Florida State
League Promotion Corp. and Florida State League of Professional Baseball Clubs,
Inc. v. John Connolly
Claim
Number: FA0302000146220
Complainant is Florida State League
Promotion Corp. and Florida State
League of Professional Baseball Clubs, Inc., Daytona Beach, FL (“Complainant”) represented by Charles D.
Hood. Respondent is John Connolly,
Dale City, VA (“Respondent”).
The domain name at issue is <floridastateleague.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.
The undersigned certifies that she has acted
independently and impartially and to the best of her knowledge has no known
conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National
Arbitration Forum (the "Forum") electronically on February 18, 2003;
the Forum received a hard copy of the Complaint on February 18, 2003.
On February 18, 2003, Iholdings.Com, Inc. d/b/a
Dotregistrar.Com confirmed by e-mail to the Forum that the domain name <floridastateleague.com> is
registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent
is the current registrant of the name. Iholdings.Com, Inc. d/b/a Dotregistrar.Com
has verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a
Dotregistrar.Com 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 February 26, 2003, a Notification of Complaint and
Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of March 18, 2003 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
postmaster@floridastateleague.com by e-mail.
Having received no Response from Respondent, using the
same contact details and methods as were used for the Commencement
Notification, the Forum transmitted to the parties a Notification of Respondent
Default.
On March 25, 2003, pursuant to Complainant's request
to have the dispute decided by a single-member Panel, the Forum appointed
Sandra Franklin as Panelist.
Having reviewed the communications records, the
Administrative Panel (the "Panel") finds that the 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 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:
1. Respondent’s <floridastateleague.com> domain
name is identical to Complainant’s FLORIDA STATE LEAGUE mark.
2. Respondent does
not have any rights or legitimate interests in the <floridastateleague.com> domain name.
3. Respondent
registered and used the <floridastateleague.com>
domain name in bad faith.
B. Respondent
failed to submit a Response in this proceeding.
Complainant is a corporation organized under the laws of Florida and a
member of the National Association of Professional Baseball Leagues, Inc. Complainant is a league of professional
baseball clubs located and operating in Florida since 1919. Complainant will embark on its 84th
anniversary season starting in April 2003.
The league currently consists of twelve member teams. The FLORIDA STATE LEAGUE official website is
located at <fslbaseball.com>.
Respondent, John Connolly, registered the <floridastateleague.com> domain name on August 3, 2002. Respondent is using the disputed domain name
to divert Internet users to a website that offers free access to numerous
pornographic websites. Respondent’s
email hostname <outbuy.com> is a virtual warehouse of domain name
registrations that have been acquired or registered to offer to the highest
bidder.
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.
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 has established that it has common law rights in the FLORIDA
STATE LEAGUE mark through continuous use with relation to Florida State Minor
League baseball. See Tuxedos By Rose v. Nunez,
FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary meaning was
established); see also Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said
name [<keppelbank.com>] in connection with its banking business, it has
acquired rights under the common law). The UDRP does not require that a mark be
registered with a trademark authority to be protected under the Policy. The ICANN dispute resolution policy is
“broad in scope” in that “the reference to a trademark or service mark ‘in
which the complainant has rights’ means that ownership of a registered mark is
not required–unregistered or common law trademark or service mark rights will
suffice” to support a domain name Complaint under the Policy. McCarthy
on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000).
Respondent’s <floridastateleague.com>
domain name is identical to Complainant’s common law FLORIDA STATE LEAGUE
mark. Respondent incorporates
Complainant’s entire mark and merely adds the top-level domain “.com.” The addition of a top-level domain does not
add any distinct features because it is a required element of all domain
names. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to Complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name POMELLATO is not
relevant); see also Blue Sky Software Corp. v. Digital Sierra
Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name
<robohelp.com> is identical to Complainant’s registered ROBOHELP
trademark, and that the "addition of .com is not a distinguishing
difference").
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or
Legitimate Interests
Respondent has failed to submit a Response in this
proceeding. Thus, the Panel is
permitted to accept all reasonable allegations and inferences in the Complaint
as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA
95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant 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”).
Moreover, Respondent has failed to invoke any circumstances that could
demonstrate rights and legitimate interests in the domain name. When Complainant asserts a prima facie case against Respondent, the
burden of proof shifts to Respondent to show that it has rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).
See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts
that Respondent has no rights or legitimate interests with respect to the
domain, the burden shifts to Respondent to provide credible evidence that
substantiates its claim of rights and legitimate interests in the domain name);
see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the Respondent has failed to invoke
any circumstance that could demonstrate any rights or legitimate interests in
the domain name).
Respondent is using the <floridastateleague.com>
domain name to divert Internet users to a website that features free access to
pornography websites. This type of use
tarnishes Complainant’s mark and is not considered to be a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that
it is not a bona fide offering of goods or services to use a domain name for
commercial gain by attracting Internet users to third party sites offering
sexually explicit and pornographic material, where such use is calculated to
mislead consumers and tarnish the Complainant’s mark); see also Nat’l Football
League Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000)
(finding that the Respondent had no rights or legitimate interests in the
domain names <chargergirls.com> and <chargergirls.net> where the
Respondent linked these domain names to its pornographic website).
Respondent is known to this Panel as John Connolly and has not come forward
with any evidence to establish that it is commonly known as FLORIDA STATE
LEAGUE, or <floridastateleague.com>. The Panel infers that Respondent’s failure
to provide this evidence is indicative of Respondent’s lack of rights or
legitimate interests in the <floridastateleague.com>
domain name pursuant to Policy ¶ 4(c)(ii).
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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Respondent is using the disputed domain name,<floridastateleague.com>, as the home page of a website that
provides access to numerous on-line pornographic websites. The Panel infers that Respondent is making a
profit from the Internet traffic it diverts to these adult websites. Thus, Respondent’s behavior evidences bad
faith registration and use pursuant to Policy ¶ 4(b)(iv) because Respondent is
creating a likelihood of confusion for its own commercial gain. See
Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad
faith where the Respondent linked the domain name in question to websites
displaying banner advertisements and pornographic material); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding
that if Respondent profits from its diversionary use of Complainant's mark when
the domain name resolves to commercial websites and Respondent fails to contest
the Complaint, it may be concluded that Respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)).
Furthermore, Respondent’s association of the <floridastateleague.com> domain name with pornographic material
is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Brown & Bigelow, Inc.
v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's
well-known mark to provide a link to a pornographic site is evidence of bad
faith registration and use); see also
Ty, Inc. v. O.Z. Names, D2000-0370
(WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain
names in question to graphic, adult-oriented websites is evidence of bad
faith).
Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <floridastateleague.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Sandra Franklin,
Panelist
Dated: April 1, 2003
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