WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

NFL Properties, Inc. et al. v. BBC Ab

Case No. D2000-0147

 

1. The Parties

Complainants are National Football League Properties, Inc. ("NFL Properties") and Richardson Sports Limited Partnership the owners and operators of the Carolina Panthers football team (the "Panthers").

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 its principal place of business at 280 Park Avenue, New York, New York, 10017, USA.

Richardson Sports Limited Partnership, the owner and operator of the Carolina Panthers football team, is an organization chartered in and existing under the laws of the State of North Carolina. The Panthers own the United States registration for the CAROLINA PANTHERS mark and therefore has a sufficient common interest in the domain name <carolinapanthers.com> for joinder to be permissible. The Panthersí principal offices are located at 800 South Mint Street, Charlotte, North Carolina, 28202, USA.

Respondent is BBC Ab and appears to be a business located at Johannesgatan 24, Stockholm, Sweden.

 

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

The domain name at issue is <carolinapanthers.com>. 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 10, 2000 by email and on March 13, 2000 in hardcopy. The Complainants paid the required fee.

On March 11, 2000, the Center sent to the Registrar a request for verification of registration data. On March 13, 2000, the Registrar confirmed, inter alia, that it is the registrar of the domain name in dispute and that <carolinapanthers.com> is registered in the Respondent's name.

On March 15, 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 15, 2000, the Center sent an Acknowledgment of Receipt of Complaint to Complainants and a 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 15, 2000.

On April 6, 2000, the Center sent Notification of Respondentís Default. No Response has been received.

On April 7, 2000, the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page, Esq. (the "Presiding Panelist"). On April 8, 2000, the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Presiding Panelist.

 

4. Factual Background

Complainants provide entertainment in the form of American professional football games. The Panthersí CAROLINA PANTHERS trademark has become widely known throughout the world through extensive advertising and media coverage, and the Carolina Panthers team is enormously popular with both sports fans and the general public. The Panthers are the sole and exclusive owners of the United States registered trademark CAROLINA PANTHERS (Reg. No. 2,120,117). The Panthers have been using the CAROLINA PANTHERS trademark extensively since 1995, and it is among Complainantsí most valuable assets. Millions of fans have attended Panthers football games, enjoyed television and radio broadcasts of Panthers games and events, and purchased merchandise bearing the Panthersí CAROLINA PANTHERS trademark.

Complainants have spent millions of dollars annually on various types of advertising involving the CAROLINA PANTHERS trademark. This mark has also been marketed and promoted extensively in sports magazines and newspapers, on the Internet, and in various other media. The mark has been the subject of extensive unsolicited media coverage including by Sports Illustrated, ESPN, and major news organizations. As a result of the extensive advertising, media coverage, and enormous popularity of football as an American national pastime, the CAROLINA PANTHERS mark has come to be recognized and relied upon by the trade and the public as identifying the Panthers and their entertainment services, and as distinguishing them from others and the services of others.

Complainants also have an active presence on the Internet. In addition to www.panthers.com, the website devoted exclusively to coverage of the Panthers team, the CAROLINA PANTHERS mark is prominently featured on www.nfl.com, the official website of the NFL.

Without authorization from either of the Complainants, Respondent registered the domain name <carolinapanthers.com> with NSI on August 12, 1996. As of early 1998, the website at the domain name <carolinapanthers.com> proclaimed "Future home of carolinapanthers.com."

After discovering Respondentís unauthorized registration and use of <carolinapanthers.com>, attorneys for Complainants sent a letter dated April 7, 1998 to Mr. Tony Lennartsson, the Administrative Contact for BBC Ab listed on the WHOIS database at that time. The letter stated that Respondentís registration and use of <carolinapanthers.com> violated Complainantsí legal rights, and demanded that BBC Ab agree to transfer the registration and ownership of the domain name to the Panthers.

Attorneys for Complainants experienced difficulty in their attempt to serve Mr. Lennartsson with the April 7, 1998 demand letter. The letter was sent via Federal Express to the address listed for BBC Ab on the WHOIS query for <carolinapanthers.com>, but Federal Express was unable to locate such an address. Federal Express was similarly unsuccessful in reaching Mr. Lennartsson at his telephone number listed on the WHOIS query for <carolinapanthers.com>, 46-8-679-7819. Attorneys for Complainants made repeated and unsuccessful attempts to reach any person at this number, and it appeared that this number was not a functioning telephone number. In addition, an attempt was made to contact Mr. Lennartsson via electronic mail using the address listed on the WHOIS query for <carolinapanthers.com>. Although the attorneys for Complainants did receive a response, the response was from a Mr. Robert Bostrom, not from Mr. Lennartsson.

On April 30, 1998, attorneys for Complainants sent a letter to NSI, in which they explained the problems Complainants had experienced in attempting to serve BBC Ab. Complainants requested that NSI examine BBC Abís registration of the domain name <carolinapanthers.com> and advise Complainants on how to proceed. A follow-up letter was sent to NSI on May 18, 1998, which further detailed the unsuccessful attempts made by Complainantsí attorneys to contact Mr. Lennartsson by mail, telephone, or electronic mail. After being notified about the problems with Respondentís address, NSI provided Complainantsí representatives with another address for Respondent. A demand letter was then sent by DHL Delivery Service on May 28, 1998 to Respondent at this new address. Complainants did not receive a response from Respondent. In a letter sent to NSI dated June 25, 1998, Complainantsí attorneys requested that NSI implement its then existing NSI Domain Name Dispute Resolution Policy.

NSI responded in a letter dated July 13, 1998, notifying NFL Propertiesí attorneys that certain procedural defects in the initial demand letter prevented NSI from invoking the procedures prescribed in Section 9 of NSIís Dispute Resolution Policy. Complainantsí representatives cured these procedural errors in a letter sent to Respondent by DHL courier on July 27, 1998, and in a letter sent to NSI on August 3, 1998. On August 18, 1998, NSI initiated its Domain Name Dispute Resolution Policy and sent Respondent a letter informing it that NSI had received a complaint concerning the domain name <carolinapanthers.com>. NSI received no response from Respondent. NSI therefore informed BBC Ab on October 2, 1998 that the domain name <carolinapanthers.com> had been placed on "hold" status in accordance with NSIís Domain Name Dispute Resolution Policy. The domain name has been on "hold" status since October 2, 1998.

In a letter dated February 16, 2000, NSI informed NFL Propertiesí representatives that as of March 29, 2000, NSI would terminate the dispute, remove the "on hold" status of <carolinapanthers.com>, and reactivate the domain name 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 registration and specifically named the domain name registrant as a party. Complainants have filed this proceeding in response to that letter.

 

5. Partiesí Contentions

A. Complainants contend that the domain name <carolinapanthers.com> is identical with and confusingly similar to the CAROLINA PANTHERS trademark pursuant to the Policy paragraph 4(a)(i).

B. Complainants contend that Respondent has no rights or legitimate interest in the domain name <carolinapanthers.com> pursuant to the Policy paragraph 4(a)(ii).

C. Complainant contends that Respondent registered and is using the domain name <carolinapanthers.com> in bad faith in violation of the Policy paragraph 4(a)(iii).

D. Respondent presented no evidence challenging that the domain name <carolinapanthers.com> is identical with or confusingly similar to the CAROLINA PANTHERS trademark.

E. Respondent presented no evidence of its rights or legitimate interest in <carolinapanthers.com> domain name.

F. Respondent presented no evidence that its registration and use of the <carolinapanthers.com> domain name is in good faith.

 

6. Discussion and Findings

Even though Respondent has filed no Response and has offered no evidence attacking the contentions of Claimants, the Presiding Panelist hereby reviews the evidence before him to determine whether the Claimants have supported each of the required elements in its contentions within the existing record.

Identity or Confusing Similarity.

The Panthers are the sole and exclusive owners of the United States registered trademark CAROLINA PANTHERS (Reg. No. 2,120,117). The domain name <carolinapanthers.com> contains the identical phrase "carolina panthers." Therefore, the Presiding Panelist finds that the domain name <carolinapanthers. com> is identical with and confusingly similar to the trademark CAROLINA PANTHERS pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest

The evidence fails to demonstrate that Respondent has used or intended to use the domain name <carolinapanthers.com> or the website www.carolinapanthers.com for its own purposes. The evidence suggests that Respondent no longer even exists. Therefore, the Presiding Panelist finds that Respondent has no rights or legitimate interest in the domain name <carolinapanthers.com> pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Respondentís failure to respond to the inquiries of Complainants or to the Notification of Complaint and Commencement of Administrative Proceeding sent by the Center supports the inference that the registration and the use of the domain name <carolinapanthers.com> has been in bad faith. Therefore, the Presiding Panelist finds that the registration and use of the domain name <carolinapanthers. com> is in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Presiding Panelist concludes (a) that the domain name <carolinapanthers.com> is identical with and confusingly similar to the trademark CAROLINA PANTHERS, (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 <carolinapanthers.com> be transferred to Complainant Richardson Sports Limited Partnership.

 


 

Richard W. Page
Presiding Panelist

Dated: April 22, 2000