DECISION

 

Oakland Raiders v. FanStop.com, Inc.

Claim Number: FA0210000126836

 

PARTIES

Complainant is Oakland Raiders, Alameda, CA (“Complainant”) represented by Annette L. Hurst, of Howard, Rice, Nemerovski, Canady, Falk & Rabkin.  Respondent is FanStop.com, Inc., San Anselmo, CA (“Respondent”) represented by Richard P. Sybert, of Gordon & Rees LLP.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <raiderettes.com>, registered with VeriSign, Inc. a/k/a Network Solutions.

 

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 sole Panelist in this proceeding.

 

G. Gervaise Davis III, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 3, 2002; the Forum received a hard copy of the Complaint on October 1, 2002.

 

On October 7, 2002, VeriSign, Inc. aka Network Solutions confirmed by e-mail to the Forum that the domain name <raiderettes.com> is registered with VeriSign, Inc. a/k/a Network Solutions and that the Respondent is the current registrant of the name.  VeriSign, Inc. a/k/a Network Solutions has verified that Respondent is bound by the VeriSign, Inc. a/k/a Network Solutions 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 October 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 5, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@raiderettes.com by e-mail.

 

A timely Response was received and determined to be complete on November 25, 2002.

 

Complainant’s additional submissions were received on December 5, 2002.  Respondent’s additional submissions were received on December 9, 2002.

 

On December 12, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed G. Gervaise Davis III, Esq., as Panelist.  An Order extending the time for reaching a decision was thereafter issued, permitting the decision to be rendered by January 13, 2002, due to intervention of the holidays and other extenuating circumstances.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant, the Oakland Raiders (“Raiders”), is a professional football team located in Oakland, California.  Like most professional football teams, the Raiders has a professional cheerleading team that performs at all of its home football games.  The Raiderettes has been the Raiders’ cheerleading team since 1960.  Each year, hundreds of women try out for the Raiderettes, and hundreds of thousands of football fans see the Raiderettes perform at Raiders football games and on the NFL’s television broadcasts.  Raiderettes also make public appearances to promote the Raiders and the Raiderettes.  The Raiders sells RAIDERETTES merchandise, including calendars and videos featuring Raiderette cheerleaders.  Since 1980, the Raiders has owned a service mark for RAIDERETTES.  The Raiders is the only entity with a registered mark for RAIDERETTES.  No other entity, including Respondent, has registered a trademark or service mark formed by or including the word “Raiderette” or “Raiderettes.”

 

Complainant is informed and believes that Respondent, Fanstop.com, Inc. (“Fanstop.com”), is a division of Boathouse Row Entertainment, Inc. (“BRE”), a privately held California corporation formed in 1997.  To the best of Complainant’s knowledge, Fanstop.com is not a separate corporation, but rather is a fictitious business name of BRE.  Complainant is informed and believes that Sean Dunn is the sole shareholder of BRE and exercises exclusive control over Fanstop.com.  [The facts about this entity are later made clear in the Response and other filings, wherein it appears that Fanstop.com is in fact a separate corporation affiliated with BRE.]

 

Around 1997, BRE created a web site (boathosrow.com) that displayed Raiderettes pictures and sold Raiderettes related merchandise.  From 1996 until 1999, the Raiders granted BRE a one-year license to produce and distribute a fourteen-month calendar featuring the members of the Raiderettes cheerleading squad.  Under the license agreements, the Raiders retain all rights in the photographs of the Raiderettes cheerleaders taken in the production of the Raiderettes calendars.  The license applied to BRE alone.  Fanstop.com has never been a licensee of the Raiders and does not have any right to use the RAIDERETTES mark.

 

On November 5, 1998, without the knowledge or consent of the Raiders, BRE registered the domain name RAIDERETTES.COM.  The calendar license agreement did not authorize BRE to register the domain name or operate a “Raiderettes” web site.  Initially, web surfers who typed in RAIDERETTES.COM were automatically redirected to BRE’s web site, boathosrow.com.  BRE, without authorization, subsequently developed a site published at RAIDERETTES.COM that exclusively featured the Raiderettes.  As soon as BRE’s RAIDERETTES.COM web site came to the attention of the Raiders, the Raiders notified BRE that the registration of RAIDERETTES.COM and the web site published at that domain name were not authorized under BRE’s license.  The Raiders demanded BRE cease operating the RAIDERETTES.COM site.  In response to the Raiders’ cease and desist letters, BRE took down its RAIDERETTES.COM site.  BRE, doing business as Fanstop.com,^[1] subsequently agreed to transfer ownership and control of RAIDERETTES.COM to the Raiders. 

 

In early 2000, the Raiders, relying on BRE/Fanstop.com’s agreement to transfer the domain name, began to develop content for the Official Web Site of the Oakland Raiderettes to be published at RAIDERETTES.COM.  In offering to transfer the domain name to the Raiders, BRE/Fanstop.com recognized that it did not have any right to use that domain name, stating that it renewed the registration “simply to avoid it [from] being claimed by another group.”  On or about July 31, 2001, BRE/Fanstop.com changed the administrative, technical and billing contacts to the Raiders.  BRE/Fanstop.com informed the Raiders that in order to complete the official transfer of the account, the Raiders needed to submit a registration form to the registrar, Network Solutions.  The Raiders did so and received notice from the registrar that BRE, as the listed registrant, needed to authorize the transfer before the change in registration would be complete.  The Raiders then requested BRE/Fanstop.com authorize the final transfer and believed that it did so.  Unbeknownst to the Raiders, BRE/Fanstop.com never submitted the final authorization despite its agreement to transfer the domain name to the Raiders.

 

In August 2001, believing that BRE/Fanstop.com had submitted the final authorization for the transfer of the domain name, the Raiders began using RAIDERETTES.COM as the Official Web Site of the Oakland Raiderettes and publishing its content there.  Starting in August 2001, the Raiders exerted exclusive control over RAIDERETTES.COM.  The Raiders was the administrative, technical and billing contacts listed with the registrar.  The Raiders hosted the RAIDERETTES.COM through its ISP.  And, in November 2001, when the Raiders received a renewal notice for the domain name from the registrar, the Raiders paid the renewal fee, believing that the official transfer had been completed.  From November 2001 until June 2002, the Raiders believed it was the legal and exclusive owner of RAIDERETTES.COM.

 

On June 2, 2002, BRE/Fanstop.com suddenly purported to “withdraw … its permission to allow the Raiders access to the domain ‘RAIDERETTES.COM’” effective July 1, 2002.  Mr. Dunn asserted that Fanstop.com “is the registered owner of [RAIDERETTES.COM] and it intends to use the name for other purposes.”  At the time, however, BRE—not Fanstop.com—was listed as the official registrant of the domain name.  This changed position by Dunn apparently eventually precipitated the filing of this Complaint, after much further discussion and dispute and a number of letters back and forth.

 

B. Respondent

Suffice it to say that Respondent vehemently disagrees that it is improperly holding and using the disputed domain.  In its brief, Respondent points out in some detail that BRE initially registered and used the domain at issue with the full knowledge and implied consent of Complainant and that it benefited financially from the operation of the BRE website selling the merchandise and publicizing the Raiders team.  The Respondent explains that Fanstop.com is a corporate affiliate of BRE to whom BRE eventually assigned its rights and that Respondent continued to work with Complainant under the Fanstop.com name without apparent objection for some time, until the underlying licenses were not renewed in recent years.

 

What is not clear to the Panel from any of the pleadings is exactly what rights Respondent currently has under the licenses, although both parties spend considerable time and effort on their positions.  The problem is that this material really does not lead to any conclusions justiciable under the UDRP since the case eventually turns on the meanings of the original and subsequent licenses, the intent of the parties, and the past conduct of each and the reasons for and the effect of the failure of the Complainant to renew the merchandising licenses for further terms.

 

What is clear is that the parties, who once had a mutual interest in selling Raiders merchandise and publicizing the Raiderettes cheerleading activities, no longer are on the same track and are unable to resolve what should have been a fairly simple termination of their business relationship. That situation is what the Panel must resolve.

 

C. Additional Submissions

Both the Complainant and the Respondent made further submissions on the issues, which contain further facts and arguments that do not lead to much enlightenment on the key issues, but merely dispute and argue over the conduct of the parties leading to the filing of the Complaint.  While the Panel considered all the exhibits and arguments in these pleadings, they add little to resolution of the case.

 

The Panel would like to take this opportunity to suggest that litigants before the Forum and other UDRP panels not wholesale reproduce every decision cited in their briefs, since these are fully reported online.  The inclusion of all these cases merely increases the paper used in what is essentially intended as an electronic dispute resolution procedure, and wastes resources and delays the distribution of materials to the Panels.  Where a decision is particularly useful or applicable, it might be helpful to the Panels, but otherwise paper copies should be discouraged.  What is useful is having all the exhibits in electronic form – either text files or .PDF format, since they can then be distributed and read rapidly by the Panels who are used to using such materials.

 

FINDINGS

(1)  Complainant has established to the satisfaction of the Panel that it owns now and has owned for some time, and is currently using a number of common law and registered trademarks and service marks on the coined word “Raiderettes,” which marks are identical to the Respondent’s disputed domain name <raiderettes.com> except for the extension “.com” which is legally irrelevant under well established UDRP decisions.

 

(2)  Under the facts described by both Complainant and Respondent, the Panel is not convinced that Respondent or at least its predecessor BRE did not, at the time of original registration and for some time thereafter, have some legitimate fractional interest in the domain name in dispute, albeit subject to the restrictions in the license rights it held from Complainant. However, for the reasons explained below, the Panel does not believe it is in a position to rule on the issue of whether the Respondent as successor to BRE currently has any such rights or interest in the domain name sufficient to meet the requirements of the UDRP. Such issues are beyond the purview of an ICANN UDRP panel, since they require factual and legal determinations about the meaning of the licensing terms and other issues not contemplated by the UDRP.

 

(3)  For the same reasons, the Panel is unable to determine, conclusively, whether the present holder of the registration on the disputed domain name is holding and using it in bad faith, and accordingly makes no findings on this third leg of the UDRP requirements.  It appears, although somewhat irrelevant in light of the lack of evidence as to the present holder, that the original registrant may have been using the domain name in good faith, at least for a period of time until assigned to Respondent.

 

DISCUSSION

In the judgment of the Panel, this dispute should not have been brought under the UDRP, since the nature of this case is not the sort of “abusive registration” and bad faith use factual situation contemplated by the framers of the UDRP.  Furthermore, there are a number of disputed factual and legal interpretations required to reach a proper decision here, which an arbitration panel, as opposed to a Federal trial judge, is simply not equipped to make. 

 

The facts are presented largely only in pleadings by the parties counsel and through extensive exhibits attached. Since the true meaning of many of these facts and the interpretation of documents can only be determined by listening to and observing the testimony of actual witnesses, a UDRP proceeding is a poor place to deal with such a dispute, a fact recognized in a number of UDRP decisions which have declined to order a transfer, based essentially on a finding that the Panel lacked jurisdiction to make such a determination.  See AutoNation Holding Corp. v. Rabea Alawneh, D2002-0581 (WIPO May 2, 2002) (holding that assertions of trademark infringement “are entirely misplaced and totally inappropriate for resolution through an ICANN proceeding. The scope of an ICANN proceeding is extremely narrow: it only targets abusive cybersquatting, nothing else.”); Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (refusing to transfer the domain name and stating that the ICANN Policy does not apply because attempting “to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy”).  We agree with these cases and their applicability here, on the admitted facts.

 

For example, Complainant, itself, acknowledges that it granted certain license rights to BRE to use of the Raiderettes mark for the purposes of selling merchandise and publicizing the identities and photographs of the young women who were on the Oakland Raiders cheerleading teams over the period of these licenses.  Furthermore, as Respondent points out, Complainant was fully aware of the registration and use of the domain name in dispute by BRE, and in fact benefited financially from the sales that occurred from use of the name and the website. Given these facts, it would appear to this Panel that what we have here is not a bad faith registration and use of a domain name similar to a trademark, but a dispute over the legal effect of the eventual termination of the license agreements and whether the licensee BRE had the right to make an assignment of whatever remaining rights it had to Fanstop.com.  That is simply not the purpose of the UDRP proceedings established by ICANN.

 

This is all the more so since 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.

 

Identical and/or Confusingly Similar

We have already noted that the disputed domain name is identical to the trademarks and service marks of Complainant.  No more need be said on this issue, on which Complainant prevails.

 

Rights or Legitimate Interests

Given the existence of the license agreements between Complainant and BRE, it appears that at least BRE had some colorable legal right or legitimate interest in registering and using the disputed domain name.  The rights of Fanstop.com, as an apparent assignee of these rights, are less clear and there is no way this Panel could determine this issue without further testimony and legal argument by the parties.  In light of this situation, the Panel concludes that Complainant has not met its burden on this issue; although it does appear there is some likelihood that at a court trial Complainant could establish that the rights have now expired or at least were not transferable or are no longer legally useable for this purpose.  For this reason, the Panel makes the suggestion it does in its ultimate decision below.

 

Registration and Use in Bad Faith

As noted above, there is little, if any evidence of bad faith registration and use by BRE, who originally registered the disputed domain.  There is insufficient evidence before the Panel to determine this issue with respect to the actual Respondent here, Fanstop.com.  In light of the fact that we ruled against Complainant on the second leg of its case, it makes no difference, in any event, what the finding were to be here.  It may be that the transfer to and continued use of the domain by Fanstop.com is in bad faith under the licenses granted BRE, but that issue needs to be determined by a court and not a UDRP panel, since it is a factual and legal determination unrelated to the purposes of the UDRP.

 

DECISION

For the reasons expressed in the Discussion, the Panel declines to order the transfer of the domain name <raiderettes.com> to Complainant.  As noted, this Panel simply has no jurisdiction to order the transfer, on these disputed facts, under the UDRP.

 

The Panel, however, strongly urges the respective parties to enter into serious discussions leading to a prompt transfer on a voluntary basis, since it appears to this Panel that a Federal court would have little difficulty finding that the continued ownership and use of the disputed domain would well lead to trademark infringement, confusion, possible dilution, and perhaps an intentional breach of the terms of the licensing agreements between Complainant and BRE and BRE’s affiliated entity, Fanstop.com, the actual Respondent herein.  Given what could possibly constitute bad faith use of the mark, such a Federal court decision could also result in an award of attorney fees and punitive damages against Respondent and its affiliate, BRE for such conduct. Under the circumstances, Respondent may wish to carefully consider the consequences of its apparent precarious legal position as the owner of the disputed domain name.

 

 

G. Gervaise Davis III, Esq., Panelist
Dated: January 11, 2003

 

 

 

 

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