Chicago Cubs Baseball Club, LLC v. Trebora Online
Claim Number: FA1407001572251
Complainant is Chicago Cubs Baseball Club, LLC (“Complainant”), represented by Richard S. Mandel of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Trebora Online (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cubspark.com>, <cubspark.net>, <cubspark.org>, <cubspark.info>, <cubsparkmesa.com>, <cubsparkmesa.net>, <cubsparkmesa.org>, and <cubsparkmesa.info>, registered with Godaddy.Com, LLC.
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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 29, 2014; the National Arbitration Forum received payment on July 29, 2014.
On July 30, 2014, Godaddy.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <cubspark.com>, <cubspark.net>, <cubspark.org>, <cubspark.info>, <cubsparkmesa.com>, <cubsparkmesa.net>, <cubsparkmesa.org>, and <cubsparkmesa.info> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, Llc 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 July 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 2014 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@cubspark.com, postmaster@cubspark.net, postmaster@cubspark.org, postmaster@cubspark.info, postmaster@cubsparkmesa.com, postmaster@cubsparkmesa.net, postmaster@cubsparkmesa.org, and postmaster@cubsparkmesa.info. Also on July 31, 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 August 19, 2014.
A timely Additional Submission was received from Complainant and determined to be complete on August 24, 2014.
On August 26, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
On August 28, 2014, the Forum received an additional submission from Respondent. This additional submission was timely.
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 Respondent to Complainant.
A. Complainant
Complainant makes the following contentions:
1. Complainant has rights in the CHICAGO CUBS and CUBS marks under Policy ¶ 4(a)(i).
a. Complainant is one of the oldest and most established clubs in Major League Baseball professional baseball history. Since 1902, Complainant has been commonly known and referred to around the world as the “CUBS.”
b. Complainant provides the Panel with evidence of its registrations for the CUBS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,326,193 registered October 30, 2007).
c. Complainant has common law rights in the CUBS PARK mark, for its spring training stadium in Mesa, Arizona.
d. Respondent’s disputed domain names are confusingly similar to Complainant’s CUBS mark.
i. Respondent’s addition of the terms “park” and “Mesa” does not dispel confusion of Complainant’s mark.
ii. Respondent creates an obvious association with Complainant and its world famous baseball team, and the Spring Training stadium in Mesa, Arizona at which Complainant plays its pre-season home games.
2. Respondent has no rights in the disputed domain names.
a. Respondent has never been commonly known by the disputed domain names and has not engaged in any legitimate business under the CUBS PARK or CUBS PARK MESA names. Respondent is not a licensee of Complainant or any of their respective affiliate or related entities.
b. Respondent is not using the disputed domain names to make a bona fide offering of goods or services. Respondent uses the disputed domain names to redirect Internet users to a website displaying a series of hyperlinks to sites offering to sell Complainant’s Cubs tickets and merchandise.
3. Respondent registered and is using the disputed domain names in bad faith.
a. Respondent offers to sell four of the domain names to Complainant’s agent for $40 million, an amount far in excess of Respondent’s out of pocket expenses.
b. Respondent’s use of the disputed domain names competes with Complainant by offering products and services, such as Cubs tickets and merchandise. Visitors to Respondent’s website are led to buy tickets or other products, resulting in an unjust financial gain for Respondent.
c. Respondent uses the disputed domain names to attract Internet users to Respondent’s website for Respondent’s own financial benefit by creating a likelihood of confusion as to the potential existence of a relationship between Complainant and Respondent.
d. Respondent had actual knowledge of Complainant’s CUBS mark when it registered the disputed domain names. Respondent registered the disputed domain names on November 25 and 26, 2013, about a week after the first public announcement of the new name of Complainant’s spring Training facility in Mesa, and on the very day the first press reports appeared to the public.
B. Respondent
Respondent makes the following contentions:
1. Since 1999 Respondent has owned and operated a web and software development business as a means to supplement its full time income. Respondent additionally uses its business as an outlet to design and launch various business websites for clients as well as register several domain names.
2. Respondent’s disputed domain names are not confusingly similar to Complaint’s marks. Complainant does not have trademark rights to “Cubspark” and “Cubsparkmesa.” Complainant has no universal right to the words “cubs” and “park.”
3. Respondent has a right to use other disputed domain names because he paid for them and owns the rights to use them under ICANN.
a. Respondent uses the disputed domain names in association with its alternative energy research company named “Cub Spark,” located in Mesa, Arizona. Respondent’s company is not connected with Complainant’s business in any way.
b. Respondent has never uploaded content to the disputed domain names. See Respondent’s Exhibit B. GoDaddy automatically populates an un-populated domain name home page with its own links and Respondent has nothing to do with it.
4. Respondent registered the disputed domain names to upload Respondent’s upcoming alternative energy research company named “Cub Spark.” Respondent uses this name to refer to a small electrical spark generated by using alternative energy methods by the Respondent’s startup company appropriately named “Cub Spark.” Respondent is a long time Mesa, Arizona resident and plans to base its company there.
5. Respondent has every right to sell the disputed domain names to whomever and for whatever price it wishes. Respondent requested a counter offer from Complainant, to which Complainant did not respond. See Respondent’s Exhibit E.
6. Respondent has never received compensation from any of the links GoDaddy placed on the resolving websites. Respondent has never signed up for the “CashParking” program allowing Respondent to collect revenue from GoDaddy’s placed links.
7. Respondent requests sanctions be imposed on Complainant for acting in bad faith.
C.Complainant’s Additional Submission
In its Additional Submission Complainant contends as follows:
1. Respondent’s allegations of an alternative energy business named “Cub Spark” is insufficiently supported.
2. The content of the parked page is attributable to Respondent.
3. The Complaint was not filed in bad faith.
In its Additional Submission Respondent contends as follows:
Complainant does not have trademarks on “cubs park” or “cubs park mesa”. Contrary to what Complainants might want the panel to believe, not every tech startup establishes an LLC or a business identity right away. Just because Respondent has not established a business entity in the mere months he has had the disputed domain names, does not prove a UDRP violation.
.
Complainant also makes another baseless prima facie claim because “(1)
that Respondent registered the Domain Names on the very day that the news media first reported that CUBS PARK had been selected as the new name for the Club’s Spring Training facility in Mesa, Arizona, and (2) that Respondent offered to sell several of the Domain Names to Complainant’s undisclosed agent—who clearly was interested in the Domain Names due to the association between the Domain Names and Complainant’s CUBS and CUBS PARK Marks—for $40 million.”
Complainant once again is desperately trying to have the panel believe that until November, 2013, the fact that it was building a spring training stadium on a onetime golf course in Respondent’s Mesa neighborhood and merely two blocks from his apartment, was a secret somehow. According to Complainant’s own admission, it was announced publicly as early as 2011 that the golf course was being converted into a spring training facility… “in 2011, to much fanfare, the Club and the City of Mesa agreed to build a new complex in Mesa, Arizona. The groundbreaking for the new facility took place in July, 2012.” Since 2011, Complainant failed to buy the domains and when Respondent finally bought them in November 2013, all of a sudden this purchase becomes a UDRP violation and a prima facie proof of such violation. It does not.
Under the disguise of a generic email name, Complainant made inquiries about buying the domains, apparently under the impression that truthfully revealing the identity of the email sender as the Chicago Cubs would encourage higher demand price for the domains from Respondent. Only after that tactic failed and actually backfired, Complainant claimed a UDRP violation.
Complainant also claims that the $40 million price tag is somehow proof of a UDRP violation. It is not. First, Respondent had absolutely no idea that the anonymous emails were coming from the Chicago Cubs. For all he knew, they could be coming from anyone in the world with not a dime to their name. Second, Respondent has every right to sell the domains he rightfully owns for any price he wishes and the high price only supports the value Respondent places in his future company Cub Spark’s domain names.
Respondent’s web development business has absolutely no relevance to this domain dispute. Complainant is trying to throw anything and everything at the wall to make something, anything stick.
If the Complainant was interested in protecting its marks, it would have purchased the domains associated with “Chicago Cubs Park” or “Chicago Cubs Park Mesa” for the Mesa facility.
Respondent has absolutely no interest in Chicago Cubs or even baseball in general and his domains are not even remotely in the same business space. One is a baseball team, the other is an electro-chemical engineering alternative energy research startup and no reasonable person is likely to confuse one for the other.
Cub Spark’s research is focused on chemical and electrical reactions and processes to generate electricity. Since Respondent is still a student, the startup is in its very early stage not unlike countless other early stage tech or science startups.
It is not illegal or uncommon to have a genuine domain name be unpopulated with content just a few months after purchase as in the case here or even years after purchase. Just because Respondent is extremely busy with his full time job as a software engineer, and a full time graduate student and alternative energy researcher, and has not had made creating a business entity for Cub Spark or uploading content to his domains a priority, does not mean that he has no legitimate interests in the disputed domain names.
Respondent has never made any money from any links GoDaddy placed on these domains per their user agreement. Furthermore, Respondent has asked GoDaddy to stop placing any ads or links at all on these domains and was advised that it could do so after the locks on the disputed domains are lifted.
On one hand the Complainant is arguing that the $40 million price for the disputed domain names is too high but on the other hand, this Complainant is arguing that Respondent should not be willing to sell the domain names at any price. These two counter arguments demonstrate that Complainant is willing to say anything or throw anything at the wall in order to have something or anything stick. The fact remains that the $40 million price tag is proof of the value Respondent places on his domain names and startup.
Respondent had absolutely no involvement in any ads or links placed on the parked domains and Respondent did not earn a single penny from any such links or ads on his domain pages.
Respondent requests that sanctions imposed on the Complainant for certifying the Complaint as truthful when in fact, the Complainant was:
1. Lying to this panel regarding Respondent’s role regarding the links GoDaddy placed on the domain pages; and 2. Deceiving the Panel regarding the content of the emails exchanged between Complainant and Respondent.
Complainant is a well-known American baseball club.
Complainant owns several trademark and service mark registrations for the CUBS as a word mark and in stylized versions on the Principal Register of the USPTO, inter alia,
- CUBS (Stylized), Reg. No. 869,838, Reg. Date May 20, 1969, filed on August 17, 1967, covering entertainment services in the nature of baseball exhibitions, etc., in International Class 41, with a first use/first use in commerce on or before November 6, 1947;
- CUBS, Reg. No. 3,320,038, Reg. Date October 23, 2007, filed on May 19, 2005, covering toys and sporting goods, etc. in International Class 28, with a first use/first use in commerce in 1970; and
- CUBS (Stylized design of a bear cub holding between its paws a circle containing a stylized version of the words “cubs”), Reg. No. 3,854,382, Reg. Date September 28, 2010, filed on November 7, 2008, covering clothing, namely, caps, hats, shirts, tank tops, sweatshirts, jackets, in International Class 25, with a first use/first use in commerce in April 2004.
As early as 2011 it was announced publicly that a onetime golf course located in Mesa, Arizona, was being converted into a spring training facility for the Chicago Cubs baseball team. The groundbreaking for the new facility took place in July, 2012. Respondent`s apartment is located in the vicinity of Complainant`s stadium in Mesa, Arizona. See Respondent`s Additional Submission.
The disputed domain names <cubspark.com>, <cubspark.net>, <cubsparkmesa.com>, and <cubsparkmesa.net> were registered on November 25, 2013. The disputed domain names <cubspark.org>, <cubspark.info>, <cubsparkmesa.org>, and <cubsparkmesa.info> were registered on November 26, 2013.
On June 2, 2014, a representative or agent of Complainant, "S. Doe" (baseballnygirl@[redacted].com), sent an email to Respondent (contact@[redacted].com), stating, “Hi, we might be interested in this domain name that you own, cubspark.com. Are you interested in selling? And, if so, at what price? Thank you.” On the same day Respondent (contact@[redacted].com) replied to “S. Doe” as follows: “What's your offer?”
On June 4, 2014 "S. Doe" (baseballnygirl@gmail.com) under the subject “Re: CubsPark.com” wrote to Respondent as follows: “I haven't been given an offer yet, just an expressed potential interest depending on what the cost would be. If you have a price in mind, please let me know. Thank you.”
On June 4, 2014 Respondent<contact@trebora.com> wrote to ““S. Doe“ Subject: RE: CubsPark.com “Hi, I also own cubspark.net, .info, and .org. I think $40 million for all is fine. Please let me know. I have included some of the domain sales below. Thanks.
1. Insurance.com $35.6 million in 2010
2. VacationRentals.com $35 million in 2007
3. PrivateJet.com $30.1 million in 2012” .
On June 21, 2014, Respondent sent an email to "S. Doe" (<baseballnygirl@[redacted].com>) with the following text: “Hello, Do you wish to make a counter offer? Please let us know. Thank you.”
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.
Via its various trademark registrations with the USPTO, Complainant has shown that it owns trademark rights in the CUBS mark. See section on “Findings” above.
It is well established that the addition of generic or geographic terms to a mark is generally inapt to distinguish the resulting domain name from the mark. The Panel notes that all of the disputed domain names contain the CUBS mark, to which the generic term “park” and/or the geographic term “Mesa” are added. The Panel believes that the addition of the term “park” appears to be a direct reference to the location of the training stadium chosen by the Chicago Cubs baseball team for its spring training facility in the West of the U.S., so that this addition reinforces the association between the disputed domain names and Complainant`s mark. Further, since this stadium happens to be located in the city of Mesa, Arizona, the addition of the geographic term reinforces the association between the resulting domain names and Complainant`s mark even more. It is also well established that the addition in a domain name of a gTLD such as “.com”, “net”, “.org” and “.info” does nothing to distinguish one identifier from the other. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the additions of gTLDs as well as geographic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, did not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”). Nor is the lack of the spaces between the components of the disputed domain names more apt to distinguish the domain names from Complainant`s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
For these reasons, the Panel concludes that the disputed domain names are confusingly similar to Complainant`s CUBS marks. Thus, the requirement of Policy ¶ 4(a)(i) is met.
Complainant denies that Respondent has any rights or legitimate interests in the disputed domain names. In particular, Complainant contends that Respondent has never been commonly known by the disputed domain names and has not engaged in any legitimate business under the CUBS PARK or CUBS PARK MESA names. Respondent is not a licensee of Complainant or any of their respective affiliate or related entities. Complainant adds that Respondent is not using the disputed domain names to make a bona fide offering of goods or services. Respondent uses the disputed domain names to redirect Internet users to a website displaying a series of hyperlinks to sites offering to sell Complainant’s Cubs tickets and merchandise.
Respondent contends that he has a right to use the disputed domain names because he paid for them and owns the rights to use them under ICANN. In particular, Respondent states that he uses the disputed domain names in association with its alternative energy research company named “Cub Spark,” located in Mesa, Arizona, focused on chemical and electrical reactions and processes to generate electricity. Respondent contends that his company is not connected with Complainant’s business in any way.
The Panel notes that Respondent`s contention about his alternative energy research company named “Cub Spark” is deprived of any evidentiary support. This lack of evidence makes it very hard to believe that by a miraculous coincidence someone has registered domain names corresponding to an energy research project which happens to bear the same name as the baseball stadium located in the vicinity of the owner of the project, given that the domain names have been registered after the news that the baseball club would use the stadium had been widely made public. Even admitting that coincidences can exist, and that preparations for an alternative energy research project can be complex, under Policy ¶ 4(c)(i) Respondent should have submitted some evidence that before any notice of the dispute he had used, or made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. The Panel observes that even a seemingly complex project as the energy research project must be developed in stages. However, not even a glimpse of any of such steps was provided by Respondent. Nor has Respondent shown that he, or his business or other organization related to him, is known by the disputed domain names, pursuant to Policy ¶4(c)(ii), or that he is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, pursuant to Policy ¶4(c)(iii).
The Panel coincides with previous panels in requiring convincing evidence that the domain names in issue confusingly similar to the marks of complainants do correspond to things totally unrelated to such marks. See Portland Titles Limited v. Martin Baker, DTV 2000-0003 (WIPO Nov. 20, 2000) (“For ‘televisionx.tv’ the Respondent claims to have made demonstrable preparations to use that domain name in connection with a bona fide offering of services, namely the exhibited artwork for a television extras agency in the USA, which he intends to launch next year. He says that he has ‘spent considerable time and effort putting together details for my new website….’. The artwork is rudimentary and undated. It could easily have been created ex post facto for the purposes of answering this complaint. If the Respondent had genuinely spent considerable time and effort on the project (e.g. sought advice on the viability/ implications of doing business in the USA) he could readily have produced something more convincing.”; see also Caterpillar Inc. v. personal, D2010-2190 (WIPO Feb. 8, 2011) ) (“Mr. Al Sharif’s explanation for the Respondent’s choice of the Domain Name … strikes the Panel as implausible. If the first three letters of the name “CATControls” were really chosen to reflect the first letters of the words which form the expression “Creative And Typical”, one might have expected to see that expression used on the Respondent’s website. It was not.”); see also America Online, Inc. v. Steven S. Lalwani, D2001-0835 (WIPO Sept. 2, 2001), relating to <iaol.net>., where Respondent had alleged that "iaol.net stands for and reflects more generally, Indians Abroad On Line and on net and more specifically, Indian Americans On Line. This is my target market and therefore, the domain name is very appropriate and legitimate." In this case the panel considered that the reference to “Indians Abroad Online” was an ex post facto explanation, made to profit from the AOL mark of complainant).
For these reasons, the Panel finds that Respondent lacks any rights or legitimate interests in the disputed domain names.
It is well established that in order to determine that a domain name has been registered in bad faith, a respondent should be found to have known the complainant´s mark, and to have targeted such mark at the time of registration. The Panel finds that Respondent must have known Complainant and its CUBS marks, which were registered several years before the registration of the disputed domain names. Furthermore, by Respondent`s own admission in its Additional Submission, Respondent must have known of the association of Complainant`s CUBS mark with the Park stadium in Mesa Arizona, first, because since 2011 there had been reports that the Chicago Cubs would be using the Mesa Park stadium as their western training facility during the spring, and second, because according to Respondent, his own apartment is located in the vicinity of the Cubs Park in Mesa. See Respondent’s Additional Submission.
The Panel notes that Respondent, when “S. Doe” asked the price of the <cubspark.com> domain name, mentioned $ 40 million as a “fine” sum for selling all the disputed domain names. Respondent contends that he did not ask $ 40 million, because he later asked “S. Doe” to submit a counter-offer (which “S. Doe” did not). Even conceding that the $ 40 million sum was meant by Respondent just as an opening offer within the context of a bargaining game, and not as a final price, the Panel is of the opinion that such opening offer was high enough as to allow the Panel to conclude that Respondent had in mind nothing short of big money. This means that Respondent registered the disputed domain names primarily for the purpose of selling or otherwise transferring the domain name registrations to Complainant, for valuable consideration in excess of Respondent`s documented out-of-pocket costs directly related to the disputed domain names, which is a circumstance of registration in bad faith pursuant to Policy ¶ 4(b)(i). Moreover, Respondent did not state which his costs directly related to the disputed domain names were, or provide the slightest evidence that he was in fact engaged in developing a purported startup called “Cub Spark” dedicated to alternative energy research, even at an early stage. Nor has Respondent provided any evidence of any content on the websites corresponding to the disputed domain names that can support Respondent`s startup allegation or any demonstrable preparation for such purpose. See section on “Rights and Legitimate Interests” above.
The Panel, sharing the view of previous panels in similar cases, finds that Respondent´s offer to sell the disputed domain names to Complainant or to a competitor for a sum well in excess of real out-of-pocket costs is a use of the domain name in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, Case No. D1999-0001 (WIPO, Jan. 14, 2000) (“Because respondent offered to sell the domain name to complainant "for valuable consideration in excess of" any out-of-pocket costs directly related to the domain name, respondent has "used" the domain name in bad faith as defined in the Policy.”); see also LEGO Juris A/S v. Sales Department, D2010-0379 (WIPO Apr. 29, 2010, citing to World Wrestling.
For the above reasons, the Panel finds that the disputed domain names were registered and are being used in bad faith.
Given the result of this proceeding, the Panel denies Respondent`s request, and finds that Complainant did not act in bad faith in bringing the complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cubspark.com>, <cubspark.net>, <cubspark.org>, <cubspark.info>, <cubsparkmesa.com>, <cubsparkmesa.net>, <cubsparkmesa.org>, and <cubsparkmesa.info> domain names be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: September 9, 2014
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