In a WIPO decision handed down today, the sole panelist found that Bob Pflueger could keep this family domain, Pflueger.com despite the fact that the complaint held a trademark on this term since 1908.
Here are the edited facts and highlights of the decision:
“The PFLUEGER marks and trade name have achieved widespread recognition and secondary meaning as a result of Complainant’s extensive advertising and promotion. In the years 2006, 2007 and 2008, Complainant spent USD 1.3 million, USD 1.5 million and USD 1.15 million respectively promoting its Pflueger products.”
“Complainant’s website is “www.pfluegerfishing.com”. Last year, Complainant’s website received 252,521 visitors from January 1, 2009 to December 31, 2009. As one indication of the strength of the mark PFLUEGER, a search on the Web search engine “www.google.com” for the words “Pflueger” and “fishing” returns approximately 108,000 results, of which the first five pages refer to “Pflueger” in the trademark sense as a mark that identifies Complainant and/or Complainant’s products.”
The complainant alleged that “Until Complainant began this proceeding, Respondent used the Domain Name to link to “www.fishusa.com”, which offers products that compete directly with Complainant. ”
“After Respondent received notice of this action, Respondent removed the improper link. However, the UDRP action is decided based on the website as it existed when the Complaint was filed. Respondent will likely argue that because his last name is Pflueger he has a legitimate right to the Domain Name. Merely claiming to be known by the name “Pflueger” is not sufficient. Respondent must show he has a right to use the Domain Name in connection with fishing reels, tackle and related equipment. He is not likely to be able to do that.”
“Bob Pflueger is an individual and he is one of at least 192 individuals named “Pflueger” in the United States. He owns the <pflueger.com> domain name that he purchased on August 14, 1996.
Bob Pflueger created the website as a family photo album. Bob Pflueger’s first use of the Domain Name can be found on the Internet Archive’s Wayback Machine on April 17, 1997. It was a display of family photos.
The original website dated April 17, 1997 contained a disclaimer: “**Please note that this web page is not affiliated with Pflueger Corporation (the fishing rod people). You may still send us email, but we probably can not help you.” The website was amended on April 8, 2000. This too can be found on the Wayback Machine. The new disclaimer said: “Type me a message … but NOT about Pflueger fishing stuff. It does not take a genius to figure out this site has nothing to do with fishing.”
Occasionally people (other than family members) discover the “www.pflueger.com” website. Rather than insulting them and telling them that they are something less than a genius for thinking that there is a connection between <pflueger.com> and <pfluegerfishing.com>, Respondent thought it best to direct the consumers back to Pflueger fishing. Because the “www.pfluegerfishing.com” website is not an Internet retail store there was no reason to send them to it. The paid Internet advertising and retail store for Pflueger fishing is “www.fishusa.com” so Bob Pflueger referred people outside his immediate family to them.”
“Bob Pflueger has a legitimate interest in the Domain Name because his name is Bob Pflueger. Bob Pflueger purchased the Domain Name in good faith and has used it to post family photos. Bob Pflueger has used disclaimers and referrals in good faith to send non-family members away from his website. Complainant does not have the exclusive right to use the name Pflueger.”
The panel found that Respondent has established that his surname is “Pflueger” and it appears to the Panel that he registered the Domain Name to identify a website about him and/or his family
The use of one’s own surname in a domain name is in accordance with a legitimate customary practice and is, as a rule, sufficient evidence of a right or legitimate interest in the domain name. The scope of the Policy is limited to cybersquatting. Trademark owners shall not be allowed to use the Policy to dispossess summarily a third party of a domain name reflecting his or her surname.
“”Complainant claims that until it began this proceeding, Respondent used the Domain Name to link to “www.fishusa.com”, which offers products that compete directly with Complainant. Evidently, at some point in time Respondent had on the webpage associated with the Domain Name the text: “Hello, this is pflueger.com . . . Find special discounts at this website:”. What follows the colon is a text box having in it a logo for “FishUSA.com” with the following slogan underneath it: “AMERICA’S TACKLE SHOP” and to the right of the logo/slogan, the text: “WEEKLY SPECIALS CLICK HERE” Outside and under the text box is the text: “Send email to email@example.com.”””
“”Complainant suggests that Respondent was deriving commercial benefit (i.e., click-through fees) from having the “CLICK HERE” link to the “www.fishusa.com” website and argues that Respondent could not be making a legitimate noncommercial or fair use of the Domain Name. Respondent maintains that he used disclaimers to inform the public his site was not associated with Complainant and inserted the text box described above to direct consumers to what he believed was the Internet retail store for “Pflueger Fishing” – Fish USA – because Complainant does not sell its products directly from its website. In this regard, Respondent claims he did not intentionally divert customers away from “Pflueger Fishing.”””
“”Looking at Respondent’s webpage alone, it is not entirely clear to the Panel exactly what Respondent had in mind by using the text box with the “CLICK HERE” link, but the Panel is not convinced it was to obtain click-through fees. Furthermore, based on all of the evidence of record, including Respondent’s webpages from August 1996 and April 2000 described above, the Panel is not convinced that Respondent has been using the Domain Name with intent for commercial gain (by click-through fees or otherwise) and to misleadingly divert consumers away from Complainant’s website. Rather, it appears to the Panel that Respondent was using the Domain Name on a personal website intended for familial purposes and tried to avoid, rather than encourage, any diversion of consumers away from Complainant’s website.”””
“”For the aforementioned reasons, the Panel finds that Respondent succeeded in proving that he has rights or legitimate interests in the Domain Name.””