ESPN, Inc. v.
Domain For Sale
Claim Number: FA0110000100494
PARTIES
Complainant is ESPN, Inc., Bristol, CT (“Complainant”). Respondent is Domain For Sale, Obninsk, Russia (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <greatoutdoorgames.com>, registered with IA Registry.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 8, 2001; the Forum received a hard copy of the Complaint on October 8, 2001.
On October 15, 2001, IA Registry confirmed by e-mail to the Forum that the domain name <greatoutdoorgames.com> is registered with IA Registry and that Respondent is the current registrant of the name. IA Registry has verified that Respondent is bound by the IA Registry registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 16, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 5, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@greatoutdoorgames.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On November 21, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The <greatoutdoorgames.com> is confusingly similar to Complainant's mark.
Respondent has no rights or legitimate interests in the disputed domain name.
The disputed domain name has been registered and used in bad faith.
B. Respondent
Respondent has failed to submit a Response.
FINDINGS
Complainant, ESPN, has used the mark GREAT OUTDOOR GAMES since 1999 in relation to the staging and telecasting outdoor sports events. Complainant has expended substantial sums of money in order to promote the GREAT OUTDOOR GAMES mark. Complainant has registered the mark as a service mark in both Connecticut and New York. Complainant has applied for six trademark registrations from the United State Patent and Trademark Office.
The GREAT OUTDOOR GAMES mark has been used for activities related to the broadcast and staging of events on the Internet as well as on merchandise. Previously one of these related activities was the presentation of information about the Great Outdoor Games via the Internet at <greatoutdoorgames.com>. In September of this year, due to registrar negligence Complainant lost the domain name to Respondent.
Respondent registered the disputed domain name on September 18, 2001. Respondent is using the disputed domain to redirect Internet users to a pornographic website. Respondent is also offering the domain name for sale.
DISCUSSION
Paragraph
15(a) of the Rules instructs this Panel to “decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or
Confusingly Similar
Complainant, through use and state registration has established that it has rights in the GREAT OUTDOOR GAMES mark. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a Respondent operates. It is sufficient that a Complainant can demonstrate a mark in some jurisdiction); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that complainant has a bona fide basis for making the complaint in the first place).
Furthermore, Respondent's <greatoutdoorgames.com> domain name is identical to Complainant's mark. The addition of a top-level code such as ".com" or ".org" is insufficient to defeat a claim of identical or confusing similarity. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “net” or “com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or
Legitimate Interests
Respondent has failed to come forward with a response and therefore it is presumed that Respondent has no rights or legitimate interests in the <greatoutdoorgames.com> domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a response, the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <greatoutdoorgames.com> domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Respondent has linked the disputed domain name to direct Internet users to a pornographic website. It has been found that this type of use does not create rights or legitimate interests. See National Football League Prop., Inc., et al. v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent has no rights or legitimate interests in the domain names "chargergirls.com" and "chargergirls.net" where the Respondent linked these domain names to its pornographic website); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well known mark to provide a link to a pornographic site is not a legitimate or fair use).
Because Complainant
previously owned the domain name and displayed materials relating to its sports
event at <greatoutdoorgames.com>,
it can be inferred that the Respondent had
knowledge that the disputed domain name previously belonged to Complainant, and
therefore that Respondent would not have rights or legitimate interests in the
domain. See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA
95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration
of the same domain name is a factor in considering Respondent’s rights or
legitimate interest in the domain name).
Furthermore, it can be inferred that Respondent registered the disputed domain name with the primary intent to sell it, because <greatoutdoorgames.com> was immediately put up for sale on Respondent's website. See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Respondent has used the <greatoutdoorgames.com> domain name to redirect Internet users to pornographic websites. The use of a confusingly similar domain name in relation to pornographic websites is evidence of bad faith. See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that association of confusingly similar domain name with pornographic website can constitute bad faith).
The <greatoutdoorgames.com> domain name is confusingly similar to Complainant's mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Registration of the <greatoutdoorgames.com> domain name despite confusing similarity is evidence of bad faith. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
Furthermore, it can be inferred that Respondent registered the disputed domain name primarily for sale because Respondent has not used the disputed domain name for any legitimate purpose and put the disputed domain name up for sale immediately on its website. Furthermore, from the fact that Respondent chooses to identify itself as Domain For Sale one can infer that Respondent is in the business of selling domain names. See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding “the fact that the manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name”); see also Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy, the Panel
concludes that the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the domain name <greatoutdoorgames.com> be
transferred from Respondent to
Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: November 27, 2001
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