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NFL Properties LLC and New York Jets LLC v. Link Commercial Corp. [2005] GENDND 251 (10 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NFL Properties LLC and New York Jets LLC v. Link Commercial Corp.

Case No. D2004-1087

1. The Parties

The Complainants are NFL Properties LLC of New York, New York, United States of America and New York Jets LLC of Hempstead, New York, United States of America, represented by Debevoise & Plimpton, United States of America.

The Respondent is Link Commercial Corp. of Nassau, Bahamas, represented by Eduardo Chehtman of Argentina.

2. The Domain Name and Registrar

The disputed domain name <nyjets.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2004. The Center transmitted its request for registrar verification to the Registrar on December 23, 2004. The Registrar replied on December 28, 2004, confirming that it was the Registrar and the Respondent was the registrant of the Domain Name, and that the registration agreement was in English, incorporated the Uniform Domain Name Dispute Resolution Policy (the “Policy”) and contained a submission to the jurisdiction at the location of its principal office, and providing the contact details on its Whois database.

The Center formally notified the Complaint to the Respondent and the proceedings commenced on December 29, 2004. In accordance with paragraph 5(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the due date for the Response was January 18, 2005. By fax of January 3, 2005, to the Center and email of January 4, 2005 to the Center and the Complainant, the Respondent requested an extension of time for the Response until February 21, 2005, on the grounds that the month of January was a judicial holiday in Argentina. By email of January 6, 2005, the Complainants contended that no extension was justified, since the Argentine judicial holidays did not constitute an “exceptional case” in accordance with paragraph 5(d) of the Rules, but that the Complainants were willing to agree to an extension until February 1, 2005. The Center granted an extension of time until February 1, 2005, and the Response was filed with the Center on that date.

By email of February 2, 2005, the Complainants sent the Center a “Reply” to the Response. By email of February 4, 2005, the Respondent submitted that the Complainants’ “Reply” should be dismissed.

The Center appointed Jonathan Turner as the sole panelist in this matter on February 15, 2005. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The details exhibited to the Complaint of two out of the three United States trademark registrations relied upon by the Complainants identified the “last applicant/owner of record” as New York Jets Football Club, Inc., and no evidence was provided of any assignment to either of the Complainants. By Panel Procedural Order No. 1 of March 1, 2005, (the “Procedural Order”), under paragraph 12 of the Rules, the Panel asked the Complainants to clarify and submit evidence of the ownership of these trademarks within seven days and the Respondent to submit any comments on the Complainants’ response within seven days thereafter.

By their response of March 2, 2005, the Complainants confirmed and provided evidence that the trademarks in question had in fact been assigned to the Second Complainant. By his response of March 8, 2005, the Respondent commented that the Complainants’ response was insufficiently clear and he requested further information.

The Panel considers that the Complainants’ response to the Procedural Order is clear, since it confirms that the Second Complainant owns the trademarks in question and provides evidence thereof. Furthermore, it merely clarifies and substantiates allegations already made in the Complaint, and its admission does not prejudice the Respondent or, to any significant extent, the procedure. The Panel therefore decides to admit it in accordance with paragraph 10(d) of the Rules.

Having reviewed the file, the Panel is satisfied that the Complaint (as clarified by the Complainants’ response to the Procedural Order) complied with applicable formal requirements, was duly served on the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

Under the Policy and the Rules, complainants have no right to make additional submissions in reply. The Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 12 of the Rules; and a party’s request may be regarded as an invitation to the Panel to exercise this discretion.

The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules, and were summarised in The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (<commercialappeal.com>) in the following terms: “additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself”.

Applying these principles to this case, the Panel declines to admit the Complainants’ “Reply”. It does not address any point which the Complainants could not reasonably have anticipated when submitting the Complaint.

4. Factual Background

The First Complainant is a company jointly owned by the thirty-two member clubs of the United States National Football League (the “NFL”) and was formed for the purpose of jointly commercially exploiting their trade marks.

The Second Complainant is a member of the NFL and operates the well-known team “The New York Jets”. The Second Complainant owns trademark registrations in the United States and other countries for the word mark “NEW YORK JETS” and a device mark incorporating the word “JETS” superimposed over “NY”.

The Respondent registered the Domain Name on July 23, 1997.

On September 1, 2004, the web page posted at “www.nyjets.com” stated “This domain name is for sale! / You can also rent this domain name or codevelop it with us / … / To be considered, YOUR BID must be at least: USD 2,000 / Note: Most asking prices are between $10,000 and $75,000 USD”.

The Complainants’ attorneys wrote a letter of complaint to the Respondent on September 1, 2004. Following this letter, a new web page was posted at “www.nyjets.com”. The top frame contained the words “This domain “www.nyjets.com” is for sale / Este dominio esta a la venta” with hyperlinks to a web page at “www.webnamesshop.com” which was similar to the page previously at “www.nyjets.com”. A further frame of the new page at “www.nyjets.com” contained the heading “Página official de Norman Yacopino Jets” and a picture of a jet plane with the legend “N.Y.Jets” followed by the words “Para contactarse, escriba a: informacion@nyjets.com/ LINKS DE INTERÉS: / Fuerza Aérea Argentina / Comando de Regiones Aéreas”. The last two lines were hyperlinked to the Argentine Air Force and National Aviation Authority respectively.

The Complainants’ attorneys sent a further letter of complaint to the Respondent on September 14, 2004. The Respondent’s attorneys replied by letter of September 17, 2004, pointing out that the Respondent had been the registrant of the Domain Name since July 23, 1997, and had not previously received any claim. The letter continued: “It is our policy to try to solve, if possible, this matter in amicable terms. Therefore we kindly ask you to contact us ….”. A further exchange of letters on September 20 and September 27, 2004, repeated these positions.

The Respondent has previously registered the domain names <ladydi.com>, <mauriciomacri.com> (Mauricio Macri being the president of one of Argentina’s leading football teams), <guguliberato.com> (Gugu Liberato being a well-known television presenter in Brazil), <azaleia.com> (Calcados Azaleia being the largest Brazilian shoe manufacturer), <5asec.com> (5 a sec being a leading international dry cleaning business) and <bernardoneustadt.com> (Bernardo Neustadt being a well-known Argentine journalist). Transfers of the domain names <azaleia.com>, <5asec.com> and <bernardoneustadt.com> were ordered following successful complaints under the Policy.

5. Parties’ Contentions

A. Complainant

The Complainants contend that the Domain Name is confusingly similar to their trade marks “NEW YORK JETS” and “NY JETS” device; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that he registered and is using it in bad faith, in particular for the purpose of preventing the Complainants from using it and selling it to the highest bidder.

The Complainants submit that the Respondent’s bad faith is further evidenced by his attempt to justify his registration of the Domain Name after being challenged by reference to “Norman Yacopino Jets”, which the Complainants contend is a fictional entity. The Complainants also draw attention to the Respondent’s registration of other domain names containing well-known names and findings of bad faith made against him in other cases.

The Complainants seek an order that the Domain Name be transferred to them.

B. Respondent

The Respondent does not dispute the existence or ownership of the Complainants’ trademarks but contends that the Domain Name is not confusingly similar since his website relates to aircraft, a completely different product.

The Respondent further submits that he has a legitimate interest in the Domain Name because he had been using it peacefully for eight years before notice of the dispute, negotiating with different potential partners to provide aircraft rental services.

The Respondent also denies bad faith, pointing out that he registered the Domain Name before the Complainants’ “NY JETS” device was registered as a trademark and alleging that he only offered the Domain Name for sale recently after his proposed business venture failed.

The Respondent contends that the Complaint should be dismissed and that a finding of reverse domain name hijacking should be made against the Complainants.

6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), to succeed in this proceeding, the Complainants must prove (a) that the Domain Name is identical or confusingly similar to a trademark in which they have rights, (b) that the Respondent has no rights or legitimate interests in respect of the Domain Name, and (c) that the Domain Name was registered and is being used in bad faith. These requirements will be considered in turn.

A. Identical or Confusingly Similar

In the light of the Complainants’ response to the Procedural Order, the Panel is satisfied that the Second Complainant has rights in the registered trademarks “NEW YORK JETS” and the “NY JETS” device.

On the other hand, the Panel is not satisfied on the evidence that the First Complainant has rights in these marks. The evidence only establishes that the First Complainant represents the Second Complainant in the licensing and protection of its trademark rights. Appointment as a representative to exploit property does not necessarily confer rights in that property on the representative.

The Panel finds that the Domain Name is confusingly similar to the mark “NEW YORK JETS”. “NY” is the standard abbreviation for “New York” and many Internet users would assume that the Domain Name refers to the well-known New York Jets football club.

It is true that the web page currently posted at <www.nyjets.com> would be unlikely to be confused with the Complainants. However, in the context of the Policy, it is appropriate to assess whether the Domain Name is confusingly similar to the Complainants’ mark on the basis of a comparison between the Domain Name and the mark. If so, the requirement is satisfied, even if the Domain Name is or could be used in a way which avoids or might avoid confusion: see e.g. Deutsche Telekom AG v. Oded Zucker, WIPO Case No. D2004-0749 (t-shops.net) and cases cited there.

In view of the Panel’s finding that the Domain Name is confusingly similar to the Second Complainant’s registered trademark “NEW YORK JETS”, it is unnecessary to consider whether it is confusingly similar to the “NYJETS” device trademark or any common law trademark rights which the Complainants might have.

B. Rights or Legitimate Interests

The Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the Domain Name. Under paragraph 4(c)(i) of the Policy, a respondent can demonstrate that he has rights or legitimate interests by use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services before notice of the dispute. The Respondent’s unsubstantiated assertions of preparations to use the Domain Name for an aircraft leasing business prior to the Complainants’ letter of complaint do not constitute evidence of demonstrable preparations as indicated by that paragraph.

C. Registered and Used in Bad Faith

It is clear that the Respondent has offered and continues to offer the Domain Name for sale to the highest bidder over US $2000. The Panel infers that the Respondent anticipated an elevated price because the Domain Name would be assumed by internet users to refer to an official site of the New York Jets football club, and would therefore be of interest to the club or to others wishing to take advantage of its reputation. This inference is corroborated by the evidence (which the Respondent does not dispute) of other cases in which the Respondent has registered domain names reflecting well-known names and the findings of bad faith in some of these cases.

The Panel further infers that the Domain Name was registered for the purpose of sale at an elevated price to the club or another person wishing to take advantage of its reputation. The Panel rejects the Respondent’s unsubstantiated assertions that the Domain Name was registered for the purpose of an aircraft leasing business. If these assertions were true, the web page referring to the supposed business would have been posted before, not after, the Complainants’ letter of complaint; and evidence of the alleged negotiations and other efforts to develop the business would have been provided in the Response.

The Panel concludes that the Domain Name was registered and is being used in bad faith.

D. Reverse Domain Name Hijacking

Reverse domain name hijacking is defined in the Rules as using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. The Panel considers that the Complainants have used the Policy in good faith to make a justified Complaint.

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, <nyjets.com>, be transferred to the Second Complainant, New York Jets LLC.

Jonathan Turner
Sole Panelist

Dated: March 10, 2005