Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Complainant is Reliant Energy, Inc., a Texas (USA) corporation with its principal office in Houston, Texas USA, represented by Amanda Woodall of Baker Botts L.L.P., Houston, Texas, USA.

Respondent is Brent Graeter, an individual who resides in Houston, Texas USA, represented by Jeff Miller, Houston, Texas.

The domain names at issue are

<reliantenergyfield.com>

<reliantenergydome.com>

<reliantenergycenter.com>

<reliantenergystadium.com>

They are referred to as the Domain Names. The registrar is Network Solutions, Inc.

The WIPO Arbitration and Mediation Center (the Center) received the complaint on February 20, 2001 (electronic version) and February 15, 2001 (hard copy). The Center verified that the complaint satisfied the formal requirement of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center.

On February 20, 2001, the Center transmitted, via email to the Registrar, a request for registrar verification in connection with this case. On February 26, 2001, the Registrar transmitted via email to the Center its Verification Response, confirming that the Respondent is the registrant for all the Domain Names, that the Respondent is the contact for administrative and billing matters, and that WorldNIC Name Host is the technical contact.

Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, on February 28, 2001, the Center transmitted to the Respondent its Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier and e-mail.

On March 12, 2001, Respondent requested a one month extension to respond. Complainant opposed this request. The Center extended the date for a response by seven days, to March 26, 2001. The Response was received by hardcopy on March 22, 2001 and by e-mail on March 28, 2001.

The formal date of the commencement of this administrative proceeding is

February 28, 2001.

Complainant requested a single panelist and Respondent agreed. The Center invited Richard G. Lyon to serve as a panelist. Having received Mr. Lyon's Statement of Acceptance and Declaration of Impartiality and Independence, on April 17, 2001, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date of April 30, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules and that the Panel has jurisdiction by virtue of Section 4(a) of the Policy.

Complainant is an international provider of energy, telecommunications, and public utility services. In Houston, its headquarters city, it is the sole provider of electricity and natural gas. It changed its name from Houston Industries Incorporated to Reliant Energy Inc. in February 1999 and has used the latter name worldwide since then. It has acquired or has pending a large portfolio of trademarks embodying its name, in the United States and abroad. Under both its old and new names it is a well-known corporate presence in Houston. It advertises heavily, using its names and marks, worldwide. Its principal web address is <www.reliantenergy.com>.

Complainant acquired naming rights to the new football stadium under construction for Houston's new National Football League (NFL) franchise, the Houston Texans, on October 26, 2000. The new arena, to be called Reliant Stadium, will be part of a sports, entertainment, and convention complex adjacent to the Astrodome, a stadium once used by Houston's major league baseball and football teams. According to a publication of the Texans (submitted with the Response), the new complex will include Reliant Stadium, Reliant Astrodome, Reliant Arena, Reliant Hall, and Reliant Center. Respondent asserts that acquiring the naming rights cost Complainant "over $300,000,000."

Respondent registered the Domain Names on January 5, 2000. He is a "huge football fan[]" who was interested in the new Houston NFL team, which had been awarded to Houston the preceding October. He acknowledges discussing with his partner (Footnote 1) at that time the possibility of Complainant's acquiring naming rights to the new football stadium. (Footnote 2) One or more of the Domain Names would be used as a "fan-based" "unbiased football forum and information site" (Response, ¶C).

Complainant has not licensed Respondents to use its marks or its name.

There is no evidence of any use, commercial or otherwise, of the Domain Names as web sites. Respondent states that one or more sites were at one time "under construction." A recent reference to each of the Domain Names yielded four blank pages. Complainant asserts, and Respondent acknowledges, that at one time a viewer going to each of the Domain Names would receive a notice that "This domain name FOR SALE," and Respondent's contact details.

On October 27, 2000, Complainant's attorney sent a cease and desist letter to Respondent.

The parties' contentions may be summarized as follows:

Complainant: The Domain Names are identical to its name and trademarks and accordingly Respondent's use of the Domain Names is likely to cause confusion as to ownership or affiliation of the Domain Names. This confusion is exacerbated by Complainant's sponsorship of the new Houston sports complex. Respondent registered the names about the time that the local press reported the possibility of Complainant's sponsorship, which is indicative of the likelihood of confusion and of Respondent's intent to sell the Domain Names. None of the words in the Domain Names is associated with Respondent or any business of his, and he thus has no legitimate interest in them. Respondent's registration of the Domain Names in anticipation of Complainant's acquiring naming rights and his later offer to sell the Domain Names, through the posting on his web sites, constitute bad faith.

Respondent: Use of the additional generic word (e.g., stadium) in each of the Domain Names dispels any likelihood of confusion as to site ownership, and the cases to the contrary are distinguishable because Respondent plans no commercial use of the Domain Names and has no fraudulent intent. There is no likelihood of confusion with the new sports facilities because the Domain Names include Complainant's full name while the sports facilities do not. Complainant could itself easily have registered the names, but did not. There are other domain names incorporating the names of sponsored sports facilities that are owned by individuals, and Respondent researched this fact prior to registering the Domain Names. (Footnote 3) He intends to use the Domain Names only for a noncommercial, "neutral," fan-based web site. He has never offered to sell the Domain Names to Complainant, and his posted offer to sell would have been accepted only to a "better prepared" person with a similar desire to create a fan-based site, and only for reimbursement of his costs of registration. Complainant has not carried its burden of proof on any of the necessary elements of its claim.

Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute:

"A Panel shall 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 directs that the Complainant must prove each of

the following:

(1) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service in which the Complainant has rights;

(2) that the Respondent has no rights or legitimate interests in respect to the Domain Name; and

(3) that the Domain Name has been registered and is being used in bad faith.

Identity and Confusion. The Domain Names incorporate verbatim Complainant's name and marks. They are therefore likely to cause confusion as to the ownership of the sites. The addition of a generic word at the end of the Domain Names does not alleviate this confusion in any way, as has been held by many arbitrators and judges in many decisions. (Footnote 4) The fact that the Domain Names do not exactly mirror the stadium name only increases the likelihood of confusion with Complainant's marks.

Legitimate Interest. Nothing in the record suggests any legitimate interest of Respondent in the Doman Names. Complainants have not licensed Respondent to use their marks. Respondent has made no use at all of the Domain Names in the sixteen months since registration. He has not offered a reason why use of Complainant's name is necessary or appropriate for a fan site, or why he registered four names for one fan site.

Bad Faith. Proof of registration or use in bad faith is limited. Respondent is correct that most of Complainant's allegations of bad faith are conclusionary and inferential. There is, however, the posted offer to sell the Domain Names, a classic instance of bad faith. The offer to sell, published to any person accessing any of the Domain Names, was not qualified in any way. Ordinarily this alone would support a finding of bad faith. (Footnote 5) The question is whether Respondent's disclaimer of commercial intent, made for the first time in the Response, will mitigate such a finding.

The Panel does not believe that it does in the circumstances of this case. Respondent acknowledges researching various domain names prior to registering the Domain Names, perforce an acknowledgment that he was aware of the risks of using a well-known trademark of another in his domain name. Almost certainly he was aware of the law's (Footnote 6) prohibition on profiting from such activity by selling the name to anyone. If he had intended all along to qualify the sale as he now claims, that message could easily have been incorporated into the posting on the site.

Bad faith, as used in the Policy and the Rules, is intended to be judged by an objective standard, based upon the proof submitted by the parties, rather than a Panel's subjective evaluation of a respondent's intentions or state of mind. The Policy's and the Rules' general prohibition on live testimony and cross-examination make it virtually impossible for a Panel to evaluate the latter. Respondent's unqualified offer to sell the Domain Names is an uncontested fact, and cannot be elided by a later self-serving statement in an adversary proceeding. On the evidence in this proceeding, Complainant has proven bad faith.

For the foregoing reasons, the Administrative Panel orders that the registration of the Domain Names be transferred to the Complainant.

Richard G. Lyon
Sole Panelist

Dated: April 30, 2001

Footnotes:

1. Respondent's partner was or is Jeff Miller, his representative in this proceeding.
2. In January 2000 there was speculation in the Houston press that Complainant was interested in acquiring naming rights for the new stadium. Acquiring naming rights to sports venues for advertising purposes is relatively common in the United States. For example, the new baseball park and basketball arena for professional teams in Houston are, respectively, Enron Field and Compaq Center. Enron Corporation and Compaq Corporation are substantial Houston-based companies.
3. Examples are collected at Schedule B of the Response. Respondent contends that he learned that "some of the [sponsoring] companies had challenged them but [the private owners'] rights to use the domain names were protected and approved" (Response, ¶6A), but does not cite any arbitral or court decision in which such ownership was sustained.
4. E.g., Professional Golfers of America v. Baldwin, WIPO Case No. 2000-0339.
5. E.g., United States Olympic Committee v. TriB-N Eco Project, WIPO Case No. 2000-0435.

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