The Complainant is Green Bay Packers, Inc. of Green Bay, Wisconsin, United States of America ("United States"), represented by Quarles & Brady LLP, United States.
The Respondent is Domain Administrator of Green Bay, Wisconsin, United States, represented by Davis & Kuelthau, S.C., United States. 2. The Domain Name and Registrar
The disputed domain name (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 March 23, 2018. On March 23, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 23, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 Respondent of the Complaint, and the proceedings commenced on April 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2018. Upon request of Respondent, the due date for Response was extended to April 27, 2018, in accordance with the Rules, paragraph 5(b). Upon stipulation by the Parties, the due date for Response was further extended to May 1, 2018, in accordance with the Rules, paragraph 5(e). The Response was filed with the Center on May 1, 2018.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on May 15, 2018. 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.
On May 11, 2018, Complainant requested leave to file and filed a supplemental filing. 4. Factual Background
Complainant states that it "fields a professional American football team, the Green Bay Packers ('the Packers'), that competes in the National Football League ('NFL')"; that it "is one of the oldest football teams in the NFL and has won 13 league championships – more than any other team in the NFL"; and that it "has used TITLETOWN for over half a century, on an ever-expanding range of goods and services, including but not limited to apparel, arena services, bar and restaurant services, real estate development, and venture capital services."
Complainant further states that "[t]he culmination of Complainant's decades of use of the TITLETOWN mark is showcased in the recently opened Titletown District, located adjacent to the Packers' football stadium"; that "the Titletown District is a 45-acre real-estate development project that features a full-sized football field that displays the Titletown logo mid-field and the TITLETOWN mark in the end zone"; that "Titletown District also includes a public plaza, park, hotel, brewery and restaurant, and a health clinic"; and that it "has invested at least $65 million USD into developing and promoting the Titletown District and its many community-oriented services."
Complainant further states, and provides evidence to support, that it is the owner of eight trademark registrations at the U.S. Patent and Trademark Office that consist of or contain the mark TITLETOWN (the "TITLETOWN Trademark"), including U.S. Reg. No. 1,802,761 for TITLETOWN U.S.A. (registered November 2, 1993) and U.S. Reg. No. 4,593,153 for TITLETOWN (registered August 26, 2014).
Complainant further states, and provides evidence to support, that it is the owner of the following trademark application at the U.S. Patent and Trademark Office for the mark TITLETOWNTECH: Serial No. 87/651,115 (filed October 18, 2017).
Complainant further states that "[o]n October 19, 2017, Complainant announced expansion plans for the Titletown District to include TitletownTech – a technology and innovation center in partnership with Microsoft Corp."; that it "has launched three initiatives: TitletownTech Accelerator, TitletownTech Venture Capital Fund, and TitletownTech Labs," which "help[] the region's emerging and existing businesses define and build new digital products, transform their operations through technology, and provide capital to launch new ventures"; that "Microsoft is launching a TitletownTech Mentorship Program that will enable its employees in the Seattle, Washington area and elsewhere to volunteer and serve as mentors working with the companies participating in the TitletownTech Accelerator and Labs programs"; and that "Microsoft and the Packers have each committed $5 million USD to TitletownTech over the next five years and have pledged to donate all profits and capital returns from the Venture Capital Fund to philanthropy and economic development."
The Disputed Domain Name was created on September 18, 2017, and is being used in connection with a website that says, inter alia, "TitleTown Tech Solutions is providing secure and reliable computer solutions to small and medium business."
Complainant further states that it engaged a "service" to "anonymously reach out to Respondent and offer $5,000 USD to transfer the domain name" after Complainant discovered in September 2017 that it had been registered by Respondent "just two weeks before." Complainant states that "Respondent agreed to the terms, but then backed out of the deal at the last minute – just after Complainant's October 19, 2017 TitletownTech announcement"; and that Respondent provided a counter-offer on October 24, 2017, offering to transfer the Disputed Domain Name in exchange for payment in the amount of USD 750,000 plus "8 lifetime Green Bay Packers box seats, 2 parking passes" and "8 Microsoft surface pro's [sic] with lifetime Microsoft office programs."
Finally, Complainant states that "Respondent intentionally falsified its registration contact information, including fraudulently adopting Complainant's address as its own, which strongly supports a finding of bad faith."
Respondent identifies itself as "Chris and Julie Harris" of Green Bay, Wisconsin (referred to interchangeably herein as "Respondent" or the "Harris Family"), and states that "[i]n August and September 2017, Chris, Julie and their sons were working on starting a network administrator consulting business. Like numerous other business in Wisconsin have done, they decided to utilize 'Titletown' in the name of their business and acquired the Disputed Domain Name on September 18, 2017. Unbeknownst to Respondents at the time, the Green Bay Packers were planning to use the domain for a joint venture with Microsoft. It is reasonable to conclude that the joint venture between the Packers and Microsoft did not come to fruition overnight, but the Packers did not acquire the domain in advance of announcing their joint venture."
Respondent further states that the Harris Family registered the Disputed Domain after when their son Michael was "looking for another job" and "investigated the potential for starting a network systems administration consulting business"; that the Disputed Domain Name was selected "based on Michael's bona fide intention to begin a technical support consulting business"; that "[t]he family saw the name as representative of where they live and work" and that "[t]hey did not expect any issue or controversy" because "[m]any other businesses in the Green Bay area as well as the rest of the State of Wisconsin have 'Titletown' in their names."
Respondent further states that "a third-party agency… offer[ed] to purchase the domain from Respondent, but the agency raised suspicions by requesting account information and refusing to speak to Respondent on the phone"; that "Michael lacked confidence that this was a legitimate transaction and broke off communications"; that after Complainant's press release on October 19, 2017, the Harris Family was "very frustrated with the treatment they had received" and "felt as though an organization that they admire greatly… [was] being coy and trying to trick them." Respondent "acknowledges that [its] counteroffer was excessive, but it was not meant as a serious counteroffer and instead meant to send a message and came from a place of frustration." 5. Parties' Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the TITLETOWN Trademark because it "contains the entirety" of the mark plus the word "tech," which "is descriptive and does not provide a meaningful distinction between the disputed domain name Complainant's mark."
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia,"[t]here is no evidence that Respondent has made any bona fide offering of any legitimate goods or services in connection with domain name" and "[i]n contrast, there is plenty of evidence that the website associated with the domain name is a sham and that the Respondent is using it to create an unauthorized, false affiliation with Complainant"; the website associated with the Disputed Domain Name contains only "filler information" that "is not legitimate use of a domain name, but a classic form of 'parking' a domain to hold onto it for illegitimate purposes, like extorting money for a trademark holder"; "Respondent has used Complainant's contact information for the domain name registration"; and "Complainant has no relationship with Respondent and Respondent is not authorized to use any of Complainant's trademarks, including TITLETOWN, much less Complainant's contact information."
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, "[a] respondent registers a domain name in bad faith when it knows, or reasonably should have known, about the complainant's trademark and reputation and then deliberately registers a domain name that is confusingly similar to that mark to trade off that reputation"; "the timing of Respondent's actions regarding the disputed domain name suggests bad faith and confirms Respondent's opportunism"; "Respondent's attempt to use the disputed domain name to suggest a connection with well-known trademarks like TITLETOWN suggests opportunistic bad faith" (internal punctuation omitted); "Respondent requested Complainant pay an exorbitant amount, beyond Respondent's out-of-pocket costs, to transfer the domain name"; and "Respondent intentionally falsified its registration contact information, including fraudulently adopting Complainant's address as its own." B. Respondent
Respondent contends, in relevant part, as follows:
- The Disputed Domain Name is not confusingly similar to the TITLETOWN Trademark because "none of the registrations for TITLETOWN in force on the date the domain was created include a services identifier, and particularly a services identifier that relates to technology"; "'Titletown' connotes the City of Green Bay, the Respondent's place of residence, and not necessarily the Packers organization"; and "Complainant had not attempted to register TitletownTech prior to October 18, 2017, nor had Complainant used TitletownTech prior to its release on October 19, 2017."
- Respondent intermingles it arguments on paragraph 4(a)(ii) of the Policy with its arguments on paragraph 4(a)(i) of the Policy (as well as with its factual background), but it appears that Respondent contends that it has rights or legitimate interests in respect of the Disputed Domain Name because "[t]he domain name was registered based on Michael's bona fide intention to begin a technical support consulting business"; "[m]any other businesses in the Green Bay area as well as the rest of the State of Wisconsin have 'Titletown' in their names"; and Respondent changed the contact information for the Disputed Domain Name only after Complainant's third-party agency (which attempted to acquire the Disputed Domain Name anonymously from Respondent) "requested" that Respondent do so as "the only way to transfer the domain" and that "[t]he change was primarily intended to remove Respondent's home address from the contact information" and "not to create confusion or to imply any affiliation with the Complainant."
- The Disputed Domain Name was not registered and is being used in bad faith because, inter alia, "Respondent began building the website associated with the domain name as part of a bona fide intention to begin an IT and technical support business"; "[o]ther businesses in the Green Bay area and the State of Wisconsin utilize 'TITLETOWN' in their names, and the City advertises itself as 'Titletown USA' on its website"; "Complainant did not announce its partnership with Microsoft to form TitletownTech until October 19, 2017, approximately one month after Respondent registered the domain name"; "it is disingenuous for Complainant to suggest that [changing the address for the Disputed Domain Name] was done in bad faith when Complainant's own agent instructed Respondent to change the contact information in the first place"; and, although Respondent's counteroffer was "exorbitant," Respondent made it only because Chris "was upset and felt that there was an attempt to take advantage of him and his family." 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the TITLETOWN Trademark. Indeed, a previous panel under the Policy reached the same conclusion in Green Bay Packers, Inc. v. Daniel Aranda, H Inc.,WIPO Case No. D2017-1685 (transfer of ).
It is unclear whether Complainant has rights in and to the TITLETOWNTECH Trademark, because the single trademark application cited by Complainant for this mark is still pending. "A pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i)." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.1.4. Further, the Panel makes no judgment as to whether Complainant has established in its Complaint common law rights to the TITLETOWNTECH Trademark. Therefore, for purposes of paragraph 4(a)(i) of the Policy, the Panel considers only the TITLETOWN Trademark and not the TITLETOWNTECH Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the TITLETOWN Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., "titletowntech") because "[t]he applicable Top Level Domain ('TLD') in a domain name (e.g., '.com', '.club', '.nyc') is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test." WIPO Overview 3.0, section 1.11.1.
It is obvious that the Disputed Domain Name contains the TITLETOWN Trademark in its entirety and simply adds the word "tech". As stated in WIPO Overview 3.0, section 1.7, "in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing". Furthermore, "[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element." WIPO Overview 3.0, section 1.8. Accordingly, inclusion of the word "tech" in the Disputed Domain Name does not alleviate any confusing similarity between the Disputed Domain Name and the TITLETOWN Trademark.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia,"[t]here is no evidence that Respondent has made any bona fide offering of any legitimate goods or services in connection with domain name" and "[i]n contrast, there is plenty of evidence that the website associated with the domain name is a sham and that the Respondent is using it to create an unauthorized, false affiliation with Complainant"; the website associated with the Disputed Domain Name contains only "filler information" that "is not legitimate use of a domain name, but a classic form of 'parking' a domain to hold onto it for illegitimate purposes, like extorting money for a trademark holder"; "Respondent has used Complainant's contact information for the domain name registration"; and "Complainant has no relationship with Respondent and Respondent is not authorized to use any of Complainant's trademarks, including TITLETOWN, much less Complainant's contact information."
WIPO Overview 3.0, section 2.1, states: "While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
Here, the Panel finds that Complainant has established its prima facie case. Accordingly, the burden of production has shifted to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name.
The Policy states that "the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [a respondent's] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)":
(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; or
(ii) [respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [respondent] ha[s] 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.
Respondent's arguments on this element are brief and fail to cite any authority as precedent. Instead, Respondent's sole argument here seems to be that "[t]he domain name was registered based on Michael's bona fide intention to begin a technical support consulting business." However, as stated in section 2.2 of WIPO Overview 3.0, "claimed examples of use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services cannot be merely self-serving but should be inherently credible and supported by relevant pre-complaint evidence." Here, such evidence is lacking.
Furthermore, even if Respondent in fact intended to use the Disputed Domain Name in connection with a technical support consulting business, such usage is not a bona offering of goods or services under the Policy, because an unauthorized third party's use of a domain name that is identical or confusingly similar to a strong trademark in connection with unrelated goods or services cannot be bona fide if the third party does not otherwise have rights to the trademark. See, e.g., Travelscape, LLC v. VistaPrint Technologies Ltd.,WIPO Case No. D2015-1588 (using a disputed domain name in connection with a website offering services unassociated with the relevant trademark is not bona fide); Booz Allen Hamilton Inc. v. Derrick Dale and Domains by Proxy, LLC,WIPO Case No. D2013-1288 (no rights or legitimate interests where domain name "has no apparent generic value but is well established as a brand"); and Time Inc. v. Max Martel,WIPO Case No. D2004-0122 ("there is no circumstance under which the Respondent, unless authorized by the Complainant, could legitimately use the Domain Name under dispute incorporating the [Complainant's] mark without creating a false impression of an association with the Complainant").
Accordingly, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy:
(i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's 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 registrant's website or location or of a product or service on the registrant's website or location.
Policy, paragraph 4(b).
Here, Complainant does not specify which, if any, of the four enumerated factors applies in this case. However, as panels have repeatedly made clear, "the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant's trademark would also satisfy the complainant's burden." WIPO Overview 3.0, section 3.1.
Instead of focusing on any of the four enumerated factors, Complainant argues that bad faith exists because, as stated above, inter alia, "[a] respondent registers a domain name in bad faith when it knows, or reasonably should have known, about the complainant's trademark and reputation and then deliberately registers a domain name that is confusingly similar to that mark to trade off that reputation"; "the timing of Respondent's actions regarding the disputed domain name suggests bad faith and confirms Respondent's opportunism"; "Respondent's attempt to use the disputed domain name to suggest a connection with well-known trademarks like TITLETOWN suggests opportunistic bad faith" (internal punctuation omitted); "Respondent requested Complainant pay an exorbitant amount, beyond Respondent's out-of-pocket costs, to transfer the domain name"; and "Respondent intentionally falsified its registration contact information, including fraudulently adopting Complainant's address as its own."
Just as with its response to Complainant's arguments on paragraph 4(a)(ii) of the Policy, Respondent's response to Complainant's arguments on paragraph 4(a)(iii) of the Policy are brief and fail to cite any authority as precedent. Respondent does not contradict any of the facts or legal arguments in the Complaint but instead seems to indicate that bad faith does not exist simply because, as stated above, inter alia, "Respondent began building the website associated with the domain name as part of a bona fide intention to begin an IT and technical support business"; "[o]ther businesses in the Green Bay area and the State of Wisconsin utilize 'TITLETOWN' in their names, and the City advertises itself as 'Titletown USA' on its website"; "Complainant did not announce its partnership with Microsoft to form TitletownTech until October 19, 2017, approximately one month after Respondent registered the domain name"; "it is disingenuous for Complainant to suggest that [changing the address for the Disputed Domain Name] was done in bad faith when Complainant's own agent instructed Respondent to change the contact information in the first place"; and, although Respondent's counteroffer was "exorbitant," Respondent made it only because Chris "was upset and felt that there was an attempt to take advantage of him and his family."
As an initial matter, the Panel finds of no relevance Respondent's reference to other businesses that use "TITLETOWN" in their names, given that it is unclear from the record whether any of these businesses use the TITLETOWN Trademark as a trademark and whether any of these businesses have a license from Complainant to use the TITLETOWN Trademark. Further, even if some of these businesses use the TITLETOWN Trademark as a trademark without a license from Complainant to do so, third-party uses of a trademark are no defense to bad faith under the Policy. See, e.g., The Vanguard Group, Inc. v. John Zuccarini,WIPO Case No. D2002-0834; and Custom Bilt Metals v. Conquest Consulting,WIPO Case No. D2004-0023.
The Panel is struck by at least two important facts, each of which is an indicator of bad faith: First, the Disputed Domain Name was registered on September 18, 2017, only one month before Complainant announced the TitletownTech technology and innovation center and filed its application to register the TITLETOWNTECH Trademark. Although it is unclear whether Respondent had advance knowledge of this application, the timing is suspicious. See, e.g., A, Inc., Amazon Technology, Inc. v. Paul James,WIPO Case No. D2014-1847 ("a close time correlation" between the registration date of disputed domain names and a related announcement by a complainant "cannot reasonably be considered to be coincidental or serendipitous); and Bancolombia S.A. v. Elpidia Finance Corporation,WIPO Case No. D2000-0545 ("[a]bsent 'miraculous coincidences', the Panel considers that the Respondent moved fast to register a domain name identical of confusingly similar to the service mark of the Complainant, after… the Respondent acquired notice of… the fact that the Complainant would be using the trade- and corporate name… in which the Complainant had rights").
Second, Respondent's offer to sell the Disputed Domain Name to Complainant for USD 750,000 plus, among other things, eight lifetime Green Bay Packers box seats, is clearly "for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name," which is evidence of bad faith under paragraph 4(b)(i) of the Policy – a paragraph that includes no exception for an offer that a respondent, as here, later claims "was not meant as a serious counteroffer." Allowing a respondent to excuse such an offer in this manner would undermine the relevance of this paragraph of the Policy.
In any event, "[p]anels have consistently found that the mere registration of a domain name that is identical or confusingly similar… to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith." WIPO Overview 3.0, section 3.1.4. Here, the Panel finds that the TITLETOWN Trademark is famous or widely known given Complainant's use of the trademark for more than 50 years and its protection by at least eight federal trademark registrations.
Accordingly, the Panel finds that Complainant has proven the third element 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 Complainant.
Douglas M. Isenberg
Sole Panelist
Date: May 28, 2018
Full & Egal Universal Law Academy