WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Hockey League And Lemieux Group Lp v. Domain For Sale
Case No. D2001-1185
1. The Parties
The Complainants are the National Hockey League ("NHL"), a Canadian not for profit association, and Lemieux Group LP ("Lemieux Group"), a limited partnership organized under the laws of Pennsylvania. The Complainantsí representative is located at 1251 Avenue of the Americas, 47th Floor, New York, NY 10020-1198.
The Respondent is Domain for Sale located at 19, Bondarenko Square, Obninsk, Kaluga 249020, Russia.
2. The Domain Name and Registrar
The contested domain name is <nhlpenguins.com>.
The registrar is IARegistry.com located at 3545 Center Circle, Suite C, Fort Mill, South Carolina, 29715, U.S.A.
3. Procedural History
The electronic version of the Complaint was filed on September 28, 2001. The hardcopy of the Complaint was received on October 2, 2001.
In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules") and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the ICANN Policy, ICANN Rules and Supplemental Rules. Payment in the required amount was received.
On October 2, 2001, the Center formally notified the Respondent by post/courier, fax and email of the Complaint and of the commencement of this Administrative Proceeding and sent copies to the Complainant, the Registrar and ICANN.
The Respondent failed to file a Response. On November 15, 2001, the Center sent a Notification of Respondent Default by email to the Respondent and the Complainant.
On November 21, 2001, the Center contacted John Swinson and requested that he act as Panelist in this case.
On November 22, 2001, Mr. Swinson accepted to act as Panelist in this case and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
On November 22, 2001, the parties were notified that Mr. Swinson had been appointed and that a decision was to be, save exceptional circumstances, handed down on December 6, 2001.
The language of the proceeding is English.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the ICANN Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the ICANN Rules; no Response was filed by the Respondent; the Administrative Panel was properly constituted.
4. Factual Background
The Complainant, NHL, is the owner of the following U.S. registrations:
- U.S. Collective Membership mark registration number 883,569 for the mark "NHL";
- U.S. trade mark registration number 1,904,540 for the mark "NHL";
- U.S. Collective Membership mark registration number 891,762 for the word and image mark "NHL";
- U.S. service mark registration number 897,099 for the word and image mark "NHL";
- U.S. trade mark registration number 993,099 for the word and image mark "NHL";
- U.S. trade mark registration number 1,678,612 for the word and image mark "NHL";
- U.S. service mark registration number 1,894,400 for the word and image mark "NHL";
- U.S. service mark registration number 2,005,770 for the word and image mark "NHL";
- U.S. trade mark registration number 1,962,135 for the word mark "NHL";
- U.S. service mark registration number 1,960,563 for the word mark "NHL";
- U.S. service mark registration number 2,128,211 for the word and image mark "NHL";
- U.S. trade mark registration number 2,037,345 for the word and image mark "NHL".
The Complainant, NHL, is also the owner of numerous registrations in other countries.
The Complainant, Lemieux Group, owns the United States service mark registration number 875,829 for the word mark "PENGUINS".
5. Partiesí Contentions
NHL first registered the NHL mark in the United States as a "collective membership mark" on December 30, 1969, for the purpose of "indicating membership" in the NHL. The NHL has used the NHL mark continuously in commerce since 1924 to identify a number of goods and services associated with it, including its hockey games, related news, data, graphics and audio, apparel, films, magazines, books, video games, and the member NHL teams.
The NHL consists of 30 member teams, including the Pittsburgh Penguins. Lemieux Group, the owner of the Pittsburgh Penguins, owns a federal trade mark registration for the Penguins mark in the United States and has used the mark continuously in commerce since 1967 to identify the Pittsburgh Penguins, their hockey games, associated apparel, and hockey equipment.
The NHL and Penguins marks are enormously popular with both sports fans and the general public and are among the most renowned and immediately recognizable marks in professional sports today.
The Pittsburgh Penguins have been an NHL member team since 1967. As one of only a few teams to win back to back Stanley Cup Championship titles, the Pittsburgh Penguins are among the most recognizable NHL member teams.
The NHL and Pittsburgh Penguins have spent many millions of dollars promoting their marks, their merchandise, and their sports television programming.
Moreover, the NHL specifically created NHL Enterprises, L.P. ("NHLE") to protect and commercially exploit the trade marks and other intellectual property of the NHL and all the NHL member teams, including the Pittsburgh Penguins, through merchandising and licensing programs. As a result of the NHLís substantial advertising, promotion and media attention and NHLEís extensive licensing and sponsorship programs for a wide variety of goods and services, the NHL and Penguins trade marks have acquired strong secondary meaning and represent significant goodwill of great value to the NHL and its member teams, including the Pittsburgh Penguins. To protect its goodwill and avoid any appearance of impropriety in connection with its activities, the NHL has long maintained a policy against association with any form of illegal gambling.
Millions of fans have attended Pittsburgh Penguins games since 1967. Throughout the last thirty-four years, hundreds of millions of fans have attended NHL games and have enjoyed television and radio broadcasts of the Pittsburgh Penguins and other NHL games and events.
Millions of consumers have purchased merchandise bearing the NHL and Penguins trade marks. Still more visit <www.nhl.com>, the official NHL website, which prominently displays, and in many cases is accessed by domain names containing, the NHL and Penguins trade marks. NHL.com contains, among other information, games schedules, statistics, and the history of the league, its member teams, and its players. NHL.com is linked to official sites for each of the 30 member teams, including <www.pittsburghpenguins.com>, the official website of the Pittsburgh Penguins. NHL.com refers frequently to NHL member teams using the team name alone - in the case of the Pittsburgh Penguins, the team is ofer referred to simply as "the Penguins".
NHL.com is also linked to the official NHL team store online, <http://shop.nhl.com>. The online team store, which markets NHL and NHL member team apparel and other merchandise, links to 30 individual team sites, each featuring products exclusively from one of the NHL member teams. In the case of the Pittsburgh Penguins, the mark Penguins is the link to a page featuring exclusively Pittsburgh Penguins merchandise.
By reason of the extensive use and advertising of the NHL and Penguins trade marks, the public and the trade recognize and rely upon these marks as identifying the NHL and the Pittsburgh Penguins, and as distinguishing them from other leagues, teams, and services.
On June 30, 2001, the Respondent registered the contested domain name without authorization from the Complainants.
The Respondent appears to have been engaged in a pattern of acquiring domain names likely to attract unsuspecting visitors, buying domain names as they become available upon (otherwise inadvertent) non-renewal by the previous registrant. The Respondent has been identified as the owner of several recently expired, well-known, and frequently-visited domain names, formerly belonging to Christian groups, the Hong Kong Bar Association, the Caldwell Idaho Chamber of Commerce, and other organizations.
Although Respondent is sometimes identified as "RussX Casting Company" or "Buy This Name", in addition to being known as "Domain For Sale", the contact address listed in the WHOIS records corresponding to the various sites owned by Respondent - 19, Bondarenko Square, Obninsk, Kaluga 249020 Russia - remains constant for all of the newly directed sites. This address, also referenced in the WHOIS directory for the contested domain name, also appears to be the location of the Russian Institute of Physics and Power Engineering in a town 100 kilometers south of Moscow. The individuals listed as Administrative and Technical contacts for the contested domain name, Allen Ginsberg and Charles Bukowski respectively, are the names of deceased poets from the American "Beat Generation." The address listed in the WHOIS records for the technical contact for Respondentís domain names, eeeX Hosting, 1052 W.Alameda Ave., #211, Burbank, California 90212, appears to be a Mail Boxes Etc. location. Finally, the phone numbers listed for Respondent are all connected to an answering service.
Like the other domain names acquired by Respondent, the contested domain name was initially linked to the sexually explicit site <http://www.adultcity.net/index2.html>. The adult site is replete with provocatively titled links, including "Orgy Machine: Youíve never seen XXX group hardcore like this before!!!", "Sex Centerfolds: Glamorous, centerfold type models doing very unladylike things!!", "Porn Tryout: These first time amateurs are just as cum hungry as the pros!!", and many more, all captioned with lurid descriptions of the collections of pornography to be seen should a visitor click on the links. When a visitor attempted to leave the site, three or four new browser windows, all featuring hard-core pornographic sites, appeared automatically, effectively trapping the unwilling Internet user into viewing hard-core pornographic content until he was able to close these windows. Additionally, at the bottom on the webpage accessible by the contested domain name, Internet users find a link to an internet gambling website. A link reading, "Click here to buy this Internet Domain Name" continues to be featured prominently amid the links to pornographic material on the website accessible by the contested domain name. The link leads to an offer to sell the domain name which declares that "any offer below $550.00 USD will be ignored!"
Upon learning of Respondentís unauthorized registration and objectionable uses of the contested domain name, authorized representatives for the Complainants sent a cease and desist letter to Respondent via email on July 23, 2001. This letter stated unequivocally and with particularity that Respondentís registration of the contested domain name violated Complainantís legal rights, and requested that Respondent transfer the domain name to Complainants immediately.
On July 24, 2001, Respondent left a voice mail message with the authorized representative of Complainants saying that he would try again to reach him another time. Respondent failed to leave a telephone number however, so that Complainants could return the call. The authorized representative of Complainants sent Respondent a second letter on August 8, 2001 reiterating that Respondentís use of the contested domain name violated Complainantsí exclusive rights and requesting that Respondent contact Complainantsí attorneys.
Late on August 8, 2001, Respondent left another voice mail message with the authorized representative of the Complainants, promising to call again the following day at 1:00 to 2:00 p.m. Again, Respondent neglected to leave a name or telephone number through which it could be reached. When Respondent failed to contact Complainantsí authorized representative by 4:53 p.m. on August 9, 2001, Complainantsí authorized representative again contacted the Respondent by email, requesting that Respondent disclose whether or not it intended to transfer the contested domain name and asking that Respondent again call Complainantsí authorized representative, or inform him how to get in touch with Respondent. This began a series of email and phone communications between Complainantís authorized representative and Respondent.
On August 14, 2001 at 5:36 a.m., Respondent emailed a terse response to Complainantsí previous message writing only "how we gonna to do it?" The authorized representative of the Complainants responded the same day at 7:52 a.m. directing Respondent to the "Transfer Domain Request" to be found at <http://www.iaregistry.com>, the website of The Registry at Info Avenue, and informing Respondent that Complainants had notified The Registry at Info Avenue about the dispute and that therefore, a transfer of the contested domain name to any party other than the NHL would not be permitted.
At 11:46 a.m. the same day, the Respondent sent a second brief email asking Complainants to fill out the information to be provided by them in an attached Transfer Domain Request and email back to Respondent.
The Complainantsí authorized representative sent an email on to Respondent the same day, at 5:24 p.m., explaining "[g]iven that the form requests confidential information from the new registrant, including credit card information, that our client does not want to disclose to anyone other than the registrar, we propose that you fill out the form and send it to us to complete for processing by IARegistry.com."
When the authorized representative for Complainants had not heard from Respondent in regard to the August 14, 5:42 p.m. email, the authorized representative for Complainants sent another email to Respondent on August 15, 2001 at 4:50 p.m. asking for confirmation that Respondents intended to transfer the domain name.
Respondent sent an email the following day, August 16, 2001, at 1:45 a.m. asking "didnít i talk to you about this?"
The authorized representative for Complainants responded at 8:41 a.m. on that same day that Complainants were unwilling to provide Respondent with the confidential credit card information called for in the transfer form. The authorized representative for Complainants suggested that either Respondent first fill out the portions of the form pertaining to them or Complainants would fill out the information called for from them, with the exclusion of the billing information, allow Respondent to complete the rest of the form, including the billing information, and then change the billing information following the successful transfer of the domain name.
Respondent replied via email the same day agreeing to complete its sections of the form first.
In response, the authorized representative for Complainants sent an email the following day, on August 17, 2001, at 8:54 a.m., requesting that Respondent disable the link from the contested domain name to the adult-content web page to which it was linked.
Respondent did not fulfill its promise to fill out the transfer form and send it to Complainants, nor did it disable the link from the website accessible via the contested domain name, as requested. The August 16 email was the last the Complainants heard from Respondent, and Respondent continues, as of the date of the Complaint, to link the website accessible via the contested domain name to hard-core pornographic content.
The Respondent failed to file a Response within the time limit set by the Center.
In accordance with Rule 5(e) of the ICANN Rules, this dispute shall be decided on the basis of the Complaint alone.
6. Discussion and Findings
In order to qualify for a remedy, the Complainants must prove each of the three elements set out in Paragraph 4(a) of the ICANN Policy, namely:
(i) the domain name is identical or confusingly similar to a trade mark 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.
The onus of proving these elements is on the Complainants.
The Panel notes that there are two Complainants in this proceeding. A number of cases under the ICANN Policy have been decided in favour of the Complainant despite the fact that more than one Complainant instituted the proceeding. For example, in NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128, the Complainants were 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"). The dispute involved a number of domain names incorporating names of various NFL member clubs. In that case, the Panel ordered that the domain names be transferred to the appropriate trade mark owner. In Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190, the Panel found that the contested domain name <bridgestone-firestone.net> was identical or confusingly similar to the Complainantsí trade marks. See also Bettina Liano and Bettina Liano Pty Limited v. Khanh Kim Huynh, WIPO Case No. D2000-0891 and Mucos Emulsions, GmbH and Marlyn Nutraceuticals, Inc. v. Esex.org and Kim Taeho, WIPO Case No. D2000-1513.
In Ken Done, Ken Done & Associates Pty Limited, and Ken Done Down Under Pty Limited v. Ted Gibson, eResolution Case No. AF-0638, the Panel concluded that a complaint may be submitted by multiple related parties where there are common interests in a single domain name. In that case, the joint complainants failed to present their claim adequately as they obscured the trade mark ownership interests among each of the parties, requested an ambiguous remedy by not stating to which of the Complainants the contested domain name should be transferred, and avoided the identification of each partyís stake in the remedy. That is not the situation here.
In this case, the Complainants have requested that the contested domain name be transferred to Complainant NHL. Accordingly, the Panel will treat NHL as the Complainant in this dispute.
6.1 Identical or Confusingly Similar to a Trade Mark or Service Mark
The Complainants allege that the contested domain name is confusingly similar to the NHL and Penguins marks because it incorporates those marks in their entirety. The Complainants cited eAuto L.L.C. v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises Inc., WIPO Case No. D2000-0047 in support of this assertion. The Complainants also allege that, given the well-known relationship between the Pittsburgh Penguins and the NHL, as well as the fame of their respective trade marks, the use of the two trade marks in tandem makes unmistakable reference to the NHL and its member team, the Pittsburgh Penguins.
The contested domain name is not identical to either of the Complainantsí trade marks. As a result, the Panel must consider whether the contested domain name is confusingly similar to either of the Complainantsí trade marks, or the Complainantsí trade marks in combination.
The Panel finds that the contested domain name is confusingly similar to Complainant NHLís trade marks as it incorporates the mark "NHL" in its entirety with the addition of the term "Penguins". The addition of an additional word does not avoid a finding that the contested domain name is confusingly similar to the Complainant NHLís trade marks. See General Electric Company v. FORDDIRECT.COM, INC., WIPO Case No. D2000-0394. The fact that the additional word is also part of the name of a NHL member team further supports a finding that the contested domain name is confusingly similar to the Complainant NHLís trade marks.
As a result, the Panel finds that the Complainants have satisfied this element.
The Complainants allege that:
(i) the Respondent cannot, in good faith, claim a legitimate business use of the contested domain name. Respondentís exploitation of the Complainantsí fame and of the positive associations and value of Complainantsí trade marks reveals a clear intent to misleadingly divert NHL and Pittsburgh fans. The absence of any bona fide offering of goods and services in connection with Respondentís use of the contested domain name precludes any claim of legitimate business use;
(ii) the contested domain name bears no legitimate relationship to the business or personal affairs of the Respondent nor has the Respondent ever been commonly known by the contested domain name;
(iii) based upon the Complainantsí information and belief, prior to Respondentís acquisition of the contested domain name, Respondent has not prepared to use or used the contested domain name in connection with any bona fide offering of goods or services. Respondentís uses of the contested domain name are identical to Respondentís uses of a number of its other domain name registrations: (a) linking the domain name to hard-core adult content; (b) linking the domain name to online gambling operations; and (iii) offering the domain name for sale to the highest bidder;
(iv) the Respondent should have been well aware of the NHL family of trade marks when he registered his trade marks. See Ticketmaster Corporation. v. Spider Web Design, Inc., WIPO Case No. D2000-1551. The Respondentís constructive knowledge of the Complainantsí marks establishes Respondentís registration of the contested domain name as a patently illegitimate attempt to misleadingly divert NHL and Pittsburgh Penguins fans; and
(v) domain name speculation is not a legitimate use where a registrant has no legitimate rights and has constructive knowledge of complainantsí trade marks. See Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016.
Paragraph 4(c) of the ICANN Policy sets out circumstances which demonstrate rights or legitimate interests in a domain name. Those circumstances are not exhaustive of the circumstances that may establish rights or legitimate interests.
The Respondent has not provided any evidence of its use of, or demonstrable preparations to use, the contested domain name in connection with a bona fide offering of goods or services before any notice of the dispute. The Respondent has simply linked the contested domain name to the Respondentís pre-existing website. The Respondent has not provided the Panel with a business plan, proof of registration of any mark incorporating any part of the contested domain name, or any other evidence to show that it has invested any time, money or energy in preparing for use and actual use of the contested domain name in connection with a bona fide offering of goods and services.
It is clear on the evidence that the Respondent has not at any time been commonly known by the contested domain name.
The Respondent has not provided any evidence that it 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 trade mark or service mark at issue. The Respondentís use of the contested domain name to host a website displaying pornographic material and a link to an internet gambling website reveals that the Respondent is attempting to divert NHL and Penguins fans to its website and to tarnish the Complainantsí marks.
The Respondent had the opportunity to respond and present evidence that it is a legitimate business that registered the domain name without knowledge of the Complainantsí rights. The Respondent chose not to do so. The Complainant is not entitled to relief simply by default, but the Panel can and does draw evidentiary inferences from the failure to respond. See Royal Bank of Canada v. D3M Domain Sales, eResolution Case No. AF-0147.
Paragraph 14 of the ICANN Rules provides that:
"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."
The Panel finds that none of the circumstances set out in paragraph 4(c) of the ICANN Policy exist in this case. On the evidence available, the Panel finds that the Respondent has no rights or legitimate interests in the contested domain name.
6.3 Bad Faith
The Complainants allege that:
(i) the Respondentís offer to sell the contested domain name for no less than $550 demonstrates its bad faith intent to profit from the site, notably at the expense of the NHL and the Pittsburgh Penguins;
(ii) the Respondentís registration and attempts to sell several other recognizable, frequently visited, or recently expired domain names reveals its motives to be purely mercenary;
(iii) the linking of all of these sites to the same pornographic page suggests that the potentially offensive content is as much a sales tactic as it is a simple Internet activity for Respondent. The Respondentís registration and use of the contested domain name in association with a pornographic website could only tarnish the distinctiveness and repute of the NHL and Penguins trade marks and therefore demonstrates bad faith on the Respondentís part. The Complainants cited CCA Industries, Inc. v. Bobby R. Dailey, WIPO Case No. D2000-0148 and Fairchild Publications, Inc. v. Saeid Yomtobian, WIPO Case No. D2000-1003 in support of this proposition;
(iv) the Respondentís intention to attract Internet users for commercial gain by creating a likelihood of confusion with Complainantsí marks establishes bad faith registration and use of the domain name. The use of a domain name that mimics the highly recognizable NHL and Penguins trade marks demonstrates Respondentís attempt to attract a large volume of Internet users by initially misleading them to believe that the NHL or the Pittsburgh Penguins is the source, sponsor, or affiliate of the website. The Complainant cited Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 and National Hockey League v. Daniel Krusz, WIPO Case No. D2001-0234. Given the popularity of the NHL and the Penguins, it is virtually inconceivable that Respondent was unaware that the NHL and Penguins trade marks were protected (Royal Crown Company, Inc. v. New York Broadcast Services, Inc., WIPO Case No. D2000-0315);
(v) another example of Respondentís bad faith registration and ownership of the contested domain name is its active concealment of its identity through false and misleading contact information. The Complaintants cited Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Novus Credit Services v. Personal, WIPO Case No. D2000-1158;
(vi) the Respondentís registration and use of the contested domain name prevents the Complainants from using their trade marks to attract users to their respective sites. This is part of a pattern of bad faith cybersquatting because Respondent also has registered domain names likely to attract unsuspecting Internet users in search of well-known organizations or recently expired sites they have visited before.
The Panel agrees with the Complainantsí assertions set out above. The Panel notes that the following decisions support a finding that the contested domain name has been registered and is being used in bad faith by the Respondent in this case:
(a) In Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044, the Panel found that a general offer to sell a domain name constituted use and registration in bad faith, where the value that the domain name registrant sought to secure from the sale was based on the value of the Complainantís trade mark.
(b) Bad faith use and registration was found in Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 based on the Respondentís having registered and used the contested domain name and other domain names corresponding to well-known Internet companies in order to misdirect traffic to its site.
(c) Use of the Complainantís mark to route users to a pornographic website was found to constitute evidence of bad faith in Ingersoll-Rand Co. v. Frank Gully d/b/a Advcomren, WIPO Case No. D2000-0021.
(d) A notation in the WHOIS registration record stating "This domain is for sale" was sufficient evidence of bad faith in Parfums Christian Dior v. QTR Corporation, WIPO Case No. D2000-0023, where the same legend was contained in the records for other domain names registered by the same Respondent.
As a result, the Panel finds that the Complainants have satisfied this element.
The Panel decides that the Complainants have proven each of the three elements in paragraph 4(a) of the ICANN Policy in relation to the domain name the subject of the Complaint.
The Complainants have requested the Panel to issue a decision that the contested domain name be transferred to the Complainant National Hockey League.
For the reasons set forth above and pursuant to Paragraphs 4(i) of the ICANN Policy and 15 of the ICANN Rules, the Panel orders that the contested domain name be transferred to the Complainant National Hockey League.
Dated: December 6, 2001