DECISION

ESPN, Inc. v Internet Bigbang Co., Ltd.

Claim Number: FA0104000097093

PARTIES

Complainant is ESPN, Inc., Bristol, CT, USA (“Complainant”).  Respondent is Internet Bigbang Co., Ltd., Seoul, Korea (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <espntoday.com> registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Judge Ralph Yachnin, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 20, 2001; the Forum received a hard copy of the Complaint on April 27, 2001.

On April 25, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <espntoday.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On April 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 17, 2001 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@espntoday.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 May 23, 2001 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin, 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 Rules for Uniform Domain Name Dispute Resolution Policy (the “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 Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that it has a protectible mark in the term "ESPN" and Respondent’s <espntoday.com> domain name is confusingly similar, that Respondent is passively holding the <espntoday.com> domain name with the intention of selling the domain name for profit, that the Respondent has no legitimate rights in the contested domain name, and that the Respondent registered and is using the domain name in bad faith.

B. Respondent

Respondent failed to submit a Response to this matter.

FINDINGS

Complainant is a premier multimedia sports information and entertainment company. Complainant’s operations include an Internet site, four U.S.-based television networks (i.e., ESPN, ESPN2, ESPNEWS and ESPN Classic), various international television networks, a television production company, the ESPN Radio Network, ESPN – The Magazine and other related sports ventures.  Launched on September 7, 1979, Complainant’s flagship network, ESPN, is the largest sports cable television network in the United States and reaches almost 80 million U.S. homes.

Complainant has an extensive international presence and distributes sports programming in 140 different countries throughout Latin America and the Caribbean, Africa, Asia and the Middle East and is telecast in English, Spanish, Portuguese, Japanese and Mandarin and Cantonese Chinese.  Complainant’s licensed programs and marks also reach Europe where they are distributed in 46 countries and in 15 different languages. 

Recently, Complainant began development of proprietary interactive television products (“networks”), consisting initially of data and still photography, but which could enlarge to include full motion video.  These networks are being developed in conjunction with certain cable and other distributors, and are custom designed to take account of each distributor’s hardware and software configurations.  The tentative title of each such network is “ESPN Today.”  Complainant also uses “ESPN Today” to describe a site on its employee intranet.

Complainant owns an extensive number of registrations, in the United States, Korea and throughout the world, for its ESPN service mark and trademark.  Complainant’s ESPN mark is also registered in 81 other countries around the world.  Complainant registered the ESPN service mark on the Principal Register of the USPTO on June 25, 1985 and the mark has since become incontestable. 

On January 18, 2000, Respondent registered the domain name <espntoday.com> with Network Solutions.  After registering the domain name, Respondent has not used it in connection with a web site or with any offering of goods or services.  Respondent’s web site reveals that it is “currently holding about two thousand Internet domains,” which it claims the intention to hold for its “to-be-partners.”

On February 23, 2001, Complainant sent Respondent a letter advising that the ESPN mark is owned and registered by Complainant and Respondent’s registration of the domain name infringed a number of Complainant’s rights.  Complainant demanded that Respondent transfer the domain name.  Having not heard from Respondent, Complainant contacted Respondent again via letter dated March 8, 2001 asking for a response.

On March 8, 2001, Respondent e-mailed Complainant asking for additional time to prepare a response, which Complainant granted (asking for a response by March 16).  Complainant again asked for a response via e-mail on March 21 and on March 22 Respondent replied.  Respondent noted that “at this stage our company does not use the domain and holds it for some future purposes.”  Respondent offered to transfer it to Complainant at a “reasonable price for our property.”  Respondent also stated, “let’s be more direct to each other. If [Complainant] wants to use the domain, please offer reasonable price your company can afford.”

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the 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 domain name incorporates Complainant’s ESPN mark with the addition of the generic word “today.”  The mere addition of the generic word "today" does not avoid the likelihood of confusion under Policy ¶ 4(a)(i).  See Sony Kabushiki Kaisha v. Inja, D2000-1409 (WIPO Dec. 9, 2000) (finding that neither the addition of an ordinary descriptive word nor the suffix “.com” detracts from the overall impression of Complainant’s SONY trademark); see also JVC Americas Corp. v. Macafee, CPR006 (CPR Nov. 10, 2000) (finding that the domain name registered by Respondent, <jvc-america.com>, is substantially similar to, and nearly identical to Complainant's JVC mark).

The Panel finds that the disputed domain name is confusingly similar to Complainant’s well-known mark.  Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent did not attempt to make a legitimate noncommercial or fair use of the domain name, nor has Respondent made a bona fide offering of goods in connection with the domain name, because Respondent has done nothing with the domain name except to offer to sell it to the Complainant.  See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name); see also Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by the Complainant); see also Chanel, Inc. v. Heyward, D2000-1802 (Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”).

Additionally, Respondent is not commonly known by the name “espntoday,” but instead is listed as “Internet Bigbang.”  See Systima Ltd. v Byrne, D2001-0300 (WIPO Apr. 23, 2001) (finding “[t]here is no indication from the evidence before this Administrative Panel that the Respondent has ever been known by the said domain name so as to claim rights or a legitimate interest in accordance with Paragraph 4(c)(ii) of the Policy”).

The Panel finds that Respondent has no rights to or legitimate interest in the mark.  Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered the disputed domain name utilizing Complainant’s mark, with the sole intention of selling the domain name.  Bad faith is evident because Respondent did not attempt to establish a web site for the domain name, and attempted to sell the domain name, which is confusingly similar to Complainant’s mark, to the Complainant.  See Universal City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where the Respondent made no use of the domain names except to offer them to sale to the Complainant); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of Policy ¶ 4(a)(iii)).

Therefore, the Panel finds that the proof supports a finding that Respondent registered and used the domain name at issue in bad faith.  Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.

Accordingly, it is Ordered that the domain name <espntoday.com> should be transferred from Respondent to Complainant.

Honorable Ralph Yachnin

(Retired Judge)

Arbitrator

Dated: May 29, 2001

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