Who Dat?, Inc. v. Direct Privacy / Domain Name Proxy Service, Inc Privacy ID# 12963971
Claim Number: FA1711001759773
Complainant is Who Dat?, Inc. (“Complainant”), represented by Gregory D. Latham of Intellectual Property Consulting, LLC, Louisiana, USA. Respondent is Direct Privacy / Domain Name Proxy Service, Inc Privacy ID# 12963971 (“Respondent”), represented by David Vinterella of Faia & Associates, LLC, Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <whodatnation.com>, registered with DNC Holdings, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 22, 2017; the Forum received payment on November 22, 2017.
On November 24, 2017, DNC Holdings, Inc. confirmed by e-mail to the Forum that the <whodatnation.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, 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 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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 email@example.com. Also on December 1, 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 December 20, 2017.
On December 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
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.
Trademark/Service Mark Information: Rule 3(b)(viii).
Since as early as 1983, Complainant, Who Dat?, Inc. (“WDI”), has offered various products under the WHO DAT? brand name. For years WDI, through its licensees, has sold WHO DAT?-branded apparel such as t-shirts, shirts, hats, visors, shoes, shorts, boxers, and pants. WHO DAT?-branded products are promoted on the world wide web, in publications with interstate and international circulation, and have been featured, unsolicited, in a variety of media outlets, including television networks, magazines, and numerous U.S. and international newspapers. WHO DAT?-branded products are in great demand and are only available from licensees authorized by WDI to use the WHO DAT? trademark. WDI’s WHO DAT? mark is a “famous and distinctive mark” under the U.S. Trademark Act, and provides our client with broad, exclusive rights.
WDI owns the following relevant federal trademark registrations:
Musical recordings; sound reproductions
Bakery products; cakes; coffee; hamburger sandwiches; pralines; seasoning; spices
Alcoholic beverages; prepared alcoholic cocktails
The marks are collectively referred to as WDI’s “WHO DAT Marks.” These registrations are valid and subsisting and constitute prima facie evidence of WDI’s exclusive rights to use its WHO DAT Marks on and in connection with the goods and services listed. Printouts of records from the U.S. Patent and Trademark Office Trademark Application and Registration Retrieval system, including copies of certificates of registrations, are provided.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] WDI uses the WHO DAT Marks in connection with the advertisement and sales of t-shirts, hats, shorts, and other apparel, bakery products, cakes, coffee, hamburgers, pralines, spices, alcoholic cocktails, and musical recordings and sound reproductions. WDI is domiciled in the New Orleans metropolitan area. WDI owns and operates a company website accessible through the domain name whodat.com. At this website, consumers can purchase WDI’s t-shirts, hats, shorts, and other apparel along with other products.
Respondent is the owner of the domain name <whodatnation.com> (the “Infringing Domain Name”) which, on its face, is substantially identical to and confusingly similar to WDI’s WHO DAT Marks. Upon information and belief, Respondent and Registrar are domiciled in the New Orleans metropolitan area. Respondent uses the Infringing Domain Names to advertise and sell products identical to WDI’s, specifically t-shirts and other apparel.
Respondent uses the Infringing Domain Name to direct Internet users to a competing website promoting Respondents t-shirts which incorporate WDI’s WHO DAT Marks. Attached is a copy of one of Respondent’s webpages showing WDI’s WHO DAT Marks used in connection with the sale of a t-shirt offered by Respondent. As a result of Respondent’s use of the WHO DAT Marks to sell t-shirts and Respondent’s use of “Who Dat” in the Infringing Domain Name, WDI’s customers are likely to believe that information about WDI’s products will be located at a domain name containing WDI’s WHO DAT Marks. WDI’s customers are also likely to believe that Respondent is somehow affiliated with or sponsored by WDI since Respondent’s products offered under the Infringing Domain Name are nearly identical to those of WDI.
Respondent’s domain name is confusingly similar to WDI’s WHO DAT Marks. Respondent’s domain name wholly incorporates WDI’s WHO DAT Marks. Respondent merely added the word “nation” to WDI’s WHO DAT Mark to create the domain name <whodatnation.com>. The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name. The principal exception that some panels have found in certain cases is where a trademark (especially one of a descriptive nature) is incorporated or subsumed within other words or textual elements so that the trademark is not clearly the dominant component of the domain name. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, <ansellcondoms.com>, Hachette Filipacchi Presse v. Vanilla Limited/Vanilla Inc/Domain Finance Ltd., WIPO Case No. D2005-0587, <naturelle.com> inter alia, Cancellation Denial in Part, eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307, <ebaymoving.com>, Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No.D2007-0768, <playboyturkey.com>, Hoffmann- La Roche Inc. v. Wei-Chun Hsia, WIPO Case No.D2008-0923, <yourtamiflushop.com>, BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, WIPO Case No.D2008-1338, <auriasdiamonds.info> inter alia, TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No.D2009-0361, <autotradertransactions.com>, Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No.D2009-0434,<unlimitedwiidownloads.com>.
Moreover, the addition of the generic top-level domain “.com” and “.net” does not distinguish the domain name from WDI’s registered WHO DAT Marks. See Broadcom Corporation v. Danny Juwon Lee, FA 98071 (Forum Aug. 21, 2001) (“It is well established that the addition of “.com” or any other TLD is without significance when making determinations whether a domain name is identical to a mark”); see also PepsiCo, Inc. v. Datasphere Ltd., FA 96695 (Forum, April 9, 2001) (finding that the domain name <pepsicola.com> is identical and confusingly similar to Complainant’s registered marks, which include PEPSI- COLA.).
As a result of WDI’s extensive use of its WHO DAT Marks, these marks are known to identify WDI as the source of apparel and other related goods incorporating the WHO DAT Marks. Respondent’s Infringing Domain Name creates a likelihood of confusion with WDI’s marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website. In addition, Respondent’s domain name is likely to misleadingly divert web users trying to locate legitimate information about WDI’s goods by exploiting upon the likelihood that a consumer would enter WDI’s Marks and the location where such goods would be used as a URL when searching for the goods offered under the WHO DAT Marks. The fact that Respondent offers nearly identical goods incorporating the WHO DAT Mark in the same New Orleans community that WDI is located heightens this already high likelihood of confusion.
[b.] Respondent has no rights or legitimate interests with respect to the domain name <whodatnation.com>. WDI did not grant any authorization to Respondent to use any of its WHO DAT Marks. Moreover, Respondent is not a licensee of WDI, nor associated or affiliated with WDI in any way. See the Declaration of Gregory D. Latham (“Latham Decl.”), ¶2. Respondent is not making a legitimate noncommercial or fair use of the domain name in dispute without intent for commercial gain. To the contrary, Respondent’s website specifically asks consumers to buy its t-shirts incorporating the WHO DAT Marks.
WDI has met its burden of proof of showing that Respondent has no legitimate rights or legitimate interest in the domain names that are the subject of this Complaint under ICANN Policy ¶4(a)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. Sanjo CellTech. Ltd., FA 406512 (Forum Mar. 9, 2005) (The threshold for showing that Respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy is low).
[c.] Respondent has registered and is using the domain name in dispute in bad faith because the domain name was registered and is being used primarily to disrupt the business of WDI with knowledge of WDI. Respondent is selling products that are very similar to WDI’s goods and is targeting the same consumers. There can be no doubt that Respondent is aware of and has knowledge of WDI’s rights in its WHO DAT Marks. Indeed, WDI’s President, Steve Monistere, previously notified Respondent of its infringing use of the WHO DAT Marks to sell products, specifically apparel, on its website at <whodatnation.com>. Latham Decl., ¶3. Mr. Monistere had several meetings with Respondent’s representative regarding its infringing use of the WHO DAT Marks.
There is a legal presumption of bad faith when a Respondent was aware, actually or constructively, of a Complainant’s distinctive trademark at the time of registration. See Bloomberg L.P. v. C&C Multimedia, FA 0096659 (Forum April 4, 2001) (bad faith found where Complainant had federal trademark registration for BLOOMBERG prior to Respondent’s registration of <bloomsberg.com>); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000- 0471(WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names); see also Cable News Network LP, LLLP v. Ahmed Latif, FA 0100709 (Forum Dec. 31, 2001) (CNN’s [federal trademark] registrations constitute constructive notice of CNN’s rights).
In this case, WDI has been selling its many products using its WHO DAT Marks in and around the New Orleans metropolitan area in October 1983. WDI’s U.S. Trademark Registration Nos. 4,385,857; 4,310,960; and 4,402,283. In doing so, WDI has heavily advertised its WHO DAT branded products in the New Orleans metropolitan area for several years. Indeed, WDI was selling its WHO DAT branded products for nearly twenty-three (23) years before Respondent registered the Infringing Domain Name. Respondent and Registrar are both located in the New Orleans metropolitan area. In addition, WDI has several licensees that sell its WHO DAT branded products in the New Orleans metropolitan area and all across the nation. WDI’s use of its WHO DAT Marks and its registration of the whodat.com domain name predate Respondent’s Infringing Domain Name registration by many years. Because Respondent is located in the New Orleans metropolitan area, it was clearly aware of WDI’s distinctive and famous WHO DAT Marks at the time of registering the Infringing Domain Name. There can be no doubt that Respondent at least had constructive knowledge of WDI’s WHO DAT Marks and Respondent is using the Infringing Domain Name to divert business from WDI. Therefore, bad faith should be found. UDRP Policy ¶4(b).
Respondent also knows or should know that Internet users looking for the websites containing information about WDI’s WHO DAT branded products are likely to encounter Respondent’s website by entering the URL <whodatnation.com> which incorporates the WHO DAT trademarks in their entirety. See Americor Mortgage, Inc. v. Robert D. Bowman, FA 0093548 (Forum, April 22, 2002) (Registration of the domain name <zaploan.com> which is identical to Complainant’s registered trademark is evidence of bad faith pursuant to Policy 4(b)(iv)); see also Broadcom Corp., FA 98701 (Forum, Aug. 2001) (Registration of a domain name that infringes on another’s mark amounts to bad faith with the meaning of Policy 4(a)(iii)); see also Sony Kabushiki Kaisha v. Inja Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that Respondent could make any active use of the disputed domain names without creating a false impression of an association with Complainant”).
WDI’s business has been harmed by Respondent’s unauthorized and bad faith registration and use of the Infringing Domain Name. WDI wishes to have the registrations for the Infringing Domain Name transferred to it in order for the WHO DAT Marks to be used for their intended purposes on the Internet – namely, selling WDI’s authentic WHO DAT branded products.
WDI has met its burden of proof of showing that the Infringing Domain Name has been registered and used in bad faith under ICANN Policy ¶4(a)(iii).
This Response specifically responds to the statements and allegations contained in the Complaint and includes any and all bases for the Respondent to retain registration and use of the disputed domain name. Rule 5(b)(i).
I. General Overview and Factual Background.
The phrase “WHO DAT” is an expression by New Orleans Saints football fans in support of the team that, among other things, is vociferously chanted during football games. The phrase “WHO DAT NATION” can aptly be described as the collection of the New Orleans Saints fan base who express their love and affection for the team through use of the words “WHO DAT”. As a federal judge in New Orleans has succinctly stated, the phrase WHO DAT “is in popular usage in Louisiana as an expression of community pride, sports enthusiasm, and other notions of social significance.” See Who Dat Yat Chat, LLC v. Who Dat, Inc., 2012 WL 1118602 at *1 (E.D. La. Apr. 3, 2012). The Complaint seeks the transfer of the subject domain name <whodatnation.com> (hereinafter the “Domain Name”) to the Complainant on the grounds that the Respondent is causing confusion through use of the Domain Name, and has acted in bad faith in the registration and use of the Domain Name.
While the Complainant has secured registered trademarks for “WHO DAT” and “WHO DAT?” (collectively referred to as the “Marks”) for consumable and non-consumable goods and products, the Complainant does not have any registered trade or service mark rights to the phrase “WHO DAT NATION”. Additionally, the Complainant does not allege or purport to possess any protectable right to the phrase “WHO DAT NATION” under the federal common law. The Respondent has been the registered name holder of the Domain Name since December 10, 2006. The Complaint alleges that as early as 1983, the Complainant has maintained a protected interest in the phrase “WHO DAT”. Interestingly though, the Complainant has tacitly acquiesced in the use of the Domain Name by the Respondent for 11 years before the filing of the instant administrative proceeding. As an initial defense, and to the extent that the presiding judge in this case may make such a conclusion, this action should be dismissed under the equitable doctrine of laches.
However, in the event it is determined that this forum is not proper for raising the laches defense, counsel submits that use of the Domain Name by the Respondent is not confusingly similar to Complainant’s use of the Marks. As this Response will clearly demonstrate, the Respondent is principally using the Domain Name as a source of information about the National Football League (“NFL”) team, the New Orleans Saints. The Web page at <whodatnation.com> is replete with examples of information regarding player health, team and player statistics, news articles about the New Orleans Saints organization, and other forms of general commentary from media outlets and fans of the football team, as contained in various blogs linked from this Website. The Website also links to information about the NFL in general, and the specific divisions within the NFL, such as the NFC South to which the New Orleans Saints belong. The Domain Name is also used as an archive source of information about the team from May 2007 up to and including the current 2017 season. None of these intended uses of the Domain Name are confusingly similar to any goods or products offered by the Complainant through the Marks. Additionally, the Marks are neither displayed on any products or goods at <whodatnation.com> nor are any goods offered by competitors of the Complainant displayed on this site. Moreover, neither of the Complainant’s Marks are registered as providing a same or similar function as Respondent’s use of the Domain Name. Finally, the Respondent is neither a competitor of the Complainant nor an owner or licensee of any mark displayed at <whodatnation.com> that directly or indirectly competes with the goods offered by the Complainant. The Complainant fails to make any credible argument or introduce any evidence to dispute these facts.
In brief summation, the Respondent has simply embraced the WHO DAT NATION fan base with the information-based Website at <whodatnation.com>. The Respondent is not capitalizing off of the Complainant’s Marks or otherwise causing any confusion with respect to prospective purchasers of Complainant’s goods.
For the reasons that follow, counsel submits that the Respondent’s use of the Domain Name is not confusingly similar to the Complainant’s use of its Marks. Furthermore, counsel submits that the Respondent has a legitimate right to the Domain Name, and to use same for the operation of the <whodatnation.com> Website as it is currently constituted. The Respondent should remain the registered name holder of the Domain Name, and the Complainant should be denied the relief sought.
II. Law and Argument.
1. The Domain Name and Website do not Create a Likelihood of Confusion.
While the Domain Name incorporates the “WHO DAT” trademark phrase, the critical inquiry is whether Respondent’s use of the name is likely to cause confusion with the goods offered by the Complainant via its Marks. Thus, a necessary component of a trademark infringement claim rests on the principle that there must be a likelihood that potential consumers will confuse the source, affiliation, or sponsorship of the defendant’s product with the plaintiff. See, e.g., Elvis Presley Enter., Inc. v. Capece, 141 F.3d 188, 193 (5th Cir. 1998) (successful trademark infringement claim stemming from the inclusion of the “Elvis” trademark in defendant’s service mark and business, “The Velvet Elvis”, requires that the defendant’s use of “The Velvet Elvis” mark creates a likelihood of confusion in the minds of potential consumers); see also 15 U.S.C. §§1114(1), 1125(a) (1)(A).
In the context of domain name disputes involving similar domain names and Websites, the popular test utilized to determine likelihood of confusion is commonly referred to as the “Internet troika” analysis. Under this test, courts will examine the following factors: (1) the similarity of the marks; (2) the relatedness of the goods and services offered; and (3) the simultaneous use of the Internet as a marketing channel. See Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137, 1146-48 (9th Cir. 2011).
While there is no doubt regarding the similarity of the domain names involved in this case, there is absolutely no similarity between the goods and services offered by the respective parties. As previously discussed, the Respondent’s Website is primarily a non-commercial site offering information-based content to its consumers. In contrast, the Complainant’s Website is designed purely for commercial and monetary gain. Similarly, unlike the Complainant, the Respondent is not using the Internet to market any products or goods. The Respondent is simply projecting the use of the Domain Name as a fan and member of the “WHO DAT NATION” to other similar fans who love the New Orleans Saints organization, and the game of football in general. Accordingly, under the “troika” factors, there is no likelihood of confusion between the Complainant’s domain name and Website and the Respondent’s Website and the Domain Name.
2. Search Engine Results do not Create a Likelihood of Confusion.
While it is undeniable that there are advertising links at <whodatnation.com>, there are no direct links taking a visitor to any Website offering goods that compete either with the Complainant or the Complainant’s Marks.
Instead, to attempt to purchase “WHO DAT” merchandise, a visitor to <whodatnation.com> has to enter the “WHO DAT” keyword in the search engine box on the site, then click search, then click the “Who Dat Nation Shirt” link on a secondary Web page, then click on the graphic image (which is yet another link), that ultimately takes the prospective consumer to the final destination Web page at www.shop.spreadshirt.com where a purchase of apparently only one product can be made.
Counsel submits that a reasonably prudent person would not confuse the Complainant’s wide array of product offerings at www.whodat.com with the single and solitary “WHO DAT” shirt offering at www.spreadshirt.com, which is based entirely off of a search engine result.
In the context of keyword advertising via search boxes on Websites, the likelihood of confusion analysis will ultimately turn on what “the consumer saw on the screen and reasonably believed, given the context.” See Hearts on Fire Co. v. Blue Nile, Inc., 603 F.Supp. 2d 274, 289 (D. Mass. 2009). Thus, “the most relevant factors to the analysis of the likelihood of confusion are: (1) the strength of the mark; (2) the evidence of actual confusion; (3) the type of goods and degree of care likely to be exercised by the purchaser; and (4) the labeling and appearance of the advertisements and the surrounding context on the screen displaying the results page.” See Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137, 1154 (9th Cir. 2011).
In light of these factors, the Respondent’s Website does not create a likelihood of confusion. First, the Complainant has not provided any evidence of actual confusion on the part of its customers. Second, as previously discussed, the Respondent is not selling any goods incorporating the “WHO DAT” mark. The fact that a single “WHO DAT” shirt shows up in advertising without any other product offering should raise, if anything, notions of obviousness rather than confusion on the part of the Complainant’s consumers. In Toyota Motor Sales v. Tabari, 610 F.3d 1171 (9th Cir. 2010), the Ninth Circuit remarked that the default degree of consumer care with respect to Websites is becoming more heightened as the novelty of the Internet evaporates and online commerce becomes commonplace. As the Tabari panel reasoned:
“[I]n the age of FIOS, cable modems, DSL and T1 lines, reasonable, prudent and experienced internet consumers are accustomed to such exploration by trial and error. They skip from site to site, ready to hit the back button whenever they’re not satisfied with a site’s contents. They fully expect to find some sites that aren’t what they imagine based on a glance at the domain name or search engine summary. Outside the special case of ... domains that actively claim affiliation with the trademark holder, consumers don’t form any firm expectations about the sponsorship of a website until they’ve seen the landing page—if then.”
Id. at 1179 (emphasis added).
3. Bad Faith Consideration.
While the Complainant alleges bad faith on the part of the Respondent for the registration and use of the Domain Name, the above analysis clearly establishes otherwise. Under UDRP ¶4(b), the panel may consider a variety of factors to determine bad faith; however, none of these factors are present under the circumstances. First, there is no evidence that the Respondent offered to sell the Domain Name to the Complainant for any amount of consideration. Second, as previously discussed, the Respondent’s registration and use of the Domain Name was not to compete or otherwise cause confusion for the Complainant’s consumers. The above discussion makes clear that the purpose of the Respondent’s use of the Domain Name was to provide an outlet for the dissemination of news, information, and commentary about the New Orleans Saints organization as a fan and member of the “WHO DAT NATION”.
In addition to the defense of laches as previously outlined, counsel submits that Respondent’s registration and use of the Domain Name is a permissible non-infringing use under the doctrine of descriptive fair use. Under this doctrine, where a plaintiff owns a federal registration for a trademark that is similar to the phrase that the defendant uses to describe its goods, such use of the mark by the defendant is permissible provided that defendant’s use is: “(1) other than as a mark, (2) in a descriptive sense, and (3) in good faith. See Edible Arrangements, LLC v. Provide Commerce, Inc., 2016 WL 4074121 at *13 (D. Conn. Jul. 29, 2016) (citing Kelly-Brown v. Winfrey, 717 F.3d 295, 308 (2nd Cir. 2013)); see also 15 U.S.C. §1115(b)(4).
The Respondent’s registration and use of the Domain Name fits squarely in the category of descriptive fair use. First, the Respondent has not filed and does not intend to file for a registration of the phrase “WHO DAT NATION” as a mark. Additionally, the Respondent is not using this phrase as a source identifier for any particular set of goods or services. The Respondent is using this phrase simply as a description for the sum total of the fan base of the New Orleans Saints football team, whom individually describe themselves as a member of the “WHO DAT NATION”. For this very same reason, the Respondent’s use of the “WHO DAT” mark in the Domain Name is descriptive. Lastly, the Respondent has acted and is currently acting in good faith. The Complainant does not have a registered mark in the phrase “WHO DAT NATION”. Furthermore, there is nothing on the Respondent’s Website that is injurious to either the Complainant or the Complainant’s Marks. The Complainant cannot point to any evidence of disruption to its business as a result of the Respondent’s activity. The Complainant has merely asserted a series of hollow allegations that the Respondent is a bad faith actor. In addition to the other defects in the Complaint, the administrative panel should conclude that the registration and use of the Domain Name by the Respondent is a descriptive fair use under federal trademark law, and should deny the Complainant’s request to have the Domain Name 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 rights or legitimate interests in respect of the domain name; and
(3) the domain name was NOT registered and is NOT 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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
Complainant registered the WHO DAT? (e.g. Reg. No. 4,385,857, registered August 20, 2013) and WHO DAT (e.g. Reg. No. 4,402,283, registered September 17, 2013) mark (collectively “WHO DAT marks”) with the United States Patent and Trademark Office (“USPTO”). Registration with a governmental trademark agency, such as the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶4(a)(i).”). Complainant has established rights in the WHO DAT marks for the purposes of Policy ¶4(a)(i).
Complainant claims Respondent’s <whodatnation.com> domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s entire mark and simply adds the generic, descriptive word “nation” and the gTLD “.com.” Generally, adding generic or descriptive terms are not sufficient changes to adequately differentiate a disputed domain name from a mark. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). The <whodatnation.com> domain name is confusingly similar to the WHO DAT marks under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Respondent is primarily a fan web site for the New Orleans Saints football team. Using a registered trademark for a bona fide non-commercial fan site is a legitimate and fair use of a trademark, A.S. Roma S.p.A. and A.S.R. Media & Sponsorship S.r.l. v. Simone Giacometti, Claim Number: FA1512001652203 (1/11/2016) and The Honorable Ron Paul v. Whois Privacy Services Pty Ltd / JNR Corp, Case No. D2013-0278 (5/8/2013). No one disputes the phrase “Who Dat” refers to the New Orleans Saints football team (whose fans apparently chant it during football games in support of the team).
Respondent has apparently been using the disputed domain name as a bona fide non-commercial fan site since December 2006 without complaint…for 11 years. During that time, Respondent has undoubtedly acquired rights to the disputed domain name. Complainant’s late claim is barred by latches, see United Press International, Inc. v. United Photographers Internationals, Claim Number: FA1304001492678 (5/7/2013), and 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.”).
The Panel finds Policy ¶4(a)(ii) NOT satisfied.
Complainant failed to meet the burden of proof for the element 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).
Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶4(a)(iii) because Respondent has rights in the disputed domain name pursuant to Policy ¶4(a)(ii). 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); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent does not use of the domain name in a competitive fashion, but merely provides an outlet for the dissemination of news, information, and commentary about the New Orleans Saints organization as a fan and member of the “WHO DAT NATION” (which is apparently a popular term for the entire community of New Orleans Saints football team fans). The sole troubling issue is the single link to another web site which contains a fan shirt, labeled “Had somebody ask about one of our old WhoDatNation shirts so we found the link!” Certainly, Complainant might well have a trademark issue with that shirt manufacturer. While the link is buried and hard to find, it still exists. However, the Panel finds the link is not connected to the primary purpose of the domain name-a non-commercial fan site. A respondent may refute a claim of bad faith under Policy ¶4(b)(iii) by using a domain name primarily for a non-competitive purpose (in this case, a fan site and the evidence is overwhelming Respondent does not use the disputed domain name to primarily sell T-shirts). See PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the <shutterbug.com> domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine). Respondent’s use does not disrupt Complainant’s business under Policy ¶4(b)(iii).
The Panel finds Policy ¶4(a)(iii) NOT satisfied.
Having not established all three elements required under the ICANN Policy, the Panel concludes relief shall be DENIED.
Accordingly, it is Ordered the <whodatnation.com> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, December 26, 2017
 Given the merchandising efforts by the Complainant of “WHO DAT” products since 1983 coupled with the Complainant’s sophisticated understanding and use of domain names, a UDRP proceeding could and should have been filed against the Respondent in a more timely fashion. It is also worthy to note that since at least 2010, the Complainant has been engaged in civil litigation to protect its intellectual property rights; thus, buttressing the fact that the Complainant should not be excused for the unreasonable delay in bringing this action. See the “Procedural History” discussion of the Complainant in Who Dat Yat Chat, LLC v. Who Dat, Inc., 2012 WL 1118602 at *1 (E.D. La. Apr. 3, 2012).
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