ESPN, Inc. v. Danny Ballerini
Claim Number: FA0008000095410
The Complainant is ESPN, Inc., Bristol, CT, USA ("Complainant"). The Respondent is Danny Ballerini, Fairlawn, NJ, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "ESPNCLASSIC.COM", registered with Network Solutions Inc. ("NSI").
The Panelist 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 the panelist in this proceeding.
Hon. James A. Carmody, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on August 14, 2000; The Forum received a hard copy of the Complaint on August 14, 2000.
On August 15, 2000, NSI confirmed by e-mail to The Forum that the domain name "ESPNCLASSIC.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On August 15, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 5, 2000 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 email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default.
On September 12, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed the Hon. James A. Carmody 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 Uniform 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 Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The Complainant contends that the Respondent has registered a domain name that is confusingly similar to its trademark registered for and in use by the Complainant. Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain name, and that the respondent has registered and is using the domain name in bad faith. The Complainant contends that the Respondent reasonably should have known that registering the domain name would cause a dispute.
The Respondent submitted no response in this matter. As a result, all reasonable inferences of fact in the allegations of the Complainant will be deemed true. ICANN Rule 14(b).
The Complainant owns many U.S. registered trademarks containing the term ESPN. The Complainant is a well-known provider of multimedia sports information. Its operations include an interactive Internet site, <ESPN.COM>, four domestic television networks, various international television networks, a television production company, a radio network, a sports magazine, and other related sports ventures. The Complainant’s original network was launched on September 7, 1979.
On October 9, 1997 the Complainant acquired the Classic Sports Network and renamed it ESPN Classic. The network is devoted to 24-hour sports broadcasting.
The Complainant owns an extensive number of trademark registrations in the United States and throughout the world containing the "ESPN" term. The Complainant owns a pending trademark application for the mark "ESPN CLASSIC", filed on August 31, 1998.
The Respondent registered the domain name in question on October 26, 1999. The Respondent began using the domain name to redirect Internet traffic to a website known as <iwin.com>, a site on which Internet users are invited to play games and win prizes.
On June 5, 2000, the Complainant sent the Respondent correspondence advising him of the "ESPN" and "ESPN CLASSIC" marks. The Complainant requested that the domain name be transferred. On June 8, 2000 the Respondent sent the Complainant an email stating that he intended to create a website using the domain name. The Respondent refused to transfer the domain name to the Complainant and offered to place a link to the Complainant’s site on his website. The Complainant sent two more emails and letters to the Respondent indicting its disappointment in the Respondent’s unwillingness to transfer the domain name and that the Complainant would initiate a UDRP proceeding if no resolution was reached. The Respondent replied on June 22, 2000, stating that he refused to transfer the domain name.
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
The Complainant has rights in the term "ESPN CLASSIC" through its pending trademark application. In addition, the Complainant started using this mark at least as early as August 31, 1999. The Complainant’s goods and services have sufficient secondary association with the Complainant that common law trademark rights also exist. See Tuxedos By Rose v. Hector Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000).
The domain name registered by the Respondent is identical to the Complainant’s mark. The addition of the ".com" at the end of the domain name does not give rise to an indistinguishable mark owned by the Respondent. See Harcourt, Inc. v. Jeff Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that the domain names are identical to the Complainant’s marks).
Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in "ESPNCLASSIC.COM". The Respondent has not denied that assertion.
The Respondent initially used the domain name to direct Internet traffic to another website. Only after the Complainant sent the first email and letter correspondence demanding transfer of the domain name did the Respondent remove the link and posit that he was going to use the domain name. However, the Respondent still has made no use of the domain name.
Linking a domain name that infringes on another’s trademark rights to a third party’s website is not a bona fide use of the domain name. Before any notice of a dispute regarding the domain name, the Respondent made no demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services. Policy ¶ 4.c.(i). The Panel concludes that the Respondent does not satisfy the circumstances set forth in Policy ¶ 4.c.(i).
The Respondent is not commonly known as ESPNCLASSIC.COM. Policy ¶ 4.c.(ii).
The Respondent is not making a legitimate noncommercial use of the domain name in question. Policy ¶ 4.c.(iii).
Based on the above, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name in question.
Registration and Use in Bad Faith
The Complainant contends that the Respondent registered the domain name in bad faith. The Respondent has not denied that assertion.
The Respondent has linked the domain name to another website <iwin.com>. Presumably, the Respondent receives a portion of the advertising revenue from this site by directing Internet traffic to the site. Using a domain name to attract Internet users, for commercial gain, to another Internet location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, endorsement, or affiliation with the location of the website is evidence of bad faith. Policy ¶ 4.b.(iv). See America Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent).
The Panel concludes that the Respondent registered and used the domain name in bad faith.
Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.
Accordingly, for all of the foregoing reasons, it is ordered that the domain name "ESPNCLASSIC.COM" be transferred from the Respondent to the Complainant.
Hon. James A. Carmody, Arbitrator
Dated: September 15, 2000
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