ngf.com successfully defended at NAF – PPC is a bona fide offering of goods or services

A three-member Panel denied the UDRP complaint for the domain name ngf.com. Complainant was the National Golf Foundation, Inc. and Respondent was Mediablue, represented by Ari Goldberger of ESQwire.com Law Firm.

The Complaint was submitted to the National Arbitration Forum on July 18, 2012. Pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Kyung Jik Kwak (Chair), The Honourable Neil Anthony Brown QC and Carol Stoner, Esq. as Panelists for the three-member Panel.

Complainant is a nonprofit corporation that conducts surveys of members of the golf industry to collect information and prepare various reports based on that information. Complainant is primarily known in the U.S. and holds “NGF”  trademarks registered with the Principal Register of the United States Patent and Trademark Office (USPTO) on November 8, 2005 and September 16, 2008. This was the first UDRP complaint for the National Golf Foundation, Inc.

Respondent registered the ngf.com domain name on July 28, 2005. Respondent registers common word domain names and combined letter domain names for investment and development. Respondent uses ngf.com to host a parking service, which is a pay-per-click website that features hyperlinks to various sites based on keyword advertising inventory and user search behavior.

The Panel found that Complainant’s trademark registrations with the USPTO were valid proof of Complainant’s rights in the mark NGF and that the ngf.com domain name was identical to Complainant’s NGF mark. So the first element of the UDRP (Identical and/or Confusingly Similar) was satisfied.

The Panel then found that Respondent has rights or legitimate interest in ngf.com. So the Complainant failed at the second element of the UDRP. The Panel said that while Respondent is not commonly known by the ngf.com domain name nor can Respondent claim noncommercial or fair use in this case, “NGF” is a combination of three letters, a common acronym that many different companies use and that has many different meanings. Respondent is in the business of registering common word domain and combined letter domain names for investment and development and ngf.com is one of these common word/combined letter domain names that it chose to register for this business. Because ngf.com displays hyperlinks that vary based on keyword advertising, inventory and user search behavior, some hyperlinks displayed are related to the golf industry while others are totally unrelated to golf. The hyperlinks displayed on ngf.com that were related to the golf industry were not of the type Complainant’s NGF trademarks are registered for, nor for the type of service Complainant provides. Complainant is a private industry and lobby group, and its NGF trademarks are accordingly registered for conducting business research and surveys for the golf industry and for association services, such as promoting the interests of golf enthusiasts, etc. The type of golf-related hyperlinks on ngf.com are for golf lessons or related goods and services. Based on the above, the Panel found that Respondent was making a bona fide offering of goods or services under Policy ¶ 4(c)(i).

Because the Panel found that Respondent had rights or legitimate interests in the ngf.com domain name, there was no need to further analyze whether the Respondent registered or is using the disputed domain name in bad faith. However, the Panel found no evidence that Respondent was aware of Complainant’s rights to the NGF mark. Considering that knowledge of Complainant is more or less limited to the U.S., especially more so at the time of registration of the ngf.com domain name, knowledge cannot be inferred for Respondent who resides in South Korea. It was thus the conclusion of the Panel that Respondent did not register the ngf.com domain name in bad faith.