Stockton Enterprises, Inc. v. Global Advertizing, LLC / kerry schorsch
Claim Number: FA1204001438611
Complainant is Stockton Enterprises, Inc. (“Complainant”), represented by Nathan W. Heyde of Varner & Brandt LLP, California, USA. Respondent is Global Advertizing, LLC / kerry schorsch (“Respondent”), represented by Gregory Larson of Larson Latham Huettl Law Firm, North Dakota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stocktongolf.com>, registered with eNom, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2012; the National Arbitration Forum received payment on April 9, 2012.
On April 10, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <stocktongolf.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 April 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 2012 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@stocktongolf.com. Also on April 13, 2012, 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 Response was received and determined to be deficient by the FORUM on May 4, 2012. The Panel has decided to consider the Response.
Respondent’s Additional Submission was received on May 9, 2012 and deemed compliant with Supplemental Rule 7.
On May 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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.
A. Complainant
The Complainant alleges that it is an entity owned and operated by renowned professional golfer, Dave Stockton, a 10-time PGA Tour winner and a 14-time Champions Tour winner. His first PGA Championships were in 1970 and 1976. Thus the “Stockton” name is, and has been, synonymous with professional golf since at least the early 1970s.
The Complainant alleges that the disputed domain name is confusingly similar to its mark “Stockton” and that it exploits the goodwill of the Complainant and creates consumer confusion by utilizing “Stockton” in conjunction with “Golf”.
According to the Complainant, the Respondent’s website displays advertising links to products and services related to the Complainant’s products and services and/or to websites purporting to be related to golf.
The Complainant states that, given the notoriety and high esteem afforded the Stockton Golf name and trademark in the golf industry, the Respondent is likely to cause confusion, mistake, and/or public deception as to the ownership of the Respondent’s domain name and as to the affiliation, connection or association of the Respondent’s domain name with the Complainant.
The Complainant says that the Respondent has no rights or legitimate interests in the domain name at issue because the Complainant has not authorized or licensed Respondent to use its marks. Furthermore, (i) the Respondent is not using the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) the Respondent has not made “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”; and (iii) the Respondent is not commonly known by the domain name.
According to the Complainant, the Respondent is using the disputed domain name in order to attract Internet traffic to its website to capitalize on click-through advertising revenue. The Respondent is thus attempting to unjustly profit from the goodwill associated with Complainant’s marks. Such actions are clear evidence of bad faith registration and use.
Further, says the Complainant, the Respondent is connected to approximately 14,164 other domains and boasts on its own website that it “operate[s] over 13,000 websites”. This is evidence of bad faith registration and use.
B. Respondent
The Respondent alleges that, when it registered the disputed domain name in 1999, it had never heard of nor had any knowledge of the Complainant, nor of any of its marks, nor of David Stockton.
The Respondent states that it registered and has been using the disputed domain name in connection with a bona fide offering of goods or services. The service being offered is Internet Advertising. Much like the Yellow Pages® provides visibility for print advertisers, the Respondent company provides visibility for Internet advertisers. The Respondent started its commercial activities in 1999. Its principals had been raising and competing with English Setter hunting dogs on a national level for several years. Throughout the summer and fall of 1998, they had been discussing how they could most effectively and economically bring national exposure for a local product, like their English Setters. That discussion of a private business gradually evolved into a much more global discussion of how people from around the world could get exposure for their products across a much wider global area. In the late winter of 1998, the early discussion of resolving the problem of global recognition and exposure for a local product took a turn in a new direction as they began to learn and realize how a “global” medium like the Internet could help nearly any business sell their goods and services. The solution to the global marketing problem eventually emerged as the ability of small and large businesses to economically promote their offerings in a network of advertising and information websites concentrated in the areas of real estate, hunting, fishing, dogs, travel, and golf. While the Respondent registered some generic websites like <dogforsale.com> and <pheasanthunt.com>, it mostly registered geographic domain names, such as <huntnorthdakota.com>, <northdakotahunt.com>, <minnesotahunt.com>, <huntminnesota.com>, <dickinsonrealestate.com>, <topekagolf.com>, <bismarckgolf.com>, <stocktongolf.com>, etc.
The Respondent states that the website at the disputed domain name contains the following statement:
Welcome to www.stocktongolf.com. A Global network directory of Stockton golf. Golf courses, tee times, golf shops, supplies, equipment, golf real estate and related products and services. Golf homes, apartments, condos, resorts, land and lots. Golf recreational, commercial, investment, development and residential real estate for sale or lease. The city of Stockton is found in California, Alabama, Wisconsin, New York, Missouri, Illinois, Kansas, Minnesota, New Jersey, Utah, Iowa and Maryland. Golf courses, supplies, and real estate from other cities, states and countries may also be found on this website. Scroll down to view.
According to the Respondent, its website at the disputed domain name shows paid ads from sellers of real estate in Manitoba, Indiana, Nova Scotia and Argentina.
C. Additional Submissions
The Complainant did not submit an Additional Submission.
In its Additional Submission, the Respondent states that it did not receive all of the Complainant’s original filing on a timely basis. The annexes to the Complaint were received 6 days after the original filing. Originally it received blank pages that were listed as annexes. Based upon this, it requested additional time to respond. It was told that it should file a request for this and pay an additional $100. Based upon the time constraints and also because the rules appeared to require cooperation from the Complainant in order to get the extension, it elected to do its best on the short notice to complete the Response. Due to the shortened Response time it was not able to file a complete Response. The Response indicated at paragraph 13 that an Addendum and Annexes would follow. What follows is that Addendum, which the Respondent feels, in the interest of equity and fairness it should be allowed to present.
The Respondent alleges that it operates a large number of websites because that is how it best provides its service to its customers on 6 continents. The association of a large number of domain names and websites with any company, especially an advertising company is not unusual, it is not illegal, it is not unethical and certainly it is not unwarranted. In 13 years of operation, and with over 13,000 domains in its network, until the present case, no domain suit, action or dispute has ever been brought against the Respondent because it is a legitimate company that does not passively hold its domains. No domain suit, action or dispute has ever been brought against the Respondent because it does not knowingly purchase and develop domains that are associated with trademarks or family names. No domain suit, action or dispute has ever been brought against the Respondent because its customers like the service that it delivers. No domain suit, action or dispute has ever been brought against the Respondent because it is an honest company, acting entirely and in every way in good faith.
According to the Respondent, its website at the disputed domain name includes paid ads from advertisers offering for sale golf-related real estate and products in Indiana (5 star rated golf course for sale), Manitoba (18 hole executive style golf course), Nova Scotia (automotive trailer hitch to transport golf clubs), and Argentina (house for sale in private neighborhood at La Vacherie Country Club).
The Respondent explains at some length how it uses its various websites to advertise various products and services, including products and services related to golf. It has been providing advertising services to the golf and the golf industry since at least the year 2000. The website at the disputed domain name is a good place to advertise for anyone who has golf courses or golf course related real estate for sale.
According to the Respondent, the disputed domain name was registered 11 years before the Complainant registered its mark STOCKTON GOLF. The Complainant wrote to the Respondent for the first time a few days after registering that mark, even though it had registered the domain names <stocktongolf.us> and <stocktongolf.net> 18 months before.
The Respondent alleges that the Complainant is attempting to engage in Reverse Domain Name Hijacking.
According to the Respondent, the disputed domain name is not identical to, nor confusingly similar to, the Complainant’s mark, because it is used for a purpose different from that of the Complainant’s mark (Internet advertising, as opposed to golf instruction). The Respondent is not attempting to profit from the Complainant’s goodwill or trying to confuse consumers.
The Respondent states that the Complainant has offered no actual proof that any confusion has actually occurred. And, in fact if any confusion were to occur, the Respondent would gladly make a prominent notation on its website that it is not associated with the golfer Dave Stockton or any of the Complainant’s golf-related endeavors. The Respondent’s use of the disputed domain name as a primarily real estate website virtually guarantees that there will be a nearly impossible chance for any confusion to ever occur. Especially if web visitors are offered prominent and prompt direction to the Complainant’s primary website, <davestockton.com>.
The Respondent states that it has never received any click-through revenue from the disputed domain name and furthermore has never attempted to acquire any click-through revenue from that domain name.
The Respondent makes numerous other allegations that the Panel considers irrelevant, so they are not summarized here.
The game of golf is, in many parts of the world, including the USA, a commercial activity when carried out professionally.
The Complainant, Dave Stockton, is a famous professional golfer. His activities are such that his name has acquired common law trademark protection since at least 1970.
The Respondent registered the disputed domain name in 1999.
The Complainant has not licensed or otherwise authorized the Respondent to use his mark.
The Respondent registered the disputed domain well after the Complainant became famous.
The disputed domain name is being used to direct Internet users to various websites associated with golf, but not with the Complainant. The Respondent derives advertising revenue from the website at the disputed domain name.
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.
Before analyzing the three elements of the Policy, the Panel must consider the procedural issue raised by the tardiness of the Response. The Respondent submitted its Response on May 4, 2012, which was the day after the response filing deadline, May 3, 2012. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. Pursuant to ICANN Rules 10 (a), (b), and (d), The Panel, at its discretion, may choose whether to accept and consider this late Response. The Panel chooses to accept the late Response. See Victoria’s Secret Stores Brand Management, Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
Additional Submissions are usually submitted first by the Complainant (as a rebuttal of the response), then by the Respondent (as a surrebuttal of the rebuttal).
In the present case, only the Respondent has submitted an Additional Submission, and, as the Respondent itself states, this brief is actually an addendum to the Response.
Given that the Respondent’s Additional Submission is in reality part of its Response, the Panel should, in principle, allow the Complainant to decide whether it wishes to submit an Additional Submission, that is, a rebuttal of the Response. The Respondent could then submit a surrebuttal. However, for the reasons set forth below, the Panel holds that it is not necessary for it to allow the Complainant to submit an Additional Submission.
The contested domain name is confusingly similar to the Complainant’s name. Indeed, it is well-settled case law under the policy that adding a common word such as “golf” or the top-level domain name suffix “.com” do not suffice to distinguish a domain name from a trademark for the purposes of the Policy. See Disney v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end).
The question that arises here is whether Complainant’s name is protected by trademark rights. As the Panel noted in Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000), and in Crandell Addington v. Domain Guy, FA 560842 (Nat. Arb. Forum, October 25, 2005), a person’s name can acquire common law trademark rights, in particular when the person is well-known in some commercial field. Such is the case here. Dave Stockton’s golf-related activities are such that his name has acquired common law trademark rights since at least 1970. And it is well established that, under the Policy, common law rights suffice; therefore, registration is not required.
The Respondent’s allegation that the disputed domain name is being used for a purpose different from that of the Complainant’s business is not relevant, nor it is necessary for the Complainant to prove actual confusion. See Societé des Hotels Meridien SA v.s United States of Moronica D2000-0405 (WIPO, June 27, 2000) ( “In this regard, the Panel also declines to deviate from the ICANN Policy, which clearly states that having a domain name which is identical to a registered trademark is sufficient to meet the test established by paragraph 4(a)(i) even if there is no likelihood of de facto confusion. Therefore, the Respondent’s statement to the effect that that the trademarks registered by the Complainant have no connection with online streaming radio services and therefore there is no risk of confusion on behalf of the consumer is of no relevance.”)
Thus, the Panel holds that the contested domain name is confusingly similar to the Complainant’s common law mark.
The Respondent alleges that it has rights and a legitimate interest in the disputed domain name because it uses it for a bona fide offering of goods and services, namely Internet advertising. The Panel disagrees. The Panel holds that the Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii), respectively. As the Respondent freely admits, the disputed domain name resolves to a website offering links to websites and companies that offer golf services and products, in particular links to real estate for sale, primarily golf-related real estate. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel holds that the Complainant has satisfied its burden of proof for this element of the Policy.
The Complainant makes much of the fact that the Respondent has registered thousands of domain names. But, as the Respondent correctly points out, there is no prohibition on doing that and the Respondent’s ownership of multiple domain names has no bearing on the legitimacy of its registration of the disputed domain name. See Reed Elsevier Inc. v. ECS Composites - ECS - E0, FA727967 (Nat. Arb. Forum July 26, 2006) (where the complainant held rights to <nexix.com>, the panel found that registration of the <nexiscase.com>, <nexiscases.com>, <nexis-case.com>, <nexis-cases.com>, <nexuscase.com>, <nexuscases.com>, <nexus-case.com> and <nexus-cases.com> domain names did not indicate the respondent had engaged in a pattern of bad faith registration pursuant to any of the Policy ¶ 4(b) elements).
According to ¶ 4(b)(iv) of the Policy, evidence of bad faith registration and use exists if “you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Respondent freely admits that it registered and is using the disputed domain name in order to derive revenue (albeit not click-through revenue) from the advertising of activities related to golf, in particular golf-related real estate sales. It asserts that it had not heard of Dave Stockton prior to the present dispute. The Panel does not accept that assertion. The Panel holds that the Respondent must have been aware of Dave Stockton’s activities as a golfer when it registered the disputed domain name, which includes the word “golf”. The Respondent is based in North Dakota, so there is no reason to believe that it had in mind the various golf courses present in Stockton, California, when it registered the disputed domain name, nor does the Respondent allege that it specifically had such courses in mind when it registered the disputed domain name.
Thus, the Panel finds that the Respondent is using the Complainant’s well-known name to attract Internet users to the Respondent’s web site for commercial gain by creating a likelihood of confusion with the Complainant’s well-known mark. This constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Respondent argues in its Additional Submission that its rights in the disputed domain name predate the date on which the Complainant acquired trademark rights. The disputed domain name was registered on March 19, 1999. As noted above, the Panel holds that the Complainant had common law rights in the mark STOCKTON since at least 1970, so the Respondent’s argument fails.
The Panel holds that the Complainant has satisfied its burden of proof under this element of the Policy.
The Respondent alleges that the Complainant has attempted to engage in Reverse Domain Name Hijacking.
Since the Panel finds that Complainant has satisfied all of the elements of the Policy, it finds that Complainant has not engaged in Reverse Domain Name Hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
The request for a finding of Reverse Domain Name Hijacking is DENIED.
Accordingly, it is Ordered that the <stocktongolf.com> domain name be TRANSFERRED from the Respondent to the Complainant.
Richard Hill, Panelist
Dated: May 12, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page