WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NBA Properties, Inc. v. Adirondack Software Corporation
Case No. D2000-1211
1. The Parties
The Complainant is NBA Properties, Inc., located at 645 Fifth Avenue, New York, New York 10022, U.S.A.
The Respondent is Adirondack Software Corporation, whose address is 194 Moody Avenue, Freeport, New York 11520, U.S.A.
2. The Domain Name and Registrar
The domain name at issue is:
The Registrar for the domain name is Network Solutions, Inc., of 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, U.S.A.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint on September 13, 2000 by email and on September 18, 2000 in hardcopy. The Complainant paid the required fee.
On September 19, 2000, the Center sent to the Registrar a request for verification of registration data. In a response on September 24, 2000, the Registrar confirmed, inter alia, that it is the registrar of the domain name in dispute and that such name is registered in Respondent�s name. The Registrar�s response also indicated that Network Solutions� 4.0 Service Agreement was in effect.
On September 25, 2000, the Center advised the attorney for Complainant that, in view of the terms of the 4.0 Service Agreement, an amendment to the paragraph of the Complaint relating to "Mutual Jurisdiction" would be required if the case were to proceed. A copy was sent to Respondent. Complainant provided the Center with the Amendment by email on September 26, and by hard copy on September 29, 2000.
Having verified that the Complaint satisfies 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center on September 29, 2000 sent to the Respondent, with a copy to the Complainant, a notification of the administrative proceeding. This notification was sent in accordance with Paragraph 2 of the Rules thereby discharging the Center�s responsibility to employ reasonably available means calculated to achieve actual notice to Respondent. Although, the Notification sent out via courier to the Respondent at the registrant's address was returned, the Notification sent to the Technical/Zone Contact shows as delivered according to the FedEx Tracking Results on the web. Furthermore, the e-mail communications of the Notification were not returned to the Center as undeliverable.
The formal date of the commencement of this administrative proceeding is September 29, 2000.
No Response to the Complaint was received by the Center. On October 20, 2000, the Center issued a notice of Respondent�s default.
The Center invited William L. Mathis to serve as a Panelist in this proceeding and he sent to the Center his Statement of Acceptance and Declaration of Impartiality and Independence. On November 13, 2000, the Center dispatched to the parties a notice of the appointment of William L. Mathis as a single member panel to decide the case.
4. Factual Background
The Complainant NBA Properties, Inc., a corporation of New York, is the exclusive licensing and merchandising agent for the National Basketball Association and its member teams, including the New York Knicks.
Copies of four federal registrations of marks are attached to the Complaint as Exhibit C. Each of them refers to at least one earlier federal registration (No. 870,255) which is said to be commonly owned but which is not mentioned in the Complaint.
All of the four attached registrations are for marks that include the word KNICKS displayed as a three dimensional arcuate body viewed from a lower level, as one might see an elevated name for an entertainment attraction or facility. Three of them depict a basketball beneath the arcuate KNICKS display, and of these, two additionally include a triangle in the background. One has the words NEW YORK immediately above KNICKS.
Three of the registrations (Nos. 1,429,344; 1,988,809; and 2,197,935) relate to the KNICKS trademarks as applied to clothing items and various kinds of bags for carrying things. The fourth (No. 1,768,640) relates to the KNICKS/basketball/triangle ensemble as a trademark applied to various goods (printed matter, clothing items, and toys and sporting goods). It also relates to the ensemble used as a service mark in connection with "entertainment services in the nature of basketball games and basketball exhibitions live in stadia and through the media of radio and television broadcasts."
The omitted registration (No. 870,255) also relates to a KNICKS mark as used in connection with "Professional Basketball Contests."
Paragraph 13 of the Complaint says that Complainant is the exclusive licensee of the federally registered trademarks, but it also represents that Madison Square Garden, L.P. is not only the owner of the trademarks but also the owner and operator of the New York Knicks basketball team. No specifics have been provided as to an agreement between Complainant and Madison Square Garden. L.P.
Paragraph 17 of the Complaint focuses on a third entity, the National Basketball Association, and its Web page at which provides hyperlinks to home pages of all twenty-nine NBA teams. Complainant says it "operates the home page of the New York Knicks at the URL /knicks."
Significantly, paragraph 17 also says that Madison Square Garden, L.P., registered the domain name "www.ny". This domain name is said to point to the previously mentioned NBA Web site. It is not clear that the Complainant corporation is identified to Internet users who visit such sites.
With respect to the Respondent, the Complaint indicates that the disputed domain name was registered with NSI in 1995, that the Complainant�s attorneys complained to NSI in 1996, and that, after attempting unsuccessfully to contact the Registrant, NSI placed the domain name in a hold status.
Complainant attempted to contact Respondent in late 1996 and early 1997. After a telephone conversation with Complainant�s attorney, a representative of Respondent "executed a transfer letter, dated February 1, 1997, authorizing transfer of the domain name from Adirondack to the NBA" (Complaint, paragraph 23).
However, the transfer letter apparently was not in the form then considered by NSI to be acceptable and it seems not to have been sent by Complainant to NSI. The record does not reflect any follow up activity over the next two years.
Complainant�s attorney directed another letter to Respondent�s representative in March 1999, but it was returned unclaimed. In April 1999, several telephone calls were attempted unsuccessfully.
On March 30, 2000, NSI wrote to Complainant to notify Complainant that the "hold" status of "" would be removed unless some specified action was taken. The filing of the present Complaint was done in response to the NSI letter.
5. Parties� Contentions
Only the Complainant has advanced contentions.
Complainant asserts that it has rights in the trademark KNICKS, that the disputed domain name is identical to a trademark in which it has rights, that Respondent has no rights or legitimate interests in the respect of the domain name, and that the domain name was registered and is being used in bad faith.
Complainant also sets out in Paragraph 34-38 conclusory claims under Sections 43(d) and (c) of the Lanham Act. However, Paragraph 33 appears to recognize that such claims are beyond the jurisdiction of the Panel and indicates that they are offered in support of the claims actually grounded on the Policy. They have been considered in this context and there will be no further occasion to refer to them.
The relief sought by Complainant is a transfer of the disputed domain name to Complainant.
6. Discussion and Findings
Complainant�s Trademark Rights
The owner of the KNICKS trademarks and service marks relied upon has been shown to be Madison Square Garden, L.P., not the sole Complainant NBA Properties, Inc. Madison Square Garden, L.P., also has been identified as the owner and operator of the New York Knicks basketball team, which is source of the notoriety associated with the KNICKS marks.
The record fails to make clear what rights in the trademark Complainant claims to have. The rights of a licensee are contract rights with respect to, not in, the licensed marks. So it is also in the case of a licensing and merchandising agent.
There may well be circumstances in which the contract rights possessed by an exclusive licensee vest in him substantially all the powers of an owner of the licensed property. However, such circumstances have not been shown to exist here.
The Policy is believed by the Panel to envision a transfer of a disputed domain name to a complainant/trademark owner as a route to unification of control over the uses of the domain name and the trademark. However, Complainant�s request for an order transferring the disputed name to Complainant in this case would place ownership of the domain name in an entity other than the trademark owner without consent from the trademark owner.
The Panel therefore finds that the sole Complainant has not shown that it has rights in the KNICKS trademark relied upon.
Identical or Confusing Similarity
While the Complaint asserts that the disputed domain name is identical to the KNICKS trademark relied upon by Complainant, there appears to be no need to isolate "identical" from the "identical or confusingly similar" language actually used in Paragraph 4.a.(i) of the Policy.
The Panel finds that the disputed domain name is identical or confusingly similar to the KNICKS trademark for which Complainant is a licensing and merchandising agent.
Registration and Use in Bad Faith
Paragraph 4.a.(iii) of the Policy also require that the Complainant prove that the disputed domain name "has been registered and is being used in bad faith."
Paragraph 4.b. of the Uniform Domain Name Dispute Resolution Policy under which this administrative proceeding is taking place describes some circumstances which, if found to exist, will be evidence of the registration and use of the domain name in bad faith. Four descriptions are presented in subsections (i), (ii), (iii) and (iv).
Subsection (i) describes circumstances in which a domain name was registered primarily for the purpose of selling it. Complainant does not contend that this subsection applies here. Indeed, it appears that Respondent was willing in 1997 to give the domain name to the NBA.
Subsection (ii) describes circumstances in which there is a pattern of registering domain names to prevent trademark owners from reflecting their marks in corresponding domain names. The present record does not establish the existence of such a pattern.
Subsection (iii) refers to registering a domain name to disrupt a competitor�s business. Respondent has not been shown to be a competitor or to have a desire to disrupt the Complainant�s business.
Subsection (iv) is directed to a situation in which a domain name is improperly used to attract Internet users to a web site other than the site of the owner of a similar trademark. In the present case, there is no showing that the disputed domain name has ever been used to attract Internet users to any web site.
In sum, Complainant has failed to prove that any of the circumstances described in Paragraph 4.b. of the Policy were present in this case. Nor does the Complainant provide other evidence establishing that the disputed domain name has been registered and is being used in bad faith. Accordingly, the Panel finds that Complainant has failed to prove the presence of the element referred to in Paragraph 4.a. (iii) of the Policy.
Rights and Legitimate Interests
Paragraph 4.a. of the Policy additionally requires that a complainant prove that the domain name registrant has no rights or legitimate interests in respect of the domain name.
Paragraph 32 of the Complaint addresses this issue in a conclusory way. It asserts that none of the circumstances described in Paragraph 4.c. of (i), (ii), and (iii) of the Policy existed in this case. The Panel has no basis for finding otherwise.
7. Decision
The Panel concludes (1) that Complainant has not proved that it has rights in the relied upon KNICKS trademark, and (2) that Complainant has not proved that Respondent has registered and is using the disputed domain name in bad faith.
Therefore, the Panel denies the requested transfer of the domain name .
William L. Mathis
Sole Panelist
Dated: December 8, 2000
Full & Egal Universal Law Academy