ESPN, Inc. v. Intel Comp Solutions / Emmanuel Mikanagu
Claim Number: FA1106001392448
Complainant is ESPN, Inc. (“Complainant”), represented by R. Holland Campbell of ESPN, Inc., Connecticut, USA. Respondent is Intel Comp Solutions / Emmanuel Mikanagu (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <espnafrica.com>, registered with FASTDOMAIN, INC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2011; the National Arbitration Forum received payment on June 8, 2011.
On June 7, 2011, FASTDOMAIN, INC. confirmed by e-mail to the National Arbitration Forum that the <espnafrica.com> domain name is registered with FASTDOMAIN, INC. and that Respondent is the current registrant of the name. FASTDOMAIN, INC. has verified that Respondent is bound by the FASTDOMAIN, INC. 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 June 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 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@espnafrica.com. Also on June 9, 2011, the 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 July 5, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant has operated in the multimedia sports industry since 1979.
Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ESPN mark (Reg. No. 1,345,096, issued June 25, 1985).
Respondent registered the <espnafrica.com> domain name on January 9, 2009.
The disputed domain name resolves to a website featuring soccer scores and related sports news and schedules.
Respondent’s <espnafrica.com> domain name is confusingly similar to Complainant’s ESPN mark.
Respondent is not commonly known by the domain name <espnafrica.com>.
Respondent is in no way connected with Complainant, and has no authority, license or permission to use Complainant’s ESPN mark in its domain name.
Respondent does not have any rights to or legitimate interests in the domain name <espnafrica.com>.
Respondent registered and uses the disputed <espnafrica.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in its ESPN service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that a complainant had established rights in marks where the marks were registered with a national trademark authority). See also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent resides or operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).
Respondent’s <espnafrica.com> domain name is confusingly similar to Complainant’s ESPN service mark. The domain name incorporates the mark in its entirety. This is itself evidence that the disputed domain name is confusingly similar to Complainant’s mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001):
[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.
In forming the disputed domain name, Respondent has added to Complainant’s mark the geographic term “Africa.” This is insufficient to distinguish the domain name from the mark under the standards of the Policy. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004):
[i]t is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.
Respondent has also added to Complainant’s mark the generic top-level domain “.com.” As with the addition of a geographic descriptor, this alteration of the mark in forming the domain name does not distinguish the domain from the mark under Policy ¶ 4(a)(i). See 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).
In light of all this, the Panel finds that Respondent’s <espnafrica.com> domain name is confusingly similar to Complainant’s ESPN service mark for purposes of Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights to and legitimate interests in the <espnafrica.com> domain name. Initially, Complainant carries the burden of making out a prima facie case under this head of the Policy. Once this has been done, the burden shifts to Respondent to refute Complainant’s claims by showing that it has such rights or legitimate interests in the contested domain. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Respondent’s failure to respond to the allegations of the Complaint filed in this proceeding may be taken as evidence that Respondent lacks rights to and legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002):
Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.
Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
In this connection we first consider that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the domain name <espnafrica.com>, and that Respondent is in no way connected with Complainant, and has no authority, license or permission to use Complainant’s ESPN mark in its domain name. Moreover, the WHOIS information for the disputed domain name identifies Respondent only as “Intel Comp Solutions / Emmanuel Mikanagu,” which does not resemble the disputed domain name. On this record, we must conclude that Respondent is not commonly known by the <espnafrica.com> domain name and so has failed to demonstrate that it has rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the disputed domain name <emitmortgage.com>, where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the domain name).
Complainant further alleges, without objection from Respondent, that its use of the disputed domain name does not constitute either 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). We agree. There is no evidence that Respondent uses the contested domain name and the resolving website for commercial gain. Accordingly, Policy ¶ 4(c)(i) does not apply. Likewise, Respondent has offered no evidence to indicate that it uses the contested domain to parody or critique Complainant or as a vehicle for political or social commentary. Rather it appears that Respondent employs the domain name as a device to attract to its website Internet users interested in sports under the assumption that the presence of Complainant’s mark in the domain will catch the attention of such users. In the circumstances, therefore, Respondent’s unauthorized use of Complainant’s mark in the domain name fails to fall within the protection of Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that a respondent’s use of a complainant’s mark in domain names makes it difficult to infer a legitimate use); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003):
Diverting customers, who are looking for products relating to the … mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
It is evident on this record that Respondent had notice of Complainant’s rights in the ESPN service mark when it registered the disputed <espnafrica.com> domain name. This indicates Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002):
[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.
See also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that a respondent had actual or constructive notice of a complainant’s EXXON mark, so that that respondent must have registered a competing domain name in bad faith).
For this reason, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <espnafrica.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 12, 2011
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