National Arbitration Forum

DECISION

San Francisco Baseball Associates L.P. v. Chad Lincoln

Claim Number: FA0808001220185

PARTIES

Complainant is San Francisco Baseball Associates L.P. (“Complainant”), represented by Richard S. Mandel, of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Chad Lincoln (“Respondent”), California, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <giantsbaseball.com>, registered with Register.com, 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.

Terry F. Peppard as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 14, 2008.

On August 13, 2008, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <giantsbaseball.com> domain name is registered with Register.com, Inc. and that the Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 August 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 4, 2008 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@giantsbaseball.com by e-mail.

An untimely Response was received after the Response deadline on September 5, 2008. The Response is therefore deficient under ICANN Rule 5.

Complainant filed an Additional Submission on September 10, 2008, which was determined to be timely and complete in compliance with the National Arbitration Forum’s Supplemental Rule 7.

Respondent filed an Additional Submission on September 11, 2008, which was determined to be timely and complete in compliance with the National Arbitration Forum’s Supplemental Rule 7.

On September 14, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant's contends, among other things, that:

Complainant is the owner of the Major League Baseball club known as the SAN FRANCISCO GIANTS (“the Club”), founded in 1883.

Since approximately 1885, Complainant has been commonly known and referred to as the “GIANTS” and, as early as 1918, the Club began displaying the mark “GIANTS” on its uniforms.

The Club is one of the most widely-known and successful Major League Baseball clubs.

Long prior to Respondent’s registration of <giantsbaseball.com>, the Club has used and continues to use the distinctive GIANTS trademark to identify its baseball club, its baseball game and exhibition services, and a wide variety of related goods and services.

For many years before Respondent’s registration of the subject domain name, the GIANTS mark has enjoyed fame and distinctiveness, and, as a result of the extensive sales, advertising, and promotion of goods and services bearing the mark, the Club has created enormous goodwill in the GIANTS mark of great value to the Club.

Complainant has registered the GIANTS trademark with the United States Patent and Trademark (“USPTO”) (Reg. No. 1,661,650, issued October 22, 1991).

On May 12, 1999, Respondent registered the disputed domain name, which is confusingly similar to the GIANTS mark.

Respondent uses the domain name <giantsbaseball.com>, without authorization from the Club, to connect to a site offering commercial links relating to the Club and its goods and services as well as to other commercial links to unrelated goods and services.

Respondent generates revenues by entering into “pay for performance” arrangements with one or more third parties who pay Respondent for hosting the links they provide.

Respondent registered and uses the <giantsbaseball.com> domain name with the intent of misleading Internet users away from the authorized marketplaces on the Club’s official website and diverting them to Respondent’s website which links to sites processing online transactions involving GIANTS game tickets and other GIANTS merchandise.

Respondent has never been commonly known by the disputed domain name, has not engaged in any legitimate business under the GIANTS or GIANTS BASEBALL names, is not a licensee of the Club, and does not own any legitimate trademark rights in the GIANTS mark.

Respondent is not using the contested <giantsbaseball.com> domain name in connection with any bona fide offering of goods and services.

Respondent’s use of the subject domain name is not a legitimate noncommercial or fair use of the GIANTS mark.

Respondent can offer no credible explanation for the adoption of the disputed domain name other than to trade on the fame of the Club’s GIANTS mark and baseball team.

Respondent had both actual and constructive knowledge of the GIANTS mark when it registered the disputed domain name.

Notwithstanding Respondent’s knowledge of Complainant’s prior and protected rights in the GIANTS mark, Respondent has registered and uses the disputed domain name in bad faith to attract Internet users to Respondent’s website for his own financial benefit by creating a likelihood of confusion as to the potential existence of a relationship, affiliation or other endorsement between the Club and Respondent.

On January 11, 2008, the Club caused a cease and desist letter to be delivered to Respondent demanding that he transfer the contested domain name to Complainant.

Respondent replied by sending to Complainant’s representative a profane, insulting and threatening e-mail that further demonstrates Respondent’s bad faith registration and use of the subject domain name.

B. Respondent

Respondent contends, among other things, that:

Respondent rightfully owns the domain name in question.

Respondent has never personally developed a web site resolving from the domain name.

Respondent was unaware of the alleged use made of its domain name by the responsible registrar until the matter was brought to its attention by Complainant in 2008.

Respondent has never personally profited from the use of the domain name.

The subject domain name is unrelated to Complainant’s organization.

C. Additional Submissions

Complainant’s Additional Submission alleges, inter alia, that:

Respondent’s efforts to deflect responsibility for the use made of its domain name by the assigned registrar are unavailing.

Respondent owns a total of twelve (12) domain names, six (6) of which consist of “commercial link farms.”

Respondent’s purpose in registering and using the disputed domain name, as alleged, is to engage in illegitimate cyber-squatting.

Respondent’s Additional Submission alleges, inter alia, that:

Respondent acquired the disputed domain name for potential use or potential sale.

Complainant cannot claim rights in the generic term “giants baseball.”

Respondent has asked the responsible domain name registrar to cease commercial exploitation of the domain.

FINDINGS

(1) the domain name registered by the Respondent is confusingly similar to a trademark in which the Complainant has rights;

(2) Respondent has no rights to or legitimate interests in respect of the domain name; and

(3) the same domain name was registered and is being used by Respondent in bad faith.

DISCUSSION

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:

i. the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

ii. the Respondent has no rights or legitimate interests in respect of the domain name; and

iii. the domain name has been registered and is being used in bad faith.

Preliminary Issue: Deficient Response

Respondent’s initial Response was submitted after the September 4, 2008, response deadline established under the Policy. Thus the Response is not in compliance with ICANN Rule 5. We may nonetheless elect to accept and consider that Response. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that the weight to be given to a late response is in the discretion of the panel); see also Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum July 2, 2002):

In the interest of having claims decided on the merits and not by default and because Complainant has not been prejudiced in the presentation of its case by the late submission, Respondent’s opposition documents are accepted as timely.

We agree with this reasoning. Accordingly, we will, in the interests of justice, consider Respondent’s initial submission as if it were timely filed.

Identical and/or Confusingly Similar

There is no dispute that Complainant has registered its GIANTS trademark with the United States Patent and Trademark Office and that it did so before Respondent registered the contested domain name. This is sufficient to establish Complainant’s prior rights in its GIANTS mark pursuant to Policy ¶ 4(a)(i). See Enter. Rent-a-Car Co. v. BGSvetionik, FA 925273 (Nat. Arb. Forum Apr. 11, 2007) (“The Panel finds that Complainant’s timely registration [with the USPTO] and subsequent use of the ENTERPRISE mark for over 20 years sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Seiko Epson Corp. & Epson Am., Inc. v. AOS Web Com, Inc., FA 823033 (Nat. Arb. Forum Nov. 27, 2006) (“Seiko Epson has long established rights in the distinctive mark EPSON through use and through numerous United States and other trademark and service mark registrations.”).

On the point of alleged confusing similarity as between the domain and the mark, the <giantsbaseball.com> domain name fully incorporates Complainant’s GIANTS mark with the addition of the generic term “baseball” and the generic top-level domain “.com.” Previous panels have determined that the addition of generic terms that described a complainant’s business do not distinguish a disputed domain name from a competing mark sufficiently to overcome a claim of confusing similarity. Thus we conclude that the addition of the generic term “baseball,” which has an obvious relationship to Complainant’s baseball business, does not save Respondent’s domain from scrutiny under the Policy. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business). The same is true with regard to the addition of the generic top-level domain “.com.” See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” so that Policy ¶ 4(a)(i) is satisfied).

Although Respondent contends that the <giantsbaseball.com> domain name is comprised entirely of generic terms in which Complainant cannot have protectable rights, we need not dwell on that contention at this juncture because Policy ¶ 4(a)(i) considers only whether Complainant has recognizable rights in its mark and whether the disputed domain name is identical or confusingly similar to that mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because a complainant had received a trademark registration for its VANCE mark, a respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); to the same effect, see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007).

We thus find that Complainant’s submissions fulfill its obligations under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Under this heading, Complainant must first make out a prima facie case that Respondent lacks rights to and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show that it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or legitimate interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):

Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

On the record before us, we are satisfied that Complainant has met its initial burden under the Policy. We proceed, therefore, to examine Respondent’s contentions in light of Complainant’s allegations.

In this regard, we first note that Respondent does not deny Complainant’s assertion that Respondent is not commonly known by the <giantsbaseball.com> domain name and is not licensed to use Complainant’s GIANTS mark. We therefore accept Complainant’s assertion for its evidentiary value under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name when the respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Additionally, Complainant contends that Respondent is using the website resolving from the disputed domain name as a parked page with links offering services in competition with the business of Complainant, and that Respondent does this for compensation. Although Respondent disputes these assertions, we are satisfied, from the record before us, that the parked page and displayed links do not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hoffmann-La Roche Inc. v. Truskowski, FA 808287 (Nat. Arb. Forum Nov. 14, 2006):

[C]ontrary to Respondent’s bald averment, the operation of a ‘parking page’ in connection with the disputed domain name does not constitute a bona fide offering of goods or services as contemplated by [UDRP] Policy ¶ 4(c)[i] or a legitimate noncommercial or fair use as contemplated by [UDRP] Policy ¶ 4(c)[iii].

(emphasis added); see also Lockheed Martin Corp. v. Extraordinary Things LLC, FA 1117826 (Nat. Arb. Forum Jan. 23, 2008) (finding a respondent’s use of a disputed domain name to establish a parked page advertising services in competition with a complainant’s business, where that respondent received click-through fees, did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

Although Respondent forcefully argues that it has not posted the links described in the Complaint, and has not received compensation from those links, and blames the registrar for the described events and circumstances, Respondent nevertheless lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Netbooks, Inc. v. Lionheat Publ’g, FA 1069901 (Nat. Arb. Forum Oct. 18, 2007):

The Panel also notes that Respondent is responsible for the content of any website using the domain name at issue, and cannot pass that responsibility off to its registrar or domain name service provider.”

See also StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug. 27, 2007):

Respondent has alleged that the registrar, GoDaddy, has posted these [competing] links for the website associated with the Domain Name. However, the Panel finds this is no excuse and holds Respondent accountable for the content posted to the site that resolves from the Domain Name.”

For these reasons, we find that Policy ¶ 4(a)(ii) is satisfied.

Registration and Use in Bad Faith

Complainant contends that Respondent is diverting Internet users seeking Complainant to Respondent’s own website for Respondent’s commercial gain. If Complainant’s allegations were accepted, such use of the disputed domain name, responsibility for which is denied by Respondent, would constitute evidence of bad faith registration and use of the domain name. See MASAI S.A. v. Colman, D2007-0509 (WIPO July 19, 2007), finding that a respondent’s registration and use of a disputed domain name to host a parked website constituted bad faith because:

The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy … This is regardless of the fact that the Respondent had no knowledge of the exact content of the sponsored links that appeared on the website.

We need not resolve the dispute between the parties as to whether Respondent personally benefits from the commercial exploitation of its domain name. This is because Respondent is responsible for the use made of its domain by those whose behavior its ownership of the domain gives it the power to control. See St. Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007):

As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately Respondent who is responsible for how its domain name is used.

Moreover, even if Respondent is not gaining commercially from the links displayed on the parked page, we are comfortable in concluding that Respondent registered and is using the disputed domain name in bad faith by infringing on Complainant’s goodwill. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv), regardless of the fact that a respondent was not earning click-through fees, because:

Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to Respondent … [t]he key fact here is that Respondent, in collaboration with the domain parking service providers, is exploiting Complainant's goodwill.

To the same effect, see also Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec. 3, 2007):

Respondent has established that it does not receive any of the revenues from the click-through fees from the links displayed on the websites that resolve from sites associated with the domain names at issue … [However], Respondent has allowed the domains to be used to attract, for commercial gain, Internet users who may be confused as to Complainant’s affiliation with those sites. To a majority of the Panel, this is sufficent evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).

Furthermore, Complainant argues persuasively that, owing to the longstanding and widespread fame of the GIANTS trademark, Respondent had at least constructive notice of Complainant’s rights in the mark when it registered the <giantsbaseball.com> domain name. This is a further indication of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)

[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”