StocktonGolf.com Lost In A UDRP Based Off A Common Law ...

A one member UDRP panel has just awarded a pretty generic domain name StocktonGolf.com to? StocktonEnterprises, Inc. a company owned and operated by? professional golfer, Dave Stockton, a 10-time PGA Tour winner and a 14-time Champions Tour winner.

The panel rejected that the domain represented the city of Stockton and terms related to Golf.

The panel found that the ??Stockton? name is, and has been, synonymous with professional golf since at least the early 1970s and awarded the domain to him based off a finding of a common law trademark.
The Panel rejected the domain holders argument that it has been? using the disputed domain name in connection with a bona fide offering of goods or services.

Here are the relevant findings by the Panel:

?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, 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 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 contested domain name is confusingly similar to the Complainant?s name. ?

?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.? ?

?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.? ?

?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?

?

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

Richard Hill, Panelist

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