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Janine Turner v. Mercedita Kyamko [2005] GENDND 67 (27 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NBA Properties, Inc., Rocket Ball, Ltd., New Jersey Basketball, LLC v. Rick Godwin

Case No. D2004-0983

1. The Parties

The Complainant is NBA Properties, Inc. of New York, New York, United States of America, Rocket Ball, Ltd. of Houston, Texas, United States of America, and New Jersey Basketball, LLC, of Brooklyn, New York, United States of America, represented by Ayala Deutsch, United States of America.

The Respondent is Rick Godwin of Whistler, British Columbia, Canada.

2. The Domain Names and Registrar

The disputed domain names are: <houstonrockets.com> and <newjerseynets.com>. The domain names were registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2004.

On November 25, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue.

On November 29, 2004, Go Daddy Software transmitted by email 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 contact.

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”).

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 November 30, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2004.

The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on December 28, 2004. 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

NBA Properties Inc. carries on the business of operating one of the most prominent professional basketball leagues in the world. The league is comprised of thirty teams, including the Houston Rockets and the New Jersey Nets, each of which is a member of the NBA. The NBA controls the activities of the league, including the holding of regular and exhibition basketball games between members of the league.

Complainant NBA Properties, Inc. (“NBAP”) is the exclusive licensing and merchandising agent for the National Basketball Association (“NBA”) and its member teams. NBA Properties, Inc. is the owner of several trademarks relating to the NBA and the exclusive licensee of certain other trademarks relating to the NBA member teams, including the HOUSTON ROCKETS and NEW JERSEY NETS trademarks, and therefore has sufficient rights in those trademarks and a sufficient common interest in the <houstonrockets.com> and <newjerseynets.com> domain names.

Complainant Rocket Ball, Ltd. (“RBL”) is a limited partnership existing under the laws of the State of Texas. Complainant RBL is the owner and operator of the Houston Rockets basketball team, which is a member team of the NBA. RBL owns several United States trademark registrations for the “HOUSTON ROCKETS” mark since 1971, and therefore has sufficient rights in that trademark and a sufficient common interest in the <houstonrockets.com> domain name for join in this dispute.

Complainant New Jersey Basketball, LLC (“NJB”) is a limited liability company existing under the laws of the State of New Jersey. Complainant NJB is the owner and operator of the New Jersey Nets basketball team, which is a member team of the NBA. NJB owns several United States trademark registrations for the “NEW JERSEY NETS” trademark since 1978, and therefore has sufficient rights in that trademark and a sufficient common interest in the <newjerseynets.com> domain name.

Complainant RBL has licensed to Complainant NBAP the exclusive right to exploit the “HOUSTON ROCKETS” mark and relies upon NBAP to protect that mark. RBL has authorized NBAP to register and own domain names incorporating the “HOUSTON ROCKETS” mark, and has expressly authorized NBAP to receive transfer of the <houstonrockets.com> domain name.

Correspondingly, Complainant NJB has licensed to Complainant NBAP the exclusive right to exploit the “NEW JERSEY NETS” mark and relies upon NBAP to protect that mark. NJB has authorized NBAP to register and own domain names incorporating the “NEW JERSEY NETS” mark, and has expressly authorized NBAP to receive transfer of the <newjerseynets.com> domain name.

Respondent, Rick Godwin registered the disputed domain names in1997. The <newjerseynets.com> domain name was registered on June 26, 1997, and <houstonrockets.com> on was registered on August 15, 1997, without authorization from the Complainants.

On July 23, 1997, attorneys for Complainant contacted Respondent in order to allege trademark infringement and to demand transfer of the disputed domain name to Complainant.

Respondent did not answer the July 23 letter and on August 6, 1997, NBAP sent a Letter to Networks Solutions Inc. (“NSI”) requesting that pursuant to the Domain Name Dispute Policy in effect at that time, NSI place the domain name <newjerseynets.com> in hold status.

On August 13, 1997, Network Solutions Inc., sent Respondent a letter advising him that his <newjerseynets.com> domain name had become the subject of a complaint filed by NBAP and suggesting some alternative solutions. This letter also advised Respondent that, if he did not respond, the <newjerseynets.com> domain name would be placed on hold status at the end of thirty days.

On September 26, 1997, NSI sent Respondent a letter advising him that, because he had failed to respond to the August 13 NSI Letter, the <newjerseynets.com> domain name had been placed on hold status in accordance with the provisions of the Domain Name Dispute Resolution Policy then in effect.

Between 1997 and today Complainants have continued to attempt to contact Respondent in order to recover the domain names in dispute, receiving no direct answer or intention to discuss the matter from Respondent.

Also, during those years of requesting that Respondent answer to the communications that NBAP made, Complainant NBAP continued periodically to monitor Respondent’s activities in connection with the <houstonrockets.com> and <newjerseynets.com> domain names, finding that these domain names were not being used to link to active pages. But, recently, Complainants have discovered that when a user types the <houstonrockets.com> domain name or the <newjerseynets.com> domain name into his/her Internet browser, the user is immediately redirected to a Web site called “Snowboard.com,” which is located at “www.snowboard.com”. According to WHOIS, the <snowboard.com> domain name is registered to Respondent Rick Godwin. Complainants are not in any way affiliated with Respondent Rick Godwin or his “Snowboard.com” Web site.

On November 22, 2004, after several years of unsuccessful attempts to resolve the dispute related to Respondent’s unauthorized registration and infringing use of the <houstonrockets.com> and <newjerseynets.com> domain names, Complainants filed this proceeding in order to them bring back.

5. Parties’ Contentions

A. Complainants

- The Houston Rockets and the New Jersey Nets are two, very popular basketball teams with sports fans and the general public, and the Houston Rockets and the New Jersey Nets are trademarks under the Laws of the United States and also under other countries and has become widely known through extensive advertising and media coverage.

- Complainant is the exclusive licensee of the federally registered trademarks HOUSTON ROCKETS and NEW JERSEY NETS.

- Complainant Rocket Ball, Ltd. is a limited partnership existing under the laws of the State of Texas. RBL owns several United States trademark registrations for the “HOUSTON ROCKETS” mark since 1971, and therefore has sufficient rights in that trademark.

- Complainant New Jersey Basketball is a limited liability company existing under the laws of the State of New Jersey. Complainant NJB is the owner and operator of the New Jersey Nets basketball team, which is a member team of the NBA. NJB owns several United States trademark registrations for the “NEW JERSEY NETS” trademark.

- Complainants has invested substantial financial resources that include time, labor, skill and expenses developing, advertising and promoting the Houston Rockets the New Jersey Nets trademarks to obtain the fame and prestige that these trademarks holds today.

- The disputed domain names are confusingly similar to Complainant’s trademarks.

- Respondent has not been authorized to register or use the domain name for any legitimate purpose and thus has no rights or interests in it.

- The disputed domain name should be transferred to Complainant.

B. Respondent

The Respondent did not submit a response and is in default in this proceeding.

6. Discussion and Findings

In order for Complainant to prevail and have the disputed domain names <newjerseynets.com> and <houstonrockets.com> transferred to it, Complainant must prove the following (the Policy, paragraph 4(a)(i-iii):

- the domain names are identical or confusingly similar to the trademarks in which the Complainants has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain names; and

- the domain names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

Complainants have demonstrated their rights in the domain name as seen from the quotes (from the Complaint) extracted below.

“Complainant RBL is the owner and Complainant NBAP e the exclusive licensee of the U.S. federally registered trademark “HOUSTON ROCKETS” in international class 41 (Reg. No. 976164) and the U.S. federally registered trademark “HOUSTON ROCKETS and design” in international classes 24, 25, 28, and 41 (Reg. No. 1004459). (…)”

“ The registrations for the “HOUSTON ROCKETS” and “HOUSTON ROCKETS and design” marks are in full force and effect, and the trademarks that are the subject thereof and the goodwill of the business in connection with which those marks are used never has been abandoned.”

“Complainant NJB is the owner and Complainant NBAP is the exclusive licensee of the U.S. federally registered trademark “NEW JERSEY NETS” in international class 41 (Reg. No. 1209109) and the U.S. federally registered trademark “NEW JERSEY NETS and design” in international class 41 (Reg. No. 1209110). (…) The registrations for the “NEW JERSEY NETS” and “NEW JERSEY NETS and design” marks are in full force and effect, and the trademarks that are the subject thereof and the goodwill of the business in connection with which those marks are used never has been abandoned.” For that reasons Complainant NJB and Complainant NBAP has legitimate interest of the nejerseynets.com domain name.”

The Complainants have provided evidence of their commercial activities on the Internet using the domain names <houstonrockets.biz>, <houstonrockets.cn>, <houston-rockets.com>, <houstonrockets.com.cn>, <houstonrockets.info>, <houstonrockets.net>, <houston-rockets.net>, <houstonrockets.org>, <newjerseynets.biz>, <newjerseynets.com>, <new-jersey-nets.com>, <newjerseynets.info>, <newjerseynets.net>, <njnets.com>, <nj-nets.com>, <njnets.net>, and <njnets.org>, among others. All of these domain names link to the Houston Rockets or New Jersey Nets home pages on “www.nba.com”, confirming their rights in the claimed marks.

There is no doubt that the <houstonrockets.com> domain name registered and used by Respondent is identical to the famous and distinctive trademark “HOUSTON ROCKETS” owned by Complainant RBL, for which Complainant NBAP is the exclusive licensee. Also, there is no doubt that <newjerseynets.com> domain name is identical to the famous and distinctive trademark “NEW JERSEY NETS” owned by Complainant NJB, for which Complainant NBAP is the exclusive licensee.

B. Rights or Legitimate Interests

Complainants have demonstrated their rights in the domain name as seen from the quotes below.

Complainants established in their Complaint that they in no way authorized the Respondent to use the trademarks: “HOUSTON ROCKETS” and NEW JERSEY NETS” or to register the domain names in dispute.

The Respondent is in default in this proceeding and thus has made no attempt to demonstrate or prove any rights or interests in the disputed domain name. The Panel surmises from the copies of the disputed domain name website that Respondent has tried to use the domain name by directing it to a website, either “www.digitalcameras.com” or “www.snowboard.com”. This, however, is not a legitimate right or interest under the Policy.

The Panel finds the Respondent has no legitimate rights or interests in the disputed domain names: <houstonrockets.com> and <newjerseynets.com>.

C. Registered and Used in Bad Faith

The Panel is convinced that Respondent registered the <houstonrockets.com> and the <newjerseynets.com> domain names in order to prevent the owners of the trademarks reflecting their marks in corresponding domain names. Respondent was almost certainly aware of Complainant’s marks at the time the disputed domain names were registered.

The Panel has found that Respondent has intentionally attempted to attract Internet users to its own web site or other on-line location, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent own website or websites “www.digitalcameras.com”, “www.snowboard.com” using the disputed domain names.

The Panel finds that Respondent registered and was using the disputed domain names <houstonrockets.com> and <newjerseynets.com> in bad faith. Respondent’s conduct violates the Policy at paragraph 4(b)(iv) (see similar cases such as NBA Properties, Inc. v. Ituralde-Kasmir, Inc., WIPO Case No. D2000-1620; NFL Properties, Inc. et al. v. BBC Ab, WIPO Case No. D2000-0147 and NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128).

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 names <houstonrockets.com> and <newjerseynets.com> are transferred to the Complainant NBA Properties Inc.

Ada L. Redondo Aguilera
Sole Panelist

Dated: January 15, 2005