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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

National Football League v. Exotic Design Group

Case No. D2007-1000

 

1. The Parties

The Complainant is National Football League, New York, New York, United States of America, represented by Debevoise & Plimpton, United States of America.

The Respondent is Exotic Design Group, Bethel Park, Pennsylvania, United States of America.

2. The Domain Name and Registrar

The disputed domain name <superbowlxliv.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2007. On July 12, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On July 13, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2007.

The Center appointed William R. Towns as the sole panelist in this matter on August 23, 2007. 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

The Complainant is a well known professional sports organization in the United States of America. For more than eighty (80) years, the Complainant and its NFL member clubs have provided entertainment services to sports fans in the form of American professional football. The NFL championship game is known as the “Super Bowl”. Since the first Super Bowl game in 1967 (Super Bowl I), this game and its related festivities have become extremely popular with sports fans and the general public, attracting large crowds. The televised broadcasts of the Super Bowl game are ranked amount the highest-rated television programs in the United States of America.

Super Bowl games are assigned a Roman numeral corresponding with the number of years that have elapsed since the first Super Bowl game was played in 1967. Thus, for example, the Super Bowl game played in South Florida in February 2007 was Super Bowl XLI, and the Super Bowl game scheduled to be played in February 2010 in Miami, Florida has been designated Super Bowl XLIV.

The Complainant owns multiple federal trademark registrations for SUPER BOWL in the United States of America, the earliest of which was issued by the United States Patent and Trademark Office (USPTO) in March 1968. The SUPER BOWL trademark is registered in over fifty (50) additional countries. In addition, the Complainant maintains an official website for the Super Bowl game at “www.superbowl.com”.

The Respondent registered the disputed domain name <superbowlxliv.com> on July 4, 2005. It does not appear that the Respondent has made any active use of the domain name since its initial registration. The Complainant by letter in March and April 2007 twice notified the Respondent of the Complainant’s objections to the Respondent’s registration of the disputed domain name, but no response to either letter was received.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that its federally registered SUPER BOWL mark is extremely well-known and has been famous since long before the Respondent registered the disputed domain name in July 2005. The Complainant asserts that the Super Bowl game is enormously popular and attracts large crowds of sports fans and tourists. The Complainant notes that the game always is among the highest rated television programs in the United States of America. According to the Complainant, the television broadcast of Super Bowl XLI, held on February 4, 2007 in South Florida, was viewed by more than 93 million people in the United States of America. Super Bowl XXX was even more widely viewed.

The Complainant asserts that the disputed domain name is confusingly similar to its SUPER BOWL mark. According to the Complainant, there is no doubt that the Respondent was aware of the Complainants rights in the SUPER BOWL mark given the widespread fame of the SUPER BOWL game and mark. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, and registered the domain name in a bad faith attempt to trade on the good will associated with the mark. The Complainant further argues that the Respondent’s passive holding of the disputed domain name does not preclude a finding of bad faith registration and use under the Policy, because the circumstances of the case establish that there is no plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.

B. Respondent

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

 

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) 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) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <superbowlxliv.com> is confusingly similar to the Complainant’s SUPER BOWL mark, which the Complainant unquestionably has established rights in through registration and use. At a minimum, the Complainant’s mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

The disputed domain name incorporates the Complainant’s SUPER BOWL mark in its entirety. The mere addition of generic Roman numerals does not diminish the confusing similarity of the disputed domain name to the Complainant’s mark. See, e.g., Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. If anything, given the Complainant’s established practice for nearly forty (40) years of designating successive SUPER BOWL games with Roman numerals, the confusing similarity of the disputed domain name to the Complainant’s mark is heightened by the addition of the Roman numerals “xliv”. The 2010 Super Bowl game already has been designated Super Bowl XLIV. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain. It is uncontroverted that the Respondent has no affiliation with the Complainant and has not been authorized to use the Complainant’s SUPER BOWL mark or to register domain names corresponding to that mark. Further, there is no indication that the Respondent has been commonly known by the disputed domain name. Instead the record reflects the Respondent’s registration and passive holding of a domain name incorporating in its entirety the Complainant’s distinctive mark.

The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is a fair inference from the record that the Respondent was aware of the Complainant and the Complainant’s SUPER BOWL mark when the disputed domain name was registered. The circumstances as set forth and documented in the Complaint and its Annexes are sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

The Respondent has not submitted a formal response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.¹ In any event, the Panel has reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and passive holding of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy. Nothing in the record indicates that the Respondent has been commonly known by the disputed domain name, or that the Respondent has made any noncommercial or fair use of the domain name. Further, there is no evidence of the Respondent’s use of the domain name in connection with a bona fide offering of goods or services or of any demonstrable preparations to do so.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt 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 mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

The Respondent’s unexplained failure to make any active use of the disputed domain name does not preclude a determination of bad faith registration and use in the circumstances of this case. The Respondent registered a domain name incorporating the Complainant’s well known SUPER BOWL mark in its entirety. As noted above, it is a fair inference from the circumstances of this case that the Respondent was aware of the Complainant and the Complainant’s SUPER BOWL mark when the Respondent registered the confusingly similar domain name. Further, there is nothing in the record to indicate that the Respondent has attempted any legitimate use of the disputed domain name whatsoever, nor evidence of the Respondent’s demonstrable preparations to do so.

As noted in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, passive holding of a domain name can be considered as bad faith where it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name that would not be illegitimate. See also Salomon Smith Barney, Inc. v. Salomon Internet Services, WIPO Case No. D2000-0668. Taking into consideration all of the circumstances of this case, including the distinctiveness and degree of fame associated with the Complainant’s mark, strong indications that the Respondent was aware of the Complainant’s mark, and the Respondent’s failure to respond after twice receiving notice of the dispute, this Panel cannot conceive of any plausible actual or contemplated use of the disputed domain name by the Respondent that would be legitimate.

For the foregoing reasons, the Panel concludes that the registration of the disputed domain name was undertaken in bad faith. Further, the circumstances of the case are such that Respondent is continuing to act in bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <superbowlxliv.com> be transferred to the Complainant.

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William R. Towns
Sole Panelist

Dated: September 6, 2007

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¹ Some panels have held that a respondent’s lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.