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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Philadelphia Flyers, Inc. v. credoNIC.com/DOMAIN FOR SALE

Case No. D2006-0199

 

1. The Parties

Complainant is Philadelphia Flyers, L.P. (the “Complainant”), a limited partnership duly organized and existing under the laws of the State of Delaware with its principal place of buiness in Philadelphia, Pennsylvania, United States of America. Represented by Debevoise & Plimpton LLP., New York, United States of America.

Respondent is credoNIC.com/DOMAIN FOR SALE (the “Respondent”), located in Hallandale, Florida, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is <flyersalumni.com> (the “Domain Name”). The registrar is eNom, Inc., (the “Registrar”) located in Washington, United States of America.

 

3. Procedural History

On February 14, 2006, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On February 15, 2006, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On February 20, 2006, the Center received hardcopy of the Complaint. The Complainant paid the required fee.

On February 15, 2006, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent’s name.

On February 23, 2006, the Center requested amendment of the Complaint. On February 27, 2006, the Center received an Amendment to the Complaint from Complainant.

The Center verified that the Complaint with Amendment satisfies 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 February 28, 2006, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On March 22, 2006, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On April 4, 2006 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-member panel consisting of the Panel.

 

4. Factual Background

Complainant owns the National Hockey League (“NHL”) member team the Philadelphia Flyers (the “Flyers”). Complainant also owns a registration in the United States of America for the FLYERS trademark (the “Mark”), as well as registrations for other trademarks that incorporate the FLYERS Mark.

The NHL consists of 30 member teams, including the Flyers. The Flyers are based in Philadelphia, Pennsylvania, one of the largest cities and major media markets in the United States of America. Founded in 1967, and one of only a few teams to win back-to-back Stanley Cup Championship titles, the Flyers are among the most recognizable NHL member teams. Millions of fans have attended Flyers games and have enjoyed television and radio broadcasts of Flyers games and events.

Complainant has used the Mark continuously in commerce since 1967, to identify the Flyers, their hockey games and events, associated apparel and novelties, and hockey equipment. Millions of dollars of merchandise bearing the FLYERS Mark has been sold. The FLYERS Mark and Flyers’ products and services have been the subject of extensive unsolicited media coverage by major new organizations. In addition, the NHL created NHL Enterprises, L.P. (“NHLE”) to protect and commercially exploit the trademarks and other intellectual property of the NHL and its member teams, including the Flyers, through merchandising and licensing programs.

The Flyers have an active presence on the Internet. The principal domain name currently registered and used by the Flyers is <philadelphiaflyers.com>. Players who once played hockey for the Flyers are known as “alumni” of the team. A group of former Flyers players known as the Flyers Alumni Association has been using the domain name <flyersalumni.org> for several years to promote its activities related to the Flyers. The site offers, among other things, merchandise for sale, such as a lithograph signed by the entire 1974-1975 Staley Cup Championship team, and screensavers for download. The website “www.philadelphiaflyrs.com” also includes an alumni page, although it is currently under construction.

On July 7, 2005, Respondent registered the <flyersalumni.com> Domain Name without authorization from Complainant.

 

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that it has a United States registration of the trademark FLYERS, that its trademark registration is valid and subsisting, and serves as prima facie evidence of its ownership and the validity of the FLYERS Mark. 15 U.S.C. § 1115. Complainant further alleges that its FLYERS registration and other registrations incorporating the FLYERS Mark are incontestable and conclusive evidence of Complainants exclusive right to use the FLYERS Mark in connection with the stated goods. 15 U.S.C. §§ 1065 and 115(b).

ii. Complainant argues that the Domain Name is confusingly similar to the FLYERS Mark, pursuant to Paragraph 4(a)(i) of the Policy, because the Domain Name wholly incorporates the FLYERS Mark with the addition of the generic or descriptive term “alumni.”

iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii) of the Policy, and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Respondent cannot demonstrate rights or legitimate interest in the Domain Name under Paragraph 4(c)(i) of the Policy because it has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) of the Policy because it not commonly known under the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the FLYERS Mark in a domain name or in any other manner.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) of the Policy because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue.

iv. Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii) of the Policy.

Complainant asserts that an Internet user who enters the Domain Name <flyersalumni.com> through a browser looking for a website affiliated with the Flyers organization instead arrives at Respondent’s website which states among other things: “This Website contains sexually-oriented adult content which may include visual images and verbal descriptions of nude adults, adults engaging ins sexual acts, and other audio and visual materials of a sexually explicit nature.” Respondent’s website goes on to state: “This Domain Is For Sale! Limited Time Offer $300.” This website is linked to a website with a sampling of some of the domain names for sale for $300. Complainant asserts that an Internet User trying to exit Respondent’s website cannot do so without new browser windows featuring hard-core porn trapping the user.

Complainant further asserts that Respondent has no apparent “business” other than to register, cybersquat and sell domain names. As support for this assertion, Complainant lists a series of WIPO UDRP cases in which Respondent has been found to have acted in bad faith.

Complainant alleges that the activities of Respondent satisfy the criteria of paragraph 4(b)(iv) because by using the domain name Respondent intentionally attempted to attract, for commercial gain, Internet users to its website or other

on-line location, by creating a likelihood of confusion with the Complainant’s FLYERS Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

B. Respondent’s contentions

i. Respondent has not responded to Complainant’s assertions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the 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.”

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (Apr. 10, 2001).

Failure to File a Response

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the Complaint are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

ii) that the Respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Enforceable Trademark Rights

Complainant contends that it has numerous registrations of the FLYERS Mark. Complainant further contends that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the FLYERS Mark. 15 U.S.C. § 1115. Complainant alleges that its registrations are incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated goods. 15 U.S.C. §§ 1065 and 1115(b).

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Respondent has not come forward with any contrary evidence.

Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the FLYERS Mark.

Identity or Confusing Similarity

Complainant further contends that the Domain Name is confusingly similar to the FLYERS Mark pursuant to the Policy paragraph 4(a)(i).

Respondent has not contested the assertions by Complainant that the Domain Name is confusingly similar to the FLYERS Mark.

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other generic or descriptive terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

The Panel notes that the entirety of the FLYERS Mark is included in the Domain Name with the addition of the term “alumni.” Generally, a user of a mark “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4^th ed. 1998). The term “alumni” refers to past players on the hockey team and as such is generic and descriptive.

Therefore, the Panel finds that the Domain Name is confusingly similar to the FLYERS Mark pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).

Respondent has no relationship with or permission from Complainant for the use of the FLYERS Mark.

The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Domain Name:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Complainant contends that Respondent has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services, it is not commonly known under the Domain Name, and is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue.

The Complainant has sustained its burden of coming forward with evidence that the Respondent lacks rights to or legitimate interests in the Domain Name. Respondent has failed to come forward with any contrary evidence. The file contains no evidence that the use of the Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith.

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.”

Complainant asserts that Respondent has no apparent “business” other than to register, cybersquat and sell domain names. Respondent’s true purpose appears to be to drive Internet traffic to its website at which it offers domain names for sale. The actions of Respondent are commercial in nature and utilize a likelihood of confusion with Complainant’s FLYERS Mark to attract, then re-route Internet users.

The Panel agrees with Complainant that the activities of Respondent satisfy the criteria of paragraph 4(b)(iv). By using the Domain Name, Respondent intentionally attempted to attract, for commercial gain, Internet users its website or other on-line location, by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

Based upon this evidence, the Panel finds that Complainant has shown sufficient facts to support a finding that Complainant has demonstrated the existence of the criteria in the Policy paragraph 4(b)(iv) and that Respondent registered and used the Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Panel concludes (a) that the Domain Name <flyersalumni.com> is confusingly similar to Complainant’s registered FLYERS Mark, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.

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Richard W. Page
Sole Panelist

Dated: April 21, 2006