WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

NFL Properties, Inc. et al. v. Rusty Rahe

Case No. D2000-0128

 

1. The Parties

Complainants are National Football League Properties, Inc. ("NFL Properties"), B&B Holdings, Inc., ("B&B"), Green Bay Packers, Inc. ("GBP"), Jacksonville Jaguars, Ltd. ("JJL"), Kansas City Chiefs Football Club, Inc. ("KCC"), and Philadelphia Eagles Limited Partnership ("PELP"). NFL Properties, B&B, GBP, JJL, KCC, and PELP collectively are referred to as "Complainants."

NFL Properties is a corporation jointly owned by the thirty-two Member Clubs of the National Football League ("NFL"). NFL Properties was created in 1963 for the purpose of commercially exploiting, on a joint basis, the trademarks of the NFL and its Member Clubs. NFL Properties is the exclusive representative of the NFL and its Member Clubs for the licensing and protection of its name, logos, symbols and other identifying marks and is responsible for protecting and enforcing the trademark rights of the NFL and its Member Clubs. NFL Properties is a corporation duly organized and existing under the laws of the State of California with a principal place of business at 280 Park Avenue, New York, New York, 10017, USA.

B&B is an American professional football organization chartered in and existing under the laws of the State of Arizona. B&B is a NFL Member Club and owns the United States registration for the ARIZONA CARDINALS trademark. B&B therefore has a sufficient common interest in the domain names <arizonacardinals. com>, <arizona-cardinals.com> and <arizona-cardinals.net> for joinder to be permissible. Its principal offices are located at 8701 South Hardy Drive, P.O. Box 888, Tempe, Arizona, 85284, USA.

GBP is an American professional football organization chartered in and existing under the laws of the State of Wisconsin. GBP is a NFL Member Club and owns the United States registration for the GREEN BAY PACKERS trademark. GBP therefore has a sufficient common interest in the domain names <greenbaypackers. com>, <greenbay-packers.com>, and <greenbay-packers.net> for joinder to be permissible. GBPís principal offices are located at 1265 Lombardi Avenue, Green Bay, Wisconsin, 54304, USA.

JJL is an American professional football organization chartered in and existing under the laws of the State of Florida. JJL is a NFL Member Club and owns the United States registration for the JACKSONVILLE JAGUARS trademark. JJL therefore has a sufficient common interest in the domain name <jacksonvillejaguars .com> for joinder to be permissible. JJLís principal offices are located at One ALLTEL Stadium Place, Jacksonville, Florida, 32202, USA.

KCC is an American professional football organization chartered in and existing under the laws of the State of Texas. KCC is a NFL Member Club and owns the United States registration for the KANSAS CITY CHIEFS trademark. KCC therefore has a sufficient common interest in the domain names <kansascitychiefs.com>, <kansascity-chiefs.com>, and <kansascitychiefs.org> for joinder to be permissible. KCCís principal offices are located at One Arrowhead Drive, Kansas City, Missouri, 64129, USA.

PELP is an American professional football organization chartered in and existing under the laws of the State of Delaware. PELP is a NFL Member Club and owns the United States registration for the PHILADELPHIA EAGLES trademark. PELP therefore has a sufficient common interest in the domain names <philadelphia eagles.com>, <philadelphia-eagles.com>, and <philadelphiaeagles. net> for joinder to be permissible. PELPís principal offices are located at 3501 South Broad Street, Philadelphia, Pennsylvania, 19148, USA.

Respondent is an individual named Rusty A. Rahe aka R.A. Rahe Dream Productions, Inc. DEB Marketing Inc. is an entity apparently owned by relatives of Respondent which has assigned all relevant rights in the domain names at issue to Respondent. Respondentís address is 120 Main Street, Wadsworth, Ohio, 44281, USA. Respondentís email address is rusty@rahe.com, and his telephone number is (330) 334-1226.

 

2. The Domain Name(s) and Registrar(s)

The domain names at issue are:

<arizonacardinals.com>
<arizona-cardinals.com>
<arizona-cardinals.net>
<greenbaypackers.com>
<greenbay-packers.com>
<greenbay-packers.net>
<jacksonvillejaguars.com>
<kansascitychiefs.com>
<kansascity-chiefs.com>
<kansascitychiefs.org>
<philadelphiaeagles.com>
<philadelphia-eagles.com>
<philapdelphiaeagles.net>

The domain names at issue are collectively referred to as the "Domain Names." The registrar is Network Solutions, Inc. (the "Registrar") 505 Huntmar Park Drive, Herndon, Virginia 20170-5139 USA.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainants on March 3, 2000, by email and on March 6, 2000, in hardcopy. The Complainants paid the required fee.

On March 8, 2000, the Center sent to the Registrar a request for verification of registration data. On March 8, 2000, the Registrar confirmed, inter alia, that it is the registrar of the domain name in dispute and that the Domain Names are registered in the Respondent's name.

On March 8, 2000, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). Also on March 8, 2000, the Center sent an Acknowledgment of Receipt of Complaint to Complainants.

On March 13,2000, the Center sent Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules. The formal date of the commencement of this administrative proceeding is March 13, 2000.

On March 16, 18, 20, 21, 24 and 28, 2000, the Center received email messages from the parties. On March 20-28, 2000, the Center received email and fax messages regarding Respondentís request for an extension of time to file Response. The Center granted Respondent a ten (10) day extension to file his Response.

On April 11, 2000, the Center received the Response via email and hardcopy and sent an Acknowledgement of Receipt of Response.

On April 13, 2000, after receiving a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page, Esq. (the "Presiding Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Presiding Panelist.

The Respondent has noted that the law firm of Deveboise & Plimpton is counsel for Complainants and that a member of this law firm is a panelist with the Center. Prior to his appointment, the Presiding Panelist conducted a search of his conflicts file and found no potential conflict in serving as the Presiding Panelist.

Respondent has admitted that he is the owner of the <jacksonvillejaguars.com> domain name through assignment from DEB Marketing Inc. Therefore, the Presiding Panelist has jurisdiction to resolve the dispute between Complainants and Respondent as to all of the Domain Names.

 

4. Factual Background

Complainants provide entertainment in the form of professional American football games. The Complainantsí trademarks have become widely known throughout the world through advertising and media coverage.

Complainants are the sole and exclusive owners of a number of federally registered trademarks in the United States, including but not limited to KANSAS CITY CHIEFS, GREEN BAY PACKERS, JACKSONVILLE JAGUARS, PHILADELPHIA EAGLES and ARIZONA CARDINALS (collectively "Complainantsí Marks"). Complainantsí Marks are among the most famous in professional American football worldwide and are among Complainants' most valuable assets. The Complainantsí Marks are incontestable in the United States pursuant to Section 15 of the Lanham Act, 15 U.S.C. ß 1065.

Complainants have spent many millions of dollars annually on various types of advertising involving Complainantsí Marks. These marks also have been marketed and promoted extensively in sports magazines and newspapers, on the Internet and in various other media. The Complainantsí Marks have been the subject of extensive unsolicited media coverage including by Sports Illustrated, ESPN, and major news organizations.

By reason of the extensive advertising and unsolicited media coverage of Complainantsí services, the Complainantsí Marks have come to be recognized and relied upon by the trade and the public as identifying Complainants and their entertainment services, and as

Distinguishing them from others and the services of others.

Complainants have an active presence on the Internet. The principal domain names currently registered and used by Complainants are: <azcardinals.com>, <packers.com>, <jaguars.com>, <kcchiefs.com>, and <eaglesnet.com>. In addition, each team is prominently featured on www.nfl.com, the home website of the NFL.

The Registrarís WHOIS database shows that four of the Domain Names (created in March 1997) are registered to "R.A. Rahe Dream Productions," four (created in July 1998) to "Rusty A. Rahe formally known as ("fka") R.A. Rahe Dream Productions," and four (created in September 1998) to "Rusty A. Rahe fka R.A. Rahe Dream Productions." According to Mr. Rahe, R.A. Rahe Dream Productions is now defunct and he is the owner of the Domain Names.

The WHOIS database shows that <jacksonvillejaguars.com> is registered to "DEB Marketing, Inc." That entity, however, denies any knowledge of the domain name or Mr. Rahe. Letters from Mr. Rahe to Complainantsí representatives indicate that he controls this domain name as well. This Complaint concerns the registration of all the Domain Names.

In late March 1997, Respondent registered the domain names <arizonacardinals. com>, <greenbaypackers.com>, <jacksonvillejaguars.com>, <kansascitychiefs. com> and <philadelphiaeagles.com> with NSI without authorization from Complainants. The foregoing domain names shall be referred to as the "Original Domain Names". When an Internet user attempted to reach a website using any of the Original Domain Names, the Internet user found Respondentís site rather than an American football site.

On April 2, 1998, Complainants' representatives sent Respondent a cease and desist letter regarding <arizonacardinals.com>, <greenbaypackers.com>, <kansascitychiefs.com> and <philadelphiaeagles.com> (all of which had been registered by Respondent at the time under the name R.A. Rahe Dream Productions). The letter stated that Respondentís registration and use of the above domain names violated Complainantsí legal rights. In addition, on the same date, Complainants' representatives sent a letter concerning <jacksonvillejaguars.com> to Respondent at DEB Marketing, Inc. This letter also stated that Respondentís registration and use of <jacksonvillejaguars.com> violated Complainantsí legal rights.

DEB Marketing answered Complainantsí letter with a brief fax, which stated that Respondent is not located at DEB Marketing. The fax did not address the substance of the letter. Neither Complainantsí representatives nor NSI have received any further correspondence from DEB Marketing. Respondent did not answer the letters in writing, but contacted Complainantsí representatives by telephone. Respondent stated that he did not intend to return the domain names to the trademark owners.

On April 22, 1998, Complainantsí representatives contacted NSI and asked to initiate the NSI Domain Name Dispute Resolution Policy then in effect with respect to <arizonacardinals.com>, <greenbaypackers.com>, <kansascitychiefs. com> and <philadelphiaeagles.com>. In addition, in a letter dated April 27, 1998, Complainantsí attorneys requested the initiation of the Policy with respect to <jacksonvillejaguars.com>.

On June 2, 1998, NSI notified Respondent by a set of letters that it had received complaints regarding the Original Domain Names. The letters outlined the several options that Respondent could pursue under the Dispute Resolution Policy, and invited him to select one. These options included transferring the domain name to Complainants, deleting the domain name, registering a new domain name, or continuing with the dispute.

On June 12, 1998, Complainants' representatives wrote to Respondent, reiterating the demand that he transfers the infringing domains to NFL Properties. On June 17, 1998, Respondent, by letter, refused to transfer the domains. Respondent claimed that his "first use of the greenbaypackers.com, arizonacardinals.com, kansascitychiefs.com, philadelphiaeagles.com and jacksonvillejaguars.com" entitled him to those domains, and demanded that Complainants withdraw their request that NSI invoke the Dispute Resolution Policy.

On July 7, 1998, Respondent wrote to NSI selecting option B(2) of the NSI letter, which permitted him to register new domains for use during the pendency of the dispute resolution process. The domain names Respondent selected -- <arizona-cardinals.com>, <greenbay-packers.com>, <kansascity-chiefs.com>, and <philadelphia-eagles.com>. The domain names listed in this paragraph will be referred to as the "Second Set of Domain Names."

On July 8, 1998, the Second Set of Infringing Domain Names was registered for Respondent by NSI.

On July 13, 1998, Complainants' representatives wrote to NSI protesting the registration of the Second Set of Domain Names. Complainants' representatives pointed out that Respondent was exploiting a loophole in NSIís Policy, and that he could and likely would continue this cycle unless and until NSI stopped him. Complainantsí representatives asked NSI to revoke the disputed domain names based on Respondentís material breach of the domain name Registration Agreement. In response, NSI suggested in a telephone call that Complainantsí representatives send Respondent a second cease and desist letter concerning the Second Set of Domain Names.

On July 16, 1998, Respondent wrote to NSI, refusing to give up his domain names or otherwise work within the NSI Dispute Resolution Policy. Also on July 16, 1998, NSI notified Respondent that it had received a complaint regarding another of the Original Domain Names, <jacksonvillejaguars.com>, and again outlined the available options.

On July 17, 1998, NSI formally notified Complainants' representatives that Respondent had selected option B(2) Ė i.e. to continue the dispute with Complainants and register new domain names while the Original Domain Names were on hold.

On July 27, 1998, Complainants' representatives wrote to NSI, arguing that writing Respondent another cease and desist letter, as NSI had suggested, was likely to be ineffective, in light of Respondentís actions after the first cease and desist letter. Complainantsí representatives also argued that NSI has the authority to preserve the integrity of the domain name registration process by revoking both the Original and the Second Set of Domain Names. Also on July 27, 1998, Complainantsí representatives wrote to Respondent, protesting the registration of the Second Set of Domain Names as continuing to infringe Complainantsí trademark rights.

On July 29, 1998, Complainants' representatives wrote to NSI to lodge a formal complaint with respect to the Second Set of Domain Names and request that those names be put on "Hold."

On August 13, 1998, NSI informed Respondent that it had received complaints concerning the Second Set of Infringing Domain Names.

On August 28, 1998, NSI notified Respondent that the domain name <jacksonvillejaguars.com> would be placed on "Hold" due to Respondentís failure to properly respond to NSIís letter informing him of the complaint with respect to this domain name.

On September 18, 1998, Respondent wrote to NSI, opting to register a new set of domain names in place of the disputed Second Set of Domain Names. Respondent requested the domain names <arizona-cardinals.net>, <greenbay-packers.net>, <kansascitychiefs.org>, and <philadelphiaeagles.net>. The domain names listed in this paragraph will be referred to as the Third Set of Domain Names. These domain names were registered as of September 18, 1998.

On September 25, 1998, Complainants' representatives wrote to NSI requesting that the Third Set of Domain Names be put on "Hold" immediately, and that NSI revoke all of the Domain Names on thirty daysí notice pursuant to paragraph 7 of its Domain Name Dispute Policy. Also on September 25, 1998, NSI sent Respondent a set of letters declining to waive the fee for the Third Set of Domain Names because he had failed to pay the registration fees for the Second Set of Domain Names. These letters also informed Respondent that NSI was placing on "Hold" both the Second and Third Sets of Domain Names.

On October 16, 1998, at the end of the simultaneous use period provided under option B(2), NSI notified Respondent that due to the absence of any resolution to the dispute, it placed on "Hold" the Original Domain Names. Eight months later, on June 23, 1999, NSI notified Complainantsí representatives that, due to Respondentís failure to pay registration fees, it was intending to delete <philadelphiaeagles.com> and <kansascitychiefs.org>, and return those names to the registrable pool.

On June 28, 1999, NSI notified Complainantsí representatives that it planned to delete <philadelphia-eagles.com>, <greenbay-packers.com> and <arizona-cardinals.com>, and return those names to the registrable pool. NSI later notified Complainantsí representatives by telephone that these notifications had been sent in error. None of the domain names listed in the preceding two paragraphs have been deleted from the registry.

In letters dated February 16, 2000, NSI informed Complainantsí representatives that as of March 29, 2000, NSI would terminate the dispute, remove the on "Hold" status of <kansascitychiefs.com>, <kansascity-chiefs.com>, <greenbaypackers.com> and <arizonacardinals.com>, and reactivate those domain names unless NSI received either a complaint filed pursuant to the ICANN Policy or a file-stamped complaint filed in a court of competent jurisdiction which involved the subject domain name registrations and specifically named the domain name registrant as a party. Complainants have filed this proceeding in response to that letter.

In a letter dated February 22, 2000, NSI notified Complainantsí representatives that it planned to delete <philadelphiaeagles.net> and return this domain name to the registrable pool. Complainants have sought to register this domain name directly through NSI; in the event this notification has been sent in error, however, Complainants continue to seek relief from this Panel with regard to this domain name.

 

5. Partiesí Contentions

A. Complainants contend that the Domain Names are identical with and confusingly similar to Complainantsí Marks pursuant to the Policy paragraph 4(a)(i).

B. Complainants contend that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

C. Complainants contend that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

D. Respondent presented no evidence challenging Complainants contention that the Domain Names are identical with or confusingly similar to Complainantsí Marks.

E. Respondent contends that his use of the Domain Names was for noncommercial education of his children Jordan (age 10) and Alexa (age 8) and inferentially asserts that he has rights and a legitimate interest in Domain Names.

F. Respondent contends that his registration and use of the Domain Names are in good faith.

 

6. Discussion and Findings

Identity or Confusing Similarity

The Complainants are the sole and exclusive owners of the United States registered trademarks identified above as Complainantsí Marks. The Domain Names each contain a phrase which is identical to at least one of Complaintsí Marks. Respondent does not contest that the Domain Names are identical to Complainantsí Marks. Therefore, the Presiding Panelist finds that the Domain Names are identical with and confusingly similar to Complainantsí Marks pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest

Respondent asserts that he registered the Original Domain Names prior to Complainants registration of Complainantsí Marks. In addition, Respondent asserts that the minimal content he placed on the websites corresponding to the Original Domain Names consisted of an arrow pointing to the official websites of certain professional sports teams including Complainantsí Mark. Respondent asserts that the purpose of his registering the Original Domain Names was the noncommercial education of his children Jordan and Alexa about the Internet.

The Presiding Panelist finds that Respondent had actual knowledge at the time he registered the Original Domain Names of the use by Complainants of the team names included in Complainants Marks. This is evident by the minimal content Respondent did place on the website which utilized the team names.

In addition, Respondent has made minimal use of the Original Domain Names and placed minimal content on the website.

Based upon Respondentís actual knowledge of Complainantsí prior use and upon Respondents minimal use of the Original Domain Names and minimal content on the related website, the Presiding Panelist finds that Respondent has no rights or legitimate interest in the Original Domain Names pursuant to the Policy paragraph 4(a)(ii).

The Second and Third Sets of Domain Names were registered after Respondent received notice for Complainants that the Original Domain Names were considered infringing by Complainants. Therefore, the Presiding Panelist finds that Respondent has no rights or legitimate interest in the Second and Third Sets of Domain Names pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

As indicated above, the Presiding Panelist finds that Respondent had actual knowledge at the time he registered the Original Domain Names of the use by Complainants of the team names included in Complainantsí Marks.

Furthermore, Respondent intentionally registered the additional identical Second and Third Sets of Domain Names with knowledge of the alleged infringement by the Original Domain Names.-

The minimal content on the website contained reference to professional sports teams other than the Complainants in this dispute. This constitutes a pattern of registration of domain names of other well-known entities, which is evidence of bad faith registration and use of the disputed Domain Names.

Based upon these facts, the Presiding Panelist finds that the registration and use of the Domain Names is in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Presiding Panelist concludes (a) that the following Domain Names:

<arizonacardinals.com>
<arizona-cardinals.com>
<arizona-cardinals.net>
<greenbaypackers.com>
<greenbay-packers.com>
<greenbay-packers.net>
<jacksonvillejaguars.com>
<kansascitychiefs.com>
<kansascity-chiefs.com>
<kansascitychiefs.org>
<philadelphiaeagles.com>
<philadelphia-eagles.com>
<philapdelphiaeagles.net>

are identical with and confusingly similar to Complainantsí Marks, (b) that Respondent has no rights or legitimate interest in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names:

<arizonacardinals.com>
<arizona-cardinals.com>
<arizona-cardinals.net>

be transferred to Complainant B&B Holdings, Inc.; that the domain names:

<greenbaypackers.com>
<greenbay-packers.com>
<greenbay-packers.net>

be transferred to Complainant Green Bay Packers, Inc.; that the domain name:

<jacksonvillejaguars.com>

be transferred to Complainant Jacksonville Jaguars, Ltd.; that the domain names:

<kansascitychiefs.com>
<kansascity-chiefs.com>
<kansascitychiefs.org>

be transferred to Complainant Kansas City Chiefs Football Club, Inc.; that the domain names:

<philadelphiaeagles.com>
<philadelphia-eagles.com>
<philapdelphiaeagles.net>

be transferred to Complainant Philadelphia Eagles Limited Partnership.

The Presiding Panelist also encourages Respondentís children Jordan and Alexa to continue using and learning about the Internet. Dispute resolution is a common and necessary part of using the Internet. The transfer of the Domain Names to Complainants should not discourage Jordan and Alexa from choosing other domain names unrelated to Complainants and participating in this wonderful, new world of information sharing.

 


 

Richard W. Page
Presiding Panelist

Dated: April 26, 2000