The Complainant is Green Bay Packers, Inc. of Green Bay, Wisconsin, United States of America ("United States" or "U.S."), represented by Quarles & Brady LLP, United States.
The Respondent is Daniel Aranda, H Inc. of Hartland, Wisconsin, United States, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 30, 2017. On August 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details.
The Center verified that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2017. In accordance with paragraph 5(b) of the Rules, the due date for Response was extended to September 28, 2017. The Response was filed with the Center on September 28, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on October 6, 2017. 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
The Complainant, headquartered in Green Bay, Wisconsin, fields the professional American football team Green Bay Packers (the "Packers"), which plays in the National Football League ("NFL"). The Packers are a storied NFL team 13 league championships. The Complainant has used the TITLETOWN trademark in the marketing and promotion of the Packers since the early 1960s, and owns United States trademark registrations for TITLETOWN and other TITLETOWN- formative marks. These registrations include TITLETOWN U.S.A. (U.S. Reg. No. 1,802,761) and TITLETOWN (U.S. Reg. No. 4,287,727) for apparel; TITLETOWN TOWEL (U.S. Reg. No. 4,113,947) for towels; TITLETOWN (U.S. Reg. No. 4,593,156) for real estate development; TITLETOWN (U.S. Reg. No. 4,593,153) for arena services, hotel, bar and restaurant services; and TITLETOWN for parking services and facilities (U.S. Reg. No. 5,266,300). The first of these registrations, TITLETOWN U.S.A., was issued on November 2, 1993. The Complainant also owns trademark registrations for GREEN BAY PACKERS.
The Respondent registered the disputed domain name on January 15, 1996, according to the concerned Registrar's WhoIs records.1 The Respondent organization, H Inc., was formed in 1994 to provide website design services for business. Based on publicly available archived web pages maintained at "", the disputed domain name initially was pointed to the Respondent's "www.h" website. Subsequently, during 2008 the disputed domain name was used with the "www." website, posting news and information relating to the Green Bay Packers. Between July 2013 and April 2015, the disputed domain name resolved to the Yarie website, advertising "traffic monetization solutions for domain name and website owners."
The Complainant's representative contacted the Respondent by email on February 13, 2017. At that time, no active use of the disputed domain name was being made. The Respondent is currently the registrant of a large number of domain names. Other than the disputed domain name, none or domain names registered by the Respondent appear to have any connection with the Complainant or the Complainant's marks. 5. Parties' Contentions A. Complainant
The Complainant submits that the disputed domain name is identical to the Complainant's TITLETOWN mark, noting that the generic Top-Level Domain ("gTLD") ".com" is disregarded when assessing identity or confusing similarity. According to the Complainant, it has used the TITLETOWN mark since the 1960s, with an ever-expanding range of products and services. The Complainant maintains that the TITLETOWN mark is "famously associated" with the Packers, and offers survey evidence that 92 percent of relevant Wisconsin consumers are aware of the TITLETOWN mark, of which 87 percent specifically associate the mark with the Packers. The Complainant asserts that the Respondent registered the disputed domain name during a time period when the Packers were pursuing their 1996 Super Bowl championship and the Complainant was actively promoting the TITLETOWN mark.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant represents that that the Respondent has not been authorized to use the Complainant's TITLETOWN mark and has not been commonly known by the disputed domain name. The Complainant submits that over the years the Respondent has made an unauthorized use of disputed domain name to advertise the Respondent's alleged Internet services, to impersonate the Complainant by holding itself out as the source of "[t]he latest Green Bay Packers news, information and resources", and more recently to host a website offering "traffic monetization solutions catered to both domain name and website owners." The Complainant further submits that for much of the time since 2010 the Respondent has made no use of the disputed domain.
The Complainant maintains for these reasons that the Respondent has not made a legitimate noncommercial or fair use of the disputed domain name, and has not used the disputed domain name in connection with a bona fide offering of goods or services. The Complainant further contends that the Respondent cannot establish rights or interests in the disputed domain name by parking the domain name and allowing others to generate revenue from advertisements.
The Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent is a native Wisconsin and admitted Packers fan. In light of that and given the fame of the TITLETOWN mark, the Complainant submits that the Respondent beyond question was aware of the Complainant's mark when registering the disputed domain name. The Complainant further maintains that the Respondent registered the disputed domain name as the Complainant increased use of the TITLETOWN mark in late 1995 and continuing through 1997, which the Complainant argues demonstrates the Respondent's opportunism.
The Complainant asserts that the Respondent intentionally has used the disputed domain name to create a false connection improperly suggesting an affiliation with the Complainant. The Complainant refers to the Respondent's offering of design and hosting services as well as providing news and information about the Packers. According to the Complainant, the Respondent has used the disputed domain name in bad faith to generate revenue through traffic monetization, click-through advertising, and other marketing techniques, and has no reasonable explanation for choosing the disputed domain name.
The Complainant submits that the Respondent's recent claim to be holding the disputed domain name to promote its web building and hosting real-estate services is pretextual, given the Respondent's prior attempts to imply a false affiliation with the Complainant. The Complainant adds that in any event such use would infringe the Complainant's TITLETOWN marks used for real estate development and advertising. The Complainant also notes that the Respondent requested monetary consideration in exchange for transferring the disputed domain name. B. Respondent
The Respondent acknowledges that the Complainant has a valid trademark (i.e., TITLETOWN), but only to the extent of Internet and general business activity as a football team. According to the Respondent, the dispute domain name was registered in 1996 in good faith for future use either in real-estate or for massively multiplayer online role-playing game ("MMORPG") activities. The Respondent specifically refers to MMORPG in connection with an "old west world building game where online players applied for a title to a plot of land to develop." The Respondent represents that the disputed domain name was registered before the Complainant registered any TITLETOWN marks related to real estate. The Respondent states it initially planned to build a website for title companies that would be called ""; however, the real estate company that the Respondent was working with elected to use another domain name.
The Respondent acknowledges the similarity between the disputed domain name and the Complainant's TITLETOWN mark, but represents that the use of the disputed domain name as described by the Respondent would not violate the Complainant's trademark rights. The Respondent submits that the Complainant had not previously objected to the Respondent's use of the disputed domain name. The Respondent further states that even if appropriate inquiries had been made prior to registering the disputed domain name, no infringement or violation of third party rights in the areas of real estate or online gaming would have been found. Accordingly, the Respondent submits there has been no bad faith.
The Respondent's remaining owner Mr. Peroutka maintains he was not aware of the Complainant's TITLETOWN mark when the disputed domain name was registered, does not watch football and has no magazine subscriptions other than National Geographic.2 Mr. Peroutka says that due to the death of Mr. Aranda he cannot say how the disputed domain name may previously have been used, but he acknowledges that Mr. Aranda was an avid Packers fan.
The Respondent disputes seeking monetary compensation related to the transfer of the disputed domain name other than reimbursement for administrative fees, and explains that the Respondent's primary business is developing portal websites for others. The Respondent states that, inclusive of the Respondent's parent company and affiliates, more than 5,000 domain names have been registered without the Respondent being accused of bad faith registration of a domain name. The Respondent suggests that its actions concerning the disputed domain name are best explained as "poor housekeeping and a brief alleged website which was removed without a request from the Complainant." 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term "cybersquatting" is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the Complainant's TITLETOWN mark, in which the Complainant has demonstrated rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.3 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant's trademark and the disputed domain name. In this case, the TITLETOWN mark is clearly recognizable in the disputed domain name,4 as it is identical to the Complainant's TITLETOWN mark when disregarding the gTLD ".com". See, e.g., De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-1465 ( is identical to the complainant's DE BEERS mark). Generic Top-Level Domains may generally be disregarded when evaluating the identity or confusing similarity of the complainant's mark to the disputed domain name under paragraph 4(a)(i) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant's TITLETOWN mark. Regardless, the Respondent registered the disputed domain name, which is identical to the Complainant's mark. The disputed domain name has been used by the Respondent to direct Internet users to its own website as well as other websites.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent submits that the disputed domain name was registered to be used use either in real-estate or for MMORPG activities. However, the Respondent has brought forth no evidence of use or preparations to use the disputed domain name in connection with either. Both Mr. Aranda and Mr. Peroutka are natives of Wisconsin. Mr. Aranda reportedly was an avid Packers fan, and when responding to the Complainant's representative's letter of February 13, 2017, Mr. Peroutka represented he also was a Packers fan. The record reflects that the Complainant had registered the TITLETOWN mark and used of the mark for a number of years prior to the Respondent's registration of the disputed domain name. The Panel thus concludes that the Respondent was aware of the Complainant's TITLETOWN mark when registering the disputed domain name.
The record reflects the Respondent's use of the disputed domain name to divert Internet users to the Respondent's website and to the Yarie website, the latter advertising "traffic monetization solutions for domain name and website owners." The Panel finds such use indicative of an intent to trade on the reputation of the Complainant's mark. The Respondent also has used the disputed domain name with a website represented as the source of "the latest Green Bay Packers news, information and resources." Paragraph 4(c)(iii) of the Policy provides that a respondent may demonstrate rights or legitimate interests in a domain name by providing evidence of "legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the [complainant's] trademark or service mark." However, the respondent's use of a domain name is not "fair" in circumstances where the domain name falsely suggests affiliation with the trademark owner. Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla,WIPO Case No. D2016-1698. See WIPO Overview 3.0, section 2.5 and cases cited therein.
In this instance the Respondent chose to register and use a domain name identical to the Complainant's TITLETOWN mark. Consequently, Internet visitors could easily believe that it was the Complainant's website they had arrived at, or that the website was sponsored by or affiliated with the Complainant. The Respondent did not provide any disclaimer on the website, and the Panel concludes that the manner in which the Respondent presented its website in all probability created a false suggestion of affiliation with the Complainant.
Having regard to the foregoing, the Panel concludes that the Respondent has not made a legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(iii) of the Policy. Nor has the Respondent come forward with evidence of use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Rather, the evidence on record suggests that the Respondent has attempted to profit from the redirection of Internet users searching for the website of the Complainant. There is no evidence that the Respondent has been commonly known by the disputed domain name. In short, the Respondent has not brought forward any credible evidence to support a claim of rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the respondent registered the disputed 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant's TITLETOWN mark when registering the disputed domain name. The Panel considers that the Respondent's primary motive in relation to the registration and use of the disputed domain name more likely than not has been to capitalize on, or otherwise profit from the Complainant's trademark rights.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: October 20, 2017
1 Daniel Aranda and James Peroutka are founders and co-owners of H Inc. Mr. Aranda is apparently deceased, and Mr. Peroutka submitted the Response on behalf of H Inc.
2 In an email dated February 23, 2017 to the Complainant's representative, Mr. Peroutka nonetheless stated he was "Wisconsin born and bred and therefore a Packers fan."
3 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.
4 See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
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