WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
UNIVERSAL CITY STUDIOS, INC. V. G.A.B. ENTERPRISES
Case No. D2000-0416
1. The Domain Name and Registrar
The domain name at issue is ""(the "Domain Name"). The Domain Name is registered with Network Solutions, Inc. ("NSI").
2. The Parties
The Complainant is Universal City Studios, Inc. ("Universal"), a Delaware corporation with its principal place of business at 100 Universal City Plaza, Universal City, California 91608, represented by the law firm of Small Larkin, LLP.
The Respondent is G.A.B. Enterprises ("G.A.B."), a sole proprietorship operated in Sacramento, California by George Bettencourt, an individual. G.A.B. is represented by the law firm of Livingston & Mattesich.
3. Procedural History
Complainant initiated this proceeding by filing a Complaint by e-mail with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on May 11, 2000. On May 15, 2000, the Center received a hard copy of the Complaint. After confirming that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Center�s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center notified Respondent of the commencement of this proceeding on May 15, 2000. The Center set a response date of June 3, 2000.
On June 2, 2000, Respondent requested a 10-day extension of time to file a Response. Complainant consented to an extension until June 12, 2000; in exchange, Respondent purported to agree that Complainant could submit a reply to the Response, if allowed by WIPO. The Center approved the extension on June 5, 2000, but noted that the "Rules do not foresee or provide for either party to file any submissions after the Complaint and Response." See Rule 5(d). Respondent submitted its Response on June 12, 2000, which was received by the Center on June 13, 2000.
On June 15, 2000, after clearing for any conflicts, the Center appointed David H. Bernstein as the sole Panelist.
On June 16, 2000, Respondent amended the affidavit of George Bettencourt, which had been provided as an exhibit to the Response. The amendment removed the following statement from the affidavit: "I was familiar with the phrase Field of Dreams in conjunction with baseball long before the Universal Studios movie." Although notice of the amendment was mailed directly to the Panel instead of to the case administrator in contravention of the Rules, see Rule 8, the amendment was accepted by the Panel.
On June 20, 2000, notwithstanding the Center�s express admonition of June 5 against further submissions, the Complainant filed a Reply "for consideration by the Panel, . . . filed with the consent of the Respondent."
4. Factual Background
The following facts, taken from the Complaint, Response, and publicly available documents on the Internet, are not disputed:
On April 10, 1990, Complainant filed a service mark application with the United States Patent and Trademark Office ("USPTO") to register the mark "FIELD OF DREAMS" for "retail gift store services specializing in sports memorabilia." On January 24, 1992, Complainant filed a trademark application with the USPTO to register an identical mark for "men�s and boy�s t-shirts, sweatshirts, baseball button down stripe shirts, shorts, pants, pajamas, sleep shirts, and bathrobes." These marks were connected with a 1989 movie, "Field of Dreams," produced by Complainant. Certificates of Registration were granted on May 26, 1992 (No. 1,689,661) and September 21, 1993 (No. 1,794,327), respectively.
Complainant has licensed and sold a wide variety of merchandise under the "FIELD OF DREAMS" mark. However, Complainant has never licensed or permitted Respondent to use the "FIELD OF DREAMS" mark or to register the "" Domain Name.
On June 20, 1997, George Bettencourt registered "" with NSI. The web site provides users with baseball news, advertises the sale of sports memorabilia, and provides visitors with links to other baseball-related sites. Respondent�s site also contains a link to "Field of Dreams, The Movie," which ultimately connects to Complainant�s competing "Field of Dreams" sports memorabilia website.
5. Allegations of the Complaint
The grounds set out in the Complaint can be summarized as follows:
Complainant asserts that it has valid trademark rights in the "FIELD OF DREAMS" mark for the following reasons:
- The Complainant�s registered mark, "FIELD OF DREAMS," has become internationally famous due to Complainant�s long and continuous use in connection with the "Field of Dreams" motion picture, as well as with video tapes, laser discs, DVDs, and a variety of other related merchandise.
- Complainant has also licensed the mark for use by sports memorabilia shops.
- As a result, Complainant has developed extremely valuable goodwill with respect to the "FIELD OF DREAMS" mark. The consuming public recognizes "FIELD OF DREAMS" goods to originate with Complainant.
Complainant avers that the Domain Name, apart from the .com top-level domain designation, is identical to Complainant�s mark.
Complainant asserts that Respondent has no rights or legitimate interests in respect of the Domain Name for the following reasons:
- Respondent appropriated Complainant�s valuable mark for use in its Domain Name after Complainant developed the fame and distinctiveness of the "FIELD OF DREAMS" mark in the areas of entertainment, clothing, and retail gift store services.
- Respondent registered the Domain Name without permission from Complainant.
Complainant alleges that Respondent registered and is using the Domain Name in bad faith for the following reasons:
- In reflecting Complainant�s mark in its Domain Name, Respondent is attempting to attract users to its baseball site by associating itself with Complainant�s motion picture and mark.
- Respondent�s web site not only provides articles about baseball, but it offers for sale baseball-related memorabilia from GBI Sports Co., a web site administrated by Respondent�s sole proprietor.
- Respondent adds to consumer confusion by offering links to pages related to Complainant�s motion picture.
- For these reasons, Respondent is violating paragraph 4(b)(iv) of the Policy by "intentionally attempting to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location."
Complainant claims it sent a letter to Respondent via Certified Mail on January 31, 2000, requesting the transfer of the Domain Name to Complainant. The letter was returned to Complainant, and Respondent denies ever receiving such a letter. On February 18, 2000, and March 29, 2000, Complainant claims it mailed identical requests to Respondent, which it believes were successfully delivered. Complainant never received a response, and Respondent claims it never received this correspondence.
6. Allegations of the Response
Respondent denies that Complainant can satisfy any of the three elements of paragraph 4(a) of the Policy. The following is a summary of Respondent�s main points:
Respondent asserts that Complainant is seeking to enforce trademark rights outside the bounds of its registration. Respondent avers it is not using the phrase "field of dreams" in connection with any of the articles of clothing for which the trademark is registered. In addition, the "" web site is not providing "retail gift store services specializing in sports memorabilia." It is merely a baseball site, created as a hobby to provide baseball-related news, statistics, facts and Internet links.
Respondent claims the phrase "field of dreams" is a common expression, rooted in baseball lore and pre-dating Complainant�s 1989 motion picture. Thus, Complainant�s mark incorporates a generic or descriptive term and is deserving of little protection.
Respondent argues that the Domain Name is not identical or confusingly similar to Complainant�s mark for the following reasons:
- To mitigate any consumer confusion, Respondent has added a disclaimer at the top of the "" web site, reading " is not associated with the Field of Dreams Memorabilia stores or their parent company Universal Studios." 1
- The font and style of the web site name � a bright blue script � bears no resemblance to Complainant�s mark, as displayed on their movie site.
- The "" web site clearly indicates that customers must access the GBI Sports Co. Store site in order to buy baseball memorabilia. "F" does not sell merchandise, and the GBI Sports Co. web site does not refer to "."
Respondent supports the proposition that it has a legitimate interest with respect to the Domain Name by making the following points:
- Long before any notice to Respondent of the dispute, Respondent used the Domain Name in connection with the bona fide offering of baseball information, goods or services.
- Respondent has been commonly known by the Domain Name for three years, as the site has been accessed by over 70,000 visitors, and is accessed on a semi-weekly basis by 1,500 regular visitors.
- Respondent is making a legitimate fair use of the Domain Name, without any intent to divert consumers or to tarnish Complainant�s mark. Respondent�s web site is a well constructed, appealing, respectable site for baseball fans of all ages. In addition, the GBI Sports Co. web site does not use the phrase, "Field of Dreams."
Respondent puts forth the following grounds for arguing that its registration and use of the Domain Name was in good faith:
- Respondent only runs a web site that provides baseball information to fans, under the name of a common baseball phrase.
- There have been no attempts to sell the Domain Name to Complainant, and the site was not registered for such a purpose.
- There have been no attempts to prevent Complainant from using its trademark or service mark, or from reflecting its mark in a Domain Name. In fact, Complainant has a web page at "."
- Respondent did not register the Domain Name primarily for the purpose of disrupting Complainant�s business.
- Respondent has not intentionally attempted to attract, for commercial gain, users to its site by creating a likelihood of confusion with Complainant�s mark as to the source sponsorship, affiliation, or endorsement of Respondent�s web site or of a product or service on the web site.
7. The Reply
Before reaching the merits of this dispute, the Panel first must consider whether to accept Complainant�s Reply, filed on June 20, 2000, and, if so, whether to grant Respondent the opportunity to submit a Sur-Reply. See Rule 10(b) ("the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case").
The Center expressly told Complainant that there is no provision in the Rules for submission of reply briefs. This Panel, too, has expressed its view that unsolicited reply briefs are generally inappropriate and contrary to both the Rules and the spirit of the Policy. As explained in Plaza Operating Partners, Ltd. v. Pop Data Technologies and Joseph Pillus, Case No. D2000-0166:
Rule 12 unambiguously provides that only the Panel may request further submissions: "In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties." There is no provision in the Rules for a party to file an additional submission without leave of the Panel.
Although litigants and parties in arbitrations may have a right of reply under the rules of other forums, ICANN chose a different procedure for these proceedings that calls for only a Complaint and a Response. Among other things, this more truncated procedure allows for more rapid and cost effective resolution of domain name challenges. See CRS Technology Corporation v. CondeNet, Inc., File No. FA#0002000093547 (NAF Mar. 28, 2000). At the same time, ICANN provided the Panel with the flexibility to seek additional submissions if the Panel feels that it can not rule on the record submitted.
If a Party wishes to submit a supplemental submission, the better practice under the Rules would be to first seek consent from the Panel, with an explanation of why a supplemental submission is warranted. Appropriate reasons may include the existence of new, pertinent facts that did not arise until after the submission of the Complaint, or the desire to bring new, relevant legal authority to the attention of the Panel. E.g., Pet Warehouse v. Pets.Com, Inc., Case No. D2000-0105 (WIPO Apr. 13, 2000). The Panel would then be in a position quickly to rule on the request and, if it determines that a supplemental submission is warranted, set a schedule that is fair to both parties and provides each party with an opportunity to supplement the record. This procedure also would save the Parties the expense of preparing responses the Panel decides not to accept.
See also Document Technologies, Inc. v. International Electronic Communications Inc., Case No. D2000-0270 (WIPO June 6, 2000) (declining to accept Complainant�s Proposed Supplemental Submission).
Complainant does not point to any exceptional circumstances necessitating further submissions, nor does the Reply itself disclose any new facts or legal authority not available at the time the Complaint was submitted. Instead, Complainant appears to have submitted the Reply solely to provide argument rebutting the assertions in Respondent�s Response. Such a Reply is not permitted by the Rules, regardless of Respondent�s willingness to consent. Because a reply is appropriate only if requested by the Panel, Rule 12, and because the Panel concludes that it can decide this case on the record submitted, the Panel elects not to accept the Reply filed by Complainant and thus has not relied on it in reaching this decision.
8. Discussion
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Policy have been satisfied:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative (but not exhaustive) circumstances that, if proved by Respondent, are sufficient to demonstrate Respondent�s right to or legitimate interest in the Domain Name for purposes of Paragraph 4(a)(ii) above. Paragraph 4(b) of the Policy sets out four illustrative (but not exhaustive) circumstances that, for purposes of Paragraph 4(a)(iii) above, are sufficient to demonstrate that Respondent has registered and used the Domain Name in bad faith.
A. Similarity of the Mark and Domain Name.
This first factor contains two elements: first, does Complainant have rights in a relevant mark and, second, is the Domain Name identical or confusingly similar to that mark. The Panel concludes that Complainant has satisfied its burden on both parts of this factor.
Complainant has shown that it owns federal registrations for the mark "FIELD OF DREAMS" for use in connection with certain articles of clothing and retail gift store services. Under U.S. law (which appropriately may be applied in this case given that both parties are U.S. residents, Home Director, Inc. v. HomeDirector, Case No. D2000-0111 (WIPO April 11, 2000), � 5 n.1), ownership of a federal trademark registration alone is prima facie evidence of ownership of a valid trademark. EAuto, LLC v. Available-Domain-N, Case No. D2000-0120 (WIPO April 13, 2000), � 6.
Complainant also has satisfied its burden of proving that the Domain Name "" is identical to the mark "FIELD OF DREAMS." The only difference between Complainant�s mark and the Domain Name is the absence of spaces and the addition of the ".com" gTLD � differences that are irrelevant when considering the similarity of a domain name (which cannot have spaces and must have a gTLD) to a trademark.
B. Respondent Has No Rights to or Legitimate Interests in the Domain Name.
To prevail, Complainant must prove that Respondent has no rights to or legitimate interests in the Domain Name. Although this is a close issue, the Panel concludes that Complainant has met this burden.
Complainant has made a prima facie showing that Respondent has no legitimate interests in the Domain Name. Complainant has established that it owns a valid trademark and service mark in "FIELD OF DREAMS," and has produced sufficient evidence to show (by a preponderance of the evidence) that consumers visiting Respondent�s website will be confused into believing that the site is sponsored by or otherwise affiliated with Complainant, its movie, or its sports memorabilia store. Such confusion is likely for at least three reasons:
- Respondent�s site not only uses the URL "," but also it makes prominent use of the FIELD OF DREAMS mark;
- The right side of Respondent�s web page is devoted to advertising sports memorabilia offered for sale at another site owned by Bettencourt, which directly competes with services licensed and offered by Complainant under the identical mark;
- Respondent prominently displays a link to "Field of Dreams, The Movie," which itself is likely to confuse consumers into believing that Respondent�s site is somehow related to Complainant�s movie. 2
This finding that consumers are likely to be confused by Respondent�s site mandates a conclusion that Respondent�s site infringes Complainant�s trademark, and thus that Respondent lacks any right to or legitimate interest in this Domain Name.
Once a complainant makes a prima facie showing that a respondent lacks rights in the domain name, the burden of production shifts to the respondent to come forward with demonstrable evidence proving a legitimate interest in the domain name. As explained in Document Technologies:
This "burden shifting" is appropriate given that Paragraph 4(c) of the Policy, which is entitled "How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint," discusses the kind of evidence a Respondent should provide to show that it has rights to or legitimate interests in the domain name. The burden of proof, however, does not shift as the Policy makes clear that "the complainant must prove that each of these three elements are [sic] present." Policy, paragraph 4(a).
As noted above, the Policy offers three nonexclusive examples through which Respondent can demonstrate a legitimate interest:
(i) Before any notice to [Respondent] of the dispute, [Respondent�s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) [Respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Policy, � 4(c). The Respondent in this case has not rebutted Complainant�s showing with evidence of a legitimate interest under any of these factors:
(i) Although Respondent has shown that it used the Domain Name to offer its goods and services prior to the commencement of this proceeding, it has not shown, as required by the Policy, that it used "the domain name in connection with a bona fide offering of goods or services" (emphasis added). According to Black�s Law Dictionary, "bona fide" means "[i]n or with good faith." 3 The Panel�s conclusion that Respondent is infringing Complainant�s trademark rights precludes a finding that Respondent is acting in good faith, which also precludes a finding that Respondent was making a "bona fide offering of goods or services."
(ii) Respondent has not submitted evidence that it has been commonly known by the Domain Name. Respondent is known as G.A.B. Enterprises. Its use of the Domain Name cannot itself be cited as proof that it is known by the Domain Name; otherwise, this factor always would be met for any domain name that is used for an active website.
(iii) Respondent cannot show that it is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue. First, the Panel�s finding of trademark infringement itself precludes such an argument: Respondent�s infringing behavior shows that it was attempting to attract users to its site by creating a likelihood of confusion and, to the extent those users purchased items in Respondent�s store, that it was doing so for commercial gain. Second, Respondent�s use was not noncommercial. Contrary to Respondent�s assertion that his site is a mere "baseball fan site," which only provides information about baseball, Respondent�s site expressly advertises items for sale. That the actual sale has to be completed on another site (easily accessible by hyperlink) is immaterial, and does not insulate the site from the commercial elements advertised on it.
C. Respondent Registered and Used the Domain Name in Bad Faith.
Complainant alleges that Respondent "intentionally attempt[ed] to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location." If true, this circumstance is evidence of Respondent�s registration and use of the Domain Name in bad faith. See Policy, paragraph 4(b)(iv).
For the same reasons as discussed above, the Panel is persuaded (by a preponderance of the evidence submitted) that Respondent did have such a bad faith motive in registering and using this Domain Name.
Respondent answers these allegations by claiming that the phrase "field of dreams" was a common expression before Complainant�s 1989 movie, "used to describe the passion of baseball that has captured the hearts of millions of Americans and others around the world" and still used today "in every day discussions about baseball lore, and the love of the game." In making this claim, Respondent is presumably arguing that it employed the phrase "field of dreams" in its generic sense, not as a sign of affiliation with Complainant�s goods or services, which proves its good faith registration and use of the name.
Respondent�s argument fails on evidentiary grounds. On the record submitted, Respondent has not demonstrated that the phrase "field of dreams" was, prior to release of the movie in 1989, a common phrase for baseball diamonds. A careful review of Respondent�s evidence � which consists of Internet searches for the phrase "field of dreams" on the web sites of the United States Library of Congress, several bookstores, and Yahoo! � shows that virtually all baseball-related references to "field of dreams" in the lists Respondent submitted occurred after 1989. Moreover, although Respondent asserts that the phrase has had particular currency in baseball vernacular, many of the references Respondent cites are not baseball-related (e.g., boarding stables, poetry books, and bed-and-breakfast inns). 4
For these reasons, the Panel holds that Complainant has proven, at least by a preponderance of the evidence, that Respondent registered and is using the Domain Name in bad faith.
9. Decision
The Panel finds that the Domain Name "" is identical to FIELD OF DREAMS, a mark in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that Respondent registered and is using the Domain Name in bad faith. Accordingly, the Panel orders that the registration of the Domain Name "" be transferred to Complainant.
David H. Bernstein
Presiding Panelist
Dated: June 29, 2000
Footnotes:
1. This disclaimer was not included on the printout of the website attached to the Complaint, and thus appears to have been added after the commencement of this proceeding.
2. After the filing of the Complaint, Respondent apparently revised its website to provide an express disclaimer of any affiliation with Complainant or its movie. The Panel need not determine whether such a disclaimer is effective because the appropriate behavior to consider is Respondent�s behavior prior to its receipt of notice from the Complainant.
3. The primary definition for "bona fide" reads: "In or with good faith; honestly, openly, and sincerely; without deceit or fraud. Merrill v. Dept. of Motor Vehicles, 71 Cal.2d 907, 80 Cal.Rptr. 89, 458 P.2d 33. Truly; actually; without simulation or pretense. Innocently; in the attitude of trust and confidence; without notice of fraud, etc. Real, actual, genuine, and not feigned. Bridgeport Mortgage & Realty Corporation v. Whitlock, 128 Conn. 57, 20 A.2d 414, 416."
4. In light of Respondent�s failure to submit evidence proving use of this phrase in a baseball context prior to 1989, the Panel does not believe that it is required to undertake an independent search for such references. It is the parties� obligation to present the factual record on which a Panel can rule, and not the Panel�s obligation to try to develop evidence helpful to a Party that the Party might have missed.
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