WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION National Football League v. Alan D. Bachand, Nathalie M. Bachand d/b/a Case No. D2009-0121 1. The Parties
Complainant is National Football League, New York, United States of America, represented by Debevoise & Plimpton, United States.
Respondent is Alan D. Bachand, Nathalie M. Bachand d/b/a , United States appearing pro se. 2. The Domain Names and Registrars
The disputed domain names , , , , , , ,, , , , , , , , , , , , , , , , are registered with Melbourne IT Ltd.
The disputed domain names and are registered with, GoD, Inc. The disputed domain names are sometimes referred to herein as the “Domain Names”. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2009. On January 30, 2009 and February 4, 2009, the Center transmitted by e-mail to Melbourne IT Ltd and GoD, Inc. a request for registrar verification in connection with the Domain Names. On February 3, 2009 and February 4, 2009, Melbourne IT Ltd and GoD, Inc. respectively transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
In response to the e-mail sent by the Center concerning the word limit, registrant identity and mutual jurisdiction, Complainant filed an amended Complaint on February 11, 2009. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2009. Respondent requested to extend the Response due date on March 6, 2009. Accordingly, the Response due date was exceptionally extended to March 29, 2009. The Response was filed with the Center on March 27, 2009.
The Center appointed Robert A. Badgley as the sole panelist in this matter on April 7, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant National Football League (“NFL”) is an unincorporated association of thirty-two member clubs, each of which owns and operates a professional American football team. Complainant's description of itself, and its activities and renown, are not disputed by Respondent, and are plausible and supported in the record. A summary of Complainant's undisputed activities, trademarks, and fame follows.
For several decades the NFL and its member clubs have provided entertainment to sports fans worldwide in the form of professional American football games. NFL football is, and for many years has been, an extremely popular spectator sport in the United States. The NFL has televised live broadcasts of its football games on American television since 1958. NFL games are watched by millions of American viewers each week and millions more around the world.
The NFL brand of professional football, and the events and exhibitions conducted or sponsored by the NFL, are enormously popular with both sports fans and the general public. The NFL's advertising, promotional and marketing efforts have resulted in widespread public acceptance and recognition for its brand of professional football and associated events and exhibitions.
The NFL's championship game is known as the “Super Bowl”. Complainant is the owner of various United States trademark registrations for the mark SUPER BOWL, including one registration dating back to 1969. Complainant has also registered the mark SUPER BOWL in some 50 other jurisdictions.
The SUPER BOWL game is among the highest-rated television programs in the United States, and is usually the single most-watched television program in any given year. In addition, since the first SUPER BOWL game in 1967, the game and related festivities have attracted large crowds of fans and tourists. The attendance for SUPER BOWL XLII, for instance, was 71,101. Thousands more visit the SUPER BOWL host city to attend events surrounding the game, including parties and other celebrations, even if they do not have a ticket to the game itself.
Complainant's advertising, promotional and marketing efforts in connection with the SUPER BOWL game have resulted in widespread recognition by the public as identifying Complainant and its sports entertainment services.
Complainant's official website for the SUPER BOWL game is located at . This domain name was registered by Complainant in 1995. In addition to providing extensive information about the SUPER BOWL game, the website also provides information about official related activities and event sponsors.
Complainant controls the distribution of all SUPER BOWL game tickets. Complainant operates NFL ON LOCATION, an official service that provides SUPER BOWL packages. Groups can choose from a number of packages, which can include tickets, accommodations, and exclusive game-day hospitality.
Complainant alleges, and Respondent does not dispute, that Respondent Alan Bachand, operates a business under the name “Superbowl-R”. With respect to some of the Domain Names at issue, Respondent is listed in the WhoIs database under the name of his wife, “Nathalie Bachand”. Complainant alleges that, despite the initial registration of certain of the Domain Names in the name of Respondent's wife, the registration and use of those Domain Names has been on behalf of Respondent himself under principles of agency. Complainant does not dispute this characterization.
Respondent registered the Domain Names at various times between March 2004 and May 2008. It is alleged, and undisputed, that an Internet user who enters any of the Domain Names into a browser looking for the official SUPER BOWL website or a website affiliated with the NFL will arrive at one of Respondent's sites.
Of the 26 Domain Names, 19 resolve to exactly the same website located at “www.”. The home page for that site provides Internet users with the opportunity to purchase accommodations for SUPER BOWL XLIII in Tampa, Florida. The site prominently displays Complainant's official SUPER BOWL logo.
The “SUPERBOWL” link on the left-hand menu bar of Respondent's “www.” home page takes a user to a separate page that highlights the offering for sale of hotel rooms and other accommodations and related packages (some of which included tickets) for SUPER BOWL XLIII. According to Complainant, this page makes an unauthorized commercial use not only of the official SUPER BOWL logo, but also of the logos or helmet designs of various NFL member clubs.
Respondent's home page also contains a link entitled “SUPERBOWL 43 PARTIES”, which takes a user to Respondent's website located at “www.”, which sells tickets to parties taking place during the days surrounding the SUPER BOWL game. The site also features the SUPER BOWL logo and member club helmet designs.
According to Complainant, the “www.” home page also makes an unauthorized commercial use of the SUPER BOWL mark for purposes in addition to offering accommodations for the SUPER BOWL game. The site also offers “hotel rooms, apartments, motels, condos, private houses, lodging and hospitality” for numerous other sporting events such as the Olympics, the NCAA Final Four basketball tournament, the Masters golf tournament, the Ryder Cup golf tournament, the Daytona 500 automobile race, and other sporting events.
The Domain Names, , , and , all resolve to sites similar to the “www.” website inasmuch as they offer for sale hotel rooms for the SUPER BOWL game. All three sites also display the official SUPER BOWL logo, and all three contain hyperlinks to Respondent's main site at “www.”.
The Domain Name, , provides links to various SUPER BOWL-related contests, including contests to win tickets and hotel stays for the SUPER BOWL game. Several of the contests advertised (those with NFL or SUPER BOWL logos) are official NFL contests. An advertisement box on the left side of the home page also invites users to go to in order to book hotel rooms.
The Domain Name, , resolves to a website offering to sell tickets not only for the SUPER BOWL game, but also for other professional sports leagues (such as the National Basketball Association, National Hockey League, and Major League Baseball), musical concerts (such as Rod Stewart and Britney Spears), boxing matches, and theater. The site also prominently features one of the previous official SUPER BOWL logos along with the NFL Shield logo.
The Domain Name, , currently does not resolve to any website and appears never to have resolved to any website.
Complainant also alleges, and attaches in support a printout from Respondent's website, that Respondent has publicly offered to sell all 26 of the Domain Names including Respondent's apparent main Domain Name, at the “www.” website.
On October 11, 2005, Complainant's counsel wrote a letter to Respondent objecting to his use of the Domain Name. Complainant alleges that, at the time, it was unaware that Respondent had registered other Domain Names incorporating the SUPER BOWL mark. In this letter, Complainant demanded that Respondent transfer that Domain Name to Complainant.
Respondent responded to Complainant's cease-and-desist letter with a brief e-mail dated November 16, 2005, wherein Respondent wrote: “I'll send you an email this week to work this out ASAP!”
In his informal Response to the Complaint, Respondent alleged as follows:
“Mr. Parnass (Complainant's counsel) had once contacted us back before in the Fall of 2005 to request that we do not promote the gambling website www.BetUS.com close to football stadiums with our 36' promotional tour RV (www.TailgateUS.com) and by stopping this practice he would let us use or [sic] domain www.Superbowl-R. We agreed and discontinued or $40,000 agreement with BetUS.com so we could keep to our core business...”
In a brief supplemental filing sent on March 30, 2009, Complainant denied ever agreeing to allow Respondent to continue using the Domain Name . Complainant then attached to this “reply” an e-mail from Complainant's counsel to Respondent dated December 23, 2005, wherein Complainant's counsel wrote:
“We will not object to your use of the domain name sbr, sb-r or superhotelr if you: (1) transfer the domain names , superbollr, and superboll-r to NFL Properties; (2) cease any and all use of , superbollr, superboll-r, SUPER BOWL or any deliberate misspelling of SUPER BOWL as part of the name of any business run by you; (3) cease any and all use of , superbollr, superboll-r, SUPER BOWL or any deliberate misspelling of SUPER BOWL in the banner at the top of any webpage operated by you; (4) agree not to register any other domain names that incorporate the SUPER BOWL mark, or any deliberate misspelling thereof, or any of the marks (or deliberate misspellings thereof) owned by the NFL or its Member Clubs; and (5) agree not to use the SUPER BOWL mark (or deliberate misspellings thereof) owned by the NFL or its Member Clubs as part of the name of any business run by you or in the banner at the top of any webpage operated by you.
“This agreement is also contingent on your assurance that, once your current contract with expires, you will no longer accept advertising from organizations, including without limitation , involved in gambling or other gaming activities, for purposes of advertising their services on any bus or other promotional vehicle operated by you that travels in or around the property surrounding any stadium at which NFL games are played.
Please call me to discuss.”
There is no indication in the record of any further communication between Complainant and Respondent between December 23, 2005 other than the filing of the instant Complaint on January 29, 2009.
In a brief e-mail to the Center on April 1, 2009, Respondent replied by way of supplemental filing to Complainant's “reply” by stating, “Superbowl-R is the name of our business and has been registered this way for MORE than 5 years!”
Subsequent to the 2005 correspondence noted above, Respondent registered several of the Domain Names at issue in this case, including on February 9, 2006, on April 25, 2008, and on May 4, 2008. 5. Parties' Contentions A. Complainant
Complainant's factual assertions are set forth above, and its arguments under the elements of the Policy will be taken up below in the substantive discussion of the Policy's three basic elements. B. Respondent
Respondent did not file a formal response, but instead sent the Center an e-mail which does not comply with the requirements for filing a response under the Policy or the Rules. Nevertheless, in its discretion, the Panel has considered the content of the e-mail in its decision. Respondent's March 27, 2009 e-mail to the Center states as follows:
“Because of the small size of our business and lack of funds, we have elected to go with one panellist and because of costs at this point we will not be represented by other attorneys as anticipated. I will be short, brief and to the point.
Our small enterprise employs up to 5 employees at peak times during the season. We offer hotel packages to major events around the world. It is imperative we keep www.Superbowl-R in order for our small enterprise to survive especially in this harsh economical situation. We have promoted this site to Sports fans around the globe not only to football fans but to Racing, Golf, Olympics and other traveling fans!
Point number 1: We have OWNED the site and spent the OVER 5 years promoting the site www.Superbowl-R. It is NOT fair or acceptable that the NFL sweeps away all the efforts of us promoting lodging for all these major events.
Point number 2: We cannot afford to lose the most important sites we have worked so hard in promoting through SEO, pay per click campaigns, promotional tours, advertising and 10,000's of hours spent promoting the site www.SuperbOWL-r especially as well as the other less important sites below. We have spent over $300,000 promoting this site and think we'll have to spend around $400,000 to reach where we are if we have to give up the site that we have owned for OVER 5 YEARS!
Point number 3: Mr. Parnass had once contacted us back before in the Fall of 2005 to request that we do not promote the gambling website www.BetUS.com close to football stadiums with our 36' promotional tour RV (www.TailgateUS.com) and by stopping this practice he would let us use or [sic] domain www.Superbowl-R. We agreed and discontinued or $40,000 agreement with BetUS.com so we could keep to our core business...
Point number 4: On another angle, I don't think the NFL owns the all the words in the English dictionary. If we were to sell hotels in SUPERB town of OWL Ohio, someone could use SuperbOWL-r.? right?
We are acting in good faith and are willing to hand over most of the sites the NFL wants back and are willing to comply with every image or trademark issues they have. We could put a BIG disclaimer saying that we are in no way or means associated with the NFL and the SUPER BOWL organisation. We are even willing to trade and give them our telephone number. 1-4SUPER-BOWL as a sign of good will.
These are the sites we wish to keep...
SuperbOWL: We MUST KEEP this one and have invested lots of time and money and need to keep this one but will clean as you like! [Respondent made the same claims with respect to , , , , and . The use of capital letters in these Domain Names is preserved from the spelling used by Respondent in the e-mail Response.]
SuperbOWL-r: Our most important domain is the one that we invested HEAVILY on and that for MANY years; we could clean the content but need this in order for our small enterprise to survive. It is essential and critical to our business now and necessary to keep. We can clean it to make to your liking and take off any logos or images you think you might own properties to. We would be willing to pay the NFL or NFLPA a contribution but this contribution might be too steep for the little revenues we can make during the course of one year.
hotel4SuperbOWL.com: We could sell on Ebay to other ticket broker or hand over this domain to you after a period of redirecting. [Respondent made the same claims with respect to , , , , , , , , , , , , , , , , and . The use of capital letters in these Domain Names is preserved from the spelling used by Respondent in the e-mail Response.]
I hope you will understand and will come up with a favourable decision in our favour!”
The Panel notes that the foregoing, apart from one excised sentence which is irrelevant because it deals with a phone number rather than a domain name, represents the entirety of Respondent's answer to the allegations made by Complainant under the Policy. No documents are attached to support any of the assertions offered in the Response. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names at issue in this case:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
There is no question of Complainant's longstanding rights in the famous SUPER BOWL trademark. The only issue is “confusing similarity” between each of the Domain Names and the SUPER BOWL mark.
Each of the Domain Names at issue wholly incorporates the SUPER BOWL mark and appends one or more words and/or numbers. In each instance, the dominant feature of the Domain Name is the SUPER BOWL mark. The Panel finds that the addition of a number (which appears to denote a particular edition of the annual SUPER BOWL game) or a descriptive term such as “rooms” or “contests” or “parties” does not diminish the confusing similarity between the SUPER BOWL mark and the Domain Names in question. See National Football League v. Peter Blucher d/b/a BluTech Tickets,WIPO Case No. D2007-1064 (Sept. 24, 2007) (“Respondent's use of the mark SUPER BOWL when followed by a number and either the generic word ‘tours' or ‘package' only serves to exacerbate, rather than diminish, that confusion. This is plainly evident given the substantial recognition, notoriety and fame now enjoyed by Complainant's SUPER BOWL Marks.”).
Finally, the Panel observes that one of the Domain Names, , incorporates not only Complainant's SUPER BOWL mark but also, apparently, the mark of a third party (“Final Four”). Prior panels have held that the presence of two marks of unrelated parties in a domain name does not in itself diminish the confusing similarity between the domain name in question and the mark held by the complainant. See, e.g., MasterCard International Incorporated v. Indy Web Productions,WIPO Case No. D2008-0198 (March 27, 2008) (transferring and other domain names); Pfizer, Inc. v. Martin Marketing,WIPO Case No. D2002-0793 (Nov. 11, 2002) (transferring ).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the each of the Domain Names, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited,WIPO Case No. D2001-0122 (March 26, 2001). Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174 (Apr. 22, 2003), rightly observed as follows: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.”
Respondent here did not expressly invoke any of the actual bases under the Policy for claiming “rights or legitimate interests” in respect of the Domain Names, and did not discuss any of the Policy's “bad faith” criteria as alleged in the Complaint. Respondent did state that he was filing the Response e-mail without the assistance of counsel because of lack of funds. At the same time, Respondent claims to have spent hundreds of thousands of dollars developing his web-based business.
It is certainly one's right to forgo the engagement of counsel in defense of a complaint under the Policy, but one would have expected a more deliberate response to the Complaint if the Domain Names at issue were as important to Respondent's alleged business plan as he claims here. Even without counsel, Respondent could have addressed head-on the points laid out in the Complaint, and referred to the Policy and Rules for guidance, as these documents are fairly clear. Moreover, Respondent was certainly in a position to refute any incorrect statements contained in the Complaint and was made aware of resources including filing guidelines including a publicly-available Model Response.
In any event, the Panel has done its best here to understand Respondent's arguments and bring them within the framework of the Policy, and will address them in turn.
As noted above, Policy paragraph 4(c)(i) would vest Respondent with a legitimate interest in a Domain Names if there was a showing of use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services before Respondent received any notice of the dispute.
Respondent did not attempt to argue that, before notice of the dispute, he was engaged in use or demonstrable preparations as described above. For many of the same reasons why the Panel rejects any implicit argument under paragraph 4(c)(iii) below (dealing with “fair use”), the Panel declines to find any use or demonstrable preparations to use the Domain Names here in connection with the bona fide offering of goods or services.
With respect to paragraph 4(c)(ii), Respondent made no attempt to prove that it has been commonly known by any of the Domain Names at issue. The bare assertion that “Superbowl-r is the name of our business and has been registered this way for MORE than 5 years” does not suffice to meet this standard. If Respondent had read the Policy and had a real basis for claiming a “legitimate interest” under this “commonly known” prong, it may have been easy enough to provide some sort of evidence of this common identity.
It also bears noting that, in his e-mail Response, Respondent actually identified many of its Domain Names by spelling them not as suggestive of “SUPER BOWL”, but, rather, as “Superb OWL”. (These spellings are set forth above in the “Parties' Contentions” section.) This professed usage in the Response would seem to belie the content of the websites, which feature nothing about owls, much less superb owls, but feature NFL football and other sporting events. Hence, the Panel rejects Respondent's implied argument under the “commonly known” provision of the Policy.
Finally, under Policy paragraph 4(c)(iii), Respondent may establish a legitimate interest if he was making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Based on the record before the Panel, this basis for a “legitimate interest” under 4(c) is lacking. It is undisputed that Respondent's use of the Domain Names is commercial. Hence the only remaining question under this head is whether Respondent's use is a fair one.
The Panel cannot conclude that Respondent is making a fair use of the SUPER BOWL mark in connection with the Domain Names at issue here. First, Respondent has not argued that it is making a fair use.
Second, Respondent's use of the SUPER BOWL mark in the Domain Names and the corresponding “www.” and other websites is not a limited, descriptive use. Rather, the Panel finds that the SUPER BOWL mark is intended to lure the visitor to Respondent's site. Once there, the visitor is offered not merely lodgings in the vicinity of an upcoming Super Bowl event. Rather, the visitor encounters official logos of NFL teams and the official logo of the event itself. Complainant alleges that the use of these marks is unauthorized, and the Panel has no reason to doubt that allegation, both because it is plausible based on the record and because it is not denied by Respondent.
Third, and relatedly, Respondent knew as early as October 2005 that Complainant had objected to the use of the SUPER BOWL mark in one Domain Name, and Respondent continued to employ other NFL marks and team logos on his website.
Fourth, Respondent's use of the SUPER BOWL mark is not a fair and limited use because Respondent's main website features the marks of many other famous sporting and entertainment events, and offers to provide ancillary accommodations or services for such events at the site located at a SUPER BOWL-formative Domain Name. It is simply not fair under any measure for Respondent to use a SUPER BOWL-formative Domain Name to lure an Internet user to a website where accommodations and amenities involving the PGA tour, or the Olympics, or a NASCAR event are also offered for sale. See The Orange Bowl Committee, Inc. v. Front and Center Tickets, Inc/Front and Center Entertainment,WIPO Case No. D2004-0947 (Jan. 20, 2005) (domain name transferred where domain name and website were used “as an attention-getting device to attract Internet users to Respondent's site to sell other products”).
Fifth, Respondent's use of the SUPER BOWL mark cannot be said to satisfy paragraph 4(c)(iii) because the use is not “without intent for commercial gain to misleadingly divert consumers”. See HBP, Inc. v. Front and Center Tickets, Inc.,WIPO Case No. D2002-0802 (Feb. 11, 2003) (rejecting fair use defense where respondent used complainant's mark as the principal identifier on its home pages and used its web pages to advertise the services of competing providers).
For these reasons, the Panel can distinguish, based on the unique record here, other decisions, such as NCAA v. Randy Pitkin, et al.,WIPO Case No. D2000-0903 ((March 9, 2001), where a panel majority ruled, over a dissent, that the respondent had rights or legitimate interests in respect of various domain names such as . In that case, based at least on the record as reflected in the panel's published decision, there was not the same sort of overreaching use of the trademark owner's mark in the respondent's domain names and corresponding websites.
This case might have been a more difficult one to decide if, for instance, the Domain Name resolved to a website where the only offerings were lodgings in the vicinity of, and at the time of, the upcoming SUPER BOWL game in question, and if the site contained an effective disclaimer of affiliation with the NFL, and if the site did not contain NFL logos and offerings well beyond SUPER BOWL game lodgings. After all, it is difficult, if not absurd, to identify the annual NFL championship game without making reference to the mark SUPER BOWL. This was the point cogently made in the NCAA v. Pitkin case cited above, as well as the dissenting opinion in The Orange Bowl Committee, Inc. v. Front and Center Tickets, Inc/ Front and Center Entertainment, supra.
Again, however, the facts of the present case are quite different from those involved in the other cases. Respondent here has overreached, and hence cannot lay valid claim to a “fair use” defense.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence, with respect to each Domain Name, of the registration and use the Domain Name in “bad faith”:
(i) circumstances indicating that [Respondent has] registered or [has] acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that [Respondent has] registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or
(iii) that [Respondent has] registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] website or location or of a product or service on [Respondent's] website or location.
Complainant cites each of the four “bad faith” prongs in its Complaint. The Panel discusses these in turn.
With respect to Policy paragraph 4(b)(i), Complainant asserts that the Domain Names have been registered in bad faith because Respondent registered the Domain Names with the intent of selling them for profit. As Complainant notes, and supports with an annex to the Complaint, one of Respondent's websites states that each of the Domain Names even the Domain Name that Respondent claims to be vital to his core business is offered for sale.
The Panel finds that bad faith under paragraph 4(b)(i) is present here. Although the word “primarily” is contained in paragraph 4(b)(i) in connection with a respondent's motives, it is not unreasonable to conclude that a respondent could be engaged in bad faith under this prong and other prongs. There have been numerous instances under the Policy of respondents who seek to divert Internet traffic to their site in contravention of 4(b)(iv) and who are also willing to sell at a profit a domain name currently being used for such diversionary purposes.
Moreover, the fact that Respondent apparently has never reached out to Complainant with an offer to sell the Domain Names does not foreclose a finding of bad faith under paragraph 4(b)(i). The fact that the Domain Names are offered for sale to the general public at one of Respondent's websites suffices here. See National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a ,WIPO Case No. D2000-0118.
With respect to Policy paragraph 4(b)(ii), Complainant argues that the registration of 26 Domain Names containing the famous SUPER BOWL mark constitutes a pattern of abusive registrations within the meaning of the Policy. The Panel sees some merit in this argument, and certainly acknowledges a pattern, but ultimately declines to rule whether Respondent's conduct here was done “in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name”.
With respect to Policy paragraph 4(b)(iii), Complainant asserts that the Domain Names have been registered and used in bad faith because Respondent's activities in offering accommodations for the SUPER BOWL game and tickets to SUPER BOWL events and parties compete with those services offered by the NFL and the SUPER BOWL host committee (which receives the NFL's authorization). Accordingly, Complainant argues, the Panel should conclude that Respondent registered the Domain Names primarily for the purpose of disrupting the business of a competitor. Complainant cites Arizona State Parks Board v. Pink Banana Adventures, NAF Claim No. FA95084 (Sept. 25, 2000) (registration of domain names, including , in connection with a commercial venture offering services in competition with those offered by complainant disrupted the complainant's business and constituted registration and use in bad faith).
The Panel need not address the “bad faith” argument under this head, since it finds bad faith under 4(b)(i) and 4(b)(iv).
With respect to Policy paragraph 4(b)(iv), Complainant argues that “Respondent registered the Domain Names in order to confuse Internet users who were expecting to find a website belonging to or associated with the NFL and to divert these users to Respondent's commercial websites (whether to sell accommodations and packages to the SUPER BOWL® game or to other events), and Respondent continues to derive a commercial benefit from his suggested affiliation with the NFL”. The Panel agrees, and incorporates herein its discussion of Respondent's websites and activities from the “fair use” discussion above.
In National Football League v. Peter Blucher, supra, the panel transferred a series of domain names containing the SUPER BOWL mark and other numbers or descriptive words such as “tours” and “packages”. The panel in that case observed:
“The Respondent was well aware of the Complainant and its mark SUPER BOWL when the Respondent registered each of the disputed domain names. Yet, in spite of that knowledge, the Respondent intentionally chose and registered each of those names to opportunistically exploit its potential to generate user confusion, for the Respondent's eventual pecuniary benefit and to the Complainant's ultimate detriment. Moreover, nothing exists on the Respondent's website which would lead any Internet user to reasonably infer other than that a connection, affiliation or relationship of some sort likely exists between the Respondent's website and the Complainant when, in actuality, none exists. Thus, the Respondent's use of the names is highly likely to confuse, if not actually deceive, Internet users who visit that site but do so with the intention of visiting the Complainant's site instead.”
The foregoing comments apply with equal force here.
Finally, the Panel notes that the Domain Name is passively held, and hence does not figure in this discussion of bad faith under 4(b)(iv). Still, bad faith under 4(b)(i) exists for that Domain Name, since it is offered for sale at one of Respondent's sites. See also Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (Feb. 18, 2000) (transferring a passively held domain name reflecting a famous mark).
The Panel finds that Complainant has satisfied the requirements of Policy paragraph 4(a)(iii). D. Laches Defense
Finally, the Panel discusses the issue of laches, an equitable doctrine which can bar a claim where a party (complainant) has sat on their rights for too long and another party (respondent) suffers prejudice as a result. Although generally held to not apply under UDRP proceedings, in the Panel's view, the doctrine of laches may be recognized in proceedings under the Policy in appropriate limited circumstances. Under Rule 15(a), “a panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. As both parties in the present case reside in the United States, it does not seem unreasonable to at least consider under these particular circumstances the possible applicability of the doctrine of laches, which is well established throughout the jurisdictions of American law.
The Panel notes in this regard that Complainant became aware of the Domain Name in late 2005. There is no evidence that Complainant was aware of any of the other allegedly infringing Domain Names at that time. Complainant promptly brought to Respondent's attention its concerns about this Domain Name, by correspondence in October 2005, and demanded (among other things) the transfer of that Domain Name to Complainant.
Respondent replied to Complainant, and there was some further exchange of communications, but these discussions appear to have stopped in December 2005. Respondent did not at that time, or at any time since, actually transfer the Domain Name to Complainant. From what the record shows, Complainant let more than three years (and four SUPER BOWL games) pass without taking further action against Respondent in connection with .
Respondent notes that he has invested significant amounts of money to develop and maintain the Domain Name and corresponding website, and pursue his business plan vis-à-vis (and other SUPER BOWL-formative Domain Names). The Panel does not know exactly how much money was expended in this regard, or how much could be reasonably attributed to this particular Domain Name. It is reasonable to conclude, however, that Respondent did expend some funds in possible reliance upon Complainant's somewhat lengthy period of forbearance between late 2005 and early 2009. In this sense, Respondent may have a colorable argument that it suffered prejudice as a result of Complainant's dilatoriness. That is the essence of a laches claim, even if not expressed as such by Respondent, who was not represented here by counsel.
The Panel need not, however, ultimately make the difficult decision here whether a laches defense if applied under these UDRP proceedings could defeat Complainant's claim for the transfer of . This is because laches is an equitable doctrine, and parties seeking to invoke equity must themselves “do equity”, i.e., be free of inequitable conduct.
In the present case, to the extent it would otherwise apply, Respondent would be ineligible for relief under an equitable doctrine such as laches because of Respondent's own “unclean hands” (another equitable concept). Specifically, after being made aware in October 2005 of Complainant's objections to the unauthorized use of the SUPER BOWL mark in a domain name or otherwise, Respondent proceeded to register, over the next three years, several of the SUPER BOWL-formative Domain Names now at issue in this case. Having received express written communications from Complainant's counsel in late 2005 about the SUPER BOWL mark, Respondent's subsequent decisions to register the Domain Names , , , and cannot be counted in his favor.
Hence, the Panel holds that to the limited extent it may be seen to potentially apply under the facts of this case, the doctrine of laches is no bar to Complainant's request for the transfer of or any other Domain Name in this proceeding. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Dated: April 20, 2009
Full & Egal Universal Law Academy