Professional Rodeo Cowboys Association, Inc. v. Alternative Advertising Concepts, Inc. / Kenneth Forman
Claim Number: FA1204001440736
Complainant is Professional Rodeo Cowboys Association, Inc. (“Complainant”), represented by Tyler J. Davis of Holland & Hart LLP, Colorado, USA. Respondents are Alternative Advertising Concepts, Inc. / Kenneth Forman (“Respondents”), represented by Frank M. Caprio and Benjamin L. McArthur of Bradley Arant Boult Cummings LLP, Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nfr-rodeo.com> and <nationalfinalsrodeo.net>, registered with eNom, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.
The Honourable Neil Anthony Brown Q.C., Honorable Charles K. McCotter, Jr. (Ret.), Prof. Darryl C. Wilson, Chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2012; the National Arbitration Forum received payment on April 24, 2012.
On April 24, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <nfr-rodeo.com> and <nationalfinalsrodeo.net> domain names are registered with eNom, Inc. and that Respondents are the current registrant of the names. eNom, Inc. has verified that Respondents are bound by the eNom, 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 April 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 2012 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registration as technical, administrative, and billing contacts, and to postmaster@nfr-rodeo.com and postmaster@nationalfinalsrodeo.net. Also on April 25, 2012, the Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 4, 2012.
On June 11, 2012 Complainant’s Additional Submission was received in compliance with Supplemental Rule 7.
On June 18, 2012 Respondents’ Additional Submission was received and also deemed in compliance with Supplemental Rule 7.
On June 13, 2012 pursuant to Respondents’ request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown Q.C., Honorable Charles K. McCotter, Jr. (Ret.), Prof. Darryl C. Wilson, Chair, as Panelists.
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.
Complainant requests that the domain names be transferred from Respondents to Complainant.
A. Complainant
Complainant contends that it is the premier sanctioning body for rodeo events in North America and conducts an annual championship rodeo event held in Las Vegas, Nevada, known as the NATIONAL FINALS RODEO or NFR. Complainant states that “[s]ince at least as early as 1958, Complainant and its predecessor have continuously used the NATIONAL FINALS RODEO and NFR trademarks and other trademarks incorporating NFR as a dominant feature (the “NFR Marks”) to identify its events, entertainment services and accompanying goods and services.” Complainant contends that it owns valid, existing, and incontestable U.S. registrations for its NFR marks including registrations for NFR and NATIONAL FINALS RODEO. Complainant also asserts that it “maintains an active Internet presence” utilizing the NFR marks for domains such as <wnfr.com>, <wnfr.net>, <wnfr.org> and <wnfr.tv> amongst others. Complainant asserts that Respondents registered the allegedly offending domain names, <nfr-rodeo.com> and <nationalfinalsrodeo.net> after Complainant’s marks were applied for or registered without Complainant’s authorization. Complainant further contends that the disputed domain names are confusingly similar to it registered NFR marks and that the Respondents have no rights or legitimate interests in the disputed domains. Complainant finally contends that Respondents registered and are using the disputed domain names in bad faith.
B. Respondents
Respondents contend that they have continuously used the disputed domain names in connection with their business of buying and selling tickets to the National Finals Rodeo in the secondary market. Respondents claim to have established a legitimate and bona fide business using the disputed domain names for well over a decade before the Complainant protested. Respondents further contend that they were unaware of any trademark rights held by the Complainants related to the disputed domain names at the time of their registration. Respondents state that due to the circumstances and time involved that Complainant is “due to be denied pursuant to the doctrine of laches”. Respondents additionally argue that the disputed domain name <nfr-rodeo.com> is neither identical nor confusingly similar to any of the Complainant’s alleged trademarks or service marks. Respondents claim that their use of the disputed domain names is descriptive and not in the manner of a trademark use or for the purpose of causing any consumer confusion. Respondents also assert that the disputed domain names have not been registered or used in bad faith.
C. Additional Submissions
Complainant’s additional submission restates its contention that Respondents’ disputed domain names are confusingly similar to Complainant’s NFR marks. Complainant also asserts that it is aware of at least two instances of actual confusion caused by the disputed domains and attendant websites. Complainant provides further authority for its arguments that Respondents had no legitimate rights in the disputed domain names and that Respondents had registered and are using the disputed domain names in bad faith. Complainant states that Respondents’ assertion that it was unaware of Complainant’s trademarks is absurd. Complainant also contends that laches does not generally apply in UDRP proceedings and that even if it did apply the Respondents have either misapplied the doctrine or failed to adequately support their claims regarding the doctrine’s potential applicability to the circumstances in this case.
Respondents’ additional submission contends that Complainant wrongfully presents new evidence in various forms in Complainant’s additional submission and that the new evidence should be disregarded. Respondents also reassert their claim to legitimate rights and a lack of bad faith regarding the disputed domain names. Respondents argue that Complainant provided no counter arguments to the evidence provided by Respondents in regard to the latter’s claims of legitimate rights and interests established by their ticket reselling business. Respondents additionally contests Complainant’s adequacy of support in regards to its establishment of the NFR trademarks juxtaposing the same alleged lack of evidence with its claim of good faith registration and use. Respondents also offer additional support for the use of laches as a defense in UDRP cases.
Complainant, Professional Rodeo Cowboys Association Inc., owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its mark NATIONAL FINALS RODEO ( Reg. No. 2,145,811 filed August 21, 1996; registered March 24, 1998) and its mark NFR ( Reg. No. 2,081,586 filed August 21, 1996; registered July 22, 1997). Respondents registered the <nfr-rodeo.com> domain name on December 6, 1996 and the domain name <nationalfinalsrodeo.net> on June 7, 1998. Respondent, Kenneth Foreman has been in the ticket brokering business for more than twenty years. In 1993 in response to a client request for tickets to the National Finals Rodeo he and his company, Respondent Alternative Advertising Concepts, Inc., began buying and selling tickets to the event on a regular basis. Respondents’ success in brokering tickets to the National Finals Rodeo event led to the registration of the disputed domains and the web sites to which they resolve which offer tickets to the event and other related tickets and services. In 2010 Complainant sent Respondents a cease-and-desist letter regarding the disputed domain names and websites. Respondents did not respond. In 2012 Respondents received notice of the UDRP proceeding being brought against them.
Respondents’ domain names resolve to websites containing the same content although as to <nationalfinalsrodeo.com>. Respondents state that “AAC effectively does not use the site and the site is not promoted and has significantly less importance to AAC’s business than the <nfr-rodeo.com> domain . . . .” Respondents state however that “arguments for continued use apply to both domains. . . .”
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 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 provided the Panel with a table of its trademark registrations with the USPTO for its NATIONAL FINALS RODEO ( Reg. No. 2,145,811 filed August 21, 1996; registered March 24, 1998) and NFR marks ( Reg. No. 2,081,586 filed August 21, 1996; registered July 22, 1997). The Panel notes that both of the trademark registrations listed above relate to “conducting an annual national championship rodeo.” See Complainant’s Exhibit 1. The Panel finds that Complainant has established rights in the NFR and NATIONAL FINALS RODEO marks under Policy ¶ 4(a)(i), dating back to at least as early as August 21, 1996. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), (a trademark registration was sufficient to establish rights in a complainant’s mark under Policy ¶ 4(a)(i).), see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007), (a complainant’s rights in a USPTO trademark registration date back to the filing date of the trademark registration).
Complainant claims that Respondents’ <nfr-rodeo.com> domain name fully incorporates Complainant’s NFR mark and simply adds a hyphen, the descriptive term “rodeo,” and the generic top-level domain (“gTLD”) “.com.” The addition of a hyphen generally is inadequate to distinguish a disputed domain name from a protected mark. SeeTeradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000), (the addition of a hyphen failed to adequately distinguish a disputed domain name because the mark and the disputed domain name would be pronounced in an identical fashion).
Complainant correctly argues that the term “rodeo” describes Complainant’s national rodeo championship and that the addition of this descriptive term does not distinguish the disputed domain name. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003), (the addition of a descriptive term failed to remove a disputed domain name from the realm of confusing similarity).
Complainant also correctly notes that the addition of the gTLD “.com” is irrelevant in distinguishing the disputed domain name from a protected mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003), (the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis because top-level domains are a required element of all domain names).
The Panel finds that Respondents’ <nfr-rodeo.com> domain name is confusingly similar to Complainant’s NFR mark under Policy ¶ 4(a)(i). Further the Panel finds that all of the above arguments are principally applicable to Respondents’ domain name <nationalfinalsrodeo.net> as well. Respondents’ domain name fully incorporates Complainant’s registered mark NATIONAL FINALS RODEO and merely adds the generic top level domain “.net”. Respondents’ domain name is thus identical to Complainant’s protected mark in violation of Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), (the removal of spaces was not relevant to a Policy ¶ 4(a)(i) analysis because spaces are impermissible in domain names).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondents lack rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondents to show they do have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has not made such a case.
Complainant alleges that Respondents are not commonly known by the <nfr-rodeo.com> and <nationalfinalsrodeo.net> domain names. Complainant asserts that Respondents are not related to, affiliated with, endorsed by, connected to, or associated with Complainant and that Respondents never received authorization, permission, or license to use Complainant’s NFR and NATIONAL FINALS RODEO marks. Complainant argues that this evidence is sufficient to establish that Respondents are not commonly known by the disputed domain names. Respondents do not disagree with Complainant’s assertions in this regard and the Panel further notes that the WHOIS information identifies the registrant of the disputed domain names as “Alternative Advertising Concepts, Inc. / Kenneth Forman,” which the Panel recognizes is not similar to the disputed domain names. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), (respondent was not commonly known by the disputed domain name if the respondent was not authorized to use the complainant’s mark and the WHOIS information did not indicate that the respondent was commonly known by the disputed domain name).
Respondents allege that they are known as the “leading ticket broker for National Finals Rodeo Events” based on Respondents’ sales beginning in 1993 and continuing since that time. Respondents claim that the <nfr-rodeo.com> domain name was registered in 1996 in order to create a website hub for Respondents’ clients to buy and sell tickets. Respondents later registered the <nationalfinalsrodeo.net> domain name for the same purpose. Respondents assert that nearly $600,000 has been expended in connection with its websites development and marketing in both publications and as search engine responses on various websites including Google, Yahoo, and Bing. Respondents allege that $55,000 a year is spent on Google AdWords to promote traffic to Respondents’ websites and that since services began over 20,000 tickets to Complainant’s events have been sold. Thus it can be argued that despite the initial lack of authorization or recognition by WHOIS, Respondents, by other measures, are commonly known by the disputed domain names. See Digitronics Inventioneering Corp. v. @Six.Net Registered, D2000-0008 (WIPO Mar. 1, 2000) (the respondent was commonly known by the <six.net> and <sixnet.com> domain names even though the complainant had registered the SIXNET trademark because the respondent demonstrated that its customers associated the respondent’s company with the domain names).
The Panel finds the Complainant’s arguments more persuasive as it appears Respondents were, and are, more known by their own names than by the domain names in dispute. However being commonly known by the disputed domain names is but one method of establishing rights or legitimate interests.
Respondents use the <nfr-rodeo.com> and <nationalfinalsrodeo.net> domain names to sell rodeo tickets and Respondents state that the inclusion of the NFR mark in the domain name is for descriptive purpose only. Complainant acknowledges that the word “rodeo” is used for descriptive purposes and that Respondents’ websites do offer tickets to National Finals Rodeo events. Respondents also assert that they provide a disclaimer on the resolving websites that expressly and explicitly disclaim any relationship with Complainant. Respondents cite Nat’l Assoc. for Stock Car Auto Racing, Inc. v. Racing Connection, D2007-1524 (WIPO Jan. 28, 2008), where the panel found that the offering of NASCAR tours in connection with the domain name <nascartours.com> for many years before notice of a dispute was evidence that the respondent was making a bona fide offering of goods or services. The panel there stated that “[t]he Respondent’s website accurately and prominently explains that the Respondent is a reseller and is not affiliated with the Complainant.”
The Panel finds that the circumstances here are equivalent to the NASCAR case and that Respondents’ selling of rodeo tickets for Complainant’s NFR and NATIONAL FINALS RODEO competition is a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Inter-Tel, Inc. v. Marcus, FA 727697 (Nat. Arb. Forum July 27, 2006) (finding that the respondent’s use of the disputed domain name in the resale of complainant’s products constitutes a bona fide offering of goods or services in accord with Policy ¶ 4(c)(i) where the respondent actually offered the goods or services at issue, the respondent used the site to sell only the trademarked goods, the site accurately disclosed the registrant’s relationship with the trademark owner, and the respondent did not try to corner the market in all domain names, (which would have thus deprived the trademark owner of reflecting its own mark in a domain name). That Respondents have not attempted to corner the market in relevant domain names is illustrated by Complainant’s examples of the many domain names it has registered and used in maintaining its active Internet presence. The Respondents have instead only made a descriptive and nominative fair use of the Complainant’s marks which are referenced for the purpose of indicating that tickets for the named events are available for resale on Respondents’ website. See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
The Panel also finds that the doctrine of laches should apply as a defense in this matter and thus further support the legitimacy of Respondents’ rights and interests in the disputed domain names. While the doctrine is not expressly recognized as a defense in UDRP proceedings the principle has long been applied in many cases even when the language has not. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).
The arguments against the application of laches in UDRP proceedings has frequently been based on formality more than reality as it is oft repeated that equitable relief is not part of an administrative proceeding. However the reality is that the UDRP only offers what amounts to equitable relief and there has been a growing recognition and willingness to expressly consider laches as an equitable defense in a proceeding where equitable relief is the only possible remedy. Furthermore laches is a well-recognized defense in trademark law in the United States where both parties reside. In N.Y. Times Co. v. Name Admin. Inc. (BVI), (Nat. Arb. Forum Nov. 17, 2010), the panel expressly recognized laches as a valid defense where the Complainant was a sophisticated entity that had been in business for a substantial period of time and had registered several trademarks and domain names, and the Complainant stood by without explanation and watched the Respondent actively build a business using the disputed domains that allegedly included its protected marks for more than six years.
In this matter the Complainant claims to have been using its marks for several decades although it only sought registration in or around 1996. Complainant claims to have maintained an active Internet presence and stated that it “persistently” and “consistently” policed its marks. However Complainant failed to offer any explanation for not contacting Respondents for fourteen years, until 2010, or bringing a UDRP proceeding until 2012. Complainant was well aware that others sold tickets to its events and there is no indication that Complainant was not aware of Respondents as well, especially in light of Respondents’ notoriety as the leading ticket reseller to Complainant’s events. As the panel in the N.Y. Times Co. case stated, when a Complainant fails to act for a substantial time while a Respondent develops an identical domain name for its own legitimate purposes, “laches should bar that Complainant from turning a Respondent’s detrimental reliance to its own unjust benefit.” See also Hinkley Lighting, Inc. v. Tucows.com Co., (Nat. Arb. Forum May 27, 2011) (panel recognized laches where complainant failed to take action for fifteen years).
Complainant has not proven this element.
The Panel further finds that Respondents have not registered or used the <nfr-rodeo.com> and <nationalfinalsrodeo.net> domain names in bad faith because Complainant has either made no allegations or provided no evidentiary support to find that Respondents have violated any of the additional factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith);
Finally, since the Panel concludes that Respondents have rights or legitimate interests in the <nfr-rodeo.com> and <nationalfinalsrodeo.net> domain names pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondents did not register or use the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Complainant has not proven this element.
Because Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <nfr-rodeo.com> and <nationalfinalsrodeo.net> domain names REMAIN WITH Respondents.
The Honourable Neil Anthony Brown Q.C., Honorable Charles K. McCotter, Jr. (Ret.), Prof. Darryl C. Wilson, Esq., Chair, as Panelists.
Dated: June 26, 2012
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