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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
State Fair of Texas v BigTex Sports
Claim Number: FA0010000095851
PARTIES
The Complainant is State Fair of Texas , Dallas, TX, USA ("Complainant") represented by Dennis T. Griggs. The Respondent is BigTex Sports, Bayou Vista, TX, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is bigtexsports.com, registered with Network Solutions.
PANELIST
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.
Honourable Roger Kerans as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on October 23, 2000; The Forum received a hard copy of the Complaint on October 23, 2000.
On October 23, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name bigtexsports.com is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.
On October 24, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 13, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts, and to postmaster@bigtexsports.com by e-mail.
On November 15, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Honourable Roger Kerans as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIESí CONTENTIONS
The Complainant is the owner of all right, title and interest in the mark BIG TEX. The Complainant has used the mark BIG TEX continuously and uninterrupted in interstate commerce since 1952. The Complainant was granted U.S. Registration No. 1,551,364 on August 8, 1989 and State of Texas Registration No. 49,453 on February 16, 1989.
The first State Fair of Texas opened in 1886 under the name The Great State Fair of Texas. The first State Fair attracted more than 100,000 visitors. The Great State Fair of Texas became the State Fair of Texas in 1936. The 1936 exposition celebrated Texasí centennial and had an attendance of over 6 million. In recent years, the Texas State Fair attendance has been between 3-4 million per year. The 1999 Texas State Fair attendance topped 3.5 million
The service mark BIG TEX has been used continuously by State Fair for nearly fifty (50) years in connection with various State Fair activities and community activities. The State Fair began using the mark BIG TEX in 1952 following the construction of a 52 foot tall cowboy character ("BIG TEX") that talks, turns his head and waves. The BIG TEX cowboy character serves as the official ambassador of the State Fair, greeting visitors in both English and Spanish at the main entrance of the fair grounds.
The Complainant has been actively involved in a variety of entertainment and sports activities that have been identified with the Complainant and BIG TEX. The Complainant operates the Cotton Bowl stadium where numerous sports and entertainment events occur. The Cotton Bowl is located next to BIG TEX. Notably, during the annual State Fair, the Complainant hosts the annual University of Texas Longhorn and University of Oklahoma Sooner football game. The game is known in college football as the RED RIVER SHOOTOUT and is one of the most popular football games in Texas and Oklahoma. Additionally, the Complainant hosts the annual Grambling State University Tigers and Prairie View A&M University Panthers classic These games are played in the Cotton Bowl stadium located on State Fair grounds.
The Complainant has been actively involved in a variety of community activities that have been identified with BIG TEX. For example, over the past ten years, graduates of Fair Park-area high schools have been assisted in the pursuit of other educational goals by more than $225,000 in State Fair scholarship funds. Scholarship assistance is also offered to students from around the State who have participated in State Fair livestock programs. Since 1992, the State Fair of Texas has awarded approximately $900,000 in scholarships through these two programs .
The State Fair of Texasí service mark BIG TEX is well known and famous. The mark BIG TEX is used extensively by the Complainant to advertise and promote the State Fair of Texas in Texas. Additionally, since 1981, BIG TEX has appeared in 464 newspaper articles.
The Complainant has earned considerable goodwill over the years as a result of its annual fair, hosting of sports events and community activities. As a result, BIG TEX has become famous and is now immediately recognized by the public as a service mark for high quality services relating to exhibitions featuring home, farm, business and industrial products as well as educational and entertainment services. The ability to use its registered marks as domain names for domains operated by the Complainant is needed in the marketing, promotion and delivery of its services.
The Respondent, BigTex Sports, is a sports gambling-related, handicapping service with daily sports selections in football, basketball, hockey, baseball and other special events. In addition to the sports gambling related services, the Respondent offers direct links to several licensed sports books and gambling casinos and several lascivious photographs or "pics,". The Respondent posts no less than five lewd and sexually explicit pics per day on its web site.
The Respondent registered the disputed domain name <bigtexsports.com> on April 21, 1999 some 40+ years after the State Fair began using the mark BIG TEX.
The Respondent does business in Bayou Vista, Texas and it cannot reasonably be argued that the Respondent could not have been aware of the service mark rights vested in the mark BIG TEX when registering the disputed domain name. Moreover, on information and belief, the Respondent is well aware of the University of Texas Longhorn and Oklahoma Sooner football game played annually at the Cotton Bowl stadium on State Fair grounds, commonly known as the RED RIVER SHOOTOUT. Additionally, on information and belief, the Respondent is well aware of the Grambling State University and Prairie View A&M football game played annually during the State Fair of Texas.
The domain name <bigtexsports.com> is confusingly similar to Complainantís service mark, BIG TEX. The domain name <bigtexsports.com> consists of the Complainantís service mark in its entirety to which the general noun "sports" is added. The general noun "sports" cannot distinguish the domain name from the service mark of the Complainantís mark. Consequently, the domain name is confusingly similar to "BIG TEX."
Moreover, there is likelihood of confusion between the Complainantís and Respondentís services. A consumer who visits <bigtexsports.com> and sees handicapping for the University of Texas and Oklahoma Sooners football game or some other sports event would conclude that the State Fair of Texas endorses the Respondentís handicapping services since the State Fairís mark BIG TEX is used prominently in the domain name and on the Respondentís website.
The Respondent has not acquired any right to use the disputed domain name <bigtexsports.com> because the service mark BIG TEX is already owned by State Fair of Texas.
Contrary to ICANNís UDNRP, Paragraph 4(a)(ii), the Respondent has not been commonly known by the disputed domain name. On information and belief, the Respondent has not used or traded using the name "BigTex Sports," prior to the dispute arising, for goods or services different to those in which the Complainant shows trading rights.
The Respondentís and Complainantís streams of commerce cross. The Respondentís gambling-related and sports handicapping services and Complainantís sports entertainment services overlap. A consumer who visits <bigtexsports.com> and sees handicapping for the University of Texas and Oklahoma Sooners football game or some other sports event would conclude that the State Fair of Texas endorses the handicapping services since the State Fairís mark BIG TEX is used prominently in the domain name and on the web site. The Respondentís use of anotherís well-known or famous trademark as a domain name is a deceptive use of a trademark that creates consumer confusion and dilution of the mark.
Contrary to ICANNís UDNRP, Paragraph 4(a)(ii), the Respondent has not made a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers. Based on information and belief, the Respondent is a for-profit corporation and uses its active web site <bigtexsports.com> to make money. Additionally, the use of a domain name confusingly similar to anotherís trademark in connection with a sexually explicit site represents the epitome of tarnishment. The sine qua non of tarnishment is a finding that plaintiffís mark will suffer negative associations through defendantís use. Hormel Foods Corp. v. Jim Henson Prods., Inc., [1996] USCA2 11; 73 F.3d 497,507 (2d Cir 1996).
On information and belief, the Respondent did not perform a trademark search or seek legal counsel regarding a possible conflict of rights prior to registering the disputed domain name. If the Respondent had performed a trademark search it is likely that the Complainantís active registrations would have come to its attention and would have required consideration as to conflict of rights. See Inter-IKEA Systems B.V. v. McLaughlin Mobility, (WIPO August 1, 2000) (holding that had the Respondent effected a trademark search and the Complainantís registrations come to its attention, the Respondent would have to consider the conflicts of rights).
The Respondent could have easily, without disturbing its message of "sex and gambling," avoided conflict with the Complainant by adopting an alternative to the "BIG TEX" component of its domain name. Respondentís failure to investigate suggests Respondentís indifference to a possible conflict, or that he was already aware of Complainantís business. On information and belief, Respondent had actual knowledge of the Complainantís business and service mark, and deliberately registered <bigtexsports.com> in an effort to divert customers to its business.
Respondentís use of the mark BIG TEX as a domain name, <bigtexsports.com>, is a bad faith and willful appropriation of Complainantís mark in an attempt to confuse consumers, to trade upon Complainantís goodwill and reputation, and to hi-jack and redirect consumers attempting to reach the Complainant.
B. Respondent
The Complainant's service mark Big Tex consists of two separate generic words (big and tex) that can not be trademarked individually due to their generic nature and thus the domain name should not be transferred. Respondent's usage combines these two words to form a new and unique word with the general noun Sports to form a completely different mark, BigTex Sports, which does indeed distinguish itself from Complainant's registered mark.
Furthermore, Complainant does business under the name "State Fair of Texas" while Respondent does business under the name BigTex Sports. This alone avoids confusion between Complainant's and Respondent's usage of the generic words big and tex and should disallow the transfer of the domain name.
Through the long usage of the mark, BigTex Sports, Respondent has established common law rights to this mark and it should be noted that Complainant does not have trademark rights to the mark, BigTez Sports.
Since the Complainant's service mark is listed as Class 42 (U.S. Class 107and is admittedly involved in exhibits, sideshows, rides, games, education, arts and sciences, it could not be reasonably argued that no connection could be made between the two marks. That is, who would reasonably connect a state fair with a sports handicapping service?
Respondent has been doing business under the name BigTex Sports since August of 1998 and filed for a DBA with the GALVESTON County clerk in Texas on July 19, 1999 Through the use of this mark on the Internet since well before this complaint was filed, Respondent has established Common Law Trademark Rights that do not infringe upon the Complainant's Trademark rights.
Respondent has set up a business checking account with Bank of America, a business credit card account with Bank of America, and a business credit card with American Express. Furthermore, respondent has a business Post Office Box and has a merchant account with Bank of America to enable online credit card processing of orders. Included in this response is a specimen of one of the Respondent's business cards and an advertising card.
In response to the alleged violations of the Lanham Act and Anticybersquatting Consumer Protection Act, these alleged violations are just allegations yet to be litigated and are consequently irrelevant to this case.
Therefore, Respondent has demonstrated a bona fide offering of goods and services before this dispute arose. Whether, before any notice to the Respondent of the dispute, Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name is in connection with a bona fide offering of goods or services.
Respondent, Brian K. McCleskey, was born, raised and lived in Texas and has been commonly referred to as Big Tex. This can also be shown by the personalized license plates purchased by the Respondent that read " 1 BIGTX". Moreover, respondent has previously or currently used email addresses incorporating the words "bigtexsports".
Respondent has not contacted or been contacted by the Complainant with regards to the sale, rental or transfer of the domain name <bigtexsports.com>. Complainant has not established the intent of the Respondent to act in such a way.
Respondent has only registered the domain name <bigtexsporrs.com> and no other like domains such as <bigtexsports.net> or <bigtexsports.org> or any other similar domain.
Respondent makes no mention or has any direct links to the State Fair of Texas and their activities from the domain name <bigtexsports.com> and the corresponding website which can be seen by the evidence presented by the Complainant.
Respondent is in no way unlike <bigtextrailers.com> or <bigtexair.com> which both reside on the Internet. These domain names along with <bigtexsports.com> can be and are easily distinguished from each other as well as the Complainant's trademark "Big Tex". Once again Respondent makes no claim to affiliation or secondary association with the State Fair of Texas, Big Tex, the Cotton Bowl or other related marks of the Complainant and does not want to be confused with these marks. In fact, Respondent is willing to put a disclaimer to the satisfaction of the Complainant on Respondent's website to further differentiate the two parties.
Respondent really feels that Complainant has decided to use Respondent's domain name and is merely trying to hi jack it rather than make an offer for it. If Complainant were truly offended by the content of Respondent's website and not seeking to hi jack the Respondent's domain name, Complainant would seek cancellation of the <bigtexsports.com> domain name and not its transfer. This can be further surmised by the fact that Complainant never attempted to resolve this matter with respondent before filing a complaint.
Furthermore, on information or belief, Complainant would lead you to believe that it is involved exclusively in wholesome family entertainment when it is also involved in the sales of alcoholic beverages when minors are present. Common knowledge also dictates that carnival "games of chance" are almost unbeatable.
Moreover, in reference to the pictures posted on the Respondent's site, you are more likely to see nudity in your local art gallery or museum than you would see on Respondent's website. The models shown on Respondent's website are scantily clad but tastefully photographed and exhibit no more bare skin than anyone could see on a public beach or possibly the State Fair of Texas. The Complainant is imposing their brand of morality on the Respondent by using unfounded adjectives such as prurient, lascivious, lewd and explicit.
Respondent respects fact that Complainant's mark has been listed several times in the newspaper and may be "regionally" famous but Respondent has never heard of Big Tex of the State Fair of Texas nor has he ever attended the fair. Moreover, Respondent lives in the GALVESTON, Texas area, which is 300 miles South of Dallas, and none of the news articles presented by the Complainant appeared in the GALVESTON County Daily News for Respondent to see.
Respondent also questions Complainants sole right to use the mark "Big Tex". Respondent conducted a federal trademark search and found no less than four other businesses that have registered the mark or name "Big Tex". Each of these four businesses as well as the Respondent's business operates under different classes of business than the Complainant.
Also, respondent did a national directory telephone search that produced no less than 54 listings that used the "Big Tex" mark or name. Since so many firms use the generic terms Big and Tex in their business, respondent has the equal right to use these same generic terms to attract and conduct business with its domain name
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The Respondent does not deny that the Complainant has a right to the use of the term "Big Tex" in connection with the Texas State Fair and allied enterprises. The Respondent suggests that the Complainant does not have an exclusive right to these words unless the other use may lead to confusion with or disparagement of the use by the Complainant.
The Respondent contends that there is no confusing similarity because he employs the words "bigtex" only in connection with the word "sports", an activity unrelated to the activities of the Complainant. He fairly points to dozens of other current business uses of the term, mostly in Texas, but where the addition of qualifying words eliminates the possibility of confusion.
But the Complainant does in fact use the words "Big Tex" in relation to sports activity, because of its association with the Cotton Bowl and football games there. To that extent, they are confusingly similar. I acknowledge that the Respondent web-site itself clearly relates only to gambling activities, that it is extremely unlikely that any person would quickly assume that the Texas State Fair was in the book-making or handicapping business, and that the Complainant offers no evidence of actual confusion. Nevertheless, it is possible that folks looking for the State Fair web-site may go to this web-site.
The Respondent contends that his site has only to do with sports gambling, and the State Fair is not involved in sports gambling. I accept this, but the weakness of the argument is that the words employed by the Respondent are not limited to sports gambling. Instead, he chose the much broader term "sports" as opposed to words with lesser and more defined scope, such as the term "sportsline" I note he previously used.
Rights or Legitimate Interests
Has the Complainant proven that the Respondent has no legitimate legal interest in the term "BigTexSports." ?
Its argument essentially is that, because the Complainant has registered "Big Tex" as a mark, nobody can use it in any circumstance, and, therefore, the Respondent could not possibly have a legitimate interest in any name containing the words "Big Tex". But I am not persuaded that the law is as simple as that. It is legally possible that a person may legitimately use "Big Tex" in connection with other words, words that define and restrict the scope so that the new mark does not interfere with the use protected for the Complainant. See, for example, General Machine Products v Prime Domains NAF FA 92531. In other words, I am very dubious that all of the more than 50 examples offered by the Respondent of other Texas businesses using the term "Big Tex" as part of their name are all illegal.
The Complainant also argues that the failure to inquire about possibility of name conflicts before using a domain name is a breach of the duty of the Respondent under the NSI Registration Agreement, and argues that I ought as a result say its choice is not legitimate. See Milwaukee Radio v WLZR WIPO D2000-209. But this proposed ruling would assume the truth of what in this case is in issue: Whether there was real conflict between the name chosen by the Respondent and the protected name of the Complainant. This is the point made by the panel in Motorola v Newgate Internet WIPO D2000-0079.
At the same time, the Respondent in fact conducts a gamblersí handicapping business, and has used the term "BigTexSports" in that connection since 1998, and continues to do so using his web-site. This may be a case like See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the Respondent has rights and a legitimate interest in the domain name since the domain name reflects the Respondentís company name). Moreover, the Complainant cannot deny that a bookmaker or handicapper may legitimately try to attract business by free offers of photographs of scantily clad young women, regardless of any moral disapprobation this practice may attract.
In any event, I need not make a finding under this heading because of my next finding. I note only that the parties are free to pursue this issue before other forums.
Registration and Use in Bad Faith
While the circumstances are not entirely free of suspicion, the Complainant has not established bad faith on the part of the Respondent. It has not dis-proven the claim of the Respondent that he had never previously heard of the Complainantís "Big-Tex". He says he has never been to the Texas State Fair at Dallas, and that he has been known to his friends for years as "Big Tex". In a state where bigness is often associated with its citizens and their endeavors, that is not surprising. And he notes that none of the stories about the Complainantís Big Tex in Dallas made the newspapers in his hometown, Galveston. This case is in no way comparable to Nokia Corp v Nokiagirls .com WIP D2000-0102.
The Complainant is driven to rely on the fact that the Respondent never troubled to search for other trade marks before registering his own. But there are explanations for that short of bad faith, and I cannot infer bad faith from that alone. I acknowledge the failure to search was noted in Inter-Ikea Systems v Mclaughlin Mobility WIPO D2000-0499, but my reading of the case is that this was not the deciding fact. On the contrary, the panel there rejected for several reasons the suggestion that the Respondent innocently employed the well-known name "Ikea".
There is simply no evidence of cyber-squatting, no evidence that the Respondent selected this name in order to sell it to the Complainant. I note he never has offered to sell it, but he has offered to place disclaimers on the web-site to avoid any possible confusion. Nor is there any pattern of obstruction. Nor is there any evidence of an attempt at disruption of the activities of the Complainant, to attract its customers, nor to take advantage of its goodwill. See PRIMEDIA Special Interest Publications Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (finding that the Respondent did not register the domain names in bad faith where there is no evidence that the Respondent intended to disrupt the Complainantís business).
DECISION
In the light of these findings, I refuse the request for a transfer or cancellation. I also refuse to declare that the Complainant is guilty of an attempt to "hijack" the Respondentís site. On the contrary, the Complaint raised serious and legitimate issues.
Honorable Roger P. Kerans
Judge, Court of Appeal (Ret.)
Arbitrator
Dated November 20, 2000.
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