The Buffalo Bills, Inc. v. Official
Merchandise, Inc.
Claim Number: FA0206000114523
PARTIES
Complainant
is The Buffalo Bills, Inc., Orchard
Park, NY (“Complainant”) represented by Michael
Schiavone, of Lipsitz, Green,
Fahringer, Roll, Salisbury & Cambria LLP. Respondent is Official
Merchandise, Inc., Clearwater, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <ralphwilsonstadium.com>,
registered with VeriSign, Inc.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 7, 2002; the Forum received a hard copy of the Complaint
on June 10, 2002.
On
June 18, 2002, VeriSign, Inc. confirmed by e-mail to the Forum that the domain
name <ralphwilsonstadium.com>
is registered with VeriSign, Inc. and that Respondent is the current registrant
of the name. VeriSign, Inc. has
verified that Respondent is bound by the VeriSign, 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
June 18, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 8,
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 postmaster@ralphwilsonstadium.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
July 15, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <ralphwilsonstadium.com>
domain name is identical to Complainant’s registered RALPH WILSON STADIUM
mark.
2. Respondent does not have any rights or
legitimate interests in the <ralphwilsonstadium.com> domain name.
3. Respondent registered and used the <ralphwilsonstadium.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant holds Service Mark Reg. No.
2,412,250 for the RALPH WILSON STADIUM mark as listed on the Principal Register
of the U.S. Patent and Trademark Office (“USPTO”). Complainant’s mark was
registered on December 12, 2000; the first use of the mark was December 18,
1998. Registration of the RALPH WILSON STADIUM mark was issued to Complainant
with the consent of Mr. Ralph Wilson, beneficial shareholder of Complainant
since 1959, the year of the Buffalo Bills professional football team’s
inception.
Complainant is the owner and operator of
the Buffalo Bills professional football team, which has, since 1973, played its
home games at what is now Ralph Wilson Stadium in Buffalo, New York. The name
of Complainant’s stadium was changed from “Rich Stadium” to “Ralph Wilson Stadium”
in 1998.
Respondent registered the <ralphwilsonstadium.com>
domain name on March 1, 1999. Complainant’s investigation has revealed that
currently, there is no operational website located at the subject domain name.
More than three years after the registration of the disputed domain name,
Respondent has not made any use of <ralphwilsonstadium.com>.
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 and draw such
inferences it considers appropriate pursuant to paragraph 14(b) 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; and
(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.
Complainant commenced use of the RALPH
WILSON STADIUM service mark in interstate commerce in connection with the
operation of the aforementioned stadium facility on December 31, 1998.
Although Complainant did not obtain its
service mark registration until after Respondent registered the disputed domain
name, Complainant’s first use of the RALPH WILSON STADIUM mark pre-dates
Respondent’s registration of the <ralphwilsonstadium.com> domain
name. Thus, for the purposes of this proceeding, Complainant had prior common
law rights in the RALPH WILSON STADIUM mark. Complainant’s rights in its common
law mark were reinforced by its successful registration of the RALPH WILSON
STADIUM mark with the USPTO.
The ICANN dispute resolution policy is
“broad in scope” in that “the reference to a trademark or service mark ‘in
which the complainant has rights’ means that ownership of a registered mark is
not required–unregistered or common law trademark or service mark rights will
suffice” to support a domain name complaint under the policy. See McCarthy on Trademarks and Unfair
Competition, § 25:74.2, Vol. 4 (2000); see also British Broad. Corp. v.
Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the UDRP “does not
distinguish between registered and unregistered trademarks and service marks in
the context of abusive registration of domain names” and applying the UDRP to
“unregistered trademarks and service marks”).
Respondent’s <ralphwilsonstadium.com>
domain name is identical to Complainant’s RALPH WILSON STADIUM common law mark.
Respondent’s domain name incorporates Complainant’s mark in its entirety, with
the exception of deleting the spaces between the words that comprise
Complainant’s mark. However, because spaces are not allowed in domain names,
Respondent’s deviation from Complainant’s mark is inconsequential. See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a
Response in this proceeding. Therefore, it is presumed that Respondent lacks
rights and legitimate interests in the <ralphwilsonstadium.com>
domain name. See Canadian Imperial
Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept.
23, 2000) (finding no rights or legitimate interests where no such right or
interest was immediately apparent to the Panel and Respondent did not come
forward to suggest any right or interest it may have possessed).
Furthermore, because Respondent failed to
submit a Response in this proceeding, the Panel is permitted to make all
reasonable 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”).
Respondent has passively held the
disputed domain name since registration on March 1, 1999. Respondent has yet to
develop a purpose for the disputed domain name and has not provided the Panel
with evidence showing any demonstrable preparations to use <ralphwilsonstadium.com>
in connection with a bona fide offering of goods or services pursuant to Policy
¶ 4(c)(i). Furthermore, passive holding of the domain name fails to constitute
a legitimate noncommercial or fair use of the domain name under Policy ¶
4(c)(iii). Respondent’s failure to support its registration with evidence
signifying some right or legitimate interest in the domain name implies that
Respondent has none. See Am. Home
Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no
rights or legitimate interests in the domain name <solgarvitamins.com>
where Respondent merely passively held the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat.
Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be
found when Respondent fails to use disputed domain names in any way).
There
is no information that suggests Respondent is commonly known by the <ralphwilsonstadium.com>
domain name. There is no apparent connection between Respondent and the RALPH
WILSON STADIUM mark, and Respondent has failed to produce evidence suggesting
otherwise. Because Complainant received consent from the individual whose name
is reflected in the mark, and Complainant is the exclusive operator of the
Ralph Wilson Stadium in Buffalo, New York, there is a presumption that
Respondent does not have rights or legitimate interests in a domain name that
incorporates Complainant’s mark in its entirety. See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
The criterion specified in ¶ 4(b) of the
Policy does not represent an exhaustive list of bad faith evidence. The Panel
must take into consideration the totality of circumstances in order to
determine if Respondent registered or used the domain name in bad faith. See
Twentieth Century Fox Film Corp. v.
Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in
determining if a domain name has been registered in bad faith, the Panel must
look at the “totality of circumstances”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000)
(finding that the criteria specified in 4(b) of the Policy is not an exhaustive
list of bad faith evidence).
As stated, Respondent has made no attempt
to make use of the disputed domain name, and has passively held the domain
name’s registration for the past three years. Passive holding of a domain name
permits an inference of registration and use in bad faith under Policy ¶
4(a)(iii). See DCI S.A. v. Link
Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the
Respondent’s passive holding of the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy); see also
Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov.
28, 2000) (finding that merely holding an infringing domain name without active
use can constitute use in bad faith); see also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004
(WIPO Feb. 16, 2000) (holding that the Respondent’s failure to develop its
website in a two year period raises the inference of registration 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 relief shall be hereby GRANTED.
Accordingly,
it is Ordered that the <ralphwilsonstadium.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 29, 2002.
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