1.1 The Complainant is St Andrews Links Ltd, St Andrews, Fife, Scotland, United Kingdom, represented by Nixon Peabody, LLP, United States of America.
1.2 The Respondent is Refresh Design, Aberdour, Fife, Scotland, United Kingdom, represented by Pinsent Masons LLP, Glasgow, United Kingdom.
2.1 The disputed domain name <theoldcourse.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2009. On May 7, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Name. On the same day, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2009. The Response was filed with the Center on May 31, 2009.
3.3 On June 11, 2009 the Complainant filed an additional submission headed “Complainant's Request for leave to file supplemental submissions”.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on June 16, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
3.5 On June 18, 2009 the Respondent filed an additional submission objecting to the Complainant's request of June 12, 2009.
4.1 The Complainant is a company registered under the laws of Scotland. Together with its parent, St Andrews Links Trust, it operates a series of golf courses in Scotland It is very well known in the world of golf.
4.2 One of the courses operated by the Complainant is “The Old Course”. It professes to be the world's oldest golf course and is a frequent host of the British Open.
4.3 The Complainant is the owner of various trade marks that incorporate or comprise the words “the old course”. They include each of the following marks that comprise the words “The Old Course” alone:
(i) Community Trade Mark no 3266814 filed on July 11, 2003 in classes 25, 28 and 33;
(ii) Community Trade Mark no 4600136 filed on August 22, 2005 in class 41;
(iii) Community Trade Mark no 5288915 filed on September 1, 2006 in class 42; and
(iv) Community Trade Mark no 6753883 filed on March 14, 2008 in class 14.
4.4 The WhoIs details for the Domain Name suggest that it was registered on April 19, 1999. Who exactly it has been registered by is a question that is discussed in greater detail in the body of the decision. However, it is currently registered in the name of “Refresh Design”.
4.5 The legal status of “Refresh Design” is unclear, but it would appear to be either the trading name of a Mr Gary Wilkinson or is the name of a business that is otherwise associated in some way with Mr Wilkinson1.
4.6 The web pages operating from the Domain Name seem to have varied over time. These include:
(i) A web page with material and links that appeared to refer to the Complainant's golf course as well as links that provided information and goods and services associated with Saint Andrews. At the bottom of that page were the words “© 1999 - 2000 TheOldCourse.com Limited”.
(ii) A “place holder” web page in place in November 2003.
(iii) A website operating in 2004 professing to be a “guide to golf” and purporting to provide information on “three of the world's premier golf destinations”. Named on that page are Ballybunion, St Andrews and Troon. At the bottom of the page were the words TheOldcourse.com Ltd.
(iv) A website offering golf vacations in Scotland and Ireland at St Andrews in Scotland and Ballybunion in Ireland in late 2005. The website promoted the activities of “Wilkinson Golf & Leisure”, the “Golf Travel Company”, “Roundball Golf Tours” and “Dream Golf Tours”.
(v) A web page showing what appears to be a picture of the Complainant's golf course. It referred to “Guaranteed Old Course Tee Times” and contained a statement that the site would be “launched in early December 2008”. However, the page was still visible in January 2009. At the bottom of the page were the words “All rights reserved The Old Course.com” and “Website by RefreshDesign.co.uk”.
4.7 There was a Scottish company using the name TheOldCourse.com Limited (SC208058) that was incorporated in June 2000 but was dissolved in May 2005.
4.8 It would appear that in November 2008 there was some correspondence between Mr Wilkinson and the Complainant about the development of a web site that would show available tee times on the Complainant's course. In an email with the subject matter “theoldcourse” of November 17, 2008 Mr Wilkinson wrote:
“I am showing you this before we launch as I think it serves all parties well who have an interest in promoting St Andrews. I would even hope SLMC would want to show some of its own availability on the site as well and or even provide a link from the main St Andrews.org web site. This is an advertising site and a fee will be charged to any company wanting to promote a tee time they may have. You will see also that there are other opportunities on the site for advertising.”
4.9 On February 6, 2009 the Complainant wrote to Mr Wilkinson claiming that the Domain Name infringed its intellectual property rights and requiring the Domain Name to be transferred to the Complainant.
4.10 In an email to the Complainant dated April 16, 2009 Mr Wilkinson stated:
“My intentions for the domain name are still not certain but I am thinking about putting on line information derived from my hobby of travel. Specifically everything I have learnt about “The Old Course “ venues around the world; hotels, golf courses etc. The Old Course Ballybunion, Troon, Hotel, Vilamoura etc.
In the first instance all of these venues will be listed with a direct link through to their respective web sites. When I get round to it I may add comments about my own experiences of these places but lack of time may prevent that happening this year.
I was intending to add a link to the St Andrews.org site and also to the Old Course Experience site as well (again no cost involved). Let me know if you want this or not, it will be your choice.
What I can categorically confirm is that this hobby site will not be deriving any form of income as these are my own personal recommendations based on years of travel since I first obtained the domain name which must be about 9 years ago.”
4.11 As at the date of this decision a blank black page appears at the Domain Name.
5.1 The Complainant explains its connection with The Old Course and maintains it is the world's “most famed golf course” with a history that extends back to the 15th Century.
5.2 It refers to its registered trade marks and asserts that the Domain Name is confusingly similar and identical to those marks. It also contends in this respect that the “Respondent has offered services on its website similar to those [the] Complaint offers”.
5.3 The Complainant contends that the Respondent is a firm that provides website design services and Mr Wilkinson is said to be a client of the Respondent. The Complainant maintains that the Respondent is an agent of Mr Wilkinson and that therefore the acts of Mr Wilkinson can be imputed to the Respondent.
5.4 It claims that whilst the Respondent has in the past offered tours of “The Old Course” these are unauthorised by the Complainant. It also claims that it has engaged in sales of St Andrews-branded golf equipment, which is said to infringe the Complainant's separate registrations in the mark ST ANDREWS.
5.5 Complaint is also made about the latest site to appear from the Domain Name. The Complainant claims the offer to sell “tee times” is unauthorised and the use of a photograph of part of the course “falsely associates [the] Respondent with St Andrews Links”. In short, it contends that the Respondent is attempting to improperly trade on the goodwill that the Complainant has developed in its marks.
5.6 The Complainant further contends that the Respondent cannot make out the examples of rights or legitimate interests identified in paragraph 4(c) of the Policy.
5.7 So far as bad faith is concerned the Complainant maintains that this is a case that falls within the scope of paragraph 4(b)(iv) of the Policy. The fact that Mr Wilkinson uses an address that is geographically close to The Old Course is said to give rise to a strong inference that Mr Wilkinson chose the Domain Name precisely because it is identical to the Complainant's marks. Reference is also made to the various uses of the Domain Name after initial registration in April 1999.
5.8 The Respondent contends that the earliest mark relied upon by the Complainant was filed on August 22, 2005 and that the Complainant cannot rely upon rights that pre-date the registration of the Domain Name. The Respondent further contends that the Complainant has also failed to show that the term “The Old Course” has become a distinctive identifier associated with it and its goods and services (citing Australian Trade Commission v Matthew Reader, WIPO Case No. D2002-0786) and that it cannot claim common law rights in the term. It also makes various criticisms of the Complainant's evidence, including the reliance on Wikipedia entries.
5.9 It is claimed that “The Old Course” is a common phrase in the golfing world and reference is made to Google results that it exhibits. It states that there are at least 8 golf courses around the world that use that term and that accordingly it is not exclusively associated with the Complainant or St Andrews Links. In the circumstances, the Respondent maintains that it can show demonstrable preparations to use the Domain Name in connection with a bona fide offering of services and that the Respondent is making a legitimate non-commercial use of the Domain Name, without any intent for commercial gain to tarnish the trade marks of third parties.
5.10 So far as bad faith is concerned the Respondent maintains that this is an issue of intent and can be summed up in the question “Why, did the Respondent register the [D]omain [N]ame?” and whether it was motivated from a wilful intent to exploit rights known to belong to the Complainant. The Respondent once again asserts that the Complainant's earliest mark was registered in 2005 and refers to the fact that the Domain Name was registered 6 years previously.
5.11 The Respondent also denies that it registered the Domain Name in April 1999. Instead it is claimed that the Domain Name was registered by 19th Hole Caddy Limited. The Domain Name is said to have passed into the ownership of the Respondent in November 2003 and the Respondent exhibits an invoice in this respect. It claims that “19th Hole Caddy Limited was not and is not associated with the Respondent or [Mr] Wilkinson in any way”.
5.12 The Respondent contends that Mr Wilkinson acquired the Domain Name with the intention of developing a directory website to “provide information to assist individuals to organise independent golfing vacations by providing links to golf courses and hotels in the respective areas”. It claims that this was a non-profit making website which was not used in a commercial way. The Respondent also contends that “due to lack of time to devote to the [D]omain [N]ame the development of the [D]omain [N]ame slowed”.
5.13 The Respondent further claims that in 2008 the Respondent developed an idea to use the Domain Name in conjunction with the Complainant to sell Tee times at The Old Course St Andrews and goes on to describe the contacts and correspondence between the Complainant and Mr Wilkinson thereafter.
5.14 The Respondent denies that the Domain Name has ever been used to cause harm to the Complainant or to confuse Internet users that the Domain Name is in any way connected to the Complainant and alleges that the Complainant has brought forward no evidence to support its claim of confusion.
5.15 Lastly, the Respondent claims that the Complaint cannot have been brought in good faith. It refers in this respect to paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Overview”). However, the Respondent does not expressly call for a finding of reverse domain name hijacking.
6.1 The Complainant must make out its case in accordance with the requirements set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these issues in turn. However, before doing so it is convenient briefly to address the preliminary issues of the Respondent's Request to file a Reply Brief, the identity of the Respondent and the date of registration of the Domain Name.
6.3 The document filed by the Complainant is somewhat of a hybrid nature. It purports to seek leave in advance to file a reply brief, but also annexes various documents upon which it seeks to rely. It is structured in the format of a request for leave since the Complainant understands the decision of The Thread.com, LLC v Jeffrey S. Poploff, WIPO Case No. D2000-1470 to require such an application.
6.4 In The Thread.com the complainant submitted a “reply” to a response without permission. The learned panelist in this case then issued a procedural order in which he stated that “Rule 12 unambiguously provides that only the Panel may request further submission” and then proceeded to cite a number of decisions in which panels had held that supplemental submissions could only be filed in limited circumstances. It, therefore, ordered that the complainant file reasons for this submission. A document was filed by the complainant in response to this order and but the panel concluded that the reasons given were insufficient to justify the acceptance of the “reply”. The Panel notes that the approach adopted in The Thread.com was also adopted in Australian Trade Commission v. Matthew Reader, supra.
6.5 A panel is given a very wide discretion when it comes to the conduct of proceedings. Therefore, how a panel decides to conduct proceedings is something ultimately to be left to individual panelists to determine given the specific circumstances of the case before them. Nevertheless, this Panel does not think that it necessary follows from the The Thread.com and the Australian Trade Commission decisions that the appropriate procedure in a case where a party wishes to submit a supplemental submission, is to file a formal request to do so.
6.6 Proceedings under the Policy are not akin to court proceedings. They are intended to provide a streamlined procedure at a fixed cost to decide domain name disputes on the basis of suitably limited submissions. It is a procedure that is ill suited to the consideration of interim “requests”, “applications” or “motions” that require some form of interim determination by a panel. Accordingly, such “requests”, “applications” or “motions” are to be discouraged.
6.7 Therefore, in a case where a party wishes to file a supplemental submission not formally prescribed by the Policy or Rules, this Panel would suggest that the appropriate way to proceed is to prepare a set of reasons as to why it should be allowed to do so. This should then be filled in or together with that supplemental submission. The reasons given should set out clearly and cogently why the additional submission falls within the scope of one of the limited sets of circumstances in which additional submission are submitted.2
6.8 In the The Thread.com and Australian Trade Commission cases the panels were relatively indulgent to the complainant in giving it an opportunity to file such reasons subsequent to the filing of the relevant submission. These were cases in the early days of the Policy and it may be that panels will now be less obliging (see similar comments in relation to the acceptance of late submissions discussed in 1099 Pro, Inc. v. Convey Compliance Systems, Inc., WIPO Case No. D2003-0033 and Fashiontv.com GmbH v. Mr. Chris Olic, WIPO Case No. D2005-0994).
6.9 In any event, the Panel in the present case has decided to reject the Complainant's “request”. Much of the material that the Complainant now wants to put before the Panel appears to be material that could have been raised in the initial Complaint. However, regardless of whether this is correct, the Panel has come to the conclusion that it can and should come to a decision in the Complainant's favour without the need to have recourse to this proposed additional material.
6.10 As the Panel has already commented, the identity of the Respondent is far from clear. Comments in the Response suggest that it may be a company registered under the laws of Scotland but the company is not identified. Nevertheless, whatever the Respondent's exact status, the Complainant maintains that the actions of Mr Wilkinson can be imputed to the Respondent. The Response also seems to proceed on the assumption that the actions of Mr Wilkinson can be treated as the actions of the Respondent. The Panel will, therefore, proceed on that basis.
6.11 A more difficult question is the issue of the date of registration. The reason why this is significant is that a complainant must show that the domain name was registered as well as used in bad faith. Therefore, determining the date of registration, and therefore the date at which the Respondent's motives are to be assessed, can on occasion be an issue of importance.
6.12 The Respondent seems in its Response to claim that it was not responsible for the initial registration in April 1999, that the Domain Name only came into its hands in November 2003 and there is no connection between the present owner and the initial registrant of the Domain Name. If this is correct, the date upon which the motives for registration are to be assessed is not April 1999 but November 2003 (see, for example, Aubert International SAS and Aubert France SA v. Tucows.com Co, WIPO Case No. D2008-1986 and the discussion of the majority of the panel at paragraphs 6.35 to 6.45).
6.13 However, the Panel is concerned that it may not have been told the whole story. The only evidence that is brought forward to support the claim is an unnumbered invoice that carries in very bold text the statement “Date: November 25, 2003” which purports to charge a sum of £2,500 (with no mention of Value Added Tax) representing a “50% payment for a website address”.
6.14 There is evidence of a place holder web page operating from the Domain Name on November 2005 and this is perhaps consistent with the claimed transfer. But as has already been described in section 4 of this decision above, webpages operating from the Domain Name both before and after this purported transfer date each bore copyright notices referring to “TheOldCourse,com Limited”. No explanation is given by the Respondent as to why these notices, that seem to make reference to a Scottish registered company that was in existence at the time, appeared on these pages both before and after the purported transfer3.
6.15 In the circumstances, the Panel is sceptical that there was the clean break that the Respondent claims occurred between previous and present owners of the Domain Name in November 2003. Nevertheless, for reasons that the Panel will go on to explain, it does not make a difference to the Panel's conclusions in this case.
6.16 The Respondent does not appear to deny that the Domain Name is identical to or confusingly similar (as that term is understood under the Policy) to registered trade marks in which the Complainant has rights. Instead, its case is that the Domain Name predates the Complainant's trade mark rights.
6.17 There are two problems with the Respondent's contentions in this respect. One is simply factual. The Respondent maintains that the earliest of the Complainant's trade mark registrations was filed in 2005. However, this is not correct. One of the marks relied upon by the Complainant is Community Mark no 3266814, which was filed on July 11, 2003. This on the Respondent's own case predates the date of the Complainant's registration4.
6.18 The second problem is more fundamental. Contrary to what the Respondent contends, it is not right to say that a complainant cannot rely upon a mark that post dates the registration. Paragraph 1.4 of the WIPO Overview, which was prepared over four years ago, characterised as a “consensus view” that the “[r]egistration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity”. The fact that marks post date the registration of a domain name, may sometimes raise issues so far as bad faith is concerned (and this is an issue to which this decision will return), but they are not relevant to the assessment of confusing similarity.
6.19 Equally irrelevant to the assessment under paragraph 4(a)(i) of the Policy are the Complainant's claims that the Respondent has offered services on the website operating from the Domain Name that are similar to those that the Complainant offers (see the WIPO Overview paragraph 1.2). The comparison is simply between the marks relied upon and the domain names in issue.
6.20 In the circumstances the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
6.21 At the heart of the Respondent's contentions are the claims that he registered the Domain Name because the term “The Old Course” is one that is used extensively in the world of golf to refer to a number of courses, and not just the course operated by the Respondent. There are echoes here of a claim that is often made by respondents in domain name cases, that the term registered is somehow “generic” and that the domain name has been registered because of its “generic” or “descriptive” meaning.
6.22 In such cases the position under the Policy now seems reasonably clear. If a respondent can show that it registered and has used the domain name with a view to taking advantage of that generic or descriptive meaning, then it may well have a legitimate interest for the purposes of the Policy. If instead and notwithstanding a potential generic use, the intention was to take advantage of a domain name's association with the business of another, then there will not be a legitimate interest (see WIPO Overview paragraph 2.2).
6.23 In this case the position is perhaps a little different, in that it is said that the term “The Old Course” is not quite generic but is a name that is shared and used by a number of different golf courses around the world. However, assuming in the Respondent's favour that it would be legitimate to register a domain name that incorporated a term that was used by a finite and limited number of traders (and the Panel declines to address that issue in these proceedings), the question would remain the same; i.e. was the Domain Name registered with all these different entities in mind or was it instead primarily registered with a view to taking advantage of the reputation attached to that name so far as the Complainant was concerned.
6.24 For the reasons given under the heading “bad faith” in this decision, the Panel has reached the conclusion on the balance of probabilities that the Respondent has registered and used the Domain Name with the Complainant primarily in mind.
6.25 Given that finding it does not matter if the Respondent can show that it has engaged in demonstrable preparations to use the Domain Name for an offering of services. If the intention was to do that through a domain name that sought to take advantage of associations with the Complainant that is not a bona fide offer of services for the purposes of the Policy.
6.26 Further, the Panel is unconvinced by the claims of the Respondent that he is making a legitimate non-commercial use of the domain name. Again the issue of commercial use is discussed in greater detail under the heading of bad faith below. However, for present purposes it is sufficient to note that the question of rights and legitimate interest should be assessed at the date of the Complaint. In this case at the time that the Complaint was made the only sensible interpretation of events is that the Respondent was holding the Domain Name for use with a commercial service arranging tee times (although he back tracked somewhat from this in his email of April 16, 2009). Further, even if there had been use for a non-commercial purpose, it is questionable whether use of a domain name that is virtually identical to another's trade mark (as the Domain Name is in the present case) will provide a right or legitimate interest for the purposes of the Policy (see, for example this Panel's decision in 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461).
6.27 Accordingly, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
6.28 The Respondent claims that Mr Wilkinson registered the Domain Name to develop a directory website to provide information to assist individuals organise golfing vacations. That may be true, but that does not mean that the registration was not in bad faith. If Mr Wilkinson intended to rely upon the association of the term “The Old Course” with the Complainant in order to draw Internet users to his site, then (subject to the point about commerce dealt with below) the registration and use would fall within the scope of paragraph 4(b)(iv) of the Policy and would have been registration and use in bad faith.
6.29 There is no doubt that Mr Wilkinson knew at the time of registration that the term was associated with the Complainant's business. There was a direct reference to that course on the website that in January 2004 appeared at the Domain Name. There are pictures on the website of St Andrew's Old Course and the statement “The Old Course St Andrews and The Old Course Ballybunion are two of the best links golf courses in the world”.
6.30 None of this is denied by the Respondent. Its position seems to be that this is legitimate because the term “The Old Course” is also used in connection with a number of golf courses which are described on the site. In addition, to the St Andrews and Ballybunion references described above there is also a reference to a course of that name in Troon, Scotland.
6.31 However, ultimately the Panel does not accept the Respondent's contentions in this respect and it finds on the balance of probabilities that it was primarily with the term's associations with the Complainant that the Domain Name was registered. The reasons for this are as follows:
(a) The Complainant has brought forward evidence of the particularly high reputation and status of the Complainant's “The Old Course” in the world of golf. The Panel finds this compelling. The Respondent seeks to criticise the nature and quality of that evidence. It for example complains about the fact that the Complainant relies upon a Wikipedia entry and this is an “open source encyclopedia to which anyone can contribute”. However, no concerted attempt is really made to put forward a positive case to the effect that the Complainant claims are not correct and to show that the Wikipedia entry relied upon is inaccurate. The only evidence offered in this regard are the results of Google searches undertaken against the term “The Old Course” in 2009. What is remarkable about these search results is the extent to which they seem predominantly (if not exclusively) to be associated in some way with the Complainant's course.
(b) The fact that both the Respondent and Complainant are located in the Fife region of Scotland.
(c) The fact that in recent months the Domain Name was used by the Respondent for a website that directly related to the Complainant's activities and no other course using that name. Admittedly, this is primarily evidence of the Respondent's current intentions rather than its intentions at the time of registration. However, this recent use is not much short of an acknowledgment that the most profitable use of the term is one that is solely associated with the Complainant's use of the term. As such it colours the assessment of the Respondent's motives at the time of registration.
6.32 There is also the Respondent's claim that it did not receive any financial benefit from this use of the Domain Name. Even if it is strictly true, this would also seem to be a highly partial description of events. Both the Complainant's and the Respondent's evidence suggests that at one point the activities of four Tour Operators were promoted on the Website, one of which was “Wilkinson Golf & Leisure”. It strikes the Panel as unlikely that this business is unrelated to Mr Wilkinson, the individual whose activities the Respondent accepts can be treated as the same as that of the Respondent.
6.33 Once again one is left with the impression that the Respondent has been less than open with the Panel in these proceedings. It is something that the Panel believes it is entitled to take into account when it assesses the evidential weight to be given to the claims by the Respondent as to why it registered the Domain Name.
6.34 The Panel suspects that these claims of lack of financial benefit are probably driven by an attempt by the Respondent to distance itself from paragraph 4(b)(iv) of the Policy. This provides as an example of bad faith:
“using the domain name, you have intentionally attempted to attract for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”
6.35 However, this misunderstands how the Policy operates. It is not necessary to show under paragraph 4(b)(iv) of the Policy that the registrant intended that it is the one that would commercially gain by reason of the registration. It is sufficient to show that it was intended that someone would commercially gain (see, for example, V&S Vin&Sprit AB v. Corinne Ducos, WIPO Case No. D2003-0301).
6.36 In short, when considered in the round the Panel is of the view that on balance the evidence shows that even if the Domain Name was only registered by Mr Wilkinson and/or the Respondent in November 2003 then it was registered and subsequently used in bad faith.
6.37 Further, for reasons that have already been described, the Panel is far from convinced that the Respondent's associations with the Domain Name only came about in November 2003 rather than earlier. The fact that websites operating from the Domain Name both before and after that date carries references to “The Old Course Limited” suggests that there was not the clean break in November 2003 that the Respondent claims. And if there is not such a clean break, then prior uses of the Domain Name become relevant to the assessment of bad faith registration. In particular, the Complainant has brought forward evidence that shows that prior to that date the Domain Name was used in respect of a web site that contained content associated with the Complainant's course and St Andrews in general rather than any other “Old Course” golf course. In such circumstances, the inference of bad faith registration becomes overwhelming.
6.38 The Respondent contends that there cannot be bad faith in this case because the Domain Name was registered before a trade mark right was established. It cites paragraph 3.1 of the WIPO Overview which describes as the consensus view:
“Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant's non-existent right.”
However, it fails to go on to set out the important qualification that then follows in the Overview and which reads as follows:
“In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant's potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant's enterprises.”
6.39 This is a case which falls within the scope of that qualification. The Panel is persuaded on the evidence before it that the Complainant was using the term “The Old Course” in a trade mark sense (i.e. to identify specific goods and services with a trade mark) to refer to its activities prior to the registration of the Domain Name and that the Respondent registered the Domain Name with that knowledge of that use and with an intent to take advantage of the same. This is sufficient, even if the Complainant did not obtain registered trade mark rights until some later date.
6.40 The Complainant did not in the Complaint express rely on unregistered trade mark rights over and above its registered rights. However, for the purposes of the assessment of bad faith it does not strictly matter whether or not such rights formally did or did not exist prior to the registered rights. All that is necessary is for the Respondent to have known when it registered the Domain Name that the Complainant was or soon would be using that term in the requisite manner5 .
6.41 In the circumstances, the Panel rejects the Respondent's argument based upon paragraph 3.1 of the Overview and similarly rejects the Respondent's claim that the Complainant did not bring this claim in good faith.
6.42 Accordingly, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <theoldcourse.com> be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Dated: June 22, 2009
1 The Panel notes that there is a registered Scottish company with the name Refresh Design (Scotland) Limited and Mr Wilkinson is described in the Response as a “director” of the Respondent. However, no specific company is identified in the Response.
2 The Panel notes that it is an approach that has been adopted in other domain name ADR. For example, paragraph 13 (b) of the procedure that applies in relation to “.co.uk” domain names states:
“Any communication with us intended to be passed to the Expert which is not part of the standard process is a 'non-standard submission'. Any non-standard submission must contain as a separate, first paragraph, a brief explanation of why there is an exceptional need for the non-standard submission. We will pass this explanation to the Expert, and the remainder will only be passed to the Expert at his or her sole discretion. If there is no explanation, we may not pass on the document or information.”
3 A search of the Internet archive against the website operating from the domain name <19thholecaddy.com> also reveals webpages that carry the statement “Web Site designed by Refresh Design”. It is difficult to understand how this material can be reconciled with the Respondent's assertion that “19th Hole Caddy Limited was not and is not associated with the Respondent or [Mr] Wilkinson in any way”. However, this was not part of the evidence put before the Panel and the Panel has not sought the comments of the parties in this respect. In the circumstances, it would be inappropriate for the Panel to rely upon this material in coming to its decision in this case, and it has not done so.
4 The factual position is perhaps a little more complicated than either party suggests. Whilst the Complainant filed this mark in July 2003 it was not published until August 2, 2004 and under Article 9(3) of Council Regulation 40/94/EEC compensation can only be claimed from the date of publication. Further, the Complainant's mark seems to claim a priority stretching back to an earlier United States trade mark that does not appear to be relied upon by the Complainant in these proceedings. However, for the reasons explained in the main body of this decision it is not necessary to consider these issues further.
5 It is worth noting in this respect that not all jurisdictions recognise unregistered trade mark rights. Therefore if the Respondent's arguments were right it would lead to a situation that a complainant might fail in an allegation of bad faith registration simply because it conducts its activities in such a jurisdiction and the domain name in issue was registered prior to the complainant having registered its rights. The Panel does not believe that the Policy operates in that way. So far as possible, the concept of bad faith should be interpreted in such a way that it has its own separate meaning under the Policy and is not dependent on the laws of the country in which the complainant or respondent operates (see 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461 and Fundación Calvin Ayre Foundation v. Erik Deutsch, WIPO Case No. D2007-1947)