ESPN, Inc. v. wan jia
Claim Number: FA1105001388442
Complainant is ESPN, Inc. (“Complainant”), represented by R. Holland Campbell of ESPN, Inc., Connecticut, USA. Respondent is wan jia (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <watchespn.com>, registered with 35 TECHNOLOGY CO., LTD.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 12, 2011; the National Arbitration Forum received payment on May 13, 2011. The Complaint was submitted in both Chinese and English.
On May 17, 2011, 35 TECHNOLOGY CO., LTD confirmed by e-mail to the National Arbitration Forum that the <watchespn.com> domain name is registered with 35 TECHNOLOGY CO., LTD and that Respondent is the current registrant of the name. 35 TECHNOLOGY CO., LTD has verified that Respondent is bound by the 35 TECHNOLOGY CO., LTD registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 17, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 6, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@watchespn.com. Also on May 17, 2011, the Chinese language Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 8, 2011, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
This Complaint is based on Complainant ESPN Inc.’s federally registered trademarks for ESPN, which include: Reg. Nos. 2147722, 1345096, 1811475, and 1833935. Complainant has continuously used its world-famous mark in connection with “magazines featuring general news and information concerning sports” since 1995, in connection with the “production of a cable television entertainment and sports programs” since 1979, in connection with “pre-recorded videotapes pertaining to sports” since 1987, and in connection with “computer and video game programs” since 1993. These registrations are in full force and effect, unrevoked, and incontestable.
Complainant also owns federal registrations for the following ESPN-formative marks: ESPN Logo (Reg. Nos. 1437972, 1814380, 1836935 and 2147721), ESPN2 (Reg. No. 1868612), ESPN FULL COURT (Reg. No. 2059991), ESPNEWS (Reg. No. 2111851), ESPN PLUS (Reg. No. 2218679), ESPN.COM (Reg. No. 2218679), ESPN ZONE (Reg. No. 2272265 and 2321866), ESPN CLASSIC (Reg. No. 2393477), ESPN2 Logo (Reg. No. 2431776), ESPN WIRELESS (Reg. No. 2651447), ESPN RADIO (Reg. NO. 2692865), ESPN SHOP (Reg. No. 3136809) and ESPN360 (Reg. No. 3288658), and others, as well as ESPN and ESPN-formative trademark registrations in effect in more than fifty countries throughout the world.
Information about Complainant’s ESPN goods and services is available on the website, http://www.espn.com, and Complainant’s products and services can be purchased through the Internet.
Complainant ESPN, Inc., The Worldwide Leader in Sports, is the leading multinational, multimedia sports entertainment company featuring the broadest portfolio of multimedia sports assets in the world, with over 50 business entities, including: ESPN on ABC, seven domestic cable television networks (ESPN, launched in 1979, ESPN Deportes, ESPN2, ESPN Classic, ESPNEWS, ESPNU, ESPN Today), ESPN HD and ESPN2 HD (high-definition simulcast services of ESPN and ESPN2, respectively), ESPN Regional Television, ESPN International (30 international networks and syndication), ESPN Radio, ESPN.com, ESPN The Magazine, ESPN Enterprises, ESPN Zones (sports-themed restaurants), and other businesses including ESPN360 (Broadband), Mobile ESPN (wireless), ESPN On Demand, ESPN Interactive and ESPN PPV.
Launched as a flagship network on September 7, 1979, ESPN is the largest sports cable television network in the United States, with programming currently seen in more than 91 million households. ESPN televises more than 5,100 live and/or original hours of sports programming annually, featuring more than 65 sports including: MLB, NBA, NFL's Monday Night Football, NASCAR, FIFA World Cup, WNBA, college football, men's and women's college basketball, including every game of the women's basketball tournament, tennis, PGA and LPGA Tour golf, Little League World Series, the X Games and the Great Outdoor Games. ESPN Original Entertainment (EOE) creates branded programming outside of the network's traditional event and sports news genres.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
[a.] The domain name WATCHESPN.COM (the “Disputed Domain Name”) is confusingly similar to Complainant’s registered trademark ESPN because it fully incorporates Complainant’s ESPN mark with the additions of the letters “WATCH,” 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 WATCHESPN.COM. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
(i.) Respondent registered the WATCHESPN.COM domain name on August 17, 2010. Complainant upon discovering the unauthorized registration and use of its mark, sent a Cease and Desist letter to Respondent at its address of record on February 9, 2011. Complainant has, as of the filing of this complaint, received no response to the February 9, 2011 letter.
(ii.) There is no evidence that Respondent has been commonly known by the domain name WATCHESPN.COM.
(iii.) 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 WATCHESPN.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 WATCHESPN.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. 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. is a television network which provides a wide array of sports related programming. Complainant owns a group of trademark registrations for the ESPN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,345,096 issued June 25, 1985). Complainant uses the mark to market and support its television business.
Respondent wan jia registered the <watchespn.com> domain name on August 17, 2010. The disputed domain name resolves to a website where Respondent offers to sell the disputed domain name in addition to displaying Internet advertisements that are unrelated to Complainant’s business.
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 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 its rights in the ESPN mark by registering that mark with the USPTO. Previous panels have determined registering a mark with a federal trademark authority, like the USPTO, establishes rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also 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). Therefore, the Panel finds Complainant has established its rights in the ESPN mark under Policy ¶4(a)(i) by registering that mark with a federal trademark authority, the USPTO (e.g., Reg. No. 1,345,096 issued June 25, 1985).
Complainant also contends Respondent’s <watchespn.com> domain name is confusingly similar to its ESPN mark. The disputed domain name incorporates Complainant’s entire mark while adding the descriptive term “watch” and the generic top-level domain name (“gTLD”) “.com.” The term “watch” adds to the confusion because it is closely linked to Complainant’s television services. In addition, Respondent has essentially admitted the allegations in Complainant’s complaint by not responding to it. Therefore, the Panel finds Complainant’s ESPN mark and Respondent’s <watchespn.com> domain name are confusingly similar under Policy ¶4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis).
The Panel finds Policy ¶4(a)(i) established.
Complainant has the initial burden of proof by making a prima facie case showing Respondent’s lack of rights or legitimate interests in the disputed domain name. Previous panels have held the burden shifts to the respondent to prove it has rights or legitimate interests in the mark after a complainant has made its prima facie showing. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Respondent failed to file a response in these proceedings, which allows this Panel to assume Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶4(a)(ii). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel elects to inspect the entire record to make its determination regarding Respondent’s rights or legitimate interests in the disputed domain name according to the factors listed in Policy ¶4(c).
Complainant asserts the WHOIS information lists the registrant of the disputed domain name as “wan jia.” Complainant contends this name is not similar to the disputed domain name and Complainant has not authorized Respondent to use the ESPN mark. Furthermore, the Panel, after inspecting the record, was unable to find any evidence Respondent is commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); 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).
Complainant alleges Respondent uses the disputed domain name to direct Internet users to a website featuring advertisements for goods and services that are unrelated to Complainant’s mark. The Panel finds such use 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶4(c)(i)); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name).
Complainant contends Respondent also posted an offer to sell the disputed domain name on the resolving website. Internet users arriving at the resolving website are subjected to the phrase “Make an instant, anonymous offer to the current domain registrant.” The Panel finds an general offer to sell the disputed domain name without some use of the domain name is evidence Respondent lacks rights or legitimate interests in the disputed domain name under 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 Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds Policy ¶4(a)(ii) established.
Complainant contends Respondent posts an offer to sell the disputed domain name on the resolving website. The Panel finds such an offer without further evidence the domain name is being used is evidence Respondent engaged in bad faith registration and use of the disputed domain name under Policy ¶4(b)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (determining that the respondent registered and used the <worldgyms.com> domain name in bad faith because it was offering it for sale as “one of the most popular names and website in the fitness industry.”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶4(b)(i).”).
Complainant asserts Respondent benefits financially from the advertisements posted on the website resolving from the disputed domain name. Internet users searching for Complainant are likely to become confused as to Complainant’s sponsorship of, and affiliation with the disputed domain name, resolving website and featured advertisements. The Panel presumes Respondent benefits from these advertisements and finds Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
The Panel finds Policy ¶4(a)(iii) established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <watchespn.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: June 14, 2011
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