Tropicana Products, Inc. v.
Chris Dunne
Claim Number: FA0811001235498
PARTIES
Complainant is Tropicana Products, Inc. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tropicanafield.com>, registered with
Godaddy.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.
James Bridgeman as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 21, 2008; the National
Arbitration Forum received a hard copy of the Complaint on November 24, 2008.
On November 24, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <tropicanafield.com> domain name is
registered with Godaddy.com, Inc. and
that Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.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 November 25, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 15, 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@tropicanafield.com by
e-mail.
A Response was received and determined to be complete on December 16, 2008. However, it was deficient
because the electronic copy was not received by the Response deadline pursuant
to ICANN Supplemental Rule 5.
On December 19, 2008, a timely Additional Submission was received from
Complainant in compliance with the National Arbitration Forum’s Supplemental
Rule 7(a).
On December 23,2008,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman as
Panelist.
On December 26, 2008 a timely Additional
Submission was received from Respondent in compliance with the National Arbitration Forum’s Supplemental Rule 7(c).
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a division of PepsiCo, Inc. (since 1998) and is now one
of the world's leading producers and marketers of branded fruit juices and related
products. While the
Complainant has used its TROPICANA FIELD marks for many years in connection
with a stadium in
Complainant is the registered owner and bases its claim in this
proceeding in its rights in the following registrations of its TROPICANA FIELD
mark:
United States registered trademark, registration number 2,206,260, TROPICANA
FIELD filed on October 7, 1996 and registered on the principal register on
November 24, 1998 in international class 41 for “providing stadium facilities for baseball and basketball”,
and registered in the name of Complainant.
United States registered trademark, registration number 2,283,574,
TROPICANA FIELD filed on October 7, 1996 and registered on the principal
register on October 5, 1999 in international class 41 for “providing stadium facilities for performance
entertainment”, and registered in the name of Complainant.
Complainant submits that due to the extensive use and registration of
Complainant's TROPICANA FIELD marks, Complainant's TROPICANA FIELD marks have
become notorious marks under the laws of the national jurisdictions who have acceded
to the Paris Convention.
This Complainant submits that the <tropicanafield.com> domain name is
identical and, therefore, confusingly similar to Complainant's marks because it
fully incorporates Complainant's TROPICANA FIELD marks. See Verizon Trademark Services LLC v. Paul
Swider d/b/a OnClick, FA 0603000670992 (Nat. Arb. Forum May 18, 2006)
(finding domain name "verizonwireless.biz" identical to Complainant's
VERIZON WIRELESS mark because Respondent's domain name incorporates
Complainant's mark in its entirety, adding only the generic top-level domain
".biz").
Complainant submits that Respondent has no rights or legitimate
interests in the <tropicanafield.com> domain name. Respondent uses the domain
name in dispute to resolve to a website aimed towards providing information to
visitors to the Stadium, i.e. consumers of the services explicitly covered by
Complainant's TROPICANA FIELD marks. Respondent posts images and explicitly
references both the Stadium and the Tampa Bay Rays team.
Upon information and belief, Respondent generates revenue via the links and advertisements
included on the various pages of his website.
Complainant has not given Respondent any license, permission, or
authorization by which Respondent could make any use of any of its marks. Complainant
has not granted Respondent any license, permission, or authorization by which
it could own or use any domain name registrations which are confusingly similar
to any of Complainant's marks. See Amazon.com, Inc. v. Rayaneh Net, FA 0309000196217 (Nat. Arb.
Forum October 28, 2003) (finding no legitimate rights in the
"amazoniran.com" domain name, in part, because complainant did not
grant respondent a license to use the AMAZON.COM mark); see also Nokia Corp. v. Nokiagirls.com,
D2000-0102 (WIPO Apr. 18, 2000) (finding absence of license permitting
respondent to use complainant's trademark in domain name evidence of
respondent's illegitimate interests).
Complainant submits that Respondent has never been commonly known by
Complainant's TROPICANA FIELD marks nor any variations
thereof. Respondent has never used any trademark or service mark similar to the
<tropicanafield.com>
domain name by which it may have come to be known, other than the infringing
use noted herein. See Citigroup Inc. v.
Horoshiy, Inc. a/k/a Horoshiy, FA0406000290633 (Aug. 11, 2004) (finding
that Respondent had not established rights or legitimate interests in the
disputed domain name where there was no evidence that Respondent was commonly
known by the domain names); Citigroup
Inc. v. Acme Mail, FA 0402000241987 (Nat. Arb. Forum Apr. 12, 2004)
(finding that respondent had not established rights or legitimate interests in
the disputed domain name where "[r]espondent has no proof and there is no
evidence in the record to suggest that [r]espondent is commonly known by
<citiban.com>"); McClatchy
Management Services, Inc., v. Peter Carrington a/k/a Party Night Inc., FA
0304000155902 (Nat. Arb. Forum June 2, 2003) (finding that respondent failed to
establish rights to or legitimate interests in the disputed domain names where
respondent was not commonly known as "Startribun" or
"Stratribune"); See also GlaxoSmithKline
Biologicals S.A. v. David Pfeffer c/o JeMM Productions, FA467340 (Nat. Arb.
Forum June 10, 2005) (in which the Panel ordered transfer of
<cervarix.us> based in part upon a finding that the respondent lacked
rights or legitimate interests in the domain name).
Respondent is not operating a bona
fide or legitimate business under the <tropicanafield.com> domain name. Respondent
is not making a protected non-commercial or fair use of the disputed domain
name. Past panels have found that a respondent's use of a domain name that is
confusingly similar to a complainant's mark to divert Internet users for the
respondent's own commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy 4(c)(i)
or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Citigroup Inc. v. Chen
Bao Shui, FA 0802001142607 (Nat. Arb. Forum March 20, 2008) (finding
that Respondent was exploiting Complainant's marks through advertising other
businesses through use of the domain name "citifield.com" and others
and, thus, that Respondent's use of the domain name "citifield.com" was
not legitimate noncommercial or fair use); Verizon
Trademark Services LLC v. NA a/k/a NA DomainDevelopments.com, FA
0512000616307 (Nat. Arb. Forum Feb. 1, 2006) (finding Respondent's use of
domain name "verizoncenter.com" to direct Internet users to a website
featuring products and services competing with Complainant failed to constitute
a bona fide offering of goods or
services or legitimate noncommercial or fair use); Sears Brands, LLC v. Melissa Hirsh, FA 0801001126641 (Nat. Arb.
Forum Feb. 18, 2008) (finding no bona fide or legitimate business or legitimate
noncommercial or fair use in Respondent's use of the
"searscentrearena.com" domain name to attract Internet users to the
associated website containing offers for the sale of tickets to venues in
direct competition with Complainant); Sears
Brands, LLC v. Ivenu, FA 0801001141064 (Nat. Arb. Forum March 18, 2008)
(finding Respondent's use of domain name "searsarena.com" to resolve
to a website linking to various commercial websites competing with Complainant
not to be a bona fide or legitimate
business or legitimate noncommercial or fair use).
Complainant submits that Respondent was undoubtedly aware of its
TROPICANA FIELD marks prior to the registration of the <tropicanafield.com>
domain name, given the considerable registration and/or use, as set forth in
detail above. The content which Respondent has posted on the website to which
the disputed domain name resolves provides further evidence of Respondent's
knowledge of Complainant's TROPICANA FIELD marks.
Respondent's website is directed at visitors, or potential visitors, to
the Stadium and these are the same consumers as those seeking the services
explicitly covered by Complainant's TROPICANA FIELD marks. Because Respondent
had notice of Complainant's trademark rights when registering the domain name that
is nearly identical and/or confusingly similar to those marks, and because the
traffic on Respondent's website is dependent on the goodwill associated with
Complainant's TROPICANA FIELD marks, Respondent has no rights or legitimate
interest in the disputed domain name. See Sony Kabushiki Kaisha a/t/a Sony Corporation
v. John Zuccarini d/b/a Rave Club
Complainant alleges that Respondent registered and used the disputed domain
name in bad faith. The mere fact that the Respondent has registered a domain
name which incorporates the famous trademark of a well-known company is alone
sufficient to give rise to an inference of bad faith. See,
e.g., Northwest Airlines, Inc., v Mario
Koch, FA 95688 (Nat. Arb. Forum Oct. 27, 2000) ("The selection
of a domain name which entirely incorporates the name of the world's fourth
largest airline could not have been done in good faith"). Analogous
activities by cyber-squatters operating in other industries were considered to
rise to the level of "opportunistic bad faith." See Singapore Airlines Limited v. P & P
Servicios de Communicacion, D2000-0643 (WIPO Sept. 11, 2000) (holding that
"the domain name singaporeairlines.com is so obviously connected with a
well-known airline that its very registration and use by someone with no
connection with the airline suggests opportunistic bad faith. Indeed, it is hard
to imagine a more blatant exercise in `cyber-squatting"). Further,
Complainant has registered its TROPICANA FIELD marks in the
The disputed domain name has been put to use to intentionally attempt
to attract, for commercial gain, Internet users to Respondent's website, by
creating a likelihood of confusion with Complainant's mark as to the source,
sponsorship, affiliation, or endorsement of Respondent's website or of a
product or service on Respondent's website. Indeed, as shown in a news article,
a copy of which has been submitted in an annex to the Complaint, Respondent has
admitted his commercial intentions in the media: "I'm just trying to make
some extra money..." Such behavior by Respondent evidences one of the four
explicit examples of bad faith set forth in the Policy.
In conclusion Complainant submits that it is clear from the record that
(1) Complainant has legitimate trademark rights to the <tropicanafield.com> domain
name; (2) the disputed domain name is confusingly similar and/or nearly
identical to Complainant's marks; (3) Respondent has no legitimate interests in
the <tropicanafield.com>
domain name; (4) the disputed domain was registered in bad faith; and (5) the disputed
domain has been used in bad faith.
B. Respondent
In the Response, Respondent submits that Complainant’s trademark
TROPICANA FIELD is for actual physical building providing stadium facilities
for baseball and basketball. The domain
name <tropicanafield.com> is used
as the address of an Internet based business website that promotes businesses
in the St Petersburg area and gives information to people coming to St
Petersburg from anywhere in the world.
The purpose of Respondent’s website is clearly stated on the site
itself. Even though there had been no complaints from third parties being
confused in the time Respondent had been running the site, after learning that
Complainant had a problem, Respondent posted a statement in large letters that
“This site is not affiliated with Pepsico or any of its subsidiaries”, Respondent
submits that in this day and age if people are typing in a domain name and they
arrive at the website to find it fully discloses what service it is providing
that they are very capable of making their own mind up on whether or not they
would like to continue to use the websites services or not.
Respondent’s web search for the words “Tropicana Field” produced 522,000 web
site results. There are countless sites that use the phrase “Tropicana Field”.
For example <tickets.com> and <ticketsnow.com> use the phrase
“Tropicana field” in them 82 times each on just one page alone. And these are
just two of thousands. Complainant does not have a monopoly on every visitor
that comes to its stadium nor does Complainant exclusively own the advertising
rights to each and every person that would like to visit the stadium. If
Respondent owns a restaurant or hotel around the stadium would Respondent not
have the right to try and advertise to these consumers using the name TROPICANA
FIELD without affecting Complainant in any way?
Respondent submits that most Internet users are searching for
information online they normally use a search engine to get the best results.
Most people now don’t even type in a direct website address. Respondent asks, with
all of the adwords that search engines use now that pop up and different
placements a website is given, what makes <tropicanafield.com> different from any of the others? One can
own the domain name and people searching are still more likely than not to see
someone else’s site first.
Respondent claims legitimate rights to the disputed domain name “because
Complainant had 4 years and 8 months prior (sic) to their trademark filing date
of October 7,
1996 to register this domain name themselves if they cared to have it for any
reason.” Respondent registered the name on June 13, 2001
and the first notice Respondent had ever received from Complainant was on
September 18, 2008. That is a total of 11 years and 8 months during which
Complainant felt no need at all for any use or rights to that name since their
original filing date. See Southern Grouts
& Mortars, Inc. vs 3M Company
(The court found that the Plaintiff was barred from pursuing its trademark
infringement and cybersquatting claims under the doctrine of laches, which is
an equitable defense which penalizes Plaintiffs who fail to assert their rights
in a timely fashion. The Defendant 3M
filed a motion to dismiss the case based on the defense of laches, which the
court granted.
Addressing Complainants accusation of trademark infringement, Respondent
submits that the same term can be a trademark for multiple owners provided the
customers of those owners are not likely to be confused as to the source of the
products or services being offered under the trademark.
Respondent gives an example of a trademark that has been registered by
numerous users for different goods and services.By issuing registrations for
these marks, the USPTO has concluded that customers of the various owners are
not going to be confused as to the source of the products offered under the
marks. Each of these owners would have a legitimate right to a domain name
using their registered trademark as the domain name. Respondent submits that he
has the same right since his website does not compete with in any way the
services offered under Complainant’s trademark and there is no likelihood of
confusion. The domain name <tropicanafield.com>
is the address of a website business directory and not a building that provides
services to any sports team. The Respondent has in the past and is currently
using the domain name to operate a bona
fide legitimate business offering goods and services and was using the
domain name for that purpose before Complainant had ever contacted him.
Respondent registered the domain name <tropicanafield.com> because he has been a huge baseball fan
since he was a young child. He had originally hoped that at sometime in the
future he could do something baseball related to baseball but had no idea what
he might do. At the time he registered the disputed domain name he had no idea
even what a trademarked name was or did. He did not learn that until the day he
was contacted by Complainant.
Respondent denies that he acted in bad faith. Complainant refers to
Respondent’s words “just trying to make some extra money” as evidence of bad
faith on his part. That was not the case because before Respondent had this web
site up and running he was trying to think of a way he could help make some
extra money for my family in difficult circumstances. He has a high standard of
morals and beliefs and had absolutely had no thoughts of hurting Complainant in
any way.
Respondent never tried to sell this domain to Complainant or anyone
else, Respondent never tried to disrupt Complainant’s business in any way. He
has never tried to create a likelihood of confusion in any way with
Complainant’s mark. He has gone out of his way to remove pictures and I even
placed the words “This website is not affiliated with Complainant or any of its
subsidiaries” in huge letters on the front page just to try to please the
complainant even though he did not believe that he needed so to do.
Respondent has spent a considerable amount of time, effort, and money
into making this website a success from absolutely nothing. Respondent submits
that he has owned the rights to this name for 7 years and 6 months and have paid to do so.
C. Complainant’s Additional Submissions
In timely Additional Submissions, Complainant submits that the Response
fails to rebut Complainant's prima facie
case. As some of Respondent's assertions and/or arguments are irrelevant, they
are not addressed by Complainant in the Additional Submissions. Complainant
asks that no negative inferences be drawn from Complainant's failure to address
such irrelevant arguments.
Respondent does not deny that Complainant's trademark rights preceded
the registration of the domain name -- indeed,
Respondent acknowledges that Complainant's applications for registration of its
TROPICANA FIELD marks preceded the registration of the domain name by more than
four (4) years.
While Respondent attempts to challenge the fact that the <tropicanafield.com> domain name is
confusingly similar to Complainant's marks, Respondent's assertions
mischaracterize both Complainant's trademark rights and the law.
While Respondent asserts that he has legitimate rights in the disputed
domain name, Respondent does not provide a single ground establishing these
purported rights -- he merely asserts that Complainant should be barred from
asserting its rights.
Respondent does not deny that he had actual knowledge of Complainant's
rights at the time of registration of the domain name -- Respondent even
acknowledges registering the disputed domain because of the association between
Complainant's marks and the Tampa Bay Rays baseball team.
Respondent does not deny that the disputed domain name has been put to
a commercial use which has intentionally attempted to attract Complainant's
customers to the website associated with the disputed domain name for
commercial gain.
Contrary to Respondent's assertions, Complainant's rights in its
TROPICANA FIELD marks cover much more than the sign on the stadium in
Respondent's website invades Complainant's exclusive space by, for
example, providing information on tickets for events at the stadium associated
with Complainant's marks and information on merchandise related to Complainant's
services.
The confusion caused by Respondent's bad faith actions cannot be cured
by a disclaimer. While Respondent - after receiving a transfer demand from
Complainant - may have posted a disclaimer of affiliation with Complainant,
such an action does not dispel confusion sufficient to avoid a transfer order
under the Policy. This is well travelled ground for past panelists. In fact,
the respondent in the nearly identical fact pattern found in Toyota Motor Corporation c/o Charlie Ryan,
Executive Vice President v. Bill Brummett FA0409000326185,
November 9, 2004 attempted to assert the same defense. The
In an attempt to paint his own actions as commonplace, Respondent also
states that thousands of websites use Complainant's TROPICANA FIELD marks.
Notably, Respondent does not point to a single use of these marks which is not
related to Complainant's services. What Respondent did provide is further
evidence of the fame of Complainant's TROPICANA FIELD mark. Further, even if
these uses were distinct uses of a TROPICANA FIELD mark, which they are not,
such uses would not be sufficient to bar the relief Complainant seeks. It is
well settled that a complainant need only show rights to a mark which is confusingly
similar to the disputed domain name, not that it has exclusive rights. See Smart Design LLC v. Hughes, D2000-0993
(WIPO Oct. 18, 2000) (holding that ICANN Policy P 4(a)(i)
does not require the complainant to demonstrate 'exclusive rights,' but only that
the complainant has a bona fide basis
for making the complaint in the first place).
Complainant refutes Respondent’s claim to have acquired a legitimate
interest in the disputed domain name because Complainant did not register the disputed
domain name before Respondent did so. Past panels have squarely rejected this
purported defense. See Wal-Mart Stores,
Inc. v. MacLeod, D2000-0662 (WIPO Sept 19, 2000) in which the panel held
""[t]rademark owners are not required to create `libraries' of domain
names in order to protect themselves, and there are strong policy reasons against
encouraging this behavior."
Further, Respondent's argument for application of the equitable
doctrine of laches is inappropriate in these proceedings. Equitable defenses
such as laches or limitations do not feature in the Policy. For example, the
panel in The E W Scripps Company v.
Sinologic Industries, D2003-0447 (WIPO
July 1, 2003) in explaining why it ordered transfer of the disputed
domain name regardless of respondent's asserted laches defense, held: “This
conclusion is not affected by the Complainant's long delay in pursuing a
complaint in relation to the domain name. If the requirements of a valid
complaint under the Policy are established, the Policy does not provide any
defence of laches. ... Although a Panel is required by paragraph 15(a) of the
Rules to decide the dispute in accordance with any rules and principles of law
that it deems applicable, this would not justify the adoption of a substantive
defence not provided in the Policy and running counter to its objectives. If a
Respondent considers that the bringing of the complaint was inequitable because
of delay, it can submit the matter to a court of competent jurisdiction.”
Complainant further cites Disney
Enterprises Inc. v. Jared Meyers d/b/a Online
Holdings FA697818 (Nat. Arb. Forum, June 26, 2006) (concurring in this
reasoning).
Complainant respectfully asserts that this reasoning is applicable in
the instant matter, and urges that this matter be decided in accordance with
these prior decisions. Complainant sets out a time-line of events to prove that
in any event the doctrine of laches would not apply as a defence in the present
case because Respondent’s current form of infringing website was associated
with the disputed domain for only one month when Complainant first contacted
him. Complainant submits that Respondent has in no way been prejudiced and
Complainant has been diligent in its policing efforts.
Moreover, the time period between Respondent's registration of the disputed
domain and these proceedings is not dispositive of any controlling issue in
this matter. For example, multiple panels have ordered a domain name
transferred despite the passage of seven years -- the time period at issue here
-- between registration and the proceedings. Spark Networks
Limited v. D. Benare d/b/a ISystems, FA0805001191878, (Nat. Arb. Forum,
July 2, 2008); General Conference Corporation of Seventh-day Adventists v.
Walter McGill, dba Creation 7th Day Adventist Church, Creation (7th Day
Adventist) Ministries, Creation Ministries and Creation Seventh Day Adventist
Church, Creation 7th Day Adventist Church WIPO Case No. Case No. D2006-0642.
Respondent's use of the disputed domain for his own commercial gain
amounts to bad faith use in and of itself. ICANN Policy 4(b)(iv).
Additionally, contrary to his Response, Respondent has attempted to
"sell" the disputed domain name to Complainant, which constitutes
further evidence of bad faith. Namely, after the underlying Complaint was
filed, and before filing his Response, Respondent offered to transfer the disputed
domain name to Complainant in exchange for help in another internet-based business.
Complainant refers to correspondence between the parties to substantiate this
allegation. The panel in Diners Club
International Ltd. v MForce Communications FA0605000708908 NAF July 27,
2006 dealt with exactly this scenario and concluded that offering to transfer a
domain name if a complainant bowed to a request to enter into a business relationship
with the respondent was another evidence of bad faith. The panel found: "It
seems strange to the Panel that Respondent — a business man who has repeatedly
stressed the honesty of his intentions and his integrity — should have
registered domain names containing marks which he knew to belong to others,
before approaching their owners for the purpose of doing business with them . .
.Respondent's actions and behaviour do seem to smack of bad faith and, although
not specifically mentioned in paragraph 4(b) of the Policy, this paragraph is
specifically stated to be non- exclusive."
D. Respondent’s Additional Submissions
In timely Additional Submissions filed in accordance with Rule 7(c) of
the Supplemental rules, Respondent submitted as follows:
It is admitted by Complainant that there were sponsored listings on the
websites to which the <tropicanafield.com> domain name
resolved years before Respondent had ever created his own site. These sponsored
listings were generating money for some company at those times. Companies such
as GoDaddy, Google, and or others for example make money off of these pay per
click advertisements. At the time these sponsored listings were generating
money Complainant had no issue or did nothing to show Complainant had issue with
the site at those times. Also some of the listings on the site at those times are
the same as listings currently being advertised on Respondent’s site such as
tickets, merchandise, hotels, etc.
As Complainant has not cared in the past that these type of listings
that were being used on this site or they felt that nothing was being done that
would infringe on their trademark by their lack of action on the same type of
listings that are currently being displayed, Complainant is not entitled to
take any action now.
There was no act of bad faith toward Complainant in registering this
name. Respondent reiterated that it was his love of baseball and family connections
with the sport that were the reasons that Respondent registered this domain
name. Complainant has exhibited an article goes to show Respondent’s love of
baseball since a young age and his family associations with the sport.
Addressing correspondence with Complainant prior to the initiation of
this proceeding, Respondent states that the email referred to in Complainant’s Additional
Submission was sent in reply to an email to Respondent from Complainant on Nov
12, 2008 in which they tried to settle this case and the statement was merely
one of many suggestions he made in that context. Complainant should not be
regarded as the only party entitled to suggest a solution.
Respondent objects to Complainant’s statement “it seems strange” that
someone with honesty and integrity would do something that seems to “smack” of
bad faith. Respondent reasserts his honesty and integrity.
FINDINGS
Complainant is the registered owner and bases its claim in this
proceeding in its rights in the following registrations of its TROPICANA FIELD
mark:
United States registered trademark, registration number 2,206,260,
TROPICANA FIELD filed on October 7, 1996 and registered on the principal
register on November 24, 1998 in international class 41 for “providing stadium facilities for baseball and basketball”,
and registered in the name of Complainant; and
United States registered trademark, registration number 2,283,574,
TROPICANA FIELD filed on October 7, 1996 and registered on the principal
register on October 5, 1999 in international class 41 for “providing stadium facilities for performance
entertainment”, and registered in the name of Complainant.
Respondent registered the domain name in
dispute on June 13, 2001 and the domain name resolves to a website owned and
controlled by Respondent.
DISCUSSION
Preliminary Issue: Deficient Response
While the Response is deemed
deficient by the National Arbitration Forum under ICANN Rule 5 because the
electronic copy of the Response was not received by the Response deadline, neither
Complainant nor the process has been prejudiced by this procedural deficiency.
In the interest of fairness and expedition this Panel has accepted and admitted
the Response. Shedrick v.
In exercising its discretion in this way the Panel is conscious that Complainant has not raised any objection and that both parties have subsequently filed Additional Submissions.
Preliminary Issue: laches
Respondent has argued that
Complainant may not succeed because of its delay in bringing this proceeding
and acquiescence. This Panel is of the
view that the defense of laches is not available to Respondent in proceedings
under the Policy and agrees with the learned panelist in E W Scripps Company v. Sinologic Industries, D2003-0447 (WIPO July 1, 2003) that if
a respondent considers that the bringing of a complaint is inequitable because
of delay, it can submit the matter to a court of competent jurisdiction.
Substantive
Issues
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.
This Panel is satisfied that the
domain name is identical to Complainant’s TROPICANA FIELD trademark and service
mark. The <tropicanafield.com>
domain name contains Complainant’s TROPICANA FIELD mark in its entirety and no
other element except for the generic
top-level domain extension “.com.” and omits the space between the two words “tropicana”
and “field”.See Bond &
Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30,
2007) (finding that the elimination of spaces between terms and the addition of
a gTLD do not establish distinctiveness from the complainant’s mark under
Policy ¶ 4(a)(i); see also U.S. News & World Report, Inc. v.
Zhongqi, FA 917070 (Nat. Arb. Forum
Apr. 9, 2007) (“Elimination of punctuation and
the space between the words of Complainant’s mark, as well as the addition of a
gTLD does not sufficiently distinguish the disputed domain name from the mark
pursuant to Policy ¶ 4(a)(i).”)
Complainant has therefore satisfied the first element of the test in Policy
¶ 4(a)(i).
This Panel is satisfied that Respondent has no rights or legitimate interest in the domain name at issue.
It is well established that once a complainant is obliged to establish a prima facie case that a respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden then shifts to Respondent to show he has the required rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); 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.”).
Complainant has made out a sufficient prima facie case that Respondent has no rights or legitimate interest in the domain name and Respondent has failed to satisfy the Panel that he has any such rights or interest.
On the evidence Respondent
registered the domain name with the intention of piggy-backing on Complainant’s
rights in the TROPICANA FIELD mark. He then established a website promoting
businesses in the
Complainant asserts that it has at no time authorized or otherwise
permitted Respondent to use the TROPICANA FIELD mark in any way.
The WHOIS information for the disputed domain name identifies Respondent solely as “Chris Dunne.” Respondent has not argued that he is known by any other name. There is no evidence therefore that Respondent is or has ever been commonly known by the <tropicanafield.com> domain name or any similar name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant has therefore satisfied the second element of the test in Policy ¶ 4(a)(ii).
On the evidence, the <tropicanafield.com> domain name refers to Complainant’s stadium
in
Despite his denial of any knowledge of Complainant’s
trademarks or goodwill, it is clear that Respondent knew of Complainant’s
stadium when he registered the domain name. It could not be otherwise as the
TROPICANA FIELD mark is unique and there is no reason to register the domain
name other than to have an association with the TROPICANA FIELD mark.
Respondent does not deny that he registered the domain name in order to be
associated with Complainant’s stadium.
In the circumstances this Panel accepts
Complainant argument that Respondent is using the domain name in bad faith by
attempting to divert Internet users looking for information on Complainant’s
stadium for his own commercial benefit
Additionally,
Complainant provides evidence from an online news article reporting on
Complainant’s website in which Respondent admits that that he registered and is
using the domain name the purpose of “just trying to make some extra money.” See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the
respondent registered and used the <myspacebot.com> domain name in bad
faith by diverting Internet users seeking the complainant’s website to its own
website for commercial gain because the respondent likely profited from this
diversion scheme); see also The Ass’n of
Junior Leagues Int’l Inc. v. This Domain Name My Be
For
Respondent does not address Complainant’s
arguments in any satisfactory way. His principal arguments are essentially that
he was not aware of Complainant’s trademark rights when he registered the
domain name. that Complainant’s trademark rights are limited, that third
parties are using the words “Tropicana Field” on other websites, that
Complainant should not succeed because
of delay (laches) and that he has a right to use the domain name because of his
love of baseball. None of these arguments are sufficient to permit him to take predatory
advantage of Complainant’s reputation and goodwill in the TROPICANA FIELD mark
by registration and use of the domain name in dispute.
Neither does the use of a disclaimer by Respondent mitigate the negative effects of an otherwise identical or confusingly similar disputed domain name pursuant to Policy ¶ 4(a)(ii). See NY Times Co. v. NY Internet Servs., D2000-1072 (WIPO Dec. 5, 2001) (“[d]isclaimers and links directly to the authorized site do not mitigate matters. The misdirected searcher is immediately confronted with advertising that has nothing to do with The New York Times.”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant).
In the circumstances, this Panel is satisfied that Respondent has registered and is using the <tropicanafield.com> domain name in bad faith and Complainant has therefore satisfied the third element of the test in Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tropicanafield.com> domain name be TRANSFERRED
from Respondent to Complainant.
James Bridgeman, Panelist
Dated: January 13, 2009
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