National Arbitration Forum

 

DECISION

 

CT Woodhaven Country Club LLC v. Robert Reynolds

Claim Number: FA0503000436770

 

PARTIES

Complainant is CT Woodhaven Country Club LLC (“Complainant”), represented by Mike Abee, 67-603 30th Ave., Cathedral City, CA 92234.  Respondent is Robert Reynolds (“Respondent”), Box 13702, Palm Desert, CA 92255.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <woodhavencountryclub.com>, registered with Register.com.

 

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.

 

Hon. Sir Ian Barker, QC

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2005; the National Arbitration Forum received a hard copy of the Complaint on March 11, 2005.

 

On March 15, 2005, Register.com confirmed by e-mail to the National Arbitration Forum that the domain name <woodhavencountryclub.com> is registered with Register.com and that the Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com 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 March 21, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 11, 2005 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@woodhavencountryclub.com by e-mail.

 

A timely Response was received and determined to be complete on March 30, 2005.

 

An Additional Submission was received from the Complainant without payment of the required filing fee.  The Panel has decided to admit this submission in the interests of justice, despite the fact that it did not comply with Forum Supplemental Rule 7.

 

On April 7, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker QC as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

 

A.     Complainant

This Panel cannot recollect seeing a Complaint in any proceeding under the Policy as bereft of information or argument as the Complaint under consideration.

 

All Complainant gives as its grounds for the Complaint are:

 

(a)      “Woodhaven Country Club is the trademark.”  “It is a golf club with members with a full service membership.”

 

(b)      The Club name is identical to the disputed domain name.

 

(c)     The disputed domain name has been procured by Respondent who refuses to give Complainant control and ownership of it unless Complainant uses Respondent’s computer services.

 

B.      Respondent

(a)     Complainant has no registered trademark.

 

(b)    There are three other “Woodhaven Country Clubs” in other parts of the United States and this Complainant has no exclusive rights to the name.

 

(c)     The Respondent denies the allegation in (c) above.

 

(d)    The Respondent’s domain lists information on all Woodhaven Country Clubs nationwide with descriptions of their respective golf courses.  He does not profit from the website.

 

C.      Complainant’s Additional Submission

(a)      Respondent has never owned a country club called Woodhaven or otherwise.

 

(b)    Complainant admits it does not own a registered trademark, but ownership of the Club gives a right and legitimate interest in the name.

 

(c)      Complainant rejects Respondent’s claim that he does not profit from the website using the disputed domain name.

 

FINDINGS

(a)                 Complainant does not own a registered trademark for the disputed domain name.

 

(b)      Complainant has produced no evidence as would justify a claim for a common-law mark in the disputed domain name.

 

(b)                There are at least three other Woodhaven Country Clubs in other parts of the United States.  This fact alone would make a common-law mark very difficult to assert.

 

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:

 

(1)    the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the 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.

 

Identical and/or Confusingly Similar

 

The Complaint must fail because the first requirement under Paragraph 4(a) of the Policy has not been established.

 

Complainant’s only argument under Policy ¶4(a)(i) is the following statement: “Club name is identical to Domain name being pursued.”  Such statement without more, fails adequately to discharge a complainant’s burden under Policy ¶4(a)(i) to show that the domain name in question is identical or confusingly similar to a mark in which the complainant has rights.  See TotalFinalElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16 2002) (finding that, in order to bring a claim under the Policy, the complainant must first establish a prima facie case.  The complainant’s initial burden is to provide proof of “valid, subsisting rights in a mark that is similar or identical to the domain name in question”).

 

Nor is there any evidence as would justify a claim by Complainant for a common-law mark in the disputed domain name.  The test for common-law marks is quite stringent, as can be seen from a variety of decisions.  See, e.g., Cobos v. West, North, D2004-0182 (WIPO June 21, 2004); see also BAA plc v. Larkin, D2004-0555 (WIPO Nov. 11, 2004).

 

Accordingly, Complainant having failed to establish the first criterion under the Policy, it is not necessary to consider the remaining two criteria.  On the scant evidence proffered by Complainant, its chances of establishing the other two criteria are not hopeful.

 

DECISION

The Panel therefore concludes that relief shall be DENIED.

 

 

 

 

Hon Sir Ian Barker QC, Panelist
Dated: April 21, 2005

 

 

 

 

 

 

 

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