DECISION

 

Arena Football League, LLC v. Armand F. Lange & Associates

Claim Number: FA0210000128791

 

PARTIES

Complainant is Arena Football League, LLC, Chicago, IL (“Complainant”).  Respondent is Armand F. Lange & Associates, Atlanta, GA (“Respondent”) represented by Cynthia Blake Sanders, of Astrachan, Gunst, Thomas & Ahn, P.C.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <afl.com>, registered with 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 Panelist in this proceeding.

 

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

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 28, 2002; the Forum received a hard copy of the Complaint on October 31, 2002.

 

On October 30, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <afl.com> is registered with Network Solutions and that the Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the 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 November 5, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 25, 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@afl.com by e-mail.

 

Respondent requested an extension of time to file a Response with Complainant’s consent.  The Forum granted the request to extend the deadline to December 2, 2002.

 

A timely Response was received and determined to be complete on December 2, 2002.

 

On December 12, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.  Respondent requests that the Panel finds that Complainant has engaged in reverse domain name hijacking.

 

PARTIES’ CONTENTIONS

A. Complainant

 

1.         Respondent’s <afl.com> domain name is identical to Complainant’s registered and common law mark “AFL.”

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

3.                  Respondent registered the <afl.com> domain name in bad faith.

 

 

B. Respondent

Respondent, Armand F. Lange & Associates, contends that it has legitimate interests in the domain name.  Respondent’s selection of the domain name <afl.com> is based on the initials of the name of Respondent’s contact person, Armand F. Lange.  Respondent’s primary purpose of registering the domain name was to build a web site to market its staffing business on the Internet.  Respondent actively engaged in the staffing business for approximately 1½ years.  After the business failed, Respondent renewed the domain name registration in 1999, 2000 and 2001 with a bona fide good faith intent to revive the business in the future.

 

Complainant has provided no evidence showing that consumers are likely to be confused by the concurrent use of Respondent’s domain name and Complainant’s mark, or that Respondent’s use of its domain name created any disruption to its business.

 

FINDINGS

1.                  Complainant, Arena Football League, LLC (“Complainant” or “AFL”), is a professional football league consisting of 23 teams (16 of which were active for the 2002 season, the remaining 7 are expansion teams which have been approved to begin play in the next three years) located throughout the United States of America, including 8 of the 10 largest media markets in the U.S.

 

2.                  The AFL filed an Intent-to-Use trademark application for the mark “AFL” in International Class 041 on January 21, 1993.  This application was assigned U.S. Serial No. 74/350005 by the United States Patent and Trademark Office (“USPTO”).  On March 29, 1994, the AFL filed an Amendment to Allege Use with the USPTO stating that the mark “AFL” was used by the AFL beginning May 1993.  On September 20, 1994, U.S. Application Serial No. 74/350005 matured into U.S. Registration No. 1,855,376. That registration covers the following services:

 

“Entertainment services in the nature of organizing, scheduling and conducting football games.” 

 

3.                  Since May 1993, the AFL has filed Intent-to-Use trademark applications for the following design logos, and has undertaken use of all of the logos in connection with the goods and services listed in their applications:

 

a. AFL & DESIGN                 76/440735                  Classes 16, 25, 41

 

b. AFL & DESIGN                 76/440733                  Classes 16, 25, 41

 

c. AFL ARENA FOOTBALL

    LEAGUE & DESIGN         76/440734                  Classes 16, 25

 

d. AFL ARENA FOOTBALL

    LEAGUE & DESIGN         76/435290                  Class 41

 

4.                  The AFL filed a use-based trademark application for “AFL MEDIA & DESIGN” in International Class 041 on April 8, 2002. This application was assigned U.S. Serial No. 76/395023 by the USPTO and displays “AFL” as the dominant component of the design.

 

5.                  The AFL registered for the domain name <aflmedia.com> around December 13, 2001.

 

6.                  The AFL began using the domain <aflmedia.com> on or about December 21, 2001 to provide information about the AFL and its teams, players, etcetera to local and national media.  The AFL prominently displays AFL-formative logos on the homepage.

 

7.                  The AFL has continuously used the “AFL” mark in various sport services’ channels of commerce since May 1993.  The “AFL” mark has been displayed to the eleven million plus (11,000,000+) fans that have attended an AFL game since May 1993.  Over one hundred million (100,000,000+) viewers have seen an “AFL” game broadcast on networks.  Sports services are obtained by the ninety thousand (90,000) new visitors to the AFL’s current website every month, located at <arenafootball.com>, where the “AFL” mark is prominently utilized. 

 

8.                  The designation “AFL” has been associated with Complainant through numerous articles in various local and national print media.

 

9.                  The AFL also owns international trademark registrations for the mark “AFL”.

 

10.              Respondent, Armand F. Lange & Associates, purports to be an organization doing business in Georgia or Virginia.  Respondent first registered the domain <afl.com> on or about June 12, 1997 with Network Solutions, Inc. for a period of two years.  Respondent’s contact person is Armand F. Lange of Atlanta, Georgia.

 

11.              Around April 1997 Respondent started a business, under Armand F. Lange & Associates, and also known to his clients and vendors as AFL & Associates, providing recruiting and staffing services in the field of information technology.  Respondent was issued a business license by the Commonwealth of Virginia.  In July 1997, Respondent selected the domain name <afl.com> based on the first three initials of its business name and of the personal name of its contact person, Armand F. Lange.  On July 12, 1997, Respondent registered <afl.com> to build a web site to market its business over the Internet.  From April 1997 to December 1998, Respondent was actively engaged in promoting his staffing business.  In late 1998, Mr. Lange sought other employment in order to maintain his livelihood because his staffing business was not successful.

 

12.              In late 1998, Respondent removed his web site from the Internet to reduce his business operating expenses and Respondent ceased using the domain name <afl.com>.  Respondent renewed its registration of the domain name for the periods of June 13, 1999 to June 12, 2000, of June 13, 2000 to June 12, 2001, and of June 13, 2001 to June 12, 2003.  Respondent claims to have kept the domain name in hopes of restarting the business later.  

 

13.              The AFL made several informal attempts to purchase the domain name from Respondent.  On October 3, 2000, Respondent offered to sell the domain name for over $100,000, far in excess of any out of pocket expenses that could have possibly been expended in relation to the Domain.  Respondent raised the sale price of the domain name to $150,000 on November 15, 2001.  Respondent refused to sell the domain name for $1000 on March 1, 2002 stating that it wanted to “keep fishing and…catch a big one.”  Respondent also stated that it had put up a new “for sale” sign on the domain.  On March 2, 2002, Respondent offered to lease the domain name for $5,000 per month, or to sell it for $300,000.  Respondent refused to sell the domain name for $1500 on March 5, 2002, stating that the purchase price was $300,000.

 

14.              Sometime in 2000 or 2001, Respondent contacted the Australian Football League with the intent to sell the domain name to the Australian Football League for $250,000 to $500,000 (USD) plus first class airfare from the United States to Australia for the Australian Football League’s championship game for a period of four years.

 

15.              Respondent does not own trademarks for “AFL,” “Armand F. Lange & Associates,” or “AFL & Associates.”  Respondent is not doing business as “AFL.”  Respondent is not commonly known as “AFL.”

 

DISCUSSION

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

Respondent admits that the domain name <alf.com> is identical to Complainant’s mark “AFL;” however Respondent argues that there is no likelihood of confusion.  Since the domain name is identical to Complainant’s registered mark, it is unnecessary to address the likelihood of confusion in connection with the first element.

 

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

“Respondent may fairly use descriptive or generic terms as a commercial domain name.”  Eastbay Corporation v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002); see also Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb Forum Feb. 19, 2001) (Respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”).  The mark “AFL” is a descriptive name in which Complainant cannot have exclusive rights. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,2000).  However, Respondent is not using the domain name <afl.com> but has been passively holding the domain for three years for the only purpose of selling the domain name for an amount in excess of its out-of-pocket costs of registration.  See HomeFinishers, Inc. v. Tom Schutz, FA 123928 (Nat. Arb. Forum Oct. 10, 2002) (The passive holding of the domain name <homefinishers.com> for over two years without providing any demonstrable plans or preparations to use the domain name fails to show rights or legitimate interests). 

Initially, Respondent engaged in a legitimate business enterprise using the web site to market its business.  However, Respondent has discontinued that business and Respondent’s only use of the domain name since 1998 has been passive use and holding the domain name for sale.  In view of the subsequent passive use and the offers to sell for more than the registration costs, Respondent’s evidence fails to show use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services. See Flor-Jon Films v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name). 

 

Respondent asserts the intent to use the domain name at some unspecified time in the future.  Respondent has not shown any concrete evidence in support of such plans. See Do The Hustle, LLC v. Tropic Web, supra. (“once the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by concrete evidence that it has rights to or legitimate interests in the domain name at issue. . . . ‘Concrete evidence’ constitutes more than personal assertions.”). A Respondent’s “unsupported, self-serving allegations alone are insufficient to establish that [the] Respondent has rights or legitimate interests in respect to the domain name at issue.”  Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (finding the Respondent’s assertion that she registered the domain name <foxstudios.biz> in order to get a website address for her planned dance studios, without evidentiary support, was insufficient to establish that she had rights or interests in respect to the domain name at issue); see also Travel in A Moment, Inc. v. F.S. Janco, FA 96821 (Nat. Arb. Forum Apr. 9, 2000) (Respondent failed to show rights or legitimate interests in <momentsnoticetravel.com> where Respondent contended that domain name was registered for future use in connection with an “undisclosed business venture”); Camper, S.L. v. DPR USA a/k/a Global DNS Services, FA 118188 (Nat. Arb. Forum Oct. 22, 2002) (Respondent failed to establish legitimate interests in the domain name <camper.us> through mere statement of intent to market campers).

Finally, a Respondent may demonstrate its rights or interests in a domain name by proving that it has been commonly known by the domain name, even if it has acquired no trademark or service mark rights.  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).  However, Respondent is not commonly known as “AFL”or <afl.com>.

 

Respondent has failed to show rights or a legitimate interest in the domain name. 

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.  

Registration and Use in Bad Faith

Respondent contends that there is not a likelihood of confusion between the domain name and Complainant’s mark because their respective services, consumers and channels of marketing are vastly different.  See Interstellar Starship Services, Limited v. Tchou, 304 F.3d 936 (9^th Cir. 2002) (where the domain name contains a common term and the goods offered by the two companies differ significantly, the court found no likelihood of confusion between <epix.com> for electronic photo gallery and registered trademark EPIX for hardware and software related to imaging processes).  Respondent’s argument would have merit if Respondent were using the domain name or had made demonstrable preparations to use the domain name prior to notice of the dispute.  However, Respondent has not used the domain name for three years and has failed to show any preparations to use the domain name.

 

Complainant contends Respondent renewed its domain name with the bad faith intent to sell the rights to the domain name to AFL or AFL’s competitor for an amount in excess of its out-of-pocket costs.  Respondent initially registered the domain name in good faith using initials of its business name and of its contact person.  However, Respondent discontinued that business and Respondent’s only use of the domain name since 1998 has been passive use and holding the domain name for sale. See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).  Complainant has shown bad faith use of the domain name.

 

However, the question here is whether Respondent’s renewal of the domain name registration operates as “registration” for the purposes of analysis under Policy ¶ 4(a)(iii).  The Panel concludes that it does not.

 

Policy ¶ 4(a)(iii) requires a showing that a domain name be found to have been both registered and used in bad faith before finding for complainant.  It is well settled that if a domain name was originally used in good faith, but was subsequently put to bad faith use, one prong of the analysis is met.

 

However, when analyzing bad faith registration under the Policy, there has been nearly unanimous consent among panels that a finding of bad faith registration involves scrutinizing the respondent at the time it originally registered the disputed domain name, not the circumstances surrounding any renewal of the domain name registration.  Therefore, once a panel finds that a domain name was originally registered in good faith, any subsequent renewal which could qualify as having been done in bad faith is irrelevant:  the relevant point of inquiry occurs at registration, not renewal of that registration.  It was not the intent of the drafters of the Policy to include bad faith renewals of domain name registrations as relevant for Policy ¶ 4(a)(iii) analysis.  See Weatherall Green & Smith v. Everymedia.com, D2000-1528 (WIPO Feb. 19, 2001) (despite a finding by the panel that the <weatheralls.com> domain name registration was renewed in bad faith, the relevant inquiry for purpose of Policy ¶ 4(a)(iii) analysis is whether the original registration was done in bad faith. The panel determined that, “a registration of a domain name that at inception did not breach Rule 4(a)(iii), but is found later to be used in bad faith does not fall foul of Rule 4(a)(iii).”); see also Spirit Airlines, Inc. v. Spirit Airlines Pty. Ltd., D2001-0748 (WIPO July 25, 2001) (holding that, “[r]enewal of a domain name registration…is no different from renewal of a trademark registration [as] it represents a continuation of the original registration.  Were Complainant’s argument to succeed, all ‘innocent’ registrants of domain names would be at risk of becoming branded ‘cybersquatters’”; see also Aetna Inc. v. Jacoby Partners 1999-2, L.L.C. FA 125816 (Nat. Arb. Forum Nov. 22, 2002) (finding that whether a domain name registration was renewed in bad faith is irrelevant in analyzing the registration element of Policy ¶ 4(a)(iii), while holding that because the original registration was done in bad faith, the facts warranted a finding for Complainant).

 

The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.

Reverse Domain Name Hijacking

Complainant has not engaged in reverse domain name hijacking.  Although not successful, Complainant’s Complaint was not so devoid of merit as to constitute a bad faith attempt to deprive the Respondent of its domain name.

 

DECISION

Having failed to establish registration in bad faith under ICANN Policy, the Panel concludes that relief shall be hereby DENIED.

 

Accordingly, Respondent shall not be required to transfer to Complainant the domain name <afl.com>.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 26, 2002

 

 

 

 

 

 

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