ESPN, INC. v. Andrew Schulte / ESPN
Claim Number: FA1904001838076
Complainant is ESPN, INC. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Andrew Schulte / ESPN (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <espnslaughter.com>, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 9, 2019; the Forum received payment on April 9, 2019.
On April 10, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <espnslaughter.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 April 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 2019 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@espnslaughter.com. Also on April 10, 2019, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 1, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is the world’s leading multinational, multimedia sports entertainment entity, featuring a broad portfolio of multimedia sports assets. Complainant has a TV and digital audience that nears 100 million Americans per month and ESPN Digital averages 115 million users a month worldwide. Complainant has rights in the ESPN mark based upon registration in the United States in 1985.
Complainant alleges that the disputed domain name is confusingly similar to its ESPN mark because it incorporates the mark in its entirety and merely adds the generic term “slaughter” along with the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name because Complainant has not given Respondent permission to use the ESPN mark or to register the disputed domain name. Furthermore, there is no evidence within the WHOIS information that Respondent is commonly known as the disputed domain name. Further, Respondent attempts to pass off as Complainant because the disputed domain name resolves to a website that displays Complainant’s mark and logo and is intended to mislead consumers into believing that the website is operated and run by Complainant. Specifically, the resolving website contains the language “ESPN Presents: Schulte’s Slaughter House”; it states that the website is sponsored by ESPN (among other brands); it shows the ESPN Monday Night Football logo and programming schedule; it lists ESPN, Inc.’s address (although it incorrectly substitutes “Drive” for “Plaza”) and telephone number as contact information; it displays the following copyright notice: “Copyright © 2018 ESPN MEDIA”; and it displays the following notice: “Brought to you by ESPN Media a Disney Co.” The content on the resolving website appears to be critical of the National Football League (NFL).
Further, says Complainant, Respondent registered and is using the disputed domain name in bad faith for two reasons. First, Respondent was aware of Complainant’s rights in the ESPN mark when it registered the disputed domain name. Second, Respondent is using the disputed domain name to pass off as Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark ESPN and uses it to market a broad portfolio of multimedia sports entertainment around the world. The mark is well known.
Complainant’s rights in its mark dates back to at least 1985.
The disputed domain name was registered in 2018.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website displays Complainants mark and logo and is intended to mislead consumers into believing that the website is operated and run by Complainant.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain name is confusingly similar to Complainant’s ESPN mark because it contains the mark in its entirety and merely adds the generic term “slaughter” and the “.com” gTLD. The affixation of generic or negative terms generally does not defeat a finding of confusing similarity, and the addition of a gTLD is irrelevant in a Policy ¶ 4(a)(i) confusingly similar analysis. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Chevron Intellectual Property LLC v. andrew toro, FA 1487014 (Forum Apr. 11, 2013) (finding, “The affixation of negative terms does not defeat a finding of confusing similarity” where the respondent registered the domain <chevronthinkswerestupid.com>); see also Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not given Respondent permission to use its ESPN mark in any way. Respondent is commonly known by the disputed domain name: absent a response, relevant information includes the WHOIS and assertions by Complainant. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Here, the WHOIS information indicates that Respondent is known as “Andrew Schulte.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent does not make a bona fide offering or legitimate noncommercial or fair use of the disputed domain name because Respondent attempts to pass off as Complainant to mislead consumers into believing that the website is operated and run by Complainant. Specifically, Complainant provides evidence that the resolving website displays Complainant’s mark and logo and various elements intended to mislead consumers into believing that the website is operated and run by Complainant. Furthermore, the copyright notice on the resolving website reads: “Copyright © 2018 ESPN MEDIA”; and the website displays: “Brought to you by ESPN Media a Disney Co.” Generally, a respondent fails to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where it attempts to pass off as a complainant on the resolving website. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Therefore, the Panel finds that Respondent does not use the disputed domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to pass off as Complainant and engage in disruption and/or attraction for commercial gain. Using a domain name to pass off as a complainant can provide evidence of bad faith pursuant to Policy ¶¶ 4(b)(iii) and/or (iv). Here, the resolving website appears to contain criticism of the National Football League (“NFL”); that content could be related to Complainant’s business of providing sports entertainment. Further, the resolving website disrupts Complainant’s business because of the potential to interfere with the business relationship between ESPN and the NFL by misleading people into believing that Complainant is criticizing the NFL. See American Cheerleader Media, LLC. v. ilir shoshi / cheer, FA 1592319 (Forum Jan. 20, 2015) (“The Panel here finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) as … Respondent utilizes a logo and stylized font identical to Complainant’s own, as well as Complainant’s copyrighted images and text in an attempt to pass itself off as Complainant.”); see also United States Postal Service v. kyle javier, FA 1787265 (Forum June 12, 2018) (“Complainant alleges that Respondent is using the disputed domain name to divert Internet users to Respondent’s website, which features content that is identical to Complainant’s own website. The Panel finds that Respondent is disrupting Complainant’s business and that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).”). Therefore the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and/or 4(b)(iv)by passing off as Complainant and engaging in disruption and/or attraction for commercial gain.
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s mark and logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 <espnslaughter.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 1, 2019
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