The Buffalo Bills, Inc. v. Official Merchandise, Inc.
Claim Number: FA0206000114523
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.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from Respondent to 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.
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>.
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.
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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