOLFWAREHOUSE.COM is confusingly similar to <thegolfwarehouse.com> disputed domain name.
However, we refuse to take the judicial notice that Complainant seems to be urging: that <tgw.com> is confusingly similar to GOLFWAREHOUSE.COM. Complainant has failed to meet its burden of proof to establish that <tgw.com> is confusingly similar to GOLFWAREHOUSE.COM. Something more than Complainant’s mere allegations are necessary. The record is devoid of any objective evidence to establish this claim. There are no consumer surveys in the record. There are no affidavits from confused consumers. The record is simply devoid of support for this claim. There is no objective evidence of any sort to support the Complainant’s claim.
Further, we do not think it normatively follows that “tgw” would stand for “the golf warehouse.” We think that there might be many things in the golfing world (or in the rest of the world) for which “tgw” might stand. That is, the number of alterations to GOLFWAREHOUSE.COM that are needed to reach TGW.COM are too many and too tenuous for us to essentially take judicial notice of resulting confusion.
Therefore, regarding the <tgw.com> disputed domain name, the Panel finds that the Complainant has not met its burden of proof, and therefore finds that it is not confusingly similar to any trademark which the Complainant in which Complainant alleges trademark rights. The remainder of this opinion, therefore, addresses only the <thegolfwarehouse.com> disputed domain name.
Regarding only the <thegolfwarehouse.com> disputed domain name, the Panel finds that the Respondent has rights or legitimate interests in or to the disputed domain name. (Although it is clear that Respondent has similar rights or legitimate interests in or to the disputed domain name <tgw.com>, as we have dismissed Complainant’s contention regarding this domain name, we need not discuss any findings in this regard here.) The Panel further finds that Complainant acquiesced to these rights when it entered the referral agreement with the Respondent. It is not logical to recognize Respondent’s rights and legitimate interests in or to the disputed domain name for purposes of the referral agreement but not for purposes of this proceeding. Complainant would have us believe that, somehow, Respondent’s rights or legitimate interests evaporated along with the referral agreement. Again, the record is devoid of any evidence for such a conclusion.
As such, even if Complainant is successful in establishing that it has rights in or to the GOLFWAREHOUSE.COM alleged trademark and that they precede Respondent’s registration of the disputed domain name <thegolfwarehouse.com>, the Panel finds that the Respondent has rights or legitimate interests in or to the disputed domain name.
The Panel finds that Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). The Panel concludes that Respondent has rights or legitimate interests in or to the <thegolfwarehouse.com> domain name pursuant to Policy ¶ 4(a)(ii); therefore, the Panel also finds that Respondent did not register or use the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
As there is insufficient evidence in the record to support either Respondent’s claims that the disputed domain names consist of only generic or descriptive terms and that it therefore has the right to register these as domain names or that the Complainant’s contention that it has trademark rights that precede Respondent’s registration of the disputed domain names, we decline to rule on whether Respondent’s registration and use of the disputed domain names should be considered bad faith.
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <thegolfwarehouse.com> and <tgw.com> domain names, of its rights to use the disputed domain names. Respondent has owned the disputed domain names for over seventeen years, and urges that Complainant has no basis in bringing this dispute as there is no evidence on record of any rights in any mark.
However, we decline to find Complainant responsible for reverse domain name hijacking. Although it is blatantly clear that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the <thegolfwarehouse.com> and <tgw.com> domain names and that could not establish that Respondent registered and is using the disputed domain names in bad faith, the Respondent has provided no evidence of the harassment or similar conduct that would be necessary to successfully show reverse domain name hijacking. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the face of such knowledge.”).
Therefore, the Panel finds that the record does not support a claim of reverse domain name hijacking.
Having determined that this matter should not be resolved under the UDRP, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <thegolfwarehouse.com> and <tgw.com> domain names shall REMAIN WITH Respondent.
R. Glen Ayers, Chair and Panelist
Joined by Panelists Prof. Kenneth L. Port and Mr. David P. Miranda
Dated: December 28, 2015
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