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ESPN, Inc. v. Domain Local [2005] GENDND 1971 (2 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ESPN, Inc. v. Domain Local

Case No. D2005-0953

1. The Parties

The Complainant is ESPN, Inc., Bristol, Connecticut, United States of America, represented by White & Case, LLP, New York, New York, United States of America.

The Respondent is Domain Local, San Jose, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <espnwireless.com> is registered with AAAQ.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2005. On September 7, 2005, the Center transmitted by e-mail to AAAQ.com, Inc. a request for registrar verification in connection with the domain name at issue. On September 14 and 15, 2005, the Center transmitted by e-mail to AAAQ.com, Inc., reminders for registrar verification in connection with the domain name at issue. On September 16, 2005, AAAQ.com, Inc., transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On September 10, 2005, the Center sent an Acknowledgment of Receipt of Complaint via e-mail to the Complainant and the Respondent. In response to this e-mail, the Respondent replied to the Center (without copying the Complainant), stating, “domainlocal.com is using espnwireless.com for the extra special positive network gone wireless…nothing to do with espn or espn sports the company…so i dont know what i did wrong…if they want to buy it from me they can…thanks” (ellipses and misspellings as in original). On September 12, 2005, the Center sent an e-mail to the parties acknowledging receipt of Respondent’s e-mail of September 10, 2005, informing the parties of the procedure for settling this matter and instructing the Respondent to copy any further communications to the Complainant. On September 20, 2005, the Center sent an e-mail to the parties, reminding them of the procedure for settling this matter.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2005.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on October 19, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant describes itself in the Complaint as “the world’s premier multimedia sports information and entertainment company.” Complainant states that its ESPN-branded operations include five U.S. television networks (ESPN, ESPN2, ESPNEWS, ESPN Classic and ESPNU), various international television networks, a television production company, ESPN Radio Network, “ESPN – The Magazine”, websites (including ESPN.com, launched in 1995), wireless and mobile sports entertainment and news services and other related sports ventures. Complainant states that its ESPN flagship network, launched in 1979, is the largest sports cable television network in the United States, reaching more than 88 million homes. Complainant states that it launched “ESPN Wireless” in 1998, providing a broad range of services for wireless and mobile technology, such as wireless and mobile phone browsers, including daily sports news and highlights, live gamecasts, scores and statistics, games and ringtones and wallpapers.¹ Complainant states that more than 100,000 customers subscribe to the ESPN Wireless service, with 5,000 customers joining each month and more than 25 million unique visitors each month to its ESPN Wireless websites.

Complainant states that it has continuously used the mark ESPN since 1979 and that it owns the following federal trademark registrations in the United States, for which it provided copies of registration certificates:

∙ ESPN: U.S. Reg. No. 1,345,096; first used in commerce September 7, 1979; registered June 25, 1985

∙ ESPN: U.S. Reg. No. 1,811,475; first used in commerce 1987; registered December 14, 1993

∙ ESPN: U.S. Reg. No. 1,833,935; first used in commerce June 3, 1993; registered May 3, 1994

∙ ESPN: U.S. Reg. No. 2,147,722; first used in commerce June 15, 1995; registered March 31, 1998

∙ ESPN design: U.S. Reg. No. 2,391,758; first used in commerce September 1, 1999; registered October 3, 2000

∙ ESPN WIRELESS: U.S. Reg. No. 2,651,447; first used in commerce July 1, 2001; registered November 19, 2002

According to a Whois record provided by Complainant, Respondent registered the domain name <espnwireless.com> on August 14, 2004.

5. Parties’ Contentions

A. Complainant

According to a website printout provided by Complainant, Respondent operated a website apparently² using the domain name <espnwireless.com> with content that included the following text: “Welcome to espnwireless.com, your number one website for updates on all espn wireless products and services. This webiste [sic] is in no way connected to ESPNWIRELESS OR ESPN WIRELESS company and is owned and maintained by “http://www.domainlocal.com/ .” The same web page contained the following text: “ESPN Wireless:: ESPN Pro Baseball Gamecast” and “http://www.espn.com/”.

Complainant provided a copy of a letter it said it sent to Respondent on May 10, 2005, in which it asked Respondent to transfer the domain name <espnwireless.com> to the Complainant. Complainant also provided a copy of a similar letter it said it sent to Respondent on June 24, 2005, after Respondent failed to respond to the first letter from Complainant.

Complainant states that, sometime after sending its letters to Respondent, Respondent altered the content of its website at <espnwireless.com> to state, in part: “ESPNWIRELESS.COM – This KEYWORD DOMAIN is for sale today!!! I have just started getting bids from different domain selling and purchasing companies in the domain industry. All bids are welcome!... This website is in no way affiliated with the trademark company ESPN or espn.com.”

Complainant provided a copy of an e-mail dated July 12, 2005, apparently from Respondent, stating, in part:

I am not trying to harm ESPN’s name in any way. Buying and selling domain names is what I do for a living and not malicious in any way. Any possibility that ESPN’s marketing people for the new wireless products will purchase the domain www.espnwireless.com from me?... As u [sic] can see I have taken down everything on the website with no intentions on selling it to the highest bidder. Other domain companies have offered to buy the domain from me. Instead of selling it to another domain company i [sic] would like to give ESPN and ESPN WIRELESS company the first opportunity at purchasing the domain name… Do [sic] to the large future of ESPN WIRELESS I think it would be a great idea to buy the domain directly from me. If not I will sell it to any one of the top 5 domain companies in the industry today...

Complainant provided a copy of an e-mail dated July 26, 2005, apparently from Respondent, stating, in part: “if espn does not want to purchase espnwireless.com from me I am going to sell it to afternic.com…I got an offer for 300 dollars u.s [sic] and I guess I am going to have to take it…probably would of [sic] cost espn less in the long run to purchase it from me now…”

Complainant contends that the domain name <espnwireless.com> is confusingly similar to its ESPN and ESPN WIRELESS trademarks, particularly because the second-level portion of the domain name (“espnwireless”) is identical to one of Complainant’s federally registered trademarks (U.S. Reg. No. 2,651,447).

Complainant further contends that Respondent has no rights or legitimate interests in respect of the domain name <espnwireless.com> because: (1) upon Complainant’s information and belief, Respondent owns no trademark registrations for and has no common law rights in the mark ESPN WIRELESS, (2) to the best of Complainant’s knowledge, Respondent does not hold itself out as, and is not otherwise known as, ESPN or ESPN WIRELESS, (3) Respondent is not making a non-commercial fair use of the domain name, (4) there exists no relationship between Respondent and Complainant that would give rise to any license, permission or authorization by which Respondent could own or use the domain name, (5) Respondent is not making a bona fide commercial use of the domain name, and (6) Respondent solicited bids from the public to purchase the domain name.

Complainant further contends that Respondent registered and is using the domain name in bad faith by (1) driving traffic to Respondent’s own for-profit business, (2) offering to sell the domain name to Complainant, and (3) offering to sell the domain name to the highest bidder at an auction to the general public.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the domain name <espnwireless.com> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the domain name <espnwireless.com>; and (iii) the domain name <espnwireless.com> has been registered and is being used in bad faith. Policy, Paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the registrations cited by Complainant (and the certificates therefor provided as exhibits) and Complainant’s stated continuous use of the mark ESPN since 1979, the Panel is convinced that Complainant has rights in the marks ESPN and ESPN WIRELESS.

As to whether the domain name <espnwireless.com> is identical or confusingly similar to Complainant’s ESPN or ESPN WIRELESS trademarks, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “espnwireless”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”).

Given that the second-level portion of the domain name (“espnwireless”) is identical to Complainant’s ESPN WIRELESS mark (see U.S. Reg. No. 2,651,447), the Panel is convinced that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” paragraph 2.1, <http://arbiter.wipo.int/domains/search/overview/index.html> (visited November 2, 2005).

Accordingly, as a result of Complainant’s allegations and without any evidence of Respondent’s rights or legitimate interests in the domain name <espnwireless.com>, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

The Panel is convinced that the bad faith element is present as a result of, at least, factor (i) of the Policy, paragraph 4(b). The Panel agrees with Complainant’s assertion that “Respondent’s e-mails to Complainant reveal that Respondent is well aware of the tremendous value the domain ESPNWIRELESS.COM has to ESPN.” Respondent implicitly indicated that it would sell the domain name to Complainant only for more than US$300.00 – a price that is apparently in excess of that which Respondent paid to register the domain name for itself, given that initial registration fees for .com domain names typically vary from about US$6.95 to about US$34.99 and that Respondent has not shown any other out-of-pocket costs it has incurred directly related to the domain name.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <espnwireless.com> be transferred to the Complainant.

Douglas M. Isenberg
Sole Panelist

Dated: November 2, 2005

² The printout provided by Complainant includes, in a footer, only a local file address, not a URL, so it is unclear whether the printout is from a website using the domain name <espnwireless.com> (the subject of the Complaint) or the domain name <domainlocal.com> (another domain name apparently used by the Respondent). In addition, the date of this printout was not evident from the copy provided by Complainant.