New York Yankees Partnership d/b/a The New York Yankees Baseball Club v. Covanta Corporation
Claim Number: FA0609000803277
Complainant is New York Yankees Partnership d/b/a The New York Yankees Baseball Club (“Complainant”), represented by Lee M. Goldsmith, of MLB Advanced Media, L.P., 75 Ninth Avenue, 5th Floor, New York, NY 10011. Respondent is Covanta Corporation (“Respondent”), 301 Thelma Dr. #266, Casper, WY 82609.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <nyyankees.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina(Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 22, 2006.
On October 3, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <nyyankees.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 6, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 26, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@nyyankees.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 2, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <nyyankees.com> domain name is confusingly similar to Complainant’s NEW YORK YANKEES mark.
2. Respondent does not have any rights or legitimate interests in the <nyyankees.com> domain name.
3. Respondent registered and used the <nyyankees.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, New York Yankees Partnership d/b/a The New York Yankees Baseball Club, is among the world’s most recognized and followed professional sports teams, having won twenty-six World Series championships, more than thirty American League pennants and fourteen divisional titles. In connection with its baseball team, Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the NEW YORK YANKEES mark (Reg. No. 1,073,346 issued September 13, 1977).
Respondent registered the <nyyankees.com> domain name on May 15, 1996. Respondent is using the disputed domain name to operate a website offering links to third-party commercial websites selling tickets to Complainant’s baseball games, as well as merchandise bearing the NEW YORK YANKEES mark without Complainant’s authorization.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant’s trademark registrations of its NEW YORK
YANKEES mark with the USPTO establish Complainant’s rights in the mark pursuant
to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”);
see also
Innomed Techs., Inc. v. DRP Servs., FA
221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”).
Complainant has sufficiently
demonstrated that Respondent’s <nyyankees.com>
domain name is confusingly similar to Complainant’s NEW YORK YANKEES mark. Respondent’s <nyyankees.com> domain name incorporates the dominant
features of Complainant’s NEW YORK YANKEES mark and replaces the geographic
identifier “New York” with the common abbreviation “ny.” The Panel finds this abbreviation to be
insignificant in determining that Respondent’s domain name is confusingly
similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003)
(“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or
shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any
other dictionary meanings, so the names are substantially similar in
meaning.”); see also Coca-Cola Co. v.
Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“[T]he abbreviation of the
trade-mark which the public has used and adopted as designating the product of
the [trademark owner] is equally as much to be protected as the trademark
itself . . . .”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must initially establish that Respondent lacks rights and legitimate interests with respect to the disputed domain name. However, once Complainant demonstrates a prima facie case, the burden of proof then shifts to Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel finds that Complainant has established a prima facie case and will evaluate the evidence on the record to determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Respondent uses the <nyyankees.com>
domain name to operate a website providing links to third-party commercial
websites offering tickets to the professional sporting events of Complainant
and merchandise bearing Complainant’s NEW YORK YANKEES mark. In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the
respondent registered and used a domain name that was confusingly similar to
the complainant’s mark to divert Internet users seeking the complainant’s
website to the respondent’s website.
Consequently, the panel found that the respondent’s activities did not
demonstrate a bona fide offering of
goods or services under Policy ¶ 4(c)(i) and failed to constitute a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). In the present case, Respondent is utilizing a domain name that
is identical to Complainant’s mark to mislead Internet users seeking tickets, merchandise,
or information through Complainant’s registered website to Respondent’s
website. Therefore, Respondent’s use of
the disputed domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See TM Acquisition
Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding
that the respondent’s diversionary use of the complainant’s marks to send
Internet users to a website which displayed a series of links, some of which
linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant also asserts that Respondent has never been commonly known by the <nyyankees.com> domain name. There is no evidence in the record to suggest that Respondent is commonly known by the disputed domain name. According to the WHOIS information, Respondent conducts its business under the name “Covanta Corporation.” Thus, the evidence does not establish that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Additionally, the distinct nature of Complainant’s NEW YORK YANKEES mark, coupled with Complainant’s established history of trademark registrations in the mark, make it difficult for Respondent to be commonly known by the <nyyankees.com> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (“Given the Complainants’ established use of their famous VICTORIA’S SECRET marks it is unlikely that the Respondent is commonly known by either [the <victoriasecretcasino.com> or <victoriasecretcasino.net>] domain name.”); see also Compaq Info. Techs. Group, L.P. v. Express Tech., Inc., FA 104186 (Nat. Arb. Forum Mar. 13, 2002) (“The Panel finds that due to the distinct nature of Complainant's COMPAQ mark it is not possible for Respondent to be commonly known as <compaqspares.com> pursuant to Policy ¶ 4(c)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <nyyankees.com> domain name uses Complainant’s well-known NEW YORK YANKEES mark to divert Internet users to a website lacking any affiliation with Complainant’s business. The disputed domain name resolves to a website that almost entirely features links to third-party websites offering tickets and merchandise in competition with Complainant. Consequently, the Panel finds that Respondent is using the <nyyankees.com> domain name to attract Internet users for commercial gain by creating a likelihood of confusion between the disputed domain name and Complainant’s mark. Therefore, Respondent’s <nyyankees.com> domain name was registered and is being used in bad faith pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Furthermore, Respondent registered and is using the <nyyankees.com> domain name to
operate a website primarily featuring links to competitors of Complainant’s goods
and services. Such use by Respondent is
indicative of an intent to disrupt the business of Complainant, and constitutes
registration and use of the disputed domain name in bad faith pursuant to
Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nyyankees.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: November 14, 2006
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