The Complainant is the National Football League of New York, New York, United States of America, represented by Debevoise & Plimpton, United States of America.
The Respondent is Thomas
Trainer of Irvington, New York, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <nflnetwork.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2006. On November 14, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 15, 2006, 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 for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceedings commenced on November 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2006.
The Center appointed W. Scott Blackmer as the Sole
Panelist in this matter on December 15, 2006. 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 (according to its trademark registrations) is an unincorporated association under New York law. The Complainant operates as the governing body of a league of “Member Clubs”, each of which represents a professional American football team. The Complainant changed its name to the current form in 1922.
According to the Complainant, NFL football games have become the most popular spectator sport in the United States. The NFL brand is displayed in football stadiums, broadcasts of NFL games, newspapers and magazines, the Complainant’s website at “www.nfl.com”, and on a wide variety of goods ranging from athletic clothing and equipment to coffee cups.
The Complainant has televised live broadcasts of NFL football games since 1939, on the major broadcasting networks in the United States. An affiliate of the Complainant, NFL Enterprises LLC, launched a cable television network called “NFL Network” in November 2003. NFL Network airs programs about NFL games, teams, and players, as well as some of the regular season games. NFL Network has approximately 40 million current subscribers in the United States, Canada, and Mexico.
The Complainant holds several trademarks registered by the United States Patent and Trademark Office (USPTO). These include standard character marks for NFL (Registration Number 886055 [February 10, 1970]and Registration Number 2919270 [January 18, 2005]) and NFL NETWORK (Registration Number 3018490 [November 22, 2005]).
The Respondent registered the Domain Name on September 10, 2002. Four years later, on September 21, 2006, NFL Properties LLC sent a letter to the Respondent on behalf of the Complainant objecting to the registration of the Domain Name and demanding its transfer to the Complainant. The letter was sent by email and by courier to the Respondent’s registered contact address. The Respondent did not reply to the Complainant’s letter, and the Respondent has not submitted a Response in this proceeding.
The Domain Name does not currently resolve to a website. The Internet Archive Wayback Machine (“http://webarchive.org”) does not show that the Domain Name has resolved to a website at any time since the Respondent registered it in September 2002. Immediately before that, in August 2002, the Domain Name resolved to a Register.com parking website with sponsored advertising links relating to American football and a notice headed, “Want this domain name?” Prior to that, the Wayback Machine shows that the Domain Name simply resolved to a Register.com “Coming Soon” page as early as 1999.
The Registrar’s WHOIS database identifies the
Respondent as Thomas Trainer in Irvington, New York, with a contact email address
in the <thomastrainer.com> domain. A single web page at “www.thomastrainer.com”
furnishes some information about Thomas Trainer, although most of the links
on the page are inactive and the copyright notice ends at 2003. The link titles
refer to Mr. Trainer’s “web design services” and “auction
hints”, as well as his employment with a New York moving company and participation
with a Long Island, New York rugby team. The Panel notes that a search engine
query produces results from WHOIS databases showing that “Thomas Trainer”
in New York, with a contact email address in the same <thomastrainer.com>
domain, has registered several other domain names. Some of these, but not the
Domain Name in this proceeding, are listed for sale at “www.afternic.com”.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that the Domain Name is identical to its registered NFL NETWORK mark and confusingly similar to its registered NFL mark. The Complainant has not authorized the Respondent to use those marks, and there is no evidence that the Respondent has rights or legitimate interests in the NFL or NFL NETWORK names. The NFL marks are famous in the United States, and the Respondent registered the Domain Name <nflnetwork.com> at a time when there was already speculation in the press that the Complainant would launch an NFL Network (as it did the following year).
Thus, the Complainant concludes that the Domain Name was selected in bad faith only to capitalize on the fame of the Complainant’s marks, enhanced by its potential launch of a cable television network. The Complainant cites other “passive holding” Policy decisions for the proposition that in such circumstances bad faith may be inferred even without the Respondent making active use of the Domain Name.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(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 in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under Paragraph 15(a) of the Rules,
“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 in other cases where a respondent fails to reply, the Panel must still satisfy
itself that the Complainant in this proceeding has met its overall burden of
proof under paragraph 4 of the Policy. Thus, the uncontested facts must provide
a sufficient prima facie basis for finding identity or confusing similarity
with the Complainant’s mark and then for inferring that, more probably
than not, the Respondent has no right or legitimate interest in the Domain Name
and has registered and used it in bad faith. See, e.g., Croatia Airlines
d.d. v. Modern Empire Internet Ltd., WIPO
Case No. D2003-0455.
A. Identical or Confusingly Similar
Apart from the lack of a space between “nfl”
and “network”, the Domain Name is identical to the Complainant’s
registered mark NFL NETWORK. The missing space is not significant, since the
domain name service (DNS) technical protocols do not permit the use of spaces.
See Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO
Case No. D2001-0827.
According to the USPTO trademark database, the Complainant
applied for the NFL NETWORK mark in July 2003, first used the mark in November 2004,
and obtained registration of the mark in November 2005 – all after
the Respondent registered the Domain Name in September 2002. However, paragraph 4(a)(i)
of the Policy does not refer in any way to the timing of the Complainant’s
acquisition of rights in a trademark or service mark, except to require that
the Complainant have such rights at the time of the proceeding. This Panel follows
previous ones in holding that the Complainant’s acquisition of rights
in a mark after the Respondent’s registration of the Domain Name does
not prevent a finding of identity or confusing similarity under paragraph 4(a)(i)
of the Policy. It is, rather, a fact that may be relevant to the issue of bad-faith
registration under paragraph 4(a)(iii) of the Policy, as discussed below. See
AB Svenska Spel v. Andrey Zacharov, WIPO
Case No. D2003-0527; Iogen Corporation v. Iogen, WIPO
Case No. D2003-0544; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites,
WIPO Case No. D2003-0598; Digital
Vision, Ltd. v. Advanced Chemill Systems, WIPO
Case No. D2001-0827.
The Domain Name is also confusingly similar to the
Complainant’s older and probably even better known NFL mark. The Domain
Name incorporates that distinctive mark in its entirety, adding a generic word,
“network”, which does not lessen the likelihood of confusion. Rather,
in this instance the additional word heightens the likelihood of confusion,
since the Complainant has televised football games for decades over American
broadcasting networks and also operates its own cable television “NFL Network”.
See, e.g., Microsoft Corporation v. Wayne Lybrand, WIPO
Case No. D2005-0020 (the addition of generic words to a distinctive mark
normally does not avoid confusion, especially when the generic word is relevant
to the trademark owner’s products or services).
The Panel concludes, therefore, that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(i), because the Domain Name is identical to the Complainant’s NFL NETWORK mark and confusingly similar to the Complainant’s NFL mark.
B. Rights or Legitimate Interests
The Complainant asserts without contradiction that it has not authorized the Respondent to use the NFL or NFL NETWORK marks.
The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you 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 (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 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.”
There is no evidence in the record that any of these circumstances apply. The Domain Name does not resolve to a website, and what appears to be the Respondent’s own website does not indicate that the Respondent itself offers goods or services under the names “NFL” or “NFL Network”. There is no evidence that the Respondent has made preparations to use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial fair use — despite holding the Domain Name for more than four years. The Respondent, presented with a cease-and-desist letter from the Complainant and then notice of the Complaint from both the Complainant and the Center, has not come forward with any asserted rights or legitimate interests in the Domain Name. The Panel is entitled to draw a negative inference from that default (Rules, paragraph 14(b)).
The Panel concludes, therefore, that the second element of the UDRP Complaint is satisfied.
C. Registered and Used in Bad Faith
In order to transfer the Domain Name as requested by Complainant, the Policy, paragraph 4(a), requires a finding that the Domain Name has been registered and is being used in bad faith. This finding is to be based on the “circumstances” of the case, and the Policy gives several instances of circumstances from which bad faith can be inferred in paragraph 4(b). These listed instances are, however, “without limitation”.
Establishing “bad faith” has been problematic
in cases where there was no evidence of a respondent’s intentions or use
of a Domain Name and the respondent had not demonstrably engaged in any of the
activities mentioned as examples of bad faith in the Policy. See, e.g., Easyjet
Airline Company Limited v. Stephen B. Harding, WIPO
Case No. D2000-0398 (dismissing complaint for lack of evidence of bad faith
in these or other respects). Here, as in Easyjet, there is no affirmative
evidence that the Respondent intended or attempted to sell the Domain Name to
the Complainant, or to block the Complainant’s use of the name or disrupt
its business, nor is there evidence that the Respondent used the Domain Name
to attract Internet users familiar with the famous mark. There is no record,
in fact, that the Respondent ever created online content associated with the
Domain Name or otherwise used the Domain Name.
Nevertheless, several circumstances here support an inference of bad faith, which the Respondent has taken no steps to rebut. Although the Complainant’s NFL NETWORK mark was not established at the time the Respondent registered the Domain Name, the NFL mark had long been famous. The mark was registered in 1970, showing first use in commerce in 1941. A New York resident such as the Respondent – particularly one with an interest in sports, as revealed on his website – would surely have knowledge of NFL football and the NFL mark. At the time he registered the Domain Name in 2002, the Respondent may or may not have seen advance publicity and speculation concerning the Complainant’s “NFL Network”, which was launched a few months later. But in any event, the Respondent could hardly have been unaware that NFL games are commonly televised over broadcast networks and that the NFL operates a popular Internet website as well. Thus, the choice of “nflnetwork”, combining the distinctive and famous NFL mark with the relevant word “network”, is much more likely opportunistic than coincidental.
Indeed, it is difficult to imagine a plausible use
of the Domain Name that would not create a likelihood of confusion with the
Complainant and serve to attract Internet users seeking information about NFL
games, teams, players, broadcasts, and products. The panel in Cellular One
Group v. Paul Brien, WIPO Case No. D2000-0028,
similarly inferred bad-faith intent where it would be “difficult, perhaps
impossible” for the respondent or any third party to use the domain name
<cellularonechina.com> without infringing the CELLULAR ONE.
Under paragraph 4(a) of the Policy, there must be
bad faith not only at the time of registration but subsequently in the Respondent’s
“use” of the Domain Name. There are instances where this ongoing
bad faith can be inferred from the Respondent’s conduct even without the
Respondent demanding payment or publishing a competing website. As the WIPO
panel concluded in Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003 (where the respondent
registered the domain name <telstra.org>),
“. . . the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”.
In Telstra, the panel found such circumstances indicating bad-faith use of a domain name in the facts that the complainant’s trademark was well known, the respondent had provided no evidence of any actual or contemplated good-faith use of the mark, and the respondent failed to maintain accurate contact details.
In this case, the inference of bad faith is supported
by similar facts and also by the Respondent’s failure to respond to the
Complainant’s efforts to contact the Respondent concerning the Complainant’s
trademark rights. See Encyclopedia Britannica v. Zucarini, WIPO
Case No. D2000-0330 (inferring bad faith from a failure to respond in any
way to allegations of trademark infringement); Advance Magazine Publishers,
Inc. v. ChinaVogue.com, WIPO Case No. D2005-0615.
There is nothing in the Policy that suggests a registrant may be divested of
a domain name simply because he failed to use it actively online. However, when
a registrant, such as the Respondent here, obtains a domain name that is confusingly
similar to a famous mark, with no apparent rights or legitimate interests in
the name, and then fails to respond to infringement claims and a UDRP Complaint,
an inference of bad faith is warranted.
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 Name, <nflnetwork.com>, be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Dated: December 29, 2006
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