Sports South, LLC v. Intellectual Property Department (SPNET), Fox Sports Networks, LLC
Claim Number: FA1412001593009
Complainant is Sports South, LLC (“Complainant”), represented by William M. Irvine, Louisiana, USA. Respondent is Intellectual Property Department (SPNET), Fox Sports Networks, LLC (“Respondent”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sportssouth.com>, registered with MarkMonitor Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David L. Kreider, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2014; the National Arbitration Forum received payment on December 2, 2014.
On December 11, 2014, MarkMonitor Inc. confirmed by e-mail to the National Arbitration Forum that the <sportssouth.com> domain name is registered with MarkMonitor Inc. and that Respondent is the current registrant of the name. MarkMonitor Inc. has verified that Respondent is bound by the MarkMonitor 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 December 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 5, 2015 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@sportssouth.com. Also on December 16, 2014, 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 January 2, 2015.
On January 7, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David L. Kreider, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to the Complainant.
A. Complainant
The Complainant asserts that ‘Sports South’ has been its company name since 1973, and that, but for the space between the words, which are not used in domain names, the Disputed Domain Name is identical to Complainant’s company name. Complainant registered the name with the USPTO on January 7, 2014, in connection with the business of wholesale distributorships of sporting goods, firearms, ammunition and accessories. The Complainant alleges that the Respondent has no legitimate interest in the Disputed Domain Name because the domain is not being used at all, and does not resolve to a web page, or anything else.
In relation to the ‘bad faith’ registration and use requirement, under ¶ 4(a)(iii) of the Policy, the Complainant avers: ‘We do not believe the Respondent is necessarily using the domain name in question in bad faith, they are simply not using it at all. By doing so, they are "squatting" on our legitimate rights of owning the domain name in question’.
B. Respondent
The Respondent contends that, over the years, it has registered, acquired, and/or used numerous domain names comprised of the FOX SPORTS mark and geographic terms that identify the location of its services, and that the Respondent has maintained these domain names for years. Examples cited by the Complainant include the domain names FOXSPORTSSOUTH.TV and FOXSPORTSSOUTHWEST.TV, acquired by the Respondent in 2001, and the domain names FOXSPORTSSOUTH.NET, FOXSPORTSSOUTHTV.COM, FOXSPORTSSOUTHTV.NET, FOXSPORTSSOUTHWEST.NET, FOXSPORTSSOUTHWESTTV.COM, and FOXSPORTSSOUTHWESTTV.NET, which were acquired or registered by the Respondent in 2009. The Respondent avers that it does not currently use these domain names for its websites, but maintains the domain names as part of its business plans.
The Respondent further alleges that it has registered numerous domain names for its regional websites, and has used some of its domain names for its regional websites including, for example, FOXSPORTSNORTH.COM which directs Internet users to Respondent’s website at http://www.foxsports.com/north, FOXSPORTSWEST.COM which directs Internet users to Respondent’s website at http://www.foxsports.com/west, FOXSPORTSSOUTHWEST.COM which directs Internet users to Respondent’s website at http://www.foxsports.com/southwest, as well as the domain names FOXSPORTSARIZONA.COM, FOXSPORTSDETROIT.COM, FOXSPORTSFLORIDA.COM, FOXSPORTSHOUSTON.COM, FOXSPORTSOHIO.COM, and FOXSPORTSTENNESSEE.COM that the Respondent also uses for its regional websites.
In May or June 2010, the Respondent acquired the Disputed Domain Name from a third party as part of its pre-existing and long-term domain-name registration strategy and business plans for its existing FOX SPORTS SOUTH and SPORTSOUTH businesses and services. Specifically, in 2010, the domain name SPORTSSOUTH.COM was offered for sale to the general public by a prior registrant.
The Respondent asserts that it owns rights and has obvious legitimate interests in the Disputed Domain Name for several reasons:
First, Respondent’s rights and legitimate interests are established under UDRP ¶ 4(c)(i), which provides that ‘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’.
Before any notice to Respondent of the dispute, Respondent used its marks FOX SPORTS SOUTH and SPORTSOUTH, each of which corresponds to the Disputed Domain Name, in connection with a bona fide offering of goods or services for many years. On this point alone, Respondent avers, it has conclusively demonstrated its rights and legitimate interests in the Disputed Domain Name sufficient to deny the Complaint.
Further, the Respondent’s investment in the Disputed Domain Name, as shown by its purchase of the Disputed Domain Name on a domain-marketplace website as part of its business plans for its FOX SPORTS SOUTH and SPORTSOUTH businesses and services, constitutes demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services under UDRP ¶ 4(c)(i).
Respondent also has rights and legitimate interests in the Disputed Domain Name under UDRP ¶ 4(c)(ii), which provides that “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,” based on the Respondent’s long-term prior ownership and use of its SPORTSOUTH Mark and SPORTSOUTH Business Names.
Respondent further claims a legitimate interest in the Disputed Domain Name based on the USPTO’s finding that “SPORT SOUTH” is descriptive of its sports broadcasting services. Moreover, to the extent the Respondent is successful in establishing acquired distinctiveness to “SPORT SOUTH” in its pending applications before the USPTO, such a finding would constitute a recognition by the USPTO that the wording “SPORT SOUTH” was a source indicator associated with Respondent’s sports broadcasting services. Regardless of the USPTO’s decision, the Respondent contends that it has established a legitimate interest to the Disputed Domain Name based on the actions of the USPTO.
At the outset, the Panel notes that Complainant has failed to allege that the Respondent is not commonly known by the disputed domain name under ¶ 4(c)(ii) of the Policy. The WHOIS information associated with the Disputed Domain Name lists “Intellectual Property Department (SPNET), Fox Sports Networks, LLC” as the registrant, and reflects that Respondent claims to be commonly known by the Disputed Domain Name. Before any notice of this dispute, moreover, Respondent used the marks FOX SPORTS SOUTH and SPORTSOUTH in connection with a bona fide offering of goods or services for many years. Finally, the Complainant has failed to allege actual ‘bad faith’ use of the Disputed Domain Name by Respondent in these proceedings, but has alleged nothing more than bare ‘non-use’.
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.
As spaces are impermissible in domain names and a generic top-level domain, such as ‘.com’ or ‘.net’ is a required feature of domain names, the <sportssouth.com> domain name is identical to the Complainant’s SPORTS SOUTH mark pursuant to ¶ 4(a)(i) of the Policy. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001).
The Panel considers that the Respondent’s holding of the Disputed Domain Name for potential future use, in line with its sports broadcasting services, constitutes demonstrable preparations within the understanding of ¶ 4(a)(ii) of the Policy. Respondent has rights or legitimate interests in the <sportssouth.com> domain name, and the Respondent’s use is protected by the Policy. See Casual Corner Group, Inc. v. Young, FA 95112 (Nat. Arb. Forum Aug. 7, 2000) (finding that the respondent has rights and legitimate interests in the domain name even though he has made no use of the website at the time of the complaint).
In view of the Panel’s conclusion that Respondent has rights or legitimate interests in the <sportssouth.com> domain name pursuant to Policy ¶ 4(a)(ii), it follows, and the Panel so concludes, that Respondent did not register or use the disputed domain name in bad faith pursuant to ¶ 4(a)(iii) of the Policy. 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).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <sportssouth.com> domain name REMAIN WITH Respondent.
David L. Kreider, Esq., Panelist
Dated: January 8, 2015
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