national arbitration forum

 

DECISION

 

Major League Baseball Properties, Inc. and MLB Advanced Media, L.P. v. Mohammad Sultan

Claim Number: FA0909001284302

 

PARTIES

Complainant is Major League Baseball Properties, Inc. and MLB Advanced Media, L.P. (“Complainant”), represented by Richard S. Mandel, of Cowan, Liebowitz & Latman, P.C., New York, USA.  Respondent is Mohammad Sultan (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <watchlivemlb.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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 14, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 16, 2009.

 

On September 15, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <watchlivemlb.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 September 21, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 13, 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@watchlivemlb.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 15, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <watchlivemlb.com> domain name is confusingly similar to Complainant’s MLB mark.

 

2.      Respondent does not have any rights or legitimate interests in the <watchlivemlb.com> domain name.

 

3.      Respondent registered and used the <watchlivemlb.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

MLB Advanced Media, L.P. is the Internet and interactive media company, a subsidiary of Major League Baseball Properties, Inc., that has exclusive licensing rights over the MLB mark with respect to usage on the Internet and interactive media.  These companies (collectively, “Complainant”)  have been engaged in extensive and continuous marketing under the MLB mark for Major League Baseball and the baseball games, entertainment, and services related to it since 1903.  Additionally, Complainant is the owner of multiple registrations for the MLB mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,779,958 issued November 4, 2003).  Complainant owns and operates a website resolving from the <mlb.tv> domain name that provides an online telecast subscription service for Major League Baseball games. 

 

Respondent, Mohammad Sultan, registered the <watchlivemlb.com> domain name on November 12, 2008.  The disputed domain name resolves to a website where Respondent sells subscriptions to consumers purporting to enable Internet users to watch telecasts of Major League Baseball games online.  The disputed domain name’s resolving website prominently includes references to Complainant, the MLB mark, and the Major League Baseball organization. 

 

DISCUSSION

Paragraph 15(a) of 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."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   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

 

Complainant has provided evidence of multiple registrations of its MLB mark with the USPTO (e.g., Reg. No. 2,779,958 issued November 4, 2003).  The Panel finds that this evidence is sufficient to establish Complainant's rights in its MLB mark pursuant to Policy ¶ 4(a)(i).  See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).  Moreover, the Panel finds that it is not necessary for Complainant to have registered its MLB mark in the country of Respondent’s residence.  See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).

 

Respondent’s <watchlivemlb.com> domain name incorporates Complainant’s MLB mark in its entirety with the descriptive prefix “watch live” and the affixation of the generic top-level domain “.com.”  The Panel finds that the addition of the phrase “watch live” does not distinguish the disputed domain name and may even increase the likelihood of confusion since the phrase has an obvious relation to Complainant’s offering of baseball telecasts on its <mlb.tv> domain name.  Additionally, the Panel concludes that the affixation of a generic top-level domain does not sufficiently differentiate the disputed domain name from Complainant’s MLB mark.  The Panel therefore finds that Respondent’s <watchlivemlb.com> domain name is confusingly similar to Complainant’s MLB mark under Policy ¶ 4(a)(i).  See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (finding that the disputed domain names were confusingly similar to Complainant’s marks because each domain name incorporated the AMERICAN EXPRESS or AMEX marks in its entirety and merely added descriptive and generic terms which described Complainant’s business); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the disputed domain name.  Once Complainant presents a prima facie case outlining these allegations, the burden shifts to Respondent to establish it does have rights or legitimate interests in the disputed domain name.  The Panel finds that Complainant has presented a sufficient prima facie case to support its allegations and that Respondent has failed to submit a response in this proceeding.  Therefore, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  However, the Panel will inspect the record and determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).

 

Respondent’s disputed domain name resolves to a website that purports to offer live telecasts of Major League Baseball games under Complainant’s MLB mark.  Complainant alleges that Respondent is operating an unauthorized business that is in direct competition with Complainant and its legitimate telecast.  Complainant further contends that Respondent is collecting subscription fees from Internet users from the use of the <watchlivemlb.com> domain name.  The Panel thus concludes that Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).  See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”).

 

The WHOIS information for the <watchlivemlb.com> domain name identifies the registrant as “Mohammad Sultan.”  Complainant has not authorized Respondent to use its MLB mark and there is no evidence in the record to suggest that Respondent is otherwise known by the disputed domain name.  Therefore, the Panel concludes that Respondent is not commonly known by the <watchlivemlb.com> domain name under Policy ¶ 4(c)(ii).  See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s disputed domain name, which was registered on November 12, 2008, resolves to a website purporting to sell subscription services to Internet users to view telecasts of Major League Baseball games under Complainant’s MLB mark.  The Panel presumes that Respondent’s use of the disputed domain name likely disrupts Complainant’s business since Complainant offers legitimate baseball game viewing opportunities at its website resolving from the <mlb.tv> domain name.  Therefore, the Panel concludes that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).  See 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).”); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”). 

 

Respondent’s confusingly similar domain name diverts Internet users seeking Complainant’s business to Respondent’s <watchlivemlb.com> domain name and Respondent likely profits through the sale of subscription services.  Complainant contends that Respondent is intentionally attempting to attract Internet users to its website in order to capitalize on the goodwill that Complainant has established in its MLB mark.  Thus, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv).  See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).

 

The Panel finds that Complainant has satisfied 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 <watchlivemlb.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  October 24, 2009

 

 

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