WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NBA Properties, Inc. v. Ituralde-Kasmir, Inc.
Case No. D2000-1620
1. The Parties
The Complainant is NBA Properties, Inc., a State of New York corporation with its principal place of business at 645 Fifth Avenue, New York, New York 10022, USA. The Complainant is represented in these proceedings by Ayala Deutsch, Esq., NBA Properties at the same address as above.
The Respondent is Ituralde-Kasmir, an entity located at 5502 Eaglebeak Road, Columbia, Maryland 21041, USA.
2. The Domain Name and Registrar
The domain name in dispute is: .
The registrar for the disputed domain name is Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia 20170.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center�s Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on November 24, 2000. On November 29, 2000, the Center requested that the registrar NSI check and report back on the registrant for the domain name . On December 3, 2000, NSI reported to the Center that the registrant was the Respondent, Ituralde-Kasmir.
On December 5, 2000 the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. Respondent did not file a Response and was declared in default on January 12, 2001.
The Complainant submitted an amended Complaint on January 22, 2001. However, the Panel found it did not need supplemental information from the Complainant in order to reach its Decision. Thus, the Panel did not take into account the amended Complaint (Rule 12) in reaching its decision.
The Administrative Panel submitted a Declaration of Impartiality and Independence on January 19, 2001, and the Center appointed the Panel on January 23, 2001. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by February 6, 2001.
4. Factual Background
The National Basketball Association (NBA) operates a professional basketball league in the United States and Canada. The league is comprised of twenty-nine teams, including the Washington Wizards, each of which is a member of the NBA.
To identify and distinguish their respective basketball teams and the entertainment services they provide, each NBA team has adopted and uses in interstate commerce various names, terms and symbols. Complainant NBA Properties is the exclusive licensing and merchandising agent for the NBA and its member teams.
The NBA team for the Washington, D.C. area changed its name from "Bullets" to "Wizards" in early 1996 in order to avoid associations with violence.
Respondent, Ituralde-Kasmir, registered the disputed domain name on March 8, 1996. Subsequently, attorneys for Complainant contacted Respondent on several occasions to allege trademark infringement and to demand transfer of the disputed domain name to Complainant.
On November 9, 2000, Respondent eventually responded that it, too, had rights in the disputed domain name allegedly relating to its accounting business located near Washington, which Respondent said it advertised as accounting "wizards" (Complaint, Exhibit J).
6. The Parties� Contentions
Complainant's Contentions:
- The Washington Wizards basketball team is popular with sports fans and the general public, and the Washington Wizards mark has become widely known through extensive advertising and media coverage.
- Complainant is the exclusive licensee of the federally registered trademark Washington Wizards.
- The Respondent registered the disputed domain name in order to take advantage of the February 22, 1996 name change of the Washington Bullets to the Washington Wizards.
- Complainant has expended substantial time, labor, skill and expense developing, advertising and promoting the Washington Wizards trademark.
- In July 2000 Respondent advertised the domain name on the Internet as "for sale, lease, or rent."
- The disputed domain name is confusingly similar to Complainant's trademarks.
- Respondent has never used the domain name for any purpose and thus has no rights or interests in it.
- Respondent registered the disputed domain name in order to resell it for far more than it paid for it in violation of the Policy.
- The disputed domain name should be transferred to Complainant.
Respondent's Contentions
The Respondent did not submit a response and is in default in this proceeding.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name transferred to it, Complainant must prove the following (the Policy, para 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant has provided exemplary copies of several of its Washington Wizards trademarks registered on the principal register of the United States of America Patent and Trademark Office. To cite a few: registration no. 2,253,912 in international class 9 dated June 15, 1999; and registration no. 2,196,203 in international class 16 dated October 13, 1998 (the Complaint, Exhibit C). The Panel finds the disputed domain name, , is identical to Complainant's famous trademark.
Legitimate Rights or Interests
Complainant states in its Complaint that it in no way authorized the Respondent to use its trademark. Complainant also pointed this out to Respondent in its letters to Respondent dated February 20, 1998 and August 7, 2000. Respondent never disputed this fact in its correspondence with Complainant.
The Respondent is in default in this proceeding and thus has made no attempt to show any rights or interests in the disputed domain name. The Panel surmises from the copies of the disputed domain name website that Respondent has tried to auction the name (Complaint, Exhibit J). This, however, is not a legitimate right or interest under the Policy.
The Panel finds the Respondent has no legitimate rights or interests in the disputed domain name.
Registered and Used in Bad Faith
The Panel is convinced that, as Complainant contends, Respondent registered the disputed domain name in early 1996 with the hope of reselling the domain name for far more than it paid for it. Respondent was hoping to take advantage of a rise in popularity of the disputed domain name as the new name of the Washington, D.C. basketball team became more famous. (for a similar WIPO Case and Decision, see A.P. Moller v. Web Society, WIPO Case No. D2000-0135, April 15, 2000). Respondent's conduct violates the Policy at 4(b)(i).
The Panel finds the Respondent registered and was using the disputed domain name in bad faith.
7. Decision
Pursuant to the Policy 4(i)) and the Rules (15), the Panel finds that the disputed domain name, , is identical to Complainant�s trademark; that Respondent has no rights or interests in the domain name; and that Respondent registered and was using the domain name in bad faith. Therefore, the Panel orders that the domain name be transferred from the Respondent, Ituralde-Kasmir, Inc., to the Complainant, NBA Properties, Inc.
Dennis A. Foster
Sole Panelist
Date: February 6, 2001
Full & Egal Universal Law Academy