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
You nailed it, Mike. This is a horrendous decision as the simple facts recounted by the panelist make it clear that the domain was not registered in bad faith, and that the domain owner had put it to a legitimate use. As you say, I hope the domain owner files in court to prevent the transfer.
Michael-as a rule I agree with you but not here. I know Tim Pade-complainant-very well. In my opinion what you have here is a “common law” ruling-not much different to other common law. I see both sides here but I also see why they came down on Tim’s side. Every month for 15 years this guy puts out an exceptional magazine -using his domain-upon which “dertgolf.com” rode on the back of. Desertgolf.com should have taken Tim’s $50,000 offer. I agree with you that “desert golf” is probably a generic term but in my view-right or wrong-they gave Tim Pade the benefit due to “use”. Thanks for such an interesting post.
@london555
Michael is right imo. Despite “common law” the domain meaning of those 2 generic words still doesn’t give complainant the right. They’re too generic for an exclusive right claim on top of the respondent using it for advertising links to golf related vacations (etc) which is the part of the meaning in the domain itself. I’m curious to see how this would hold up in a court in case respondent decides to do so.
@london555 The UDRP is notm intended for “Common Law” rights enforcement, it WAS intended for clear cut cybersquatting but has morphed into “get domains without paying for them” .
He offered to pay them $50,000-not “get a domain without paying”.This was a “piggy bank on success” situation and The UDRP saw through it. Thank you for your reply to my post.
Who offered to pay $50,000 to who ?
The winning party ,Pade, had offered to pay $50,000-an exceptionally fair price.
Ah ok thanks. In that case IMHO it makes it an even worse decision. Suely the Complainant prejuiced its position by making a Commerc ial offer and then crying because the Respondent did not want it. The trouble nowadays is that the Lawyers are abusing ths UDRP and are Bringing/Brought it into disrepute. They get paid and they tell clients “give UDRP a go and might win might lose” and then crap panelists like in this case rule in their favour. Thi is NOT what UDRP was intended for when it was brought in
very bad decision and shame on Richard DiSalle as the duped jurist.
This should have resulted in a decision of reverse domain hijacking.
This decision is clearly wrong. If you ask me what “desert golf” is I would tell you one of my favorite courses in Arizona, California or Nevada. Most likely in Scottsdale, Arizona.
The defendant still has time to file a federal lawsuit against the complainant and should do so within 10 days of the decision in such a poor decision. Even more, UDRP panelists should have some skin in the game. Shame on Richard DiSalle. And shame on the defendants for not opting for a 3-member panel as well. Just another example of UDRP theft and poor administration.
I agree, if there is already a $50k offer on the table you pay the extra $3000 and defend yourself. Registrant did not play this well at all.
A cursory search on the panelist’s age shows he was 78 in 2005. Hmm.
You have stated in article “which was still 6 years BEFORE the domain DesertGolf.com was registered” . End quote.
Maybe that can be corrected because of course it is 6 years AFTER the domain was registered. All in all anyway a totally rubbish decision and one wonders where all this UDRP injustice is going to end. Maybe Google will be bought out and upon change of ownership owners of “googles.com” will have claim under UDRP for the domain “google.com” .Where will it all end and how safe is your domain ?. Mad. I do hope the owner of the DesertGolf.com will take to Court.
The Domain was registerered 6 years BEFORE the trade mark was applied for, not the reverse as article suggests.
A couple of points are worth noting here.
The domain name cannot have been registered to the Respondent since 1995. The Respondent, Desert Resorts Inc., was established in 2004, according to the Nevada Secretary of State business entity database, and has had its corporate status revoked:
Status: Permanently Revoked
File Date: 12/3/2004
Type: Domestic Corporation
Entity Number: C32411-2004
DomainTools WHOIS history indicates the domain name had been previously registered to some other party prior to the Respondent’s registration of it. The principal of the prior registrant appears to have been an officer of the
Be that as it may, there are at least three parties who have filed for federal registration of marks comprising the term “Desert Golf”, which have either been refused registration on the Principal Register, and amended to the Supplemental Register as descriptive (not generic). The figurative ones have all been required to disclaim the operative words. Typical of these is now-lapsed US TM Reg. 3013555 to High Desert Golf Inc., which disclaims the entire phrase “HIGH DESERT GOLF OF PRESCOTT”; and US TM Reg. 2622386 to Desert Publications Inc. for “DESERT GOLF & TENNIS GUIDE” and design, which was relegated to the Supplemental Register.
It’s tough to judge the decision absent a look at the filings in the case, which frequently do not address the operative issues.
John-thank you for posting this- very informative.
I don’t think the decision was incorrect at all. I think this is a case of a registrant who played his hand wrong. If you own “desertgolf” then you put up an instructional how to play golf in the desert and you make sure that there is no content related to desertgolfer and add a notice above the fold that you have no affiliation with that brand. Notice that the panelist mentioned RENEWAL and not registration. This is what the UDRP process has wanted to start using for years. Content played a huge factor in this ruling obviously. Its a reminder to us all to watch your content. Every ruling that I have seen recently ignite a domainer uproar had some element of having ‘similar or complaintant related’ content that was a deciding factor for a panelist. You can be confusing in name, but if you don’t have content that strongly differentiates your site with theirs above the fold it’s going to be impossible to establish fair use and legitimate rights. Be prepared for it, they have been brainstorming on this in 2014; looks like it’s being put into action.
@appyum But then on the UDRP I lost there was NO commercial content at all, and still they found bad faith. They will find bad faith even if there is none, somehow ,someway.
It’s sad to say, but they bend paragraph 4 now so that it almost feels like paragraph 2 of the UDRP. It’s a pain, but at the time of any renewal you almost have to treat the domain like you are buying it for the first time and do your due diligence. Which is almost impossible for portfolio owners with over 5k domain holdings. I’ve been told I give too much weight to the UDRP process, but look at this case; I would rather be caught with my gloves up than my pants down.
Do you mean, “after?” I have to read and reread to try to understand.
Interesting trivia: Michael Castello owned DesertGolf.com to start. Wonder if he sold it to Desert Resorts, or how he could have let it expire . . .
Congrats, @ Tim Pade. Though I take exception to the language
, Desert Resorts capitalized on DesertGolfer’s reputation to the extent it was infringement.
Nice work Louise. Jeff Taylor used to own desertgolf.com and desertresorts.com. Back in 1997 desertgolf.com dropped and I picked it up. Since Jeff was an acquaintance, he called and asked me to give him the name back, which I did.
Wow! You were picking up dropped domains back in ’97. Was Namejet around, then? Or, it WAS a hand reg of an expired domain.
I thought, since you had PalmSprings.com , you might have registered a few around that topic.
Yes, I was watching a lot of names that related to the generic ones I previously registered like PalmSprings.com. There were no companies back then that managed dropped names. I just waited and grabbed them.
Did you check the whois to see if it was free? Or were there lists back then?
My brother made me take courses in html and web development in 1997, but I had little to no idea about domain names . . . $70.00 in one shot was a lot for a student.
I used telnet to search the INternic whois. A name that expired went “on hold” for a brief period with a date of release. The cache for new registrations was about a week. So the trick back then was to try to register the dropping name a week in advance. A week later I would get an email letting me know I got the name.
Good on you being the nice guy, offering DesertGolf.com to the person who allowed it to drop! I wouldn’t have . . .
Domain registrations were for two years back then, right? Funny they were dropping and investors were looking, when the IANA administered domains, before ICANN took over in 1998.
FORE…
;P