ESPN, Inc. v. Consumer Software Labs
Claim Number: FA0703000941833
Complainant is ESPN, Inc. (“Complainant”), represented by Kristen
M. Walsh, of Nixon Peabody LLP, Clinton Square, P.O.
Box 31051, Rochester, NY 14603-1051.
Respondent is Consumer Software Labs (“Respondent”), represented by Robert
R. Regular, of Robert R. Regular
Law Office,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sports-centerlive.com>, registered with Go Daddy Software, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 16, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 19, 2007.
On March 19, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <sports-centerlive.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 March 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 12, 2007 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@sports-centerlive.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 16, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Respondent submitted a Response on April 17, 2007. The Response was received after the deadline for submitting a Response, and thus was not in compliance with Paragraph 5(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). Moreover, the Response was received in hard copy only, which is another deficiency under Rule 5(b).
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sports-centerlive.com> domain name is confusingly similar to Complainant’s SPORTSCENTER mark.
2. Respondent does not have any rights or legitimate interests in the <sports-centerlive.com> domain name.
3. Respondent registered and used the <sports-centerlive.com> domain name in bad faith.
B. Respondent submitted a Response on April 17, 2007. The Response was received after the deadline for submitting a Response, and thus was not in compliance with Rule 5(a). Moreover, the Response was received in hard copy only, which is another deficiency under Rule 5(b).
Complainant, ESPN, Inc., is a
multinational, multimedia sports entertainment company whose services include
television’s only nightly, one-hour sports news program. Complainant’s news show has aired over 30,000
shows and is the longest-running sports news show in television. In connection with its flagship sports news
program, Complainant has registered the SPORTSCENTER mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 1,627,702 issued December 11, 1990).
Respondent registered the <sports-centerlive.com> domain name on June 27, 2006. Respondent is using the disputed domain name for a website displaying sports news headlines with links to full articles appearing on websites of news providers, including Complainant. Upon clicking on a news article, pop-up advertisements and third-party websites display, in addition to the full news article.
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 the Response was deficient under Rules 5(a) and 5(b), it
is within the Panel’s discretion to decline to consider the Response. The Panel acknowledges receipt of the Response,
but due to its deficiencies, declines to consider it in the Policy
analysis. See Telstra Corp.
v. Chu, D2000-0423 (WIPO June 21, 2000)
(finding that any weight to be given to the lateness of the response is solely
in the discretion of the panelist).
Complainant has established rights in the SPORTSCENTER mark
pursuant to Policy ¶
4(a)(i) through its registration of the mark with the USPTO. See
Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of
the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see
also Vivendi Universal Games v.
XBNetVentures Inc., FA 198803
(Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <sports-centerlive.com>
domain name is confusingly similar to Complainant’s SPORTSCENTER mark pursuant
to Policy ¶ 4(a)(i) because the domain name contains the mark in its entirety,
adds a hyphen within the mark, adds the generic term “live,” and adds the
generic top-level domain “.com.” The
additions of a hyphen and generic top-level domain are irrelevant for purposes
of Policy ¶ 4(a)(i) analysis. See Health Devices Corp. v.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or legitimate interests in the <sports-centerlive.com> domain name. Because Complainant made a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Since Respondent failed to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent is using the <sports-centerlive.com> domain name, which is
confusingly similar to Complainant’s SPORTSCENTER mark, to divert Internet users to
sports news articles while displaying pop-up advertisements and
unrelated third-party websites. Such use of the disputed
domain name does not constitute a bona fide offering of
goods and services pursuant to Policy ¶ 4(c)(i), or a legitmate noncommercial or fair use of
the domain name pursuant to Policy ¶ 4(c)(iii). See Wells
Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb.
Forum Mar. 18, 2003) (holding that the respondent’s
use of “confusingly similar derivatives of Complainant’s WELLS FARGO mark to
divert Internet users to websites featuring pop-up advertisements” was not a bona
fide offering of goods or services); see
also De La Rue Holdings PLC v. Video Images Prods. L.L.C., FA 196054 (Nat. Arb. Forum Oct.
27, 2003) (finding that the respondent was not using the <delaru.com>
domain name for a bona fide offering of goods or services or a
legitimate noncommercial or fair use because the respondent was using the
domain name to “subject unsuspecting users to a barrage of unsolicited [pop-up]
advertisements,” presumably for commercial benefit).
Complainant asserts that Respondent
is not authorized or licensed to use Complainant’s SPORTSCENTER mark and that Respondent is not associated with Complainant
in any way. Furthermore,
Respondent’s WHOIS information, as well as other information in the record,
does not suggest that Respondent is commonly known by the <sports-centerlive.com> domain
name. Therefore, the Panel finds that
Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb.
Forum Jan. 23, 2001) (finding that the respondent does not have rights in a
domain name when the respondent is not known by the mark); see also Wells Fargo & Co. v.
Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17,
2003) (“Given the WHOIS contact information for the disputed domain [name], one
can infer that Respondent, Onlyne Corporate Services11, is not commonly known
by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <sports-centerlive.com> domain name, which is confusingly similar to Complainant’s mark, to divert Internet users to sports news articles while displaying pop-up advertisements and unrelated third-party websites. The Panel infers that Respondent is profiting from the display of pop-up advertisements and earns click-through fees for diverting Internet users to third-party websites. Therefore, Respondent is taking commercial advantage of the confusing similarity between Respondent’s domain name and Complainant’s mark, and profiting from the goodwill associated with the mark. Use of the disputed domain name for this purpose suggests bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Respondent is using a domain name confusingly similar to
Complainant’s SPORTSCENTER mark to divert Internet users who are looking for
Complainant’s sports news services to Respondent’s advertising-driven
website. The Panel finds such use
indicates bad faith according to Policy ¶ 4(b)(iii)
because it appears that Respondent has registered and is using the <sports-centerlive.com> domain name
for the primary purpose of disrupting Complainant’s business. See Toyota Jidosha Kabushiki Kaisha v. S&S Enters. Ltd., D2000-0802
(WIPO Sept. 9, 2000) (“Registration of a domain name [by the respondent that
incorporates another’s trademark] goes further than merely correctly using in
an advertisement the trade mark of another in connection with that other’s
goods or services.”); see also eBay, Inc v. Progressive Life Awareness
Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith . . . where the
respondent capitalized on the fame associated with the complainant’s EBAY mark
and profited from it by diverting users seeking the complainant to the
respondent’s website).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sports-centerlive.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: April 23, 2007
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