The Complainant is The National Football League, New York, United States of America, represented by Debevoise & Plimpton of United States of America.
The Respondent is St Kitts Registry, Olam, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <nationalfootballleague.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2007. The Respondent named in the Complaint was Moniker Privacy Services of Pompano Beach, Florida, United States of America. On December 13, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On December 26, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 31, 2007, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complaint filed an amendment to the Complaint on January 4, 2008, naming St Kitts Registry and Moniker Privacy Services as Respondents. The Center verified that the Complaint together with the amendment to 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 9, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2008.
The Center appointed Brigitte Joppich as the sole panelist in this matter on February 7, 2008. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is an unincorporated association of thirty-two member clubs (the “Member Clubs”), each of which owns and operates a professional football team in the United States of America.
The Complainant has provided entertainment to sports fans in the form of professional American football games under the NATIONAL FOOTBALL LEAGUE trademark for eight decades. The Complainant has televised live broadcasts of its football games on American television since 1958 and provides the National Football League’s championship game, known as the “Super Bowl” every year, which is among the highest-rated television programs in the United States of America and is usually the single most-watched television program in any given year.
The Complainant owns numerous trademarks in respect of NATIONAL FOOTBALL LEAGUE in the United States of America, inter alia registration number 1,076,139 (the “NATIONAL FOOTBALL LEAGUE Marks”).
The Complainant provides information on the internet at <nfl.com> (registered May 20, 1996), <nflshop.com> (registered February 1, 1999) and <superbowl.com> (registered December 23, 1995).
The Respondent in this administrative proceeding is St Kitts Registry of Saint Kitts and Nevis. The identity of the Respondent was originally protected by Moniker Privacy Services, a so-called privacy shield provided by the Registrar of the disputed domain name, Moniker Online Services, LLC. Having been informed of the Complaint by the Center, the Registrar identified St Kitts Registry as the registrant of the disputed domain name, and that registrant is currently listed in the WhoIs data for the domain name. Therefore, the Panel is satisfied that St Kitts Registry is behind the registration and the use of the disputed domain name, that St Kitts Registry is the owner of such domain name, and the Panel will treat St Kitts Registry as the sole Respondent in this administrative proceeding.
The Respondent has previously been involved in at least sixteen domain cases where the transfer of domain names to the respective complainant was ordered (inter aliaNady Systems, Inc. v. Registrant [1075807]: St Kitts Registry / Moniker Privacy Services,
WIPO Case No. D2007-1401; UDR, Inc. v. Registrant 460461 Domain names Administration/St Kitts Registry,
WIPO Case No. D2007-0963; The Professional Golfers Association of America v. MONIKER460461/ Domain Names Administration/ St Kitts Registry,
WIPO Case No. D2007-0900; Six Continents Hotels Inc. v. Registrant [721393]: St Kitts Registry,
WIPO Case No. D2007-0758; Columbia Insurance Company, Benjamin Moore v. Whois Data Shield and St Kitts Registry,
WIPO Case No. D2007-0741).
The disputed domain name was first registered on April 10, 2003 and is being used in connection with a website providing links for third parties’ products including products directly competing with those of the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The domain name <nationalfootballleague.com> is identical to the NATIONAL FOOTBALL LEAGUE Marks as it uses the NATIONAL FOOTBALL LEAGUE Marks with the single addition of the gTLD “.com”.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as it has not been granted any rights by the Complainant to use the NATIONAL FOOTBALL LEAGUE Marks, it has not used or prepared to use the domain name in connection with any bona fide offering of goods or services, has not been commonly known by the domain name, and has not made any noncommercial or fair use of the domain name.
(3) The Complainant finally contends that the domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant contends that, given the fame and the high reputation of the NATIONAL FOOTBALL LEAGUE Marks, which have been used continuously for more than 80 years, it is inconceivable that the Respondent was unaware of the Complainant and its well-known NATIONAL FOOTBALL LEAGUE Marks at the time it registered the domain name. With regard to bad faith use, the Complainant contends that the Respondent registered the domain name to confuse Internet users who were expecting to find a website belonging to the NFL (or an authorized third party) and to divert these users to the Respondent’s own website for commercial gain. Finally, the Complainant contends that the Respondent is a cybersquatter that is taking advantage of the Complainant’s famous mark and preventing the Complainant from reflecting the mark in a corresponding domain name and that is acting in a pattern of such conduct as it has been involved in numerous domain name cases in the past.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; 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.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s highly distinctive NATIONAL FOOTBALL LEAGUE Marks in which the Complainant has exclusive rights.
It is well established that the specific top level domain, in this case “.com”, is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,
WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among Panelists that the Complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. Where such a case is made out, the burden of proving that the Respondent has rights or legitimate interests in the disputed domain name will shift to the Respondent.
The Complainant has asserted that the Respondent has neither been granted a license nor any other permission to use the Complainant’s NATIONAL FOOTBALL LEAGUE Marks and that the Respondent cannot have any legitimate interests in the domain name. The Complainant has therefore fulfilled its obligations under paragraph 4(a)(ii) of the Policy. The Respondent did not deny these assertions.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, although not exclusive, are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 circumstances mentioned in paragraph 4(b) of the Policy are not (as noted) exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
As to bad faith registration, the Complainant is widely known internationally because of its major TV event “Super Bowl”, which is broadcast worldwide. Given the fame and the high reputation of the NATIONAL FOOTBALL LEAGUE Marks, it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s rights in the NATIONAL FOOTBALL LEAGUE Marks. This finding is supported by the fact that the Respondent uses the disputed domain name to provide links to third parties’ websites including direct competitors of the Complainant. Furthermore, the website includes the information “Sponsored Results for NFL”, clearly showing the connection with the Complainant which uses NFL as its acronym. The Respondent would not have placed this information and ads of the Complainant’s competitors on the website at the disputed domain name without knowledge of the Complainant and its trademarks. The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant’s marks and therefore in bad faith under paragraph 4(a)(iii) of the Policy.
As to bad faith use, by fully incorporating the NATIONAL FOOTBALL LEAGUE Marks into the domain name and by using the website under such domain name as a parking website, providing links to direct competitors of the Complainant, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant’s website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,
WIPO Case No. D2005-0623, with further references). The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.
This finding of bad faith use is supported by the fact that the Respondent was ordered to transfer domain names to the respective complainant in at least sixteen earlier UDRP proceedings where registration and use in bad faith were established. The Respondent further appears to have acted in a pattern of preventing owners of a trademark or service mark from reflecting their marks in a corresponding domain name as contemplated under paragraph 4(b)(ii) of the Policy.
In any event, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <nationalfootballleague.com> be transferred to the Complainant.
Brigitte Joppich Sole Panelist
Dated: February 21, 2008
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