DECISION

 

Augusta National, Inc. v. Ryan Carey

Claim Number: FA1711001758547

 

PARTIES

Complainant is Augusta National, Inc. (“Complainant”), represented by Casey Coffman of Augusta National, Inc. / Hull Barrett, PC., Georgia, USA.  Respondent is Ryan Carey (“Respondent”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <greenjacketauctions.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Charles A. Kuechenmeister

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 14, 2017; the Forum received payment on November 14, 2017.

 

On November 15, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <greenjacketauctions.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 2017 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 postmaster@greenjacketauctions.com.  Also on November 17, 2017, 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 6, 2017.

 

Complainant timely filed an Additional Submission on December 11, 2017.  It complied with Supplemental Rule 7 and was considered by the Panel.

 

On December 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.

 

Respondent timely filed an Additional Submission on December 18, 2017.  It complied with Supplemental Rule 7 and was considered by the Panel.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant was founded in 1932.  It operates the Augusta National Golf Club (the “Club”) and has hosted the Masters Tournament every April since 1934.  Upon joining, every member of the Club receives a green sport coat, for use on the Club grounds only.  Since 1949 the winner of the Masters also receives a green sport coat for use while on Club grounds.  The green sport coat is commonly known as the “Green Jacket.”  Over the years, especially since 1956, when the Masters began to be broadcast, the Green Jacket has become associated with Complainant and its sports event broadcast services.  By virtue of its continuous use of the Green Jacket for decades, Complainant has acquired common law trademark rights in the GREEN JACKET mark.  Complainant registered the GREEN JACKET mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,086,458) on January 17, 2012, with a first use dating from April 1949.  Due to the popularity of the Masters Tournament and its attendant GREEN JACKET mark, including broadcasts of the tournament on CBS & ESPN in the United States and BBC & Sky Sports in the United Kingdom, consumers have come to associate the famous GREEN JACKET mark with Complainant’s goods and services alone.  Respondent registered his <greenjacketauctions.com> domain name (the Domain Name) in 2006, before Complainant’s federal registration for the GREEN JACKET mark but long after Complainant acquired its common law trademark rights in that mark.  The Domain Name is identical or confusingly similar to Complainant’s mark as it incorporates the GREEN JACKET mark in its entirety and adds the generic term “auctions.”

 

Respondent has no rights or legitimate interests in the Domain Name.  Because Complainant’s mark is famous, Respondent cannot claim rights or legitimate interests in it.  Respondent is not commonly known by the disputed domain name, as the WHOIS information lists “Ryan Carey,” not Green Jacket Auctions, Inc., as the registrant.  Even if Respondent could claim the benefit of use of the Domain Name by his company, that use first arose long after Complainant acquired its common law rights in the GREEN JACKET mark.  Respondent does not use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.  Rather, the incorporation of Complainant’s mark into the Domain Name leads consumers to believe mistakenly that his goods and services are associated with or authorized by Complainant.  Finally, Respondent is not making a fair nominative use of Complainant’s mark, as his website sells golf memorabilia from other golf clubs and tournaments not associated with Complainant.

 

Respondent registered and uses the Domain Name in bad faith.  He has no connection or affiliation with Complainant nor has he at any time been licensed or authorized to use Complainant’s mark in a domain name or for any other manner.  He uses it to attract, for commercial gain, internet users to his web site by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the site by Complainant.  Respondent had actual knowledge of Complainant’s rights in the GREEN JACKET mark when he registered the Domain Name.  Respondent registered the Domain Name primarily to disrupt Complainant’s business, creating confusion and to offer competing goods and services.  

 

B. Respondent

This case should be dismissed because there is a complicated trademark infringement action currently pending in the U. S. District Court for the Southern District of Georgia, where the Domain Name is directly at issue.

 

Respondent registered the Domain Name in 2006.  It is currently the property of Green Jacket Auctions, Inc., a company he and another individual founded in 2006.  Respondent is a well-respected auctioneer of rare golf memorabilia.  Since 2006 it has auctioned millions of dollars of Augusta National memorabilia, including several green jackets.  Respondent’s target clients are sophisticated high worth individuals who would not and have not been confused between the services offered by Complainant and the vastly different services offered by Respondent.  Complainant’s federal registrations occurred many years after Respondent registered the Domain Name, the earliest being Registration No. 4,086,458 for GREEN JACKET, registered January 17, 2012, in International Class 41 for “Entertainment in the nature of providing recognition by the way of awards to demonstrate excellence in the field of golf and a golf championship,” based on an alleged first use of April 1949.  

 

Complainant’s GREEN JACKETS mark is merely descriptive.  There are numerous third parties who use the phrase “green jacket,” many of whom have registered trademarks incorporating those words.  To the extent Complainant attempts to rely on any alleged common law rights, the vague facts asserted are woefully inadequate, and Complainant fails to present credible evidence that any significant group in the population identifies the relatively non-distinctive words, “green jacket”, exclusively, or even primarily, with Complainant’s products or services to produce a secondary meaning.  Respondent’s Domain Name simply incorporates generic or merely descriptive terms.  Because of the need for language economy in domain names, very small differences in them matter.

 

Respondent does have rights and legitimate interests in the Domain Name.  He has been using it in connection with his auctioneering business since 2006, long before he had any notice of this dispute.  His business, Green Jacket Auctions, Inc., is commonly known by the Domain Name.  Because the Domain Name accurately describes or is generic for the services offered by him, he is making a bona fide offering of services.

 

Respondent registered the Domain Name in good faith.  Complainant has not shown an existing registered trademark right in connection with the sale of jackets at the time Respondent registered the Domain Name.  Complainant did not start using its GREEN JACKET mark in connection with the sale of jackets until 2012.  Complainant has not shown that Respondent has engaged in any of the conduct the Policy lists as evidence of bad faith.  Respondent adopted a descriptive domain name in 2006 based in part on some of the products it would be consigning, namely green jackets.

 

Complainant’s Complaint should be denied because of the undue delay in bringing this case. 

 

Complainant is guilty of reverse domain name hijacking.

 

C. Additional Submission—Complainant

The Panel should rule on this case notwithstanding the federal court action pending between these parties.  Complainant has not asserted any claim under the Anticybersquatting Consumer Protection Act in that action, nor do its claims in that action contain any mention of the Domain Name.  Complainant chose to address the domain name issues between the parties in this UDRP to benefit from the relatively swift procedure provided by the UDRP.  The elements of a UDRP claim are different from those of a trademark infringement case, and the facts of the case are not in such dispute that it is impossible to find a factual basis on which to proceed.

 

Respondent’s attacks on Complainant’s federal registrations are without merit, and in any event Complainant is relying on its nearly seven decades of common law trademark rights in the GREEN JACKET mark.  The Masters tournament was watched on TV by millions of people in each of the five years prior to 2006.  The mark has attained secondary meaning in the minds of even casual sports fans.  It is used in connection with a world-renowned golf tournament broadcast internationally by CBS and the BBC, generating millions of dollars in revenue per year.  Its secondary meaning is illustrated most persuasively by the fact that Respondent chose GREEN JACKET AUCTIONS and the Domain Name for his business.  Respondent’s auction advertising describes the Masters Green Jacket as “the most recognizable trophy in golf.”  It is undisputed that Respondent chose the Domain Name and the name of his company to refer directly to Complainant and its mark.

 

The third-party uses of the GREEN JACKET mark described by Respondent do not weaken Complainant’s mark, as most of them are wholly unrelated to golf goods or services.

 

A respondent cannot acquire rights and legitimate interests in a domain name when it incorporates the mark of another party, specifically referring to that party and offering services at the domain name featuring that party’s goods.

 

Ryan Carey is the Respondent herein and the registrant of the Domain Name.  He cannot rely on claims of rights and legitimate interests based upon the use of the Domain Name by his company, Green Jacket Auctions, Inc.

 

The equitable doctrine of laches does not apply to UDRP proceedings.

 

Respondent registered and is using the Domain Name to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his site.  He registered the Domain Name with clear knowledge of Complainant’s rights and has used the Domain Name in such manner as to exploit those rights for his own gain.

 

Inasmuch as Complainant is entitled to prevail in this matter, it is not guilty of reverse domain name hijacking.

 

D.        Additional Submission—Respondent

Respondent reiterated the arguments asserted in his Response with respect to the federal court action, the weakness of Complainant’s mark and its failure to prove common law trademark rights, the lack of confusing similarity, Respondent’s rights and legitimate interests in the Domain Name, lack of bad faith, and Complainant’s delay in bringing this case.

 

FINDINGS AND DISCUSSION

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.

 

Preliminary Issues:  Pending Litigation and Laches

Pending Litigation

Complainant filed a civil action against Green Jacket Auctions, Inc. in the U. S. District Court for the Southern District of Georgia (Augusta National, Inc. v. Green Jacket Auctions, Inc., Case No. 1:17 CV-00096) (the “federal court action”).  Although its amended complaint (Exhibit CC to Response) asserts claims for infringement of the GREEN JACKET mark, Complainant’s most immediate, and the primary focus of this litigation appears to be preventing Respondent from auctioning items of personal property, including one or more Masters Green Jackets, that Complainant claims belong to it.  As to the infringement claims, the amended complaint filed on October 2, 2017 seeks, among other things, an injunction prohibiting the defendant from “using [Complainant’s] marks, any colorable imitations thereof, or any marks confusingly similar thereto; . . . “  Citing Rule 18 and prior panel decisions, Respondent asserts that because the federal court action involves the same issues as this proceeding and involves resolution of a legitimate trademark dispute, the Panel should dismiss this proceeding.  Complainant argues in response that the Panel should rule on this case notwithstanding the federal court action.  Complainant points out that it has not asserted any claim under the Anticybersquatting Consumer Protection Act in that action, nor do its claims in that action contain any mention of the Domain Name.  Complainant says it chose to address the domain name issues between the parties in this UDRP proceeding to benefit from the relatively swift UDRP procedure.  It notes that the elements of a UDRP claim are different from those of a trademark infringement case, and the facts of the case are not in such dispute that it is impossible to find a factual basis on which to proceed.

 

The Panel believes that Complainant has the better argument here.  The defendant in the federal court action is Green Jacket Auctions, Inc., not the Respondent, and Complainant’s claims do not specifically address or necessarily implicate the Domain Name.  If the federal district court grants the relief sought by Complainant in that action, Respondent’s registration of the Domain Name will not necessarily be affected.  Respondent is not presently before that court and presumably even if Green Jacket Auctions, Inc. is enjoined from using any of Complainant’s marks, further action would likely be necessary to force a transfer of the Domain Name from Respondent to Complainant.  From the standpoint of jurisdiction, therefore, this UDRP proceeding appears to be the proper vehicle for determining the domain name dispute. 

 

Further, there does not appear to be a dispute as to the material facts of this case.  The parties have presented careful, thoughtful and complete expositions of their respective claims, and the Panel believes it is in possession of all the information it requires in order to determine the matter before it.

 

Rule 18(a) provides as follows:

 (a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.

 

The Panel thus has unfettered discretion to suspend the UDRP proceeding or to decide it on the merits.  The Panel is not unmindful of numerous instances in which panels have decided not to proceed in the face of pending litigation in a court.[1]  It is also aware that pursuant to Policy ¶ 4(k) its decision will likely not be implemented until the federal court action is resolved.  Nevertheless, at this time neither the Respondent nor a claim directly affecting the Domain Name is before the federal district court, and under these circumstances it appears incumbent upon the Panel to decide the dispute that has been submitted to it.  It is expected that one of the parties will be unhappy with the outcome of this case, but given that the Panel’s Decision will be rendered early in the federal court proceedings, that party will have ample opportunity to arrange for the district court to address this Decision.  The Panel will exercise its discretion to hear and decide this case.

 

Laches

Respondent argues that the Complaint should be barred because Complainant waited some eleven-years after Respondent registered and began using the Domain Name to bring this case.  He cited a number of prior panel decisions in which the complainant’s delay in bringing a UDRP claim was at least considered.  The UDRP does not specifically provide for a defense of laches and most panels have declined to dismiss a complaint based upon that defense.  The case cited by Respondent that most strongly supports applying the doctrine in a UDRP proceeding is Laminex, Inc. v. Yan Smith, FA 1211001470990 (Forum Jan. 7, 2013).  The panel there barred the complaint solely on the basis of complainant’s delay of fifteen years from the date of registration.  Citing an earlier UDRP case, it addressed the doctrine of laches as follows:

 

Laches is an equitable defense that has been held to apply in actions to enforce trademark rights [citation omitted].  Laches applies when a claimant inexcusably delays in asserting its claim and thereby unduly prejudices the party against whom the claim ultimately is asserted [citation omitted].  To successfully defend on the basis of laches a defendant must demonstrate the presence of three elements: (1) a delay in asserting a right or claim; (2) that the delay was not excusable; and (3) that there was undue prejudice to the party against who the claim is asserted.

 

The WIPO Overview 3.0, ¶ 4.17 addresses the matter as follows:

 

Panels have recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits.

 

Panels have noted that the UDRP remedy is injunctive rather than compensatory and that the principal concern is to halt ongoing or avoid future abuse/damage, not to provide equitable relief.  Panels have furthermore noted that trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they become aware of, particularly when cybersquatters face almost no (financial or practical) barriers to undertaking (multiple) domain name registrations.

 

Panels have therefore declined to specifically adopt concepts such as laches or its equivalent in UDRP cases.

 

Panels have however noted that in specific cases, certain delays in filing a UDRP complaint may make it more difficult for a complainant to establish its case on the merits particularly where the respondent can show detrimental reliance on the delay.

 

In this case, the delay is over eleven years.  Complainant has obviously been aware of Respondent’s auctions for some period of time and yet has offered no explanation for waiting until November 2017 to file its Complaint.  Neither, however, has Respondent offered any evidence of undue prejudice resulting from that delay.  His only reference to prejudice was that “GJA would suffer severe prejudice if it was ordered to transfer the Disputed Domain to [Complainant].”  See, Exhibit D to Response, ¶ 19.  Applying the doctrine of laches in a UDRP proceeding is not favored by most panels.  Papa John’s Int’l, Inc. v. Pratap, FA 1427509 (Forum Mar. 20, 2012) (“Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements.”); Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct.  Accordingly, the defence of laches has no application.”); Drown Corp. v. Premier Wine & Spirits, FA 616805 (FORUM Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); Disney Enters. Inc. v. Meyers, FA 697818 (FORUM June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy”).  This Panel would hesitate to apply the doctrine of laches in a UDRP proceeding in any event, but in the absence of any evidence of undue prejudice resulting from the delay here, the decision is clear.  Respondent’s claim of laches is rejected.

 

Identical and/or Confusingly Similar

Complainant registered the GREEN JACKET mark with the USPTO (Reg. No. 4,086,458) on registered January 17, 2012.  See, Exhibit F to Complaint, Exhibit L to Response.  Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).  Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i)”), Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “[r]egistration of a mark with a governmental authority is sufficient to establish rights in the mark for purposes of Policy ¶ 4(a)(i)”).

 

Respondent argues that this registration should be disregarded for a number of reasons.  First, the USPTO originally determined that the mark was merely descriptive and required Complainant to amend its application to seek registration on the Principal Register on the basis of acquired distinctiveness under Section 2(f).  Complainant did so in 2011, and the registration followed.  Secondly, on September 7, 2017 Complainant filed with the USPTO  a Combined Declaration of Use and Incontestability under Sections 8 and 15, which contained a certification that there was no proceeding involving its rights to the GREEN JACKET mark pending and not finally disposed of in either the USPTO or a court.  Respondent claims the incontestability status should be disregarded as having been fraudulently obtained because the Respondent had by then filed the federal court action.  Complainant responds that its original complaint in that case, filed in August 2017, did not assert infringement claims involving the GREEN JACKET mark.  Review of the original complaint (Exhibit BB to Response) confirms that this is correct.  In any event, none of these claims by Respondent would tend to affect the validity of the registration itself.

 

Respondent argues forcefully that the mark is generic and highly descriptive, that Complainant is not entitled to the exclusive use of it, citing many other third-party uses of the term “green jacket.”  Respondent argues further that Complainant failed to prove any common law trademark rights to the GREEN JACKET mark.  He asserts that for these reasons Complainant has failed to demonstrate its rights to the GREEN JACKET mark for the purposes of Policy ¶ 4(a)(i).  He also argues that the Domain Name is not confusingly similar to Complainant’s mark because of its addition of the word “auctions,” which he says distinguishes it from that mark, and that on the Internet small differences matter.  He asserts that there is no evidence of actual confusion. 

 

For the reasons discussed above, Respondent argues that Complainant has failed to meet the requirements of Policy ¶ 4(a)(i).  The Panel is not persuaded.  The WIPO Overview 3.0, ¶1.7, states in relevant part as follows:

 

It is well accepted that the first element functions primarily as a standing requirement. . . . This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. . . .

 

Issues such as the strength of the complainant’s mark or the respondent’s intent to provide its own legitimate offering of goods or services without trading off the complainant’s reputation are decided under the second and third elements.  Panels view the first element as a threshold test concerning a trademark owner’s standing to file a UDRP complaint, . . . .

 

As stated earlier, the fact of a valid registration in and of itself is consistently held to confer rights upon a complainant for the purposes of Policy ¶4(a)(i).  By virtue of its registration of the GREEN JACKET mark, Complainant has sufficient rights in the GREEN JACKET mark to meet the requirements of the Policy.  As to confusing similarity, Respondent cites respected authority in support of his argument about highly descriptive marks, about small differences being important, and about analyzing the sense of the words in a domain name to evaluate whether it is confusingly similar.  The Panel has given those lines of reasoning due consideration.  On balance, however, the Panel believes that the test articulated by the WIPO Overview cited above is the better approach.  Complainant’s GREEN JACKET mark is clearly recognizable within the Domain Name, and on this basis the Panel concludes that the Domain Name is confusingly similar to Complainant’s mark.  Complainant has standing to bring this case.

 

The Panel finds that the Domain Name is identical or confusingly similar to the GREEN JACKET mark, in which Complainant has rights.

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it.  If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interest.  If, though, the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety.  At all times, the burden of proof remains on the complainant.  WIPO Overview 3.0 at ¶ 2.1.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) as the GREEN JACKET mark is a famous mark, it is not possible for Respondent to claim rights or legitimate interests in the Domain Name incorporating it, (ii) he is not commonly known by the Domain Name, (iii) he is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because a use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods and services, and (iv) Complainant has not authorized him to use the GREEN JACKET mark.  These allegations are supported by competent evidence and, unless rebutted by other evidence, would demonstrate that Respondent has no rights or legitimate interests in the Domain Name.  For this reason, the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name.  It now looks to the evidence offered by Respondent in support of its claim of rights or legitimate interests.

 

Respondent asserts that he has rights and legitimate interests in the Domain Name in that through his online golf memorabilia auctioneering company, Green Jacket Auctions, Inc. (“GJA”), he has used the Domain Name in connection with a bona fide offering of goods and services since 2006, which is well before he had any notice of this dispute.  He also claims that, again through GJA, he is commonly known by the Domain Name. 

 

Before evaluating the parties’ claims with respect to rights and legitimate interests, the Panel notes that GJA is not the registrant of the Domain Name, nor is it a named party to these proceedings.  Complainant argues that although Respondent is the Principal for GJA, he cannot present any priority claims, rights or legitimate interests based on the use of any marks or terms by GJA.  Except for that one allegation, however, Complainant attributes the business activities of GJA to Respondent throughout the remainder of both its Complaint and its Additional Submission.  Nowhere else in its pleadings does it claim that the legal distinction between Respondent and GJA should be observed.  Indeed, had Complainant insisted on that distinction it would have argued that Respondent is making no use of the Domain Name whatever and ignored the conduct of GJA.  Instead, it bases its claims upon the theory that Respondent violates the Policy and misuses the Domain Name by and through GJA’s auctioneering business.  Respondent treats himself and GJA as a single entity throughout its pleadings.  It is clear that Respondent is able to and does in fact direct the operations of GJA in all matters relevant to this case.  Precedent exists for disregarding the corporate existence of GJA under circumstances such as those present in this case.  Hard Rock Cafe International (USA), Inc. v. Kelvin Leong, FA1309001519472 (Forum Oct. 25, 2013) (finding that an individual Respondent identified on the WHOIS record is commonly known by his business name “HRH PLATINUM TRAVEL INC.” under Policy ¶ 4(c)(ii); Am. Online, Inc. v. Anytime Online Traffic Sch., FA0203000146930 (Forum Apr. 11, 2003) (holding that the respondent had rights or legitimate interests in the disputed domain name where its business name was “Anytime OnLine Traffic School” and that it was therefore not far-fetched to use <aoltrafficschool.com> as a domain name for its business); IKB Deutsche Indus. AG v. Larkin, D2002-0420 (WIPO Jul. 23, 2002) (finding that use of the name in connection with a proposed business interest was sufficient to establish that the respondent was commonly known by the domain name).  Accordingly, the Panel will evaluate the conduct of Respondent and GJA as a single entity and disregard the corporate existence of the latter for the purposes of this case.[2]

 

Policy ¶ 4(c) lists three nonexclusive circumstances that can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii).  Among them are the following:

 

(i)            before any notice to you 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 (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;

 

Here, Respondent submitted evidence that since April 2006 he has used the Domain Name and the web site resolving from it to conduct an online auctioneering business specializing in the sale of golf memorabilia.  See, Exhibits A, B and C to Response, and Declaration of Ryan Carey attached as Exhibit D to Response.)  Further, as stated above, Respondent has conducted that business through his company, Green Jacket Auctions, Inc., and has thus been commonly known by that name since 2006.  From this it would appear that he has acquired rights and legitimate interests in the Domain Name on the basis of these two proofs.  The problem with this analysis, however, is that both his Domain Name and the name of his company incorporate the term “green jacket” verbatim, and it is well established that a respondent may not acquire rights or legitimate interests in a domain name if the domain name incorporates the protected trademark of another.  Karsten Manufacturing Corp. v. New Ventures Services, FA 1705001729687 (Forum June 5, 2017) (“The Panel finds that when the disputed domain name is confusingly similar to a famous mark, Respondent cannot claim rights or legitimate interests in the disputed domain name.”), Caterpillar Inc. v. Stephen R. Vine, FA 0097097 (Forum June 22, 2001) (“Because the marks CAT and CATERPILLAR are fully incorporated into the domain names, it would be reasonable for Internet users to assume that the usedcat-auction.com, usedcaterpillarspecialistauction.com, catauctions.com, and usedcaterpillarspecialist.com domain names are operated or sponsored by Complainant or an authorized CATERPILLAR dealer, when in fact they are not.”). 

 

Complainant argues that it had common law trademark rights to the GREEN JACKET mark long before 2006, when Respondent registered and began using the Domain Name.  Respondent claims that Complainant has failed to prove that it had any such rights as of that date.  He also argues that the alleged mark is merely descriptive, and for this reason Complainant cannot claim exclusive use of it.  It is thus necessary to determine the matter of Complainant’s claim of common law trademark rights for GREEN JACKET, whether that term has acquired a secondary meaning sufficient to identify or associate it uniquely with Complainant.  As one panel has written, “relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”  Gourmet Depot v. DI S.A., FA1103001378760 (Forum Jun. 21, 2011).  In support of its claims, Complainant submitted as Exhibit D to the Complaint an article from the BleacherReport.com web site entitled, “The Stanley Cup, Heisman Trophy, and the 15 Best Trophies in Sports.”  The Green Jacket is listed as No. 6 behind the Stanley Cup, the Olympic Gold medal, the Heisman Trophy and two others, with a statement that “it is given to the winner of the Masters, golf’s most popular and prestigious tournament, played each year at Augusta National Golf Club in Augusta, Georgia. . . .Putting on the green jacket as the Masters Champion is a tradition that dates back to 1949.”  The Complaint states that a green jacket has been awarded to the Masters champion since 1949 and that the tournament has been broadcast on CBS and ESPN in the U. S. and on BBC and Sky Sports in the United Kingdom.  It states further that these broadcasts have generated millions of dollars in revenues over the years.  Complainant further submitted as Exhibit E to the Complaint a screenshot of the first page of Google search results for a search of “Green Jacket,” showing all of the non-sponsored hits as articles referencing the Masters and the Club.  Complainant also submitted in its Complaint a quote from Respondent’s own web site resolving from the Domain Name describing his extensive knowledge of and familiarity with the Green Jacket, as follows:

Ryan was a contributing author of the 2006 GilChrist's Guide to Golf Collectibles.  His expertise and knowledge of areas such as Masters history and memorabilia has been extensively quoted by newspapers, magazines and sports websites; his personal favorite being his substantial involvement in the cover story on Masters Green Jackets in Golf International Magazine's 2008 Masters Preview Issue. Ryan's golf memorabilia expertise spans an array of categories, including Masters Tournament memorabilia, golf flags, antique golf clubs and balls.

 

Complainant also submitted as Exhibit B to its Additional Submission another article from the BleacherReport.com web site dated April 7, 2014, “The Masters’ Green Jacket Is as Historic as the Golfing Greats Who Wear It,” describing the long history of the Green Jacket as a famous piece of golf memorabilia.  Interestingly enough, it quotes Respondent himself as saying, “There’s a reason why we named our company Green Jacket Auction.  It’s not only the pinnacle of golf, I consider it the most iconic piece of golf memorabilia or in all sports. . . . My grandmother knows what the green jacket is.”  Finally, Complainant submitted as Exhibit A to its Additional Submission a printout of historical Nielsen ratings demonstrating that the TV broadcast of the final round of the Masters Tournament, which determines who will be awarded the Green Jacket, earned an average rating of 9.94 for each of the five years prior to 2006, which translates to approximately 10 to 11 million viewers per year nationwide.  

 

On this evidence, the Panel concludes that Complainant’s GREEN JACKET mark had by 2006 acquired a secondary meaning.  It was by then and has continued to be uniquely identified and associated with the Masters Tournament and Complainant’s Golf Club in the minds of the public at large, and certainly within the golf and golf memorabilia community.  Respondent, who is experienced and knowledgeable in golf memorabilia, has acknowledged that by choosing Green Jacket Auctions as the name of his company and using that as his Domain Name.  The GREEN JACKET in his Domain Name and his company name does not refer to just any green jacket, or to some other green jacket.  It refers to the Masters Green Jacket, and that GREEN JACKET belongs to Complainant.  Respondent cannot acquire rights or legitimate interests in the Domain Name under Policy ¶ 4(c)(i) because using the trademark of another in one’s domain name is not a bona fide offering of goods and services within the meaning of that provision of the Policy. 

 

Nor can Respondent fit within the provisions of Policy ¶ 4(c)(ii) by appropriating Complainant’s mark for use in the name of his auction company.  In Alienware Corp. v. Dann (FA 1290045 (Forum Dec. 29, 2009), the respondent sought to prove that it had made demonstrable preparations to use the domain name in a bona fide offering of goods and services in that it had incorporated it into its email address.  The panel in that case noted that if the use of the domain name by itself in an email address amounted to bona fide use, the UDRP could be easily avoided.  The same reasoning applies to Policy ¶ 4(c)(ii).  If a respondent could acquire rights and legitimate interests in a domain name through Policy ¶ 4(c)(ii) by the simple expedient of incorporating the complainant’s mark into the name of his business entity, the intent and purpose of the Policy would be completely frustrated.  Respondent’s appropriation of Complainant’s GREEN JACKET mark for his Domain Name was wrongful, and it was equally wrongful for him to use it in the name of his company.  It would defy the obvious intent of the Policy to permit any respondent to benefit from this type of manipulation.

 

For the reasons set forth above, the Panel finds that Respondent does not have rights or legitimate interests in the Domain Name.

 

Registration and Use in Bad Faith

It is clear that Respondent had actual knowledge of Complainant’s GREEN JACKET mark when he registered the Domain Name in 2006.  He claims that Complainant had no common law trademark rights in the GREEN JACKET mark but he does not dispute that as of 2006 the Green Jacket was an iconic symbol of the Masters Golf Tournament and Complainant’s Club.  See, Exhibit B to Complainant’s Additional Submission.  He knew that the term GREEN JACKET was uniquely identified and associated with Complainant and its Masters Tournament.  It was on account of the fame and notoriety of the Green Jacket that he chose the Domain Name and the name of his company.  Complainant had a unique and obvious property interest in the GREEN JACKET mark and Respondent intentionally appropriated it to his own use, for his own commercial gain, when he registered the Domain Name.  This in and of itself is sufficient to support a finding of bad faith use and registration under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

Further, it is clear from the evidence that Respondent registered and uses the Domain Name to attract Internet users to his web site by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the site.  Using a domain name that trades upon the goodwill of a complainant for commercial gain is evidence of bad faith under Policy ¶ 4(b)(iii).  DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).  Pages from the resolving web site submitted by Complainant in Exhibit H to the Complaint and in the body of the Complaint itself prominently and ubiquitously display the GREEN JACKET mark and pictures of Complainant’s Green Jacket, and promote Respondent’s business of auctioning golf and other sports memorabilia.  The extent to which Respondent may actually be competing with Complainant is not clear, but what is clear is that he is using Complainant’s mark to promote his auctioneering business.  It is also clear that his use of the Domain Name and Complainant’s GREEN JACKET mark creates confusion as to the source, sponsorship, affiliation or endorsement of his web site and the services offered on it.  This is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).

 

For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <greenjacketauctions.com> domain name be TRANSFERRED from Respondent to Complainant.

 

In light of the foregoing Decision, the Panel finds that Complainant did not engage in reverse domain name hijacking.

 

 

Charles A. Kuechenmeister, Panelist

Dated:  December 21, 2017