Peter Jerie v. Vedanayakam L
Claim Number: FA0901001242580
PARTIES
Complainant is Peter Jerie (“Complainant”), represented by Sean
F. Heneghan,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <livescore.mobi>, registered with NamesBeyond.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@livescore.mobi
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.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. Complainant,
Peter Jerie, a citizen of the
2. Respondent
appears to have registered <livescore.mobi> with the registrar
Names
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.
9. Complainant’s
<livescore.com> is
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.
26. Respondent
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.
4. Respondent
is a citizen of
5. Some
of the ads shown on <livescore.mobi>
were placed there by the Registrar, Names
6.
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.
3.
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
states "
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).
2. Respondent’s
<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.
State
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
Villeroy &
6. The
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.”).
8. Respondent
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
Golden
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
Am.
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
operated in
16. Accordingly,
the Panel finds and determines that Respondent has registered and is using the subject
domain name in bad faith.
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 <livescore.mobi> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Charles A.
Kuechenmeister (Ret.)
Dated: March 12, 2009
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