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Generic Top Level Domain Name (gTLD) Decisions |
Eastbay Corporation v. VerandaGlobal.com,
Inc.
Claim Number: FA0203000105983
PARTIES
Complainant
is Eastbay Corporation, New York, NY
(“Complainant”) represented by Melissa
L. Klipp, of Drinker Biddle &
Shanley LLP. Respondent is VerandaGlobal.com, Inc., Clearwater,
FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <finalscore.com>,
registered with Tucows, Inc.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge, have no conflict in
serving as Panelists in this
proceeding.
Panelists
are Richard Page, Esq., Alan Limbury, Esq., and Judge Karl V. Fink (Ret.) as
Chair.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on March 22, 2002; the Forum received
a hard copy of the
Complaint on March 25, 2002.
On
March 22, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <finalscore.com> is
registered with Tucows, Inc. and that the Respondent is the current registrant
of the name. Tucows, Inc. has verified
that Respondent is bound by the Tucows, 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
March 25, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 15,
2002 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@finalscore.com by e-mail.
A
timely Response was received and determined to be complete on April 15, 2002.
Complainant
made a timely additional submission entitled Supplemental Statement of
Complainant, which was received April 19, 2002. Respondent submitted a timely additional submission entitled
Supplemental Response By the Respondent and an Amendment to the Supplemental
Response, which were received April 24, 2002.
In
addition, Complainant made a timely additional submission entitled Additional
Statement of Complainant, which was received on April
24, 2002.
All
of the submissions referenced above were considered by the Panel.
After
the deadline for submissions, Respondent made an additional submission entitled
Additional Supplemental Statement By the Respondent. Because it was untimely, it was not considered.
On April 29, 2002, pursuant to Respondent’s request to
have the dispute decided by a three-member
Panel, the Forum appointed as
Panelists: Richard Page, Esq.,
Alan Limbury, Esq., and Judge Karl V. Fink (Ret.) as Chair.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Eastbay
owns and holds the rights to the FINAL SCORE mark. The FINAL SCORE mark has been registered in the United States
with the Patent and Trademark Office, and has reached “incontestable”
status.
Since
1993, Eastbay has used the distinctive FINAL SCORE name and mark on catalogs in
connection with the sale and advertisement of
athletic footwear, equipment, and
apparel. Eastbay has invested over a
million dollars into producing and distributing the FINAL SCORE catalogs, and
building Eastbay’s Reputation,
goodwill, and brand recognition.
On
or about May 19, 1997, years after Eastbay’s first use of the FINAL SCORE mark,
the Respondent registered the domain name <finalscore.com>.
Respondent
has no connection or affiliation with the Complainant, and has received no
license or consent, express or implied, to use
the trademark in a domain name
or in any other manner.
As
of the date of the first Cease and Desist letter, upon typing in the <finalscore.com>
domain name, an Internet user was directed to Respondent’s
<Firstplace.com> Web page. The
page featured a “Sports” catalog under which it provided links to various Web
sites including: <soccer.com>,
<golfballs.com>, GORP outdoor recreation, and
<collectibles.com>. The
<soccer.com> Web site sells athletic apparel and equipment – the very
same items offered using the FINAL SCORE mark.
Currently,
when an Internet user clicks on the “Sports” category link, the user is brought
to a page that features advertised links
to various Web sites. Some of the recent links include retailers,
which compete with, or are unsavory associations for, Eastbay.
Complainant’s
attorneys issued a Cease and Desist letter via certified mail, facsimile, and
e-mail to the Respondent regarding the
<finalscore.com> domain
name on October 18, 2001. On January 3,
2002, Complainant’s attorneys issued a follow-up Cease and Desist letter to Respondent
via facsimile and e-mail.
After
other correspondence, on January 13, 2002, the Respondent stated that it would
not cease and desist.
Given
the fame of the FINAL SCORE mark, any consumer finding a domain address
consisting of the “FINAL SCORE” name would expect the
site to be sponsored by,
or affiliated with Eastbay, but no such affiliation exists.
Respondent
has no legitimate interests in the <finalscore.com> domain name
and has not lawfully used the mark to offer goods or services prior to the notice
of the dispute. Respondent is using the
domain name to intentionally divert Internet users to its
<Firstplace.com> Web site for its own commercial
gain.
Respondent
does not call its site “FINAL SCORE” nor does it use those words anywhere in
the content of its Web site.
Respondent’s
actions are an attempt to interfere with Complainant’s online identity and to
prevent Complainant from owning the domain
name.
Respondent
is purposely creating confusion because when a user types in the <finalscore.com>
domain name, instead of finding one of Complainant’s official sites, the user
is redirected to the <Firstplace.com> Web
site.
The
fact that the Respondent provided false information in its WHOIS registration
supports a finding of bad faith.
B.
Respondent
The
Complainant does not have exclusive rights to the domain name at issue.
VerandaGlobal.com
Inc. has no association whatsoever with the Complainant’s business, and makes
no representations of any connection
with the Complainant with its use of the
generic <finalscore.com> domain name.
The
Complainant’s own corporate websites of <Eastbay.com> and
<Footlocker.com> employ neither terms “final score” nor
“finalscore”, or
its print-catalog by that name anywhere on its homepages.
The
submitted Complaint is devoid of any evidence the Complainant has Internet
usage of the “finalscore” term associated with catalogs
featuring athletic
equipment and clothing.
The
Complainant had at least 10 years to register relevant domain names. If the <finalscore.com> domain
name was so confusing to the Complainant, the Complainant could have registered
the domain name at issue.
The
Complainant provided no evidence to support a claim of “famous” in the generic
final score mark. The registered US
mark #74706007, registered by Dorothy E. and Charles J. Rausa, pertaining to
“sports bar and restaurant activities”
is the exact same generic “final score”
phrase as the Complainant’s, and was successfully registered well after the
Complainant’s
mark.
The
Respondent had never heard of the Complainant’s use of the generic term “final
score”.
C.
Additional Submissions
The
FINAL SCORE trademark has achieved registration on the Principal Register and
reached incontestable status. Thus, by
definition, the mark cannot be generic.
See 15 U.S.C. 1065 (4) (stating no “incontestable right shall be
acquired in a mark which is the generic name for the goods or services or a
portion
thereof, for which it is registered.)
Eastbay’s
exclusive ownership and right to use the FINAL SCORE mark in its identified
field is established through its registration
and continuous use. Federal registration provides constructive
notice to all other parties including the Respondent, of Eastbay’s rights and
ownership
of the FINAL SCORE mark.
Immediately
upon discovering Respondent’s misuse of its FINAL SCORE mark, Eastbay took
appropriate action. WHOIS records
indicated that Respondent only registered the <finalscore.com>
domain name in 2000.
Eastbay
need not establish exclusive rights in the FINAL SCORE mark to recover the
domain name.
By
reason of Eastbay’s long and continuous use of the FINAL SCORE mark, Eastbay
has established secondary meaning and fame in its
mark.
The
<finalscore.com> domain is designed to divert Internet
traffic. If one of the million
subscribers of the FINAL SCORE catalog wanted to determine if Eastbay offered
the FINAL SCORE catalog online,
he or she would likely type in the <finalscore.com>
domain name. A Respondent has no rights
or legitimate interest in a domain name when it uses the domain name to divert
Internet users to Respondent’s
unaffiliated Web site.
Respondent
is a multi-national domain name re-seller with a vested interest in the ability
to register others’ trademarks as domain
names. A search for <VerandaGlobal.com> identifies the company as
a TUCOW, Inc. domain name reseller, offering domain names in Arabic
and Hebrew.
Respondent’s
various domain names, including <finalscore.com> are merely
directing Internet traffic to Respondent’s advertisements and virtual shopping
mall. This is particularly true of the
<finalscore.com> domain name – the <firstplace.com> Web site
has nothing to do with sports scores.
The site offers links to sites selling athletic apparel in direct
competition with Eastbay’s FINAL SCORE catalog.
Respondent
Respondent
has never heard of the Complainant’s final score catalog and neither has the
Internet Community. The generic and
descriptive <finalscore.com> domain name was registered and used
with a clearly bona-fide and legitimate service purpose long before any notice
of this complaint. The previous-year
click-through data show Internet users using the very efficient trademarked
<FirstPlace.com> search tool to
find final scores, healthy food, health
advice etc.
The
Complainant shares the usage of the “final score” term with other trademark
holders.
FirstPlace
is a trademark of the Respondent and the <FirstPlace.com> website serves
as an Internet search portal for the <finalscore.com>,
<healthyfood.com> and <healthadvice.com> domains similar to the way
YAHOO! Uses <lookup.com> and Amazon.com
uses the <bestseller.com>
domains.
US
Law does not state all trademarks are automatically exclusive and automatically
possess secondary meaning beyond their governing
qualifiers and modifiers.
FINDINGS
For the reasons set forth below, the
Panel finds Complainant has not proven that the domain name should be
transferred.
DISCUSSION
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:
(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 Panel finds that the disputed domain name is identical or confusingly similar
to Complainant’s mark. See Snow Fun, Inc. v. O'Connor, FA 96578
(Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name
<termquote.com> is identical to Complainant’s TERMQUOTE
mark).
The removal of
spaces from the mark is insignificant to the determination of whether the
domain name and mark are identical, as spaces
are not permitted in domain
names; similarly, the addition of “.com” is not relevant as the use of a
generic top-level domain such
as “.com” is required of domain name
registrants. See Fed’n of
Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name
<gaygames.com> is identical to Complainant's registered trademark
GAY
GAMES); see also World Wrestling
Fed’n Entm’t, Inc. v. Rapuano, DTV 2001-0010 (WIPO May 23, 2001) (finding
that the <worldwrestlingfederation.tv> domain name was identical to
Complainant’s
WORLD WRESTLING FEDERATION mark).
Complainant has
proven this element.
Rights or Legitimate Interests
Respondent
may fairly use descriptive or generic terms as a commercial domain name. See
Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb.
19, 2001) (finding that Respondent has rights and legitimate interests in the
domain name where “Respondent
has persuasively shown that the domain name is
comprised of generic and/or descriptive terms, and, in any event, is not
exclusively
associated with Complainant’s business”).
Respondent is
using the disputed domain name as a portal to a commercial website
<firstplace.com>, which features various advertisements
and links,
including advertised links to various websites. The Panel finds that Respondent, before notice of the dispute,
has used the disputed domain name for a bona fide offering of goods
or services
pursuant to Policy ¶ 4(c)(i).
Respondent having registered and used the term “final score”, a common
descriptive and generic expression, in the domain name, has
rights in the
name. See FreedomCard, Inc.
v. Kim, D2001-1320 (WIPO Jan. 20, 2002):
“Were the trademark a well-known invented word
having no descriptive character, these circumstances would shift the onus to
Respondent
to demonstrate its rights or legitimate interest in the disputed
domain name: Do The Hustle, LLC v.
Tropic Web (WIPO Case No. D2000-0624) and the cases there
cited. But the mark FREEDOM CARD is a
common generic expression in which the Complainant cannot have exclusive
rights”.
Complainant
has not proven this element.
Registration and Use in Bad Faith
Complainant has
provided no evidence that its mark is so famous Respondent is presumed to have
knowledge of it. There is no evidence
that the name was registered and used in bad faith.
Complainant has
not proven this element.
DECISION
For
the reasons stated above, since Complainant has not proven the necessary
elements, the relief requested by Complainant is denied.
Judge Karl V.
Fink (Retired),Chair
Alan Limbury,
Esq.
Richard Page,
Esq.
Dated: May 20, 2002
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