Peter Jerie v. Vedanayakam L
Claim Number: FA0901001242580
Complainant is Peter Jerie (“Complainant”), represented by Sean
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <livescore.mobi>, registered with NamesBeyond.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Charles A. Kuechenmeister (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 13, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 16, 2009.
On January 28, 2009, NamesBeyond confirmed by e-mail to the National Arbitration Forum that the <livescore.mobi> domain name is registered with NamesBeyond and that the Respondent is the current registrant of the name. NamesBeyond has verified that Respondent is bound by the NamesBeyond 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 January 29, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 18, 2009 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.
A timely Response was received and determined to be complete on February 18, 2009.
On February 23, 2009, Complainant submitted an Additional Submission in compliance with Supplemental Rule 7.
On February 26, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles A. Kuechenmeister (Retired) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Peter Jerie, a citizen of the
appears to have registered <livescore.mobi> with the registrar
3. Complainant’s legal counsel sent a cease and desist letter to Respondent on July 11, 2007, giving notice to Respondent that the registration and use of <livescore.mobi> infringed and diluted LIVESCORE. Complainant requested, among other things, that Respondent immediately cease all use of <livescore.mobi> and begin an immediate transfer of the domain name. Complainant also offered to compensate the Respondent $100 USD for transferring the subject domain name to Complainant.
4. Respondent never replied to the July 11, 2007 letter but <livescore.mobi> was disabled for the time being.
5. Additional investigations by Complainant uncovered Respondent’s apparent plan to market and sell the <livescore.mobi> domain to the highest bidder. Specifically, Respondent sought appraisals for sale price for the subject domain name on several online communities for domain name resellers.
6. A year after sending the first demand letter, Complainant learned that the Respondent renewed the registration for <livescore.mobi> and the domain was reactivated, resolving to a pay-per-click search site (see Exhibits I and J). In addition, the page included a hyperlink to <sedo.com> (hereinafter “Sedo”), a domain name reseller website, that directed a Web user to a page showing the listing for sale of <livescore.mobi>.
7. On October 2, 2008, Complainant’s counsel sent a letter to Sedo, giving notice of Complainant’s trademark rights in LIVESCORE and requesting that the offer for the sale of <livescore.mobi> be terminated. A representative of Sedo contacted counsel on October 2, 2008 confirming that the sale of <livescore.mobi> had been terminated on the website and put on a blacklist of domains which are prohibited from using Sedo’s domain name services.
8. Another letter was then sent to Respondent on October 17, 2008, reporting the de-listing of the <livescore.mobi> sale on Sedo, reiterating Complainant’s demand that the subject domain name be transferred and including Complainant’s offer to compensate Respondent for $100. On November 14, 2008, Respondent replied by email, claiming he was ready to transfer the subject domain but that $100 USD was too low and requested a higher compensation fee. Complainant’s counsel emailed Respondent on December 8, 2008, increasing its settlement offer to $500 USD but noting that it was a final offer. On December 9, 2008, Respondent replied by email and demanded $1,000 USD for transferring the subject domain name to Complainant.
one of the most popular websites worldwide for providing sports enthusiasts
real-time soccer match scores. The
LIVESCORE trademark has been used in connection with Complainant’s service
continuously since 1998. The service
offered under the LIVESCORE mark includes scores from over 200 soccer leagues
that span 38 countries across Europe, South America, Asia and
10. Complainant’s website at <livescore.com> is one of the most active sports entertainment sites on the Internet. According to statistics obtained by Complainant from the Web information website <alexa.com>, <livescore.com> ranks as the most visited website under the Soccer category and one of the top twenty sites under the Sports category. Complainant’s website registered in excess of 746 million page views in the month of November 2008, as well as 23 million ‘unique visitors’ for the same month.
11. Finally, Complainant has also registered and is using many other domain names in connection with its website, including <livescore.net>, <livescore.org>, <livescore.co.uk>, <livescore.eu>, <livescore.asia>, <livescore.tv>, <livescore.vg>, <livescore.us> and <livescore.biz>
12. On account of the foregoing, Complainant has firmly established common law rights in LIVESCORE through widespread and continuous use of the mark since as early as 1998.
13. Complainant is the owner of U.S. Trademark Registration No. 2,514,933 (registered December 4, 2001), European Union (CTM) Reg. No. 004101713 and Czech Republic Reg. No. 272460, all for the LIVESCORE trademark for use in connection with real-time sports scores. Complainant has thus also established additional rights in the trademark LIVESCORE in association with its services through its said registrations.
14. In light of Complainant’s rights in the cited trademark and pursuant to the authority of the USPTO, Respondent was placed on constructive notice of Complainant’s rights to LIVESCORE. Those rights clearly preceded Respondent’s registration of the subject domain, which was only registered in 2006.
15. <livescore.mobi> is identical to - and confusingly similar to
- Complainant’s senior LIVESCORE trademark.
Specifically, <livescore.mobi> fully incorporates
Complainant’s trademark in its entirety and deviates from the mark only with
the inclusion of the non-distinctive generic code top-level domain (“gTLD”) “MO
16. When used in the context of a similar service, <livescore.mobi> is clearly confusingly similar to Complainant’s LIVESCORE trademark.
17. Respondent has no rights or legitimate interests in the <livescore.mobi> domain name because Respondent has neither used, nor has he made any demonstrable preparations to use, the subject domain name or corresponding name in connection with any bona fide offering of goods or services or in a legitimate, non-commercial, fair use manner.
18. Respondent has wholly incorporated Complainant’s LIVESCORE trademark in <livescore.mobi> and used the domain name to offer sports enthusiasts online access to real-time scores for sporting events, a service similar to Complainant’s service. Respondent has not made a non-commercial or fair use of the subject domain name. Indeed, the <livescore.mobi> site associated with the subject domain name was clearly commercial in nature and the subject domain name was being operated for the financial benefit of the Respondent.
19. Appropriating Complainant’s trademark to promote a competing service with confusingly similar domain names is not a bona fide offering of a good or service pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
20. Respondent’s sale listing of <livescore.mobi> at the Sedo domain auction site and Respondent’s subsequent demand for $1,000 USD for the subject domain’s transfer to Complainant are not bona fide offerings of goods or services pursuant to Policy ¶ 4(c)(i), nor legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
21. Respondent has never, as an individual, business, or other organization, been commonly known by the name associated with <livescore.mobi>.
22. There is no affiliation, association or business relationship of any kind with Respondent and Complainant has not licensed or authorized Respondent to use the LIVESCORE trademark in any manner.
23. Respondent registered the subject domain name in 2006, long after Complainant had adopted, used and registered the LIVESCORE trademark. The Respondent has used the subject domain name in connection with a service similar to Complainant’s real-time sports scores service. In addition, Respondent renewed the registration for <livescore.mobi> even after receiving a demand letter from Complainant and placed the subject domain for sale to the general public at the Sedo domain name auction site. Finally, the Respondent has demanded $1,000 USD from Complainant for the transfer of <livescore.mobi>.
24. After Complainant learned of the registration and use of the subject domain name, legal counsel sent Respondent communications requesting that it (1) cease using the subject domain name and (2) transfer <livescore.mobi> to Complainant. After ignoring Complainant’s demand letter for over a year, Respondent replied to subsequent communications, dismissing compensation offers of $100 and $500 to settle the matter and ultimately seeking compensation for at least $1,000 USD, a sum well above costs directly related to the registration of the subject domain.
25. Respondent has functioned as a competitor of Complainant by offering a similar real-time sport scores service in the same channel of trade associated with Complainant’s LIVESCORE mark and <livescore.com> website. Such unauthorized offering of services in connection with a domain name that is confusingly similar to Complainant’s trademark is evidence that Respondent registered and is using the subject domain name in bad faith under 4(b)(iii) by registering the subject domain primarily to disrupt Complainant’s business.
has registered and is using <livescore.mobi> in bad faith
as Respondent attempts to attract, for commercial gain, Web users to a
commercial online service that competes with Complainant’s real-time sports
scores service. The <livescore.mobi>
website associated with the subject domain also featured advertisement for
computer and information technology services.
27. The similarity between the service that was found at Respondent’s website and Complainant’s service constitutes substantial evidence that Respondent had actual knowledge of Complainant’s rights in the LIVESCORE trademark when he registered the subject domain name.
1. Respondent registered the domain name only after expiration of the Trademark Sunrise period for .mobi, during which period Complainant did not register the same in its name. Respondent’s registration was accomplished during the General Public Registration period for .mobi, in accordance with ICANN guidelines.
2. When it registered the domain name, Respondent had no knowledge of the existence of Complainant’s trademark LIVESCORE.
3. Respondent’s live score services on its website were only for cricket matches, not the sports serviced by Complainant, and this eliminates any possibility of confusion between the two uses of the name LIVESCORE.
is a citizen of
of the ads shown on <livescore.mobi>
were placed there by the Registrar, Names
7. Respondent ceased his updation [sic] of cricket scores when notified of the conflict by Complainant.
8. Negotiation of cash consideration for transfer of the domain name was initiated by Complainant. The amount demanded by Respondent is reasonable given the time, initiatives, hard work and expenses involved in operating and maintaining a website for the live updation [sic] of cricket scores.
9. Respondent denies any bad faith whatever in his conduct in this matter.
C. Additional Submission by Claimant
1. A trademark owner is not required to
register as a domain name every possible variation of its mark. Moreover, Complainant did not relinquish his
rights in a .MO
2. In light of Complainant’s many registrations and its extensive use of its LIVESCORE mark, Respondent had both constructive and actual knowledge of Complainant’s rights in that mark when he registered the subject domain name. This conclusion is further supported by the remarkable similarity between Complainant’s “LiveScore” design on its webpage and the design used on Respondent’s website in 2007, namely the identical, elongated letter “S” in the respective designs. Additionally, Respondent listed the <livescore.mobi> domain for sale on the domain auction site <sedo.com>, after he received a demand letter from Complainant, giving him undisputed actual knowledge of Complainant’s interest in the LIVESCORE mark prior to such listing.
4. Complainant has made a prima facie case in support of its allegations that Respondent has no rights or legitimate interests in <livescore.mobi> and that Respondent has failed in its Response to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).
5. As regards Respondent’s claim that his
use of <livescore.mobi> in connection with
real-time scores only for cricket competition differentiates this service from
Complainant’s service, at 5(c) in the Response, Respondent
6. The $1,000 USD demanded by Respondent for the subject domain is well in excess of its out-of-pocket costs directly related to the domain name. Respondent’s expenses of maintaining and operating the real-time updating of scores are not relevant to this element of the proof.
7. Respondent claims that the subject domain name was not commercial in nature, but for a period of time the <livescore.mobi> was used in connection with a pay-per-click search page that listed on the page various “Popular Categories.” In addition, while it operated as a real-time cricket score service, the website included at least one “Sponsored Link” listing, namely R&D Computers, an entity that Respondent has apparently worked with. Online investigations show that the commercial websites for R&D Computers and IT Infra include a “Sponsored Link” to <livescore.mobi>, suggesting a ‘quid pro quo’ arrangement between the parties.
8. These types of activities in connection with the subject domain name cannot be construed as legitimate or fair use under the UDRP and are clearly evidence that the <livescore.mobi> has been used in bad faith.
DISCUSSION AND FINDINGS
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.
1. Complainant has rights in the LIVESCORE mark by virtue of its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (December 4, 2001, Reg. No. 2,514,933) (Complaint Exhibit C), the Industrial Property Office of the Czech Republic (April 21, 2005, Reg. No. 272,460) (Complaint Exhibit E), and the Office for Harmonization in the Internal Market (“OHIM”) (December 20, 2006, Reg. No. 4,101,713; filed October 28, 2004) (Complaint Exhibit D). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
<livescore.mobi> domain name is identical to Complainant’s LIVESCORE mark. The <livescore.mobi> domain name differs from Complainant’s mark only in that
the generic top-level domain (“gTLD”) “.mobi” has been added to the end of the
mark. The addition of a gTLD does
not sufficiently distinguish a domain name from the mark it incorporates,
because every domain name must include a top-level domain. See Nev.
3. The subject domain name is identical or confusingly similar to the LIVESCORE mark, in which the Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
4. Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to
Respondent to show it does have rights or legitimate interests. See Hanna-
5. Respondent’s only evidence that he has
any right or legitimate interest in respect of the subject domain name is the
mere fact that he registered it following the expiration of the “Trademark
Sunrise” period for .mobi, without Complainant having registered it during such
period, and without any contemporaneous objection or protest from Complainant. Response ¶¶ 3 and 4. However, a trademark owner is not required to
register as a domain name every possible variation of its mark, and Complainant
did not relinquish his rights in a .mobi extension when he did not apply for
registration of <livescore.mobi>
during the “Sunrise” period. See
name of the Respondent does not contain any form of the name LIVESCORE or any
variation thereof. Neither is he
commonly known by the subject domain name and as a
result, he has failed to establish
rights or legitimate interests under Policy ¶ 4(c)(ii). See, IndyMac
7. Further, the WHOIS record for the disputed domain name lists Respondent only as “Vedanayakam L” (Complaint Exhibit I). The Respondent is not commonly known by the <livescore.mobi> domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
is currently using the <livescore.mobi> domain
name to bring Internet users to a website that features links to third-party
websites unrelated to Complainant (Complaint Exhibit J). Respondent’s current use of the disputed
domain name is not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See
9. Respondent previously used the disputed domain name to host a website that competed with Complainant’s real-time sports-scores services (Complaint Exhibit J). This use of the <livescore.mobi> domain name was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”).
10. Respondent listed the disputed domain name for sale to the public, and subsequently demanded $1,000 from Complainant in exchange for its transfer (Complaint Exhibits J, N, Q and R). These offers to sell the disputed domain name are evidence that Respondent lacks rights or legitimate interests in the <livescore.mobi> domain name pursuant to Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
11. Accordingly, the Panel finds and determines that the Respondent has no rights or legitimate interests in respect of the subject domain name.
12. Respondent has made offers, to both the
public at large and to Complainant individually, to sell the disputed domain
name for more than its out-of-pocket costs (Complaint
Exhibits J, N, Q). Offers to sell a
disputed domain name may be considered evidence that a respondent has
registered and is using a domain name in bad faith. See
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”).
Respondent’s offers to sell the <livescore.mobi>
domain name are thus evidence that Respondent registered and is
using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i). See George Weston
13. Due to the confusion caused by the identical nature of the LIVESCORE mark and the <livescore.mobi> domain name, Respondent previously diverted Internet customers seeking Complainant’s website to Respondent’s competing website at the disputed domain (Compliant Exhibit J). In doing so, Respondent intentionally disrupted Complainant’s business. This prior disruption of Complainant’s business is evidence of Respondent’s registration and use of the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
15. Respondent contends that he did not have
actual knowledge of Complainant’s registration of its LIVESCORE mark because he
16. Accordingly, the Panel finds and determines that Respondent has registered and is using the subject domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <livescore.mobi> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Charles A. Kuechenmeister (Ret.)
Dated: March 12, 2009
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