Eastbay Corporation v. VerandaGlobal.com, Inc.
Claim Number: FA0203000105983
Complainant is Eastbay Corporation, New York, NY (“Complainant”) represented by Melissa L. Klipp, of Drinker Biddle & Shanley LLP. Respondent is VerandaGlobal.com, Inc., Clearwater, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <finalscore.com>, registered with Tucows, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge, have no conflict in serving as Panelists in this proceeding.
Panelists are Richard Page, Esq., Alan Limbury, Esq., and Judge Karl V. Fink (Ret.) as Chair.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on March 22, 2002; the Forum received a hard copy of the Complaint on March 25, 2002.
On March 22, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <finalscore.com> is registered with Tucows, Inc. and that the Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 March 25, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 15, 2002 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on April 15, 2002.
Complainant made a timely additional submission entitled Supplemental Statement of Complainant, which was received April 19, 2002. Respondent submitted a timely additional submission entitled Supplemental Response By the Respondent and an Amendment to the Supplemental Response, which were received April 24, 2002.
In addition, Complainant made a timely additional submission entitled Additional Statement of Complainant, which was received on April 24, 2002.
All of the submissions referenced above were considered by the Panel.
After the deadline for submissions, Respondent made an additional submission entitled Additional Supplemental Statement By the Respondent. Because it was untimely, it was not considered.
On April 29, 2002, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed as Panelists: Richard Page, Esq., Alan Limbury, Esq., and Judge Karl V. Fink (Ret.) as Chair.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Eastbay owns and holds the rights to the FINAL SCORE mark. The FINAL SCORE mark has been registered in the United States with the Patent and Trademark Office, and has reached “incontestable” status.
Since 1993, Eastbay has used the distinctive FINAL SCORE name and mark on catalogs in connection with the sale and advertisement of athletic footwear, equipment, and apparel. Eastbay has invested over a million dollars into producing and distributing the FINAL SCORE catalogs, and building Eastbay’s Reputation, goodwill, and brand recognition.
On or about May 19, 1997, years after Eastbay’s first use of the FINAL SCORE mark, the Respondent registered the domain name <finalscore.com>.
Respondent has no connection or affiliation with the Complainant, and has received no license or consent, express or implied, to use the trademark in a domain name or in any other manner.
As of the date of the first Cease and Desist letter, upon typing in the <finalscore.com> domain name, an Internet user was directed to Respondent’s <Firstplace.com> Web page. The page featured a “Sports” catalog under which it provided links to various Web sites including: <soccer.com>, <golfballs.com>, GORP outdoor recreation, and <collectibles.com>. The <soccer.com> Web site sells athletic apparel and equipment – the very same items offered using the FINAL SCORE mark.
Currently, when an Internet user clicks on the “Sports” category link, the user is brought to a page that features advertised links to various Web sites. Some of the recent links include retailers, which compete with, or are unsavory associations for, Eastbay.
Complainant’s attorneys issued a Cease and Desist letter via certified mail, facsimile, and e-mail to the Respondent regarding the <finalscore.com> domain name on October 18, 2001. On January 3, 2002, Complainant’s attorneys issued a follow-up Cease and Desist letter to Respondent via facsimile and e-mail.
After other correspondence, on January 13, 2002, the Respondent stated that it would not cease and desist.
Given the fame of the FINAL SCORE mark, any consumer finding a domain address consisting of the “FINAL SCORE” name would expect the site to be sponsored by, or affiliated with Eastbay, but no such affiliation exists.
Respondent has no legitimate interests in the <finalscore.com> domain name and has not lawfully used the mark to offer goods or services prior to the notice of the dispute. Respondent is using the domain name to intentionally divert Internet users to its <Firstplace.com> Web site for its own commercial gain.
Respondent does not call its site “FINAL SCORE” nor does it use those words anywhere in the content of its Web site.
Respondent’s actions are an attempt to interfere with Complainant’s online identity and to prevent Complainant from owning the domain name.
Respondent is purposely creating confusion because when a user types in the <finalscore.com> domain name, instead of finding one of Complainant’s official sites, the user is redirected to the <Firstplace.com> Web site.
The fact that the Respondent provided false information in its WHOIS registration supports a finding of bad faith.
The Complainant does not have exclusive rights to the domain name at issue.
VerandaGlobal.com Inc. has no association whatsoever with the Complainant’s business, and makes no representations of any connection with the Complainant with its use of the generic <finalscore.com> domain name.
The Complainant’s own corporate websites of <Eastbay.com> and <Footlocker.com> employ neither terms “final score” nor “finalscore”, or its print-catalog by that name anywhere on its homepages.
The submitted Complaint is devoid of any evidence the Complainant has Internet usage of the “finalscore” term associated with catalogs featuring athletic equipment and clothing.
The Complainant had at least 10 years to register relevant domain names. If the <finalscore.com> domain name was so confusing to the Complainant, the Complainant could have registered the domain name at issue.
The Complainant provided no evidence to support a claim of “famous” in the generic final score mark. The registered US mark #74706007, registered by Dorothy E. and Charles J. Rausa, pertaining to “sports bar and restaurant activities” is the exact same generic “final score” phrase as the Complainant’s, and was successfully registered well after the Complainant’s mark.
The Respondent had never heard of the Complainant’s use of the generic term “final score”.
C. Additional Submissions
The FINAL SCORE trademark has achieved registration on the Principal Register and reached incontestable status. Thus, by definition, the mark cannot be generic. See 15 U.S.C. 1065 (4) (stating no “incontestable right shall be acquired in a mark which is the generic name for the goods or services or a portion thereof, for which it is registered.)
Eastbay’s exclusive ownership and right to use the FINAL SCORE mark in its identified field is established through its registration and continuous use. Federal registration provides constructive notice to all other parties including the Respondent, of Eastbay’s rights and ownership of the FINAL SCORE mark.
Immediately upon discovering Respondent’s misuse of its FINAL SCORE mark, Eastbay took appropriate action. WHOIS records indicated that Respondent only registered the <finalscore.com> domain name in 2000.
Eastbay need not establish exclusive rights in the FINAL SCORE mark to recover the domain name.
By reason of Eastbay’s long and continuous use of the FINAL SCORE mark, Eastbay has established secondary meaning and fame in its mark.
The <finalscore.com> domain is designed to divert Internet traffic. If one of the million subscribers of the FINAL SCORE catalog wanted to determine if Eastbay offered the FINAL SCORE catalog online, he or she would likely type in the <finalscore.com> domain name. A Respondent has no rights or legitimate interest in a domain name when it uses the domain name to divert Internet users to Respondent’s unaffiliated Web site.
Respondent is a multi-national domain name re-seller with a vested interest in the ability to register others’ trademarks as domain names. A search for <VerandaGlobal.com> identifies the company as a TUCOW, Inc. domain name reseller, offering domain names in Arabic and Hebrew.
Respondent’s various domain names, including <finalscore.com> are merely directing Internet traffic to Respondent’s advertisements and virtual shopping mall. This is particularly true of the <finalscore.com> domain name – the <firstplace.com> Web site has nothing to do with sports scores. The site offers links to sites selling athletic apparel in direct competition with Eastbay’s FINAL SCORE catalog.
Respondent has never heard of the Complainant’s final score catalog and neither has the Internet Community. The generic and descriptive <finalscore.com> domain name was registered and used with a clearly bona-fide and legitimate service purpose long before any notice of this complaint. The previous-year click-through data show Internet users using the very efficient trademarked <FirstPlace.com> search tool to find final scores, healthy food, health advice etc.
The Complainant shares the usage of the “final score” term with other trademark holders.
FirstPlace is a trademark of the Respondent and the <FirstPlace.com> website serves as an Internet search portal for the <finalscore.com>, <healthyfood.com> and <healthadvice.com> domains similar to the way YAHOO! Uses <lookup.com> and Amazon.com uses the <bestseller.com> domains.
US Law does not state all trademarks are automatically exclusive and automatically possess secondary meaning beyond their governing qualifiers and modifiers.
For the reasons set forth below, the Panel finds Complainant has not proven that the domain name should be transferred.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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
The Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s mark. See 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 removal of spaces from the mark is insignificant to the determination of whether the domain name and mark are identical, as spaces are not permitted in domain names; similarly, the addition of “.com” is not relevant as the use of a generic top-level domain such as “.com” is required of domain name registrants. See Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES); see also World Wrestling Fed’n Entm’t, Inc. v. Rapuano, DTV 2001-0010 (WIPO May 23, 2001) (finding that the <worldwrestlingfederation.tv> domain name was identical to Complainant’s WORLD WRESTLING FEDERATION mark).
Complainant has proven this element.
Rights or Legitimate Interests
Respondent may fairly use descriptive or generic terms as a commercial domain name. See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”).
Respondent is using the disputed domain name as a portal to a commercial website <firstplace.com>, which features various advertisements and links, including advertised links to various websites. The Panel finds that Respondent, before notice of the dispute, has used the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
Respondent having registered and used the term “final score”, a common descriptive and generic expression, in the domain name, has rights in the name. See FreedomCard, Inc. v. Kim, D2001-1320 (WIPO Jan. 20, 2002):
“Were the trademark a well-known invented word having no descriptive character, these circumstances would shift the onus to Respondent to demonstrate its rights or legitimate interest in the disputed domain name: Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) and the cases there cited. But the mark FREEDOM CARD is a common generic expression in which the Complainant cannot have exclusive rights”.
Complainant has not proven this element.
Registration and Use in Bad Faith
Complainant has provided no evidence that its mark is so famous Respondent is presumed to have knowledge of it. There is no evidence that the name was registered and used in bad faith.
Complainant has not proven this element.
For the reasons stated above, since Complainant has not proven the necessary elements, the relief requested by Complainant is denied.
Judge Karl V. Fink (Retired),Chair
Alan Limbury, Esq.
Richard Page, Esq.
Dated: May 20, 2002
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