ESPN, Inc. v. Domain Administrator
Claim Number: FA1007001333692
Complainant is ESPN,
Inc. (“Complainant”), represented by R.
Holland Campbell, of ESPN, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <espnnews.com>, registered with MONIKER ONLINE SERVICES, INC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 6, 2010.
On July 8, 2010, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <espnnews.com> domain name is registered with MONIKER ONLINE SERVICES, INC. and that Respondent is the current registrant of the name. MONIKER ONLINE SERVICES, INC. has verified that Respondent is bound by the MONIKER ONLINE SERVICES, 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 July 20, 2010, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of August 9, 2010 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
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 17, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
FACTUAL
AND LEGAL GROUNDS
This Complaint is based on the following factual and legal
grounds: ICANN Rule 3(b)(ix).
[a.] The domain name ESPNNEWS.COM (the “Disputed Domain Name”) is confusingly similar to Complainant’s registered trademark ESPN because it fully incorporates Complainant’s ESPNEWS mark with the additions of the letter “N,” and the generic top-level domain “.com.” These alterations do not sufficiently distinguish the disputed domain name from Complainant’s mark and thus the Disputed Domain Name is confusingly similar to Complainant’s mark pursuant to Policy ¶4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
[b.] Respondent does not meet the criteria in Paragraph 4(c) of the ICANN Uniform Domain Name Dispute Resolution Policy for demonstrating rights or legitimate interests in the domain name ESPNNEWS.COM. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
(i.) Respondent registered the ESPNNEWS.COM domain name on February 17, 2002. Complainant, upon discovering the unauthorized registration and use of its mark, sent a Cease and Desist letter to Respondent at it address of record on June 16, 2010. Complainant has, as of the filing of this complaint, received no response to the June 16, 2010 letter.
(ii.) Respondent is and has been using the Disputed Domain Name to direct consumers to link to numerous commercial links to sports news, industry and commercial websites.
(iii.) There is no evidence that Respondent has been commonly known by the domain name ESPNNEWS.COM.
(iv.) Respondent is in no way connected with Complainant, and has no authority, license, permission, or other arrangement from Complainant to use its trademark ESPN to identify Respondent’s domain name, website, or any products or services provided by Respondent.
[c.] The domain name ESPNNEWS.COM should be considered as having been registered and being used in bad faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
(i.) Respondent acted in bad faith when it registered the domain name ESPNNEWS.COM because it had constructive knowledge of Complainant’s registered ESPN mark prior to registering the disputed domain name by virtue of U.S. Trademark Registration Nos. 2111851, 2147722, 1345096, 1811475, and 1833935. See Morgan Stanley v. Ali Batgi, Nat. Arb. Forum Claim Number FA0705000991849 (June 26, 2007) (Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶4(a)(iii)); Merrell Pharms. Inc. v. Daniel Laforge, Nat. Arb. Forum Claim No. FA0502000420671 (Mar. 31, 2005) (Respondent acted in bad faith when it registered ALLEGRA.COM because it had constructive knowledge of Complainant’s rights in ALLEGRA, by virtue of Complainant’s federal trademark registration, prior to registering the disputed domain name).
B. Respondent failed to submit a Response in this proceeding.
Complainant, ESPN, Inc., registered its ESPNEWS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,111,851 issued November 11, 1997). Complainant uses its ESPNEWS mark to offer multimedia sports entertainment services.
Respondent, Domain Administrator, registered the <espnnews.com> domain name on February 17, 2002. The disputed domain name resolves to a website featuring a hyperlink directory that contains hyperlinks to websites of Complainant’s competitors in the sports entertainment industry.
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.
Complainant contends it has established rights in its
ESPNEWS mark under Policy ¶4(a)(i). Previous panels have found that a complainant
may establish rights in a mark through a trademark registration with a federal
trademark authority. See Miller
Brewing
Complainant claims Respondent’s <espnnews.com> domain name is confusingly similar to Complainant’s ESPNEWS mark. Past panels have determined a disputed domain name is confusingly similar to a disputed domain name when the disputed domain name contains a complainant’s mark with the addition of a letter and a generic top-level domain (“gTLD”). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Respondent’s <espnnews.com> domain name contains Complainant’s entire ESPNEWS mark and adds the letter “n” and the gTLD “.com.” Based on this evidence, the Panel concludes Respondent’s <espnnews.com> domain name is confusingly similar to Complainant’s ESPNEWS mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant claims Respondent does not have rights and legitimate interests in the <espnnews.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the <espnnews.com> domain name under Policy ¶4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c)); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant claims Respondent is not commonly known by the <espnnews.com> domain name under Policy ¶4(c)(ii). Prior panels
have determined that a respondent is not commonly known by a disputed domain
name if a respondent fails to present any evidence suggesting that it is
commonly known by the domain name, the complainant claims the respondent is not
authorized to use its mark, and the WHOIS information identifying the
registrant of the domain name is not similar to the domain name. See Tercent Inc. v.
Lee Yi, FA 139720 (Nat.
Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶4(c)(ii) does not apply);
see also M. Shanken
Commc’ns v. WORLDTRAVELERSONLINE.COM,
FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent
was not commonly known by the <cigaraficionada.com> domain name under
Policy ¶4(c)(ii) based on the WHOIS information and
other evidence in the record). In this case, Respondent has failed to
present any evidence that would support a finding that Respondent is commonly
known by the <espnnews.com> domain name, and the Panel cannot find
such evidence in the record. Complainant
argues Respondent is not authorized to use Complainant’s ESPNEWS mark. The WHOIS information identifies the
domain name registrant as “Domain Administrator,” which the Panel finds is not
similar to the <espnnews.com> domain name. Based on the
decisions of prior panels and the evidence in the record, the Panel concludes
Respondent is not commonly known by the <espnnews.com> domain name
under Policy ¶4(c)(ii).
Complainant claims
Respondent’s use of the disputed domain name does not provide evidence of
rights or legitimate interests in the disputed domain name under Policy ¶¶4(c)(i) and (iii). Past
panels have held that a respondent’s use of a disputed domain name to resolve
to a website containing hyperlinks to a complainant’s competitors is not 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 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 Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006)
(finding that the respondent’s use of domain names confusingly similar to the
complainant’s WAL-MART mark to divert Internet users seeking the complainant’s
goods and services to websites competing with the complainant did not
constitute 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)). Respondent uses its <espnnews.com>
domain name to resolve to a website featuring hyperlinks to Complainant’s
competitors in the sports entertainment industry. This Panel concludes Respondent’s use of the
disputed domain name does not constitute a bona
fide offering of goods or services pursuant to Policy ¶4(c)(i) or a
legitimate noncommercial or fair use of the disputed domain name pursuant to
Policy ¶4(c)(iii).
The Panel finds
Policy ¶4(a)(ii) satisfied.
Previous panels have found a respondent’s registration of a confusingly similar domain name and use of that domain name to resolve to a website that contained links to a complainant’s competitors constitutes bad faith registration and use under Policy ¶4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶4(b)(iii).”). While Complainant does not allege that Respondent’s use of the <espnnews.com> domain name constitutes bad faith registration and use under Policy ¶4(b)(iii), Respondent does use the disputed domain name to resolve to a website that contains hyperlinks to Complainant’s competitors in the sports entertainment industry. Therefore, the Panel concludes Respondent’s use of the <espnnews.com> domain name constitutes bad faith registration and use under Policy ¶4(b)(iii).
Past panels have also held that a respondent’s use of a
confusingly similar disputed domain name to resolve to a website featuring
third-party hyperlinks constitutes bad faith registration and use if the
respondent is commercially benefiting from such a use through the receipt of
click-through fees. See Zee
TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18,
2006) (finding that the respondent engaged in bad faith registration and use by
using a domain name that was confusingly similar to the complainant’s mark to
offer links to third-party websites that offered services similar to those
offered by the complainant); see also Univ. of Houston Sys. v.
Salvia Corp., FA 637920 (Nat. Arb. Forum Mar.
21, 2006) (“Respondent is using the
disputed domain name to operate a website which features links to competing and
non-competing commercial websites from which Respondent presumably receives
referral fees. Such use for Respondent’s
own commercial gain is evidence of bad faith registration and use pursuant to
Policy ¶4(b)(iv).”). Complainant does not squarely raise the issue
of bad faith registration and use under Policy ¶4(b)(iv). However, Respondent uses the <espnnews.com> domain name to resolve to a website that
contains third-party hyperlinks to Complainant’s competitors. The Panel infers Respondent receives
click-through fees from the aforementioned hyperlinks and is therefore attempting
to commercially benefit from Internet users’ confusion as to Complainant’s
affiliation with the disputed domain name.
Based on the findings of previous panels and the evidence in the record,
the Panel holds Respondent’s use of the <espnnews.com> domain name
constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <espnnews.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: August 21, 2010
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