Generic Top Level Domain Name (gTLD) Decisions

P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com

American Sports Network, Inc.

COMPLAINANT,

vs.

American Sports Network,
RESPONDENT.

DECISION
Forum File No.: FA0003000094327

The above entitled matter came on for an administrative hearing on March 25, 2000 before the undersigned on the Complaint of American Sports Network, Inc., hereafter "Complainant", against American Sports Network, hereafter "Respondent". Complainant was represented by David Weiss, Esq., 2551 Colorado Blvd., Los Angeles, CA 91040. Respondent was represented by David W. Affeld, 333 S. Grand Avenue, 37^th Floor, Los Angeles, CA 90071-1599. Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS
Domain Name: americansportsnetwork.com
Domain Name Registrar: Network Solutions
Domain Name Registrant: American Sports Network
Date of Domain Name Registration: March 16, 1997
Date Complaint Filed: March 22, 2000
Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a) and Rule 4(c): March 22, 2000
Due date for a Response: Respondent submitted a Response to the Complaint.

After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent on March 22, 2000, in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified Register.com, the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. Respondent submitted a response to The Forum within twenty (20) days pursuant to Rule 5(a). On March 16, 1997, Respondent registered the domain name "americansportsnetwork.com" with Network Solutions, the entity that is the "Registrar" of the domain name. On March 21, 2000, the Registrar verified that Respondent is the Registrant for the domain name "americansportsnetwork.com", and that further by registering its domain name with the Registrar that it would resolve disputes according to the Registrar's rules. The Registrar since referred complainant to ICANN's Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy. Complainant has properly brought forth its complaint and evidence in support. Respondent has replied.

FINDINGS OF FACT

1. Complainant is the owner of a U.S. Trademark Office Service Mark Registration which is made up of the terms "American Sports Network". Complainant had for roughly three years prior to Respondent's registration, used the mark as its primary business name, which is a significant method of promoting Complainant's products and services.

2. As early as June 1994, Complainant began using its mark in connection with its business of television media presentations in the field of physical fitness. The service mark has been used continuously and extensively in interstate commerce in connection with the advertising and sale of Complainant's products and services.

3. The registered service mark "American Sports Network" and the domain name "americansportsnetwork.com" are confusingly similar, and in fact are identical except for capitalization and spacing. In the context of the internet, Respondent's use of the domain name substantially blocks complainant's use of its service mark as the address for its internet portal.

4. Respondent has registered the domain name "americansportsnetwork.com" in bad faith, according to ICANN's Domain Name Dispute Resolution Policy, because of the following:

(a) Respondent's use of the "americansportsnetwork.com" domain name was not a continuation of previous business activities. In fact, prior to registering the "americansportsnetwork.com" domain name, Respondent had, apparently, operated its business under the name of American Sports Schedule, and American Sports Companies, Inc.

(b) Complainant's pre-existing, exclusive interest in its service mark precluded Respondent's use of "American Sports Network" in a fashion which would divert commerce to Respondent.

(c) Except for Respondent's registration and use of the domain name for a short period, neither Respondent nor its principals have ever commonly been known by that domain name or any substantially similar name.

5. The use of the domain name by Respondent even if without an intent of commercial gain, will misleadingly divert consumers or tarnish Complainant's service mark. Furthermore, while not explicit within Respondent's answers, the following facts, or lack of response, buttress these findings of bad faith pursuant to ICANN's Dispute Resolution Policy. Complainant and Respondent agree there were discussions that Respondent offered to sell the domain name back to Complainant for $25,000. There was no indication that that $25,000 represented documented out of pocket costs, or an amount in excess thereof. A showing of evidence that $25,000 was the documented out-of-pocket cost might defeat an argument of administrative bad faith; however, the lack of that evidence tends to show that Respondent sought a premium over its actual costs which subject respondent to a bad faith determination in accordance the ICANN Uniform Domain Name Dispute Resolution Policy Paragraph 4B(i). Furthermore, Respondent has admitted the existence of a domain name identical to its own corporate name and its generally known business name. It therefore could operate without keeping American Sports Network, Inc. in limbo. While not dispositive, that is some evidence that despite the acknowledgement that the American Sports Network service mark and americansportsnetwork.com domain name were substantially identical, Respondent's holding the domain name in limbo without seeking intellectual property protection with respect to its separate use of "American Sports Network" constitutes prevention of the owner of the service mark from using that mark in a corresponding website. That leads to an inference that during the time of this dispute from 1998 forward, Respondent has frustrated Complainant's use and benefit of its service mark in the context of a domain name, even while Respondent has been able to maintain its position with internet commerce by way of its alternative domain name.

6. Complainant's prayer for relief requests that the domain name "americansportsnetwork.com" be transferred from Respondent to Complainant.

CONCLUSIONS

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:

1. The domain name "americansportsnetwork.com", registered by Respondent with Network Solutions, Inc., is nearly identical to Complainant's service mark in existence prior thereto and is confusingly similar to a trademark in which Complainant has rights and to which Respondent has no right or legitimate interests.

2. Because of the pre-existing service mark and the nature of internet commerce Respondent's use of the domain name has deprived complainant's use of its service mark in internet commerce.

3. As set out above there are sufficient facts to conclude that Respondent registered and has used the above referenced domain name in bad faith as contemplated in paragraph 4a and b of Uniform Domain Name Dispute Resolution Policy.

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows: THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "americansportsnetwork.com" REGISTERED BY RESPONDENT BE TRANSFERRED TO COMPLAINANT AMERICAN SPORTS NETWORK, INC. Dated: April 27, 2000, by John A. Bender, Arbitrator. Honorable John A. Bender