ESPN, Inc. v. Will Applebee
Claim Number: FA1706001734753
Complainant is ESPN, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Will Applebee (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <notsportscenter.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Richard DiSalle, Carolyn M. Johnson and David A. Einhorn as Panelists.
Complainant submitted a Complaint to the Forum electronically on June 6, 2017; the Forum received payment on June 6, 2017.
On June 7, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <notsportscenter.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 June 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 2017 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 firstname.lastname@example.org. Also on June 7, 2017, 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 June 30, 2017.
On July 13, 2017, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Richard DiSalle, Carolyn M. Johnson and David A. Einhorn as Panelists.
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" 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 Complainant.
Complainant uses the SPORTSCENTER mark in connection with the creation and sale of electronics products. Complainant offers a daily sports news television program produced and broadcast by Complainant that offers breaking news, highlights, and in-depth analysis and commentary from award-winning journalists. Complainant registered the SPORTSCENTER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,627,702, registered Dec. 11, 1990), which demonstrates its rights in the mark. Respondent’s <notsportscenter.com> is confusingly similar to Complainant’s mark because it incorporates the SPORTSCENTER mark in its entirety, adding only the generic term “not” and the generic top-level domain (“gTLD”) “.com,” neither of which meaningfully distinguishes the domain name from Complainant’s registered mark.
Respondent has no rights or legitimate interests in the <notsportscenter.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the SPORTSCENTER mark for any purpose. Respondent also fails to use the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use, because the disputed domain name’s resolving site is inactive. Instead of displaying content, the resolving site presents would-be users with an error message.
Respondent registered and continues to use <notsportscenter.com> in bad faith. Respondent’s domain name resolves to an inactive site, which can provide evidence of bad faith registration and use. Further, despite the SPORTSCENTER mark’s widespread notoriety, Respondent created and continues to use the confusingly similar domain name. This is indicative of actual notice to Respondent of Complainant’s rights in the mark, which is further evidence of bad faith. Finally, Respondent has continued its use of the disputed domain name despite multiple attempts by Complainant to contact Respondent with a ‘cease-and-desist’ letter.
uses the disputed domain name in connection with sports news parody content,
which it conducts online and on various social media accounts (including
Twitter, Instagram, and Facebook). The NOTSportsCenter business concept has
existed since its Twitter inception in 2011, and the <notsportscenter.com>
domain name has existed since 2012. In both the disputed domain name and
the social media account names, Respondent added the word “not” to Complainant’s
registered mark in order to clearly indicate a parody site and alleviate,
rather than generate, confusion about the owner of the corresponding content.
As such, the domain name would not be considered “confusingly similar” to
Complainant’s SPORTSCENTER mark by any reasonable Internet user. Further, in
respect to Respondent’s Twitter account using the disputed domain name, Twitter
specifically notes that adding the word
“not” to any name is not confusing to followers.
Respondent has rights and legitimate interests in the disputed domain name. Although Respondent registered <notsportscenter.com> under a personal name, Respondent conducts widespread business under the title ‘NOTSportsCenter,’ as indicated. Thus, according to Respondent’s 760,000-plus followers on social media using the disputed domain name, Respondent is commonly known by <notsportscenter.com>. Further, Complainant, on its broadcasting, has mentioned Respondent’s social media multiple times, acknowledging Respondent’s legitimate use of the disputed domain name. Respondent’s continued use of the disputed domain name also constitutes a bona fide offering of goods and services, since the resolving site displays original parody content. Complainant argues that the resolving site is inactive, which was only the case for a limited period of time. Over the course of its existence, however, <notsportscenter.com> has displayed content an overwhelming majority of the time.
Finally, Respondent’s registration and use of <notsportscenter.com> does not constitute bad faith under Policy ¶ 4(a)(iii). Firstly, the site actively displays original content, and was only inactive for a brief period of time. Further, Respondent did not register the domain name for the purpose of selling it to Complainant. Although Respondent was aware of the SPORTSCENTER mark and Complainant’s rights therein actual knowledge alone is not dispositive of Respondent’s bad faith. Moreover, Respondent does not attempt to disrupt Complainant’s business, as it offers parody material regarding sports, and does not purport to keep users from visiting Complainant’s website. Finally, Complainant’s ‘cease-and-desist’ communication with Respondent was initiated too late for its legal arguments against Respondent to have merit in light of the doctrine of laches; if Complainant had legitimate concerns about Respondent’s registration and use of the disputed domain name, it should have expressed those concerns sooner than six years after NOTSportsCenter’s inception.
C. Additional Submissions:
Complainant filed his additional submission on July 5, 2017 as follows:
The inclusion of the word “not” is insufficient to distinguish Respondent’s domain name from Complainant’s SPORTSCENTER mark because it is a generic word, regardless of its meaning.
Additionally, Respondent’s argument concerning its legitimate interest in the disputed domain name is severely hampered by the fact that the resolving site displays content from 2014—indicating that Respondent’s use of the domain is in no way ‘active.’ Further, Respondent cannot differentiate its sports news content from Complainant’s on the basis of humor, because Complainant’s SPORTSCENTER mark is associated with various humorous news segments. Thus, the services directly compete with a sector of Complainant’s services it offers.
Respondent’s bad faith registration is also evident as Respondent uses the disputed domain name to create a likelihood of confusion with Complainant’s mark. Respondent cannot escape liability for this infringement on the basis of providing a disclaimer to Internet users, because the disclaimer is far less prevalent on the disputed domain name’s resolving site than on Respondent’s social media pages. Finally, there was no undue delay in Complainant’s action against Respondent—which it took upon learning of Respondent’s trademark application for a NOTSPORTSCENTER mark—and Respondent’s failure to respond to subsequent communication from Complainant exemplifies a cavalier attitude, rather than any sort of good faith as Respondent suggests.
Respondent’s additional submissions were filed on July 10 and July 11, 2017. Essentially they restate, clarify and expand upon Respondent’s original submission, and respond to Complainant’s additional submission.
The domain name has not been registered nor is it being used in bad faith.
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.
Because of the Panel’s findings on bad faith, it will not discuss Policy Paragraph 4(a)(i) or Policy Paragraph 4(a)(ii)
The Panel finds that Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith). Although Respondent was aware of the SPORTSCENTER mark and Complainant’s rights therein actual knowledge alone is not dispositive of Respondent’s bad faith. Moreover, Respondent does not attempt to disrupt Complainant’s business, as it offers parody material regarding sports, and does not purport to keep users from visiting Complainant’s website. Respondent asserts that the disputed domain name’s resolving site typically displays satirical sports news content; the brief period of time during which the resolving site was inactive was due to a hosting issue rather than a choice on the part of Respondent. Additionally, Respondent also addresses Complainant’s argument of Respondent’s actual notice by emphasizing that actual notice is insufficient alone to violate the Policy—the other components of the Policy would need to be satisfied before actual notice is even considered as evidence of bad faith. There is no evidence that the name was acquired primarily for the purpose of sale; there is no evidence of intent to prevent the owner from reflecting the mark, and in any event there is no such pattern of conduct; and there is no evidence that the primary purpose of the registration was to disrupt the business of Complainant.
Finally, Respondent asserts that Complainant’s delay in taking action against Respondent nullifies its arguments. The Panel will consider the doctrine of laches as evidence for Respondent in its considerations of the elements of the Policy. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defense in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”). Therefore, the Panel finds Respondent’s evidence of the delay in Complainant’s action regarding the disputed domain name to be material.
Because Complainant has not established the element of bad faith required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <notsportscenter.com> domain name REMAIN WITH Respondent.
Richard DiSalle (Chair),
Carolyn M. Johnson and
David A. Einhorn,
Dated: July 31, 2017
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