DECISION

 

United States Soccer Federation v Complete Soccer Academy

Claim Number: FA0105000097325

 

PARTIES

The Complainant is United States Soccer Federation, Inc., Chicago, IL, USA (“Complainant”) represented by Jeffrey G. Benz, of Coudert Brothers.  The Respondent is Complete Soccer Academy, White Plains, NY, USA (“Respondent”)  represented by Steven H. Bazerman, of Bazerman & Drangel, P.C.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ussoccer.com>, registered with Network Solutions.

 

PANEL

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on May 25, 2001; the Forum received a hard copy of the Complaint on May 29, 2001.

 

On May 30, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <ussoccer.com> is registered with Network Solutions and that the Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 May 30, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 19, 2001 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@ussoccer.com by e-mail.

 

A timely response was received and determined to be complete on June 19, 2001.

 

On June 25, 2001 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the domain name at issue is identical or confusingly similar to its registered trademark; that the Respondent has no rights or legitimate interests in the domain name at issue; and that the domain name was registered in bad faith.

 

B. Respondent

The Respondent contends that the domain name at issue is comprised of generic terms and geographical locations; that it has the right to use its generic domain name; and that it adopted the domain name in good faith.

 

C. Additional Submissions

On June 26, 2001, the Complainant electronically filed an Additional Response; the payment and exhibits were not received until June 28, 2001.  Therefore, the submission was not timely filed in its entirety.  The Panel did not consider the additional submission and it did not alter the outcome.

 

FINDINGS

The Complainant is a non-profit organization founded in 1913, which is devoted to developing soccer as a pre-eminent sport in the United States at all recreational and competitive levels.  It organizes and supports the United States National men’s, women’s and youth teams and is actively involved in the development of professional, amateur and recreational athletes through the United States.  The Complainant is recognized by the United States Olympic Committee as the National Governing Body for the sport of soccer.

 

The Complainant holds numerous registered trademarks at the United States Patent and Trademark Office, including the word mark U.S. SOCCER, registered on May 28, 1996, as well as the design mark US SOCCER which was registered on August 20, 1995. 

 

The Respondent is a soccer training academy which has been in operation since 1996,  offering schools and clinics in Florida and New York, with expansion plans. 

 

It is evident that the Complainant and Respondent are operating within the same industry. 

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

 

Identical and/or Confusingly Similar

The Complainant is the holder of incontestible registered trademarks and service marks which are identical to the domain name at issue.  The Respondent’s use of the domain name at issue is likely to lead to consumer confusion as the source of Respondent’s services or the sponsorship of its activities.    See State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that the Complainant has rights in the registered marks, STATE FAIR OF TEXAS and TEXAS STATE FAIR and therefore, Respondent’s domain names <statefairoftexas.com> and <texasstatefair.com> are identical to Complainant’s mark).  See also Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar to Complainant’s MICROSOFT OFFICE 2000 mark even though the mark MICROSOFT is abbreviated); Minnesota State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark).

 

Rights or Legitimate Interests

Even though the Respondent argues that the domain name is comprised of generic terms, any reasonable individual would assume that as the Respondent is working within the same industry as the Complainant, the Respondent was aware of Complainant’s registered marks.  No evidence has been presented that a relationship exists between the Complainant and the Respondent which would indicate that the Complainant condoned the registration of any domain name incorporating the Complainant’s marks.  See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services); The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of the disputed domain names is confusingly similar to Complainant’s mark.  Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods).

Also, the Respondent has not been known by the domain name at issue.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question

 

Finally, the Respondent’s use of the domain name is not a legitimate noncommercial or fair use within Policy ¶ 4(c)(iii).  It would appear that the Respondent is misdirecting Internet traffic to its own <socceracademy.com> website.  See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from the Complainant's site to a competing website).

 

Registration and Use in Bad Faith

From the evidence presented, it appears that the Respondent is using the domain name to intentionally attract, for commercial gain, Internet users to its own website.  See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

 

Secondly, as the Respondent is engaged in the same type of business as the Complainant, it appears that the Respondent intentionally registered the domain names for the purpose of disrupting Complainant’s business. See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).

 

Finally, an Internet user looking for information on the Complainant’s clinics and developmental programs in particular would be misled into thinking that the Respondent was somehow affiliated with the Complainant. See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith).

 

DECISION

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this Panel that the requested relief be granted.   Accordingly, for all of the foregoing reasons, it is ordered that the domain name USSOCCER.COM  be transferred from the Respondent to the Complainant.

 

 

Honorable Paul A. Dorf (Ret.), Panelist

 

Dated:  July 9, 2001