St Andrews Links Ltd of St Andrews, Fife, the United Kingdom of Great Britain just won control of the domain name standrews.com in a one member UDRP decision.
The decision is no surprise, the domain was parked until very recently pull up golf related links.
The only real question is why did it take the complainant 10 years to file the complaint?
Here are the relevant facts and findings from the decision:
St Andrews is a town in Scotland. It possesses several world famous golf courses, which are widely regarded as the original home of golf, where the game was first developed (possibly as long ago as the 15th century). The name “St Andrews” enjoys extremely high recognition around the world in this respect, particularly amongst golfers. One or more of the golf courses at St Andrews is named St Andrews Links – the word “links” in this context derives from old Scottish, and refers to a type of golf course found amongst sand dunes. The Complainant, St. Andrews Links Limited, is a wholly owned subsidiary of St Andrews Links Trust (the “Trust”), which was established in 1974 by an Act of the United Kingdom Parliament to assume running of the public golf courses at St Andrews Links.
The golf courses at St Andrews have hosted many famous championships and are widely regarded by the world’s top golfers as amongst the world’s great golf courses. By way of example Jack Nicklaus, the world famous golfer, wrote in the foreword to “St Andrews Links – Six Centuries of Golf” written by Tom Jarrett and Peter Mason: “St Andrews Links is steeped in the history, lore and legends of the game of golf. Indeed, for many centuries the history of the game was made on the Links… I hope that reading this book will give you a greater insight into why St Andrews Links holds such a unique place in golfers’ hearts all over the world. Just as it does in mine.”
The Complainant is the owner of numerous applications and registrations worldwide for the mark ST ANDREWS and marks comprising and incorporating the words “St Andrews” (hereinafter the “ST ANDREWS Marks”). By way of example United States trademark registration No. 2169765 (of June 30, 1998) is for the mark ST. ANDREWS having a constructive priority (filing) date of April 5, 1990 for use with Class 25 goods.
A website standrews.com has been associated with the Domain Name and has offered for sale golf related merchandise and equipment and golf related services including a booking service for the Complainant’s golf courses.
That website has conducted such activity apparently continuously from 2003 until earlier in 2013. At some stage in 2013 the previous contents of that website appear to have been removed and it presently bears a message “This site is in hibernation and is currently inactive”.
“St Andrews” is a Scottish place name and as such is clearly a term capable of having a number of meanings, for example in relation to the town itself, or other organizations associated with the town, for example the famous Scottish University of the same name located in the town. In such circumstances it may well be that there are other entities or organizations in existence which could claim rights or legitimate interests in that name. However, in the present case there is no evidence to suggest that the Respondent has any independent rights in the name.
Indeed the evidence clearly indicates that the Domain Name was selected by the Respondent because of its association with the Complainant and as part of a plan to offer golf related products and services at a website associated with the Domain Name.
A wealth of evidence has been filed showing the use the Respondent has made of the term, all of which is clearly intended to convey a reference to golf and the golf related business of the Complainant or its parent. By way of example (one amongst many) at one stage the title bar to the Respondent’s web page referred to ““St Andrews – The home of golf, golf packages, golf vouchers, golf gifts, golf products…”
The Complainant has prior rights in the ST ANDREWS Marks which precede the Respondent’s registration of the Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Domain Nam
In the present circumstances, the distinctive nature of the ST ANDREWS Marks, and the evidence as to the extent of the reputation the Complainant enjoys in the ST ANDREWS Marks, and the identical nature of the Domain Name to the ST ANDREWS Marks, and the lack of any explanation from the Respondent as to why it registered the Domain Name lead the Panel to conclude the registration and use was in bad faith.
In the present case, the Panel concludes the Respondent was aware of the Complainant’s ST ANDREWS Marks when it registered the Domain Name.
The Panel concludes that the Respondent selected the Domain Name because of its identity with the Complainant’s ST ANDREWS Marks and as part of a plan to establish a website offering for sale golf related products and services in a manner which suggested such offer was by, or was authorized by or connected with, the Complainant.
Further, the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have.
The Panel infers that none exists.
Two further matters merit discussion. As indicated above whilst the Panel concludes that the Respondent has no legitimate interest in the name “St Andrews” it may well be that there are other entities or organizations which could claim such an interest.
Nothing in this Decision by this Panel should be taken to involve any determination as to the respective rights of the Complainant and any such entity.
Second, the Panel notes that the use complained of in this Complaint has been going on for a very considerable time, namely since 2003.
The Panel has been furnished with no detail of whether or not such use has been the subject of earlier complaint of any type.
As a general rule, previous UDRP panels have recognized that the doctrine or defense of laches as such does not apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements.
There are however some circumstances where laches may be a relevant consideration, although these will inevitably be fact specific.
In the present case, where the Respondent has not availed itself of the opportunity it has been provided with to submit a Response, the Panel declines to find that any relevant laches related issues need to be considered.