Complainant is Green Bay Packers, Inc., United States of America (“United States”), represented by Quarles & Brady LLP, United States.
Respondent is Withheld for Privacy Purposes, Privacy Service provided by Withheld for Privacy ehf/ David Tolliver, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2021. On May 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 27, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 2, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 7, 2021. The Center verified that the Complaint together with 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 1, 2021. The Center appointed Robert A. Badgley as the sole panelist in this matter on August 5, 2021. 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 owns the Green Bay Packers American football team, which competes in the National Football League (“NFL”). The NFL is a famous sports league with the highest television ratings in the United States. The Green Bay Packers have existed for more than 100 years.1 Although Green Bay, Wisconsin is the smallest city hosting one of the 32 current NFL teams, the Packers boast more NFL championships than any other NFL team. Tickets for the Packer games have been sold out for 60 years, and the list of fans waiting to become season ticket holders exceeds 100,000 people. The winner of the NFL’s championship game, the Super Bowl, is bestowed with the Lombardi Trophy, named for the Packers’ legendary coach (1959-1968) Vince Lombardi. The Packers have featured some of the most famous NFL players, including quarterbacks Bart Starr, Brett Favre, and Aaron Rodgers, running back Paul Hornung, linebackers Ray Nitschke and Clay Matthews, defensive end Reggie White, and even placekicker Chester Marcol.2 Complainant also states that the Packers are the fourth most popular NFL team as measured by the team’s social media following. Complainant holds numerous trademark registrations for GREEN BAY PACKERS, including United States Patent and Trademark Office Reg. No. 1,109,722 (registered on December 19, 1978 for “entertainment services in the form of professional football games and exhibitions”, with a May 1, 1935 date of first use in commerce). Complainant alleges that GREEN BAY PACKERS is a famous trademark. The Panel does not hesitate to agree with this assertion: given the extent to which the NFL permeates the culture in the United States, and the Green Bay Packers’ prominent role as one of the NFL’s oldest and most successful teams, there is no doubt that the mark GREEN BAY PACKERS is known by the vast majority of adult United States citizens. The Domain Name was registered on July 24, 2020. It resolves to a website supporting Donald J. Trump and soliciting donations in aid of the “Save America” political movement. There is no evidence that Donald J. Trump or anyone on his behalf is connected with Respondent or Respondent’s decision to redirect the Domain Name to this website. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the three elements required under the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is 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 Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel concludes that Complainant has rights in the trademark GREEN BAY PACKERS through registration and longstanding use demonstrated in the record. The Panel also concludes that the Domain Name is identical to that mark. Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, 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. The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to articulate, much less demonstrate, his bona fides vis-à-vis the Domain Name. The three non-exclusive “safe harbors” quoted above do not appear present here. Respondent does not assert or demonstrate any efforts to use the Domain Name in connection with a bona fide offering of goods or services. See Legislator 1357, Limited, et al. v. Alberta Hot Rods,WIPO Case No. D2008-0832 (transferring There is no basis to conclude that Respondent is commonly known by the Domain Name. Respondent has not claimed that he is seeking to make a noncommercial or fair use of the Domain Name, and the Panel cannot perceive any such effort from the record here. Respondent is misleadingly diverting Internet users seeking Complainant’s website to a website that apparently seeks to raise funds for a cause with which Complainant has no affiliation. The Panel cannot conceive of any other legitimate basis upon which Respondent could have registered this Domain Name, which is identical to a famous and distinctive trademark. Complainant has established Policy paragraph 4(a)(ii). 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 of the registration and use of 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 online 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. The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel incorporates its discussion above in the “rights or legitimate interests” section. Given the fame and distinctiveness of the GREEN BAY PACKERS trademark, there can be no doubt that Respondent had Complainant’s mark in mind when registering the Domain Name. With respect to bad faith use, the four above-quoted non-exclusive “bad faith” examples do not appear to be directly applicable, unless it can be shown that Respondent somehow derives commercial gain from his redirection of the Domain Name to the website promoting Donald J. Trump and the “Save America” movement. There is, however, no evidence that Respondent has any relationship with Donald J. Trump or the Save America cause. Even if he did, it would categorically not be permissible to use the Domain Name comprising the Complainant’s famous trademark to attract visitors to Respondent’s desired website. Another possibility here is that Respondent redirected the Domain Name to a pro-Trump website for the purpose of achieving notoriety and inducing action on the part of Complainant, some of whose fans would certainly not enjoy landing at the pro-Trump site (others may). Under such circumstances, Respondent may have been hoping for an offer from Complainant to purchase the Domain Name at a hefty markup. Again, however, there is no evidence in the record of prior communications between the Parties. At bottom, given the fame of the GREEN BAY PACKERS trademark, as well as its distinctiveness (“GREEN BAY PACKERS” cannot reasonably refer to anything other than the NFL team owned by Complainant), and given the lack of any explanation or proof offered by Respondent in this proceeding, the Panel can conceive of no good-faith basis upon which Respondent could have registered the Domain Name, and no good-faith use to which Respondent could put the Domain Name. In this respect, the Panel is willing to draw from the seminal case Telstra Corp. v. Nuclear Marshmallows,WIPO Case No. D2000-0003, in which the panel found that “passive use” of a domain name that is identical to a famous trademark can in certain circumstances constitute bad faith use of a domain name. Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name Robert A. Badgley 1 In the interest of full disclosure, this Panelist notes that he is a lifelong fan of the Chicago Bears, another NFL team and the arch-rival of the Packers for a century. 2 From the perspective of a Chicago Bears fan, the nadir of the Bears-Packers rivalry came on opening day in 1980, when placekicker Chester Marcol attempted a game-winning field goal kick in overtime, which kick was blocked by Bears’ defensive tackle Alan Page (former Minnesota Viking and future justice on the Minnesota Supreme Court). The blocked ball flew back into Marcol’s hands, whereupon the kicker scampered down the sideline and into the endzone for a game-winning touchdown.
Sole Panelist
Date: August 19, 2021
Full & Egal Universal Law Academy