ESPN, Inc. v. DisplayPop / Bill Tucker
Claim Number: FA1202001428080
Complainant is ESPN, Inc. (“Complainant”), represented by Allison Cantor of ESPN, Inc., Connecticut, USA. Respondent is DisplayPop / Bill Tucker (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <espnshowcaseflorida.com>, <espnsportsnetwork.com>, and <espnnetworksports.com>, registered with Tucows.com.
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.
Francine Tan as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 3, 2012; the National Arbitration Forum received payment on February 6, 2012.
On February 3, 2012, Tucows.com confirmed by e-mail to the National Arbitration Forum that the <espnshowcaseflorida.com>, <espnsportsnetwork.com>, and <espnnetworksports.com> domain names (the “disputed domain names”) are registered with Tucows.com and that Respondent is the current registrant of the names. Tucows.com has verified that Respondent is bound by the Tucows.com 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 February 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2012 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@espnshowcaseflorida.com, postmaster@espnsportsnetwork.com, and postmaster@espnnetworksports.com. Also on February 8, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on February 29, 2012.
On March 7, 2012 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Francine Tan as Panelist.
Complainant requests that the disputed domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant is a leading multinational, multimedia sports entertainment company featuring a portfolio of more than 50 multimedia sports assets. It runs within the United States, eight 24-hour television networks including ESPN, ESPN2, ESPNEWS, ESPNU, ESPN Classic, ESPN Deportes, ESPN 3D and the regionally focused Longhorn Network and five HD simulcast services (ESPN HD, ESPN2 HD, ESPNU HD, ESPNEWS HD, and ESPN Deportes HD). Other businesses include ESPN Regional Television, ESPN International, ESPN Radio, ESPN.com, ESPN the Magazine, ESPN Enterprises, ESPNHS and espnW. Multi-screen offerings including WatchESPN and ESPN3.
Launched as a flagship network on September 7, 1979, the Complainant is the largest sports cable television network in the United States, with programming currently seen in more than 99 million households. It 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, and the X Games. ESPN Films creates branded programming outside of the network's traditional event and sports news genres.
The Complainant ’s federally registered trademarks for ESPN include: Registration Nos. 2,147,722; 1,345,096; 1,811,475; and 1,833,935. It 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. The Complainant also owns U.S. federal registrations for the following ESPN-formative marks: ESPN Logo (Reg. Nos. 1,437,972; 1,814,380; 1,836,935; and 2,147,721), ESPN2 (Reg. No. 1,868,612), ESPN FULL COURT (Reg. No. 2,059,991), ESPNEWS (Reg. No. 2,111,851), ESPN PLUS (Reg. No. 2,218,679), ESPN.COM (Reg. No. 2,383,745), ESPN ZONE (Reg. No. 2,272,265 and 2,321,866), ESPN CLASSIC (Reg. No. 2,393,477), ESPN2 Logo (Reg. No. 2,431,776), ESPN RADIO (Reg. No. 2,692,865), and ESPN SHOP (Reg. No. 3,136,809), amongst others. It also has ESPN and ESPN-formative trademark registrations in more than 150 countries throughout the world.
The Respondent registered the <espnshowcaseflorida.com> domain
name on October 7, 2011, <espnsportsnetwork.com> on October 23,
2011 and <espnnetworksports.com> on December 20, 2011. The
Complainant upon discovering the unauthorized registration and use
of its ESPN mark, sent a cease and desist letter to the Respondent at
its address of record on December 19, 2011. The Respondent sent a
response on December 28, 2011 by email suggesting a “mutually
beneficial solution” that would include a financial arrangement for the
transfer of the disputed domain names to the Complainant.
The disputed domain names are confusingly similar to the Complainant’s registered trademark ESPN because they fully incorporate the Complainant’s ESPN mark with the addition of the words “SHOWCASEFLORIDA,”, “SPORTSNETWORK” and “NETWORKSPORTS” and the generic top-level domain “.com.” These alterations do not sufficiently distinguish the disputed domain names from the Complainant’s mark and thus the disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). Previous UDRP Panel decisions referred to by the Complainant were Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000); Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000); Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 26, 2000).
The Respondent has no rights or legitimate interests in respect of the disputed domain names for the following reasons:
(i) there is no evidence that the Respondent has been commonly known by the disputed domain names; and
(ii) the Respondent is in no way connected with the Complainant, and has no authority, license, permission, or other arrangement from the Complainant to use its trademark ESPN as domain name or to identify the Respondent’s website, or any products or services provided by the Respondent.
The disputed domain names should be considered as having been registered and being used in bad faith because the Respondent had constructive knowledge of the Complainant’s registered ESPN mark prior to registering the disputed domain name by virtue of the Complainant’s U.S. Trademark Registration Nos. 2,147,722; 1,345,096; 1,811,475; and 1,833,935. 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). See Morgan Stanley v. Ali Batgi, FA 991849 (Nat. Arb. Forum Jun. 27, 2007); Merrell Pharms. Inc. v. Daniel Laforge, FA 420671 (Nat. Arb. Forum Mar. 31, 2005).
B. Respondent
The Respondent’s Response was submitted by way of an email to the National Arbitration Forum on February 29, 2012. It claimed that the letters ESPN in the disputed domain names stand for “Extreme Sports Professional Network and is not in any way related to any other ESPN entity”, and a disclaimer on its home page at <espnshowcaseflorida.com> confirms this. It claimed that it is not aware of what ESPN otherwise stands for.
The Respondent claims that the Complainant “do[es] not own the trademark where ESPN is only a part of the trademark or domain name”; and that each of the domain names in this dispute “are unique and individual domain names and do not contain ESPN as a stand alone value or trademarked name”. It also asserts that its websites to which the disputed domain names resolve constitute a “real website with important content and is not an attempt at cybersquatting in any way”.
(a) The disputed domain names are confusingly similar to the trademarks in which the Complainant has rights.
(b) The Respondent has no legitimate rights or interests in respect of the <espnshowcaseflorida.com> and <espnnetworksports.com> domain names. The Complainant has not established a prima facie case that the Respondent has no legitimate rights or interests in respect of the <espnsportsnetwork.com> domain name.
(c) There is no evidence that the disputed domain names have been registered and are being used 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."
Paragraph 4(a) of the Policy requires that complainants 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; and
(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.
The Complainant has proven it has rights in the trademark ESPN, both by virtue of its federal trademark registrations and through extensive use.
The Panel accepts the Respondent’s submission that there is confusing similarity between the disputed domain names and the Complainant’s
trademark, ESPN.
It is stated in paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition that “The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name. The principal exception that some panels have found in certain cases is where a trademark (especially one of a descriptive nature) is incorporated or subsumed within other words or textual elements so that the trademark is not clearly the dominant component of the domain name.”
In the Panel’s view, the dominant or principal component of the disputed domain names is the trade mark ESPN. The words “SHOWCASE”/ “SHOWCASE FLORIDA”, “SPORTSNETWORK” and “NETWORKSPORTS” are generic or descriptive in nature and do not serve to eliminate confusion.
Paragraph 4(a)(i) of the Policy has been established.
The relevant provision of the UDRP in relation to the issue of rights or legitimate interests in a domain name is paragraph 4(c) of the Policy, which provides examples of how a respondent may demonstrate its rights to and legitimate interests in a domain name, in responding to a complaint. These are:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain
name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It has been established in previous UDRP panel decisions (both under the National Arbitration Forum and WIPO) that a complainant must first establish a prima facie case that the respondent lacks rights and legitimate interests in respect of the domain name in dispute, after which the burden shifts to the respondent to show it does have rights or legitimate interests.
The Complainant states that there is no evidence that the Respondent has been commonly known by the disputed domain names and that the Respondent has not been authorized or permitted to use the Complainant’s ESPN trademark as a domain name or in relation to any products or services. The Complainant also submits that the Respondent’s lack of rights or legitimate interests is demonstrated by the request for a financial arrangement for the transfer of the disputed domain names, as a “mutually beneficial solution”.
The Panel has noted that the evidence submitted by the Complainant shows that the <espnshowcaseflorida.com> domain name resolves to a website offering competing content; and the <espnnetworksports.com> domain name resolves to an inactive website. However, no specific allegations or arguments have been made in relation to the <espnnetworksports.com> domain name. There is also no evidence given nor allegations made in relation to how the <espnsportsnetwork.com> domain name is used.
The Panel’s observation is that the Complainant could have been much more thorough and comprehensive in establishing its case; as noted above, no submissions of arguments or of evidence were made in relation to the <espnsportsnetwork.com> domain name. More could have been done by the Complainant to flesh out and substantiate its case in relation to each of the disputed domain names. Plain assertions by a complainant without more do not, generally speaking, provide a sufficient basis for panelists to make a finding for the complainant. In this case, the Panel is also unable, from the evidence submitted, to make a conclusive finding that the disputed domain names were registered for the purpose of ultimately selling them to the Complainant. The communication relating to the Respondent’s suggestion of a “mutually beneficial solution” does not suffice in itself to a finding of an absence of rights or legitimate interests.
The Respondent claims to have been using the disputed domain names in relation to a bona fide offering of goods and services, and explains that ESPN is intended to stand for “Extreme Sports Professional Network”. He has also asserted that his website offers quality content from professional reporters, advertisers and writers. Hence, there has been a claim of rights or legitimate interests in respect of the disputed domain names by the Respondent. What has been tendered in evidence by the Complainant, however, indicates that the <espnshowcaseflorida.com> domain name resolves to a website offering competing content; and the <espnnetworksports.com> domain name resolves to an inactive website. The Panel is of the view that these do not support the Respondent’s claim of a bona fide offering of goods and services.
Having considered all that has been made available in evidence, whilst the Panel is prepared to find that the Complainant has met the minimum requirement of making out a prima facie case that the Respondent has no rights or legitimate interests in respect of the <espnshowcaseflorida.com> and <espnnetworksports.com> domain names, it is not prepared to do so in relation to the <espnsportsnetwork.com> domain name as the Complainant has not provided any evidence as to the nature of this website. In the absence of such evidence, the Panel is unable to make any determination as to whether there has been a bona fide offering of goods or services. For this reason, the Panel finds that the Complainant has not met its burden of establishing a prima facie case in relation to the <espnsportsnetwork.com> domain name.
Paragraph 4(a)(ii) of the Policy has been established in relation to the <espnshowcaseflorida.com> and <espnnetworksports.com> domain names but not in relation to the <espnsportsnetwork.com> domain name.
Having found that that paragraph 4(a)(ii) has not been established in relation to the <espnsportsnetwork.com> domain name, the Panel will confine its consideration of the issue of registration and use in bad faith in relation to the <espnshowcaseflorida.com> and <espnnetworksports.com> domain names.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of the domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.
The only argument that the Complainant has put forward in relation to ¶ 4(a)(iii) of the Policy is that the Respondent had constructive knowledge of the Complainant’s ESPN trade mark prior to registering the disputed domain names, as the mark was registered with the USPTO. As a general policy, previous panels have held that “there is no place for constructive notice under the Policy.” See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008); see also Nat’l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007). The Complainant has not put forward any other basis for its allegation that the Respondent has registered and used the disputed domain names in bad faith. The Complainant has also not presented evidence in this case which demonstrates that the Respondent had registered or acquired the disputed domain names “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration[s] to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name[s]”, nor which indicate any of the other circumstances set out in paragraph 4(b) of the Policy. The Panel is unable to make a finding, having regard in particular to the words which have been underscored, that the circumstances fall within paragraph 4(b)(i) of the Policy. The Panel is of the view that the Respondent’s email communication of December 28, 2011 is inconclusive on this point.
In the circumstances, the Panel finds insufficient basis to conclude that there has been registration and use of the <espnshowcaseflorida.com> and <espnnetworksports.com> domain names in bad faith by the Respondent.
Paragraph 4(a)(iii) of the Policy has not been established.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED, without prejudice to the right of the Complainant to file a fresh complaint under the UDRP relating to the disputed domain names.
Accordingly, it is Ordered that the <espnshowcaseflorida.com>, <espnsportsnetwork.com>, and <espnnetworksports.com> domain names REMAIN WITH the Respondent.
Francine Tan, Panelist
Dated: March 26, 2012
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