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Troubling Decision: 19 Year Old DesertGolf.com Lost In UDRP To DesertGolfer.com
#1
WEDSDAY,7 January 2015 THE DOMAINS

According to the news from Domain Forum of China on January 7th,we are only into the first few days of the year we have what I consider to be first horrible UDRP decision of 2015.

A one member UDRP panel decision handed by by the National Arbitration Forum by Richard DiSalle as Panelist gave the domain name DesertGolf.com to the owner of the domain DesertGolfer.com

The Complainant Pade Publishing, LLC, who has since 2001, published “Desert Golf & Tennis, a luxury magazine illustrating golf and tennis lifestyles and activities. Complainant uses the domain name desertgolfer.com for its primary website. Complainant registered the desertgolfer.com domain name on July 19, 2001.

The Complaint says the ‘ desertgolf.com domain name is confusingly similar to the DESERTGOLFER.COM mark as the domain name merely removes the “e” and “r” from the mark.’

Here’s the problem as we see it.

The domain name DesertGolf.com was registered in 1995 or a about 6 years before the Complainant even started publishing its magazine and registered its domain name DesertGolfer.com

The Complaint registered for a federal trademark on the term Desert Golfer in 2001, which was still 6 years before the DesertGolf.com domain was registered.

In any event the Complainant abandoned his trademark before this UDRP was filed.

So the panel awarded to the domain name DesertGolf.com based on a common law trademark on the term Desert Golf

Moreover the panelist didn’t really consider the fact that “Desert Golf “is a generic term in and of itself, making the decision that much worse.

“While Complainant has not provided trademark registration to demonstrate Policy ¶ 4(a)(i) rights in the subject mark, the Panel notes that such registration is not necessary to satisfy this prong of the Policy if Complainant can demonstrate common law rights in the mark.”

Complainant claims it has published Desert Golf & Tennis, a luxury magazine illustrating golf and tennis lifestyles and activities since 2001, that it uses the domain name desertgolfer.com for its primary website, and that this domain name was registered July 19, 2001.

Complainant has submitted evidence of the desertgolfer.com registration.

This evidence is sufficient to show that consumers identify DESERTGOLFER.COM as the source of Complainant’s magazine and related offerings, dating back to 2001.

Complainant argues that the desertgolf.com domain name is confusingly similar to the DESERTGOLFER.COM mark as the domain name merely removes the “er” from the mark.

Prior panels have determined that minor alterations such as the removal of letters from an otherwise incorporated mark fail to dispel confusing similarity.

Accordingly, the Panel finds that the desertgolf.com domain name is confusingly similar to the DESERTGOLFER.COM mark pursuant to Policy ¶ 4(a)(i).

Complainant contends that Respondent has not used the disputed domain name for any legitimate commercial purpose. The Panel determines that Respondent has not put the disputed domain name toward a protected use, and finds Respondent’s inactivity indicative of Respondent’s lack of rights in the subject domain name.

Alternatively, the Panel determines that Respondent’s links are related to or compete with Complainant and therefore finds that such competing use shows Respondent is making no bona fide offering of goods or services, or any legitimate noncommercial or fair use of the domain name. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007).

To further demonstrate Respondent’s lack of rights, Complainant asserts that Respondent has refused to sell the domain name for $50,000, per Complainant’s request.

The Panel declines to address this issue.

Complainant does allege that as years passed and Respondent observed Complainant’s commercial success, Respondent subsequently re-registered desertgolf.com with the express purpose of capitalizing on Complainant’s success, and leverage what Respondent observed to be a need to acquire Respondent’s domain desertgolf.com.

The Panel agrees that the present circumstances are so extraordinary as to warrant consideration of Complainant’s re-registration argument that Respondent’s use of the disputed domain name to feature links such as “Spa Vacations,” “California Golf,” and “Course Tee Times” is in competition with Complainant, and therefore disrupts Complainant’s own offerings in violation of Policy ¶ 4(b)(iii).

We therefore conclude that Respondent is acting in bad faith.”

Horrible case, I hope the domain holder files suit in Federal Court to stop the transfer
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