Generic Top Level Domain Name (gTLD) Decisions

Complainant is ABC Sports, Inc, New York, NY, USA ("Complainant") represented by Jeffery C Katz, Davis & Gillbert LLP. Respondent is Universal Internet Technologies, Inc., London ("Respondent").

The domain name at issue is "abcsportswager.com" registered with Tucows.com.

The Panelist certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as the panelist in this proceeding.

Honorable Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on October 19, 2000; The Forum received a hard copy of the Complaint on October 19, 2000.

On November 22, 2000, Tucows.com confirmed by e-mail to the Forum that the domain name "abcsportswager.com" is registered with Tucows.com and that Respondent is the current registrant of the name. Tucows.com has verified that Respondent is bound by the Tucows.com registration agreement and that Respondent has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On October 30, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 20, 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 Respondent’s registration as technical, administrative and billing contacts, and to postmaster@abcsportswager.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On November 28, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Honorable Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

Complainant requests that the domain name be transferred from Respondent to Complainant.

Complainant owns and has used ABC Sports as a service mark and trademark for more than 36 years in connection with the production, broadcast, dissemination, and presentation of TV sports programming. Complainant registered this mark with the U.S. Patent and Trademark Office. Complainant owns at least three registrations for the mark ABC Sports, including No. 1,170,597 (Registered September 22, 1981); No. 2,042,930 (Registered March 11, 1997) and No. 2,272,849 (Registered August 24, 1999). Complainant uses the domain name <abcsports.com> and operates a website featuring its marks that connects to its domain name.

The domain name in question incorporates Complainant’s registered trademark in its entirety and connects to a site that features an online sports gambling service. Complainant attempted to contact Respondent relative to resolving the dispute over the domain name without success.

Respondent has registered multiple domain names, including <nbcsportswager.com>, <cbssportswager.com>, and <foxsportswager.com>, all of which link to the gambling site <worldwager.com>.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that a 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) 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.

Complainant asserts that the domain name in question is identical to or confusingly similar to the Complainant’s mark "ABC SPORTS". Respondent’s attempt to establish a distinct mark by adding the generic word "wager" to the Complainant’s mark fails. See Yahoo! Inc. and GeoCities v. Cupcakes, Cupcake city, Cupcake Confidential, Cupcake-Party, Cupcake Parade, and John Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to Complainant’s marks and likely to mislead internet users into believing that products and services offered by Respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered).

The Panel finds that the domain name is identical to Complainant’s registered mark.

Complainant asserts that Respondent has no rights or legitimate interest in the domain name, as required under Paragraph 4.a (ii).

The evidence supports the inference that Respondent registered the domain name at issue for the purpose of trading upon the reputation and goodwill associated with Complainant’s widely known mark. Respondent offered no proof that Respondent is commonly known by the term "abcsportswager" and Respondent offered no proof that this term is used any place on its website. Policy Paragraph 4.c (ii). Further, Respondent’s use of the domain name links users to a gambling site <worldwager.com>. Using an infringing domain name to trade upon another’s mark is not evidence of a bona fide commercial or noncommercial use of a domain name. Policy Paragraph 4.c (i), (iii). See State Farm Mutual Automobile Insurance Company v. Douglas LaFaive, FA 95407 (Nat. Arb. Forum Sept 27, 2000) (finding that "unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services").

The Panel determines that Respondent has no rights or legitimate interests in the domain name and that Complainant met its burden of establishing such rights under the requirements of Policy Paragraph 4.a (ii).

Complainant asserts that Respondent registered and used the domain name in bad faith, in violation of Policy Paragraph 4.a (iii).

The Panel believes that the above findings justify the conclusion that Respondent registered and is using the domain name in bad faith. However, taking the full circumstances of the case into consideration lends further support to such conclusion. The following further evidences Respondent’s bad faith:

For the above reasons, the Panel finds that Respondent registered and used the domain name in issue in bad faith.

Complainant having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief should be and is hereby granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name "abcsportswager.com" be transferred from Respondent to Complainant.