Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Pasadena Tournament of Roses Association Inc., Pasadena, CA, USA ("Complainant") represented by Gary J. Nelson, of Christie, Parker, Hale LLP. The Respondent is Wholesale Company, Running Springs, CA, USA ("Respondent").

The domain name at issue is "rosebowlgame.com", registered with Network Solutions.

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

The Honorable Charles K. McCotter, Jr. as Panelist.

The Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 15, 2001; the Forum received a hard copy of the Complaint on February 20, 2001.

On February 20, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "rosebowlgame.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that the 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On February 23, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 4, 2000 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to postmaster@rosebowlgame.com by e-mail.

A timely response was received and determined to be complete on March 15, 2001.

On March 23, 2001, pursuant to the Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant. The Respondent requests that the Complainant use the Respondent’s site as the official site of the Rose Bowl.

A. Complainant

B. Respondent

Complainant Pasadena Tournament of Roses Association, Inc. (the "Complainant" or "Tournament of Roses") created, sponsors, holds the NCAA sanction for, and organizes one of the most famous and popular post-season collegiate bowl games in the United States, the annual ROSE BOWL GAME. Beginning, in the year 1923, the ROSE BOWL GAME championship has been played every year. The 2001 ROSE BOWL GAME was the 79th intersectional post-season intercollegiate football game played in association with the ROSE BOWL GAME trademark. The ROSE BOWL GAME is known as "The Granddaddy Of All Bowl Games." It is the original post-season intercollegiate football game.

The Complainant is the owner of United States Service Mark Reg. No. 1,022,242 for THE ROSE BOWL GAME, and at least three other United States Registrations for variations of its ROSE BOWL GAME mark (i.e., Reg. No. 1,023,937 for THE ROSE BOWL; Reg. No. 1,994,297 for ROSE BOWL; and Reg. No. 1,949,907 for ROSE BOWL). The Complainant also owns Canadian Service Mark Reg. No. 906,633 for THE ROSE BOWL. The Complainant began using its ROSE BOWL GAME mark at least as early as 1923 and has been using the mark continuously ever since its initial adoption. At all times, the Complainant has been the exclusive user of the ROSE BOWL GAME mark. The Complainant’s use of ROSE BOWL now is international in scope.

The Complainant also owns common law trademark and service mark rights in its ROSE BOWL GAME trademark.

The Respondent, Wholesale Company, has five websites and is working on two more. The Respondent has not yet created a website for the domain name "rosebowlgame.com". The Respondent says it has plans to create a site that would compliment the Tournament of Roses games and that the site is scheduled to be online by July 1, 2001.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."

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:

(3) the domain name has been registered and is being used in bad faith.

The contested "rosebowlgame.com" domain name is identical to the Complainant’s registered ROSE BOWL GAME mark. See Marty Rodriguez Real Estate, Inc. v. Lancaster Industries, D2000-1468 (WIPO Dec. 24, 2000) (holding that the trademark MARTY RODRIGUEZ was identical to the "martyrodriguez.com" domain name and concluding that "the deletion of a ‘space’ within the domain name is not a material distinction").

Moreover, the contested "rosebowlgame.com" domain name is confusingly similar to the Complainant’s United States Registered Service Mark for THE ROSE BOWL GAME (Reg. No. 1,022,242). The dominant ROSE BOWL GAME portion of the Complainant’s registered mark and the contested domain name are identical, the pronunciation is identical, and the connotation and commercial impression are identical. The Respondent cannot avoid confusing similarity simply by deleting a generic word such as "the." The same analysis applies to the contested domain name and the Complainant’s other ROSE BOWL-based registrations (i.e., United States Reg. No. 1,023,937 for THE ROSE BOWL; United States Reg. No. 1,994,297 for ROSE BOWL; United States Reg. No. 1,949,907 for ROSE BOWL; and Canadian Reg. No. 906,633 for the ROSEBOWL). The Respondent cannot avoid confusing similarity between the contested domain name and these four registrations by deleting words such as "the" and "game." Also, the Complainant’s ROSE BOWL GAME mark has been famous for over 75 years, during which time the Complainant has been the exclusive user of its famous mark.

Under the UDRP, the Respondent bears the burden of proving that he has rights or a legitimate interest in the domain name in question. See FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec.1, 2000). In this case, the Respondent cannot overcome this burden because the Respondent has no right to use, and has no legitimate interest in, the "rosebowlgame.com" domain name and/or the Complainant’s ROSE BOWL GAME mark.

The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent is not commonly known by the domain name, nor has the Respondent used the domain name in connection with a legitimate noncommercial or fair use without intent for commercial gain. 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 the Complainant's distinct and famous NIKE trademark); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, the Respondent has not used the domain names in connection with any type of bona fide offering of goods and services).

Also, the Complainant contends that the Respondent’s passive holding of the domain name is evidence of the Respondent’s lack of rights and legitimate interests in the domain name. See Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that the Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name); see also Ziegenfelder Co. v. VMH Enterprises, Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that the Respondents have not established any rights or legitimate interests in the said domain name).

The Respondent has not made use of the "rosebowlgame.com" domain name in connection with a bona fide offering of goods and services. Likewise, the Respondent is not making a legitimate noncommercial or fair use of the contested domain name. The Respondent is not a business or organization commonly known as the "ROSE BOWL GAME," nor is the Respondent an organization that is affiliated with the ROSE BOWL GAME or with the Complainant.

Accordingly, the Respondent has no legitimate rights or interest in "rosebowlgame.com."

The Respondent has registered and is using the "rosebowlgame.com" domain name in bad faith.

The Respondent has intentionally registered the contested domain name to prevent the Complainant from reflecting its ROSE BOWL GAME mark in the corresponding "rosebowlgame.com" domain name. Also the Respondent is using the "rosebowlgame.com" domain name in bad faith by intentionally "squatting" on the famous trademark. It is well-established that the warehousing of a famous trademark, such as the ROSE BOWL GAME, by itself is evidence of bad faith. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (holding that the mere passive holding of a domain name that corresponds to well-known trademark satisfies the requirement of Uniform Dispute Resolution Policy paragraph 4(a)(iii) that the domain name "is being used in bad faith"). In Telstra, the Administrative Panel expressly found that when a well-known trademark is at issue, a finding of bad faith is supported by the fact that "it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law." Id.; see Yanni Management, Inc. v. Progressive Industries, FA 95063 (Nat. Arb. Forum Aug. 2, 2000) (the Respondent’s passive use of "yanni.com" was evidence of bad faith). Just as in Telstra, there can be no actual legitimate use of "rosebowlgame.com" by the Respondent because of the well-known and famous nature of the Complainant’s registered ROSE BOWL GAME mark. Accordingly, the act of mere "squatting" on the contested domain name supports a finding that the Respondent is acting in bad faith.

Moreover, the Respondent has registered at least thirty-five speculative domain names. The Respondent has engaged in a pattern of registering third party trademarks as domain names, and in which it has no right. This pattern of activity is evidence of bad faith. See MPL Communications Ltd. v. Hammerton, FA 95633 (Nat. Arb. Forum, Oct. 25, 2000) (finding bad faith when the Respondent had demonstrated a pattern of conduct of registering the domain names of trademarks owned by third parties and using those domain names for its own personal gain).

Based upon the above findings and conclusions, I find in favor of the Complainant. Therefore, the relief requested by the Complainant pursuant to Paragraph 4(i) of the Policy is Granted. The Respondent shall be required to transfer to the Complainant the domain name "rosebowlgame.com".