DECISION

ESPN Inc v. Carlos Pelegero

Claim Number: FA0111000102167

PARTIES

Complainant is ESPN, Inc., New York, NY (“Complainant”) represented by Lisa Philipson, of ESPN, Inc.  Respondent is Carlos Pelegero, San Jose, CA(“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <espnbets.com> and <espnbets.net>, registered with BulkRegister.com, Inc.

PANEL

 On December 21, 2001 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist.  The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 13, 2001; the Forum received a hard copy of the Complaint on November 16, 2001.

On November 16, 2001, BulkRegister.com, Inc. confirmed by e-mail to the Forum that the domain names <espnbets.com> and <espnbets.net> are registered with BulkRegister.com, Inc. and that Respondent is the current registrant of the name.  BulkRegister.com, Inc. has verified that Respondent is bound by the BulkRegister.com, Inc. 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 November 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 10, 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@espnbets.com, postmaster@espnbets.net 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.

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 names be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <espnbets.com> and <espnbets.net> domain names are confusingly similar to Complainant's ESPN mark.

Respondent has no rights or legitimate interests in the disputed domain names.

Respondent registered the disputed domain names in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Since 1979, Complainant has used its ESPN mark in relation to its multimedia sports information and entertainment company.  Its business includes an Internet site, four television networks, various international television networks, a production company, radio station, magazine and other related sports ventures.  Complainant is recognized as the preeminent sports journalism organization in the world.  Complainant distributes sports programming in 140 different countries throughout Latin America, the Caribbean, Africa, Asia and the Middle East as well as 46 European countries. 

In 1994, Complainant pioneered the dissemination of sports news and information on the Internet.  Complainant's website <espn.com> remains the most-visited sports site on the Internet and provides features such as real-time game coverage, fantasy games, highlight footage, up-to-the-minute sports stories, statistics, live chats, and other sports-related content.

Complainant does not allow any gambling related activities to advertise on its website, or on its television networks.  Complainant has numerous agreements with major sports organizers and sports rights holders that require Complainant not to associate with or accept advertising from any gambling related activities.

Complainant owns an extensive number of registrations in the United States and throughout the world for its ESPN service mark and trademark.  Complainant also holds a trademark application for ESPN.COM.  Complainant spends considerable sums of money each year to advertise and promote its ESPN marks.  As a result of its own activity, as well as the widespread public attention and coverage of ESPN by third-party media, the ESPN marks have become famous throughout the world and are universally recognized and relied on as identifying ESPN.

Respondent registered the disputed domain names on February 8, 2001.  Respondent has used the disputed domain names in relation to an on-line gambling website calling itself "ESPNBETS".  At the time that the existence of the disputed domain names came to the attention of Complainant the disputed domain names were registered under the name Mike Kerns.  In preparation for this proceeding Complainant found that the domain names were registered in a different name, Carlos Pelegero, the current Respondent.  The domain name was transferred after Complainant contacted Mike Kerns by sending a cease and desist letter.  Furthermore, the phone number listed on the Whois information is "0000", which Complainant feels was an attempt to frustrate its efforts to amicably resolve this issue.

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

Complainant, through registration and use, has established that it has rights in the ESPN mark.  Furthermore, Respondent's <espnbets.com> and <espnbets.net> domain names are confusingly similar to Complainants mark because they incorporate the entirety of Complainant's mark and merely add the generic term "bets."  The addition of a generic term to a famous mark does not create a distinct mark.  See Sunkist Growers, Inc. v. S G & Delmonte-Asia.com, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to complainant’s registered SUNKIST mark and identical to complainant’s common law SUNKIST GROWERS mark); see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).

The Panel finds that Policy ¶ 4 (a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <espnbets.com> or <espnbets.net> domain names pursuant to Policy ¶ 4(c)(ii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).

Furthermore, based on the fame of Complainant's ESPN mark it would be very difficult for Respondent to show that it had rights and legitimate interests in the disputed domain name.  Any use by Respondent of the <espnbets.com>and <espnbets.net> domain name, confusingly similar to Complainant's famous mark, would be an opportunistic attempt to attract customers via Complainant's famous mark.  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

Furthermore, Respondent has used the disputed domain names as an online gambling website.  It has been found that the use of a confusingly similar domain name as a link to gambling and advertisement websites does not create rights and legitimate interests because it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Société des Bains de Mer v. International Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or legitimate interests where Respondent used the <casinomontecarlo.com> and <montecarlocasinos.com> domain names in connection with an online gambling website); see also FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website).

Respondent does not have any rights or legitimate interests in the disputed domain names because Respondent's use of the confusingly similar domain names to divert internet users interested in Complainant to Respondent's website is not a bona fide offering of goods pursuant of Policy ¶ 4(c)(i).  See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Because of the famous and distinctive nature of Complainant's ESPN marks, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <espnbets.com> and <espnbets.net> domain names. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).

The <espnbets.com> and <espnbets.net> domain names are confusingly similar to Complainant's mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant.  Registration of the confusingly similar <espnbets.com>and <espnbets.net> domain names is evidence of bad faith pursuant to Policy ¶ 4(c)(iv).  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

Respondent is using the disputed domain names as gambling websites.  The use of a confusingly similar domain name for an online gambling website is evidence of bad faith.  See Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked the domain name <marssmusic.com>, which is identical to Complainant’s mark, to a gambling website); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding that the Respondent violated Policy ¶ 4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a gambling site).

The Panel finds that Policy ¶ 4 (a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the domain name <espnbets.com> and <espnbets.net> be transferred from Respondent to Complainant.

 James P. Buchele, Panelist

Dated:  December 26, 2001

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