WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Football League Players Association, Inc. v. Cayman Trademark Trust d/b/a Trademark
Case No. D2005-0234
1. The Parties
The Complainant is the National Football League Players Association, Inc., Washington DC United States of America, represented by Lynn M. Braun, Esq. and Jason P. Marino, Esq. of the law firm Weil, Gotshal & Manges LLP, United States of America.
The Respondent is Cayman Trademark Trust d/b/a Trademark, Georgetown, Grand Cayman, Cayman Islands, United Kingdom of Great Britain and Northern Ireland, represented by Ari Goldberger, Esq. of the law firm ESQwire.com, P.C., United States of America.
2. The Domain Name and Registrar
The disputed domain name <nflpa.com> is registered with Universal Registration Services, Inc. d/b/a NewDentity.com (hereinafter “NewDentity”).
3. Procedural History
A. Filing of Complaint, Verification, and Commencement of Proceedings1
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2005, and the Center transmitted by e-mail to NewDentity a request for registrar verification in connection with the domain name at issue on the same day. NewDentity transmitted via e-mail to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the administrative and technical contact.2 The Center then verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and Paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
The Center completed its responsibilities pursuant to Paragraph 2(a) of the Rules by transmitting the Complaint and Notification by all the prescribed methods and to all the appropriate entities on March 9, 2005, thus rendering that date as the commencement date as set forth in the Rules at Paragraph 4(a). The Notification advised Respondent that the due date for a Response was March 29, 2005.
B. Respondent’s First Request for Extension of Time
On the evening of March 22, 2005, counsel for Respondent transmitted an e-mail to the Center seeking a 20-day extension of time in which to file a Response. The e-mail stated, in relevant part, that Respondent sought the additional period pursuant to Paragraph 5(d) of the Rules3; that Respondent’s counsel would be unavailable between the dates of March 24, 2005, and April 2, 2005; and that Respondent’s counsel had been unable to reach counsel for Complainant to secure her agreement to Respondent’s petition for relief. The next day, March 23, 2005, a series of e-mails was exchanged between counsel for the respective parties that resulted in Complainant agreeing to an extension, but only if the enlargement of time was no more than 10 days. Accordingly, on March 24, 2005, after reviewing the comments provided by all parties, the Center confirmed via e-mail the “grant of an extension of 10 days beyond the original deadline of March 29, 2005.” In its notification, the Center expressly advised Respondent that the Response was due on or before April 8, 2005.
C. Respondent’s Default and Appointment of Panel
Eventually, the April 8, 2005 deadline passed, but the Respondent did not file any Response. In light of these circumstances, the Center notified the parties of Respondent’s default on April 13, 2005, and on April 19, 2005, appointed Craig Edward Stein as the sole panelist in this matter. The Panel determined that it was properly constituted and submitted the executed Statement of Acceptance and Declaration of Impartiality and Independence, as is required by the Center to ensure compliance with the Rules, Paragraph 7.
D. Respondent’s Second Request for Extension of Time
Upon receipt of the Notification of Respondent Default and the Notification of Appointment of Administrative Panel, Respondent’s counsel initiated what became a flurry of e-mails that respective counsel exchanged concerning the status of this proceeding. In the course of these communications, Respondent’s counsel transmitted an e-mail to the Center that raised several contentions and made one formal request. First, Respondent instructed the Center to “advise the Panel that Respondent intends to file a Response …. [because] this matter was settled.”4 In support of its position, Respondent maintained that counsel for the parties had reviewed, exchanged and revised “a draft settlement agreement”5 on Friday, April 8, 2005, the same date Respondent was required to file its Response. Then, on Wednesday, April 13, 2005, Respondent “signed and faxed”6 to the Complainant the last version of the document that had been sent by opposing counsel.
Because of the delay in receiving a settlement document that was signed by the Respondent, the Complainant had “lost interest in settling the case and … [determined] to have the case proceed to judgment.”7 Thus, Complainant did not execute the agreement tendered by Respondent on April 13, 2005, having deemed the attempt to settle unsuccessful. Respondent, however, argued that it was laboring under a different belief. According to Respondent’s counsel, “[a]t this point, it was assumed [by Respondent that] the matter was settled and that all that was required was the simple formality of signing [by the Complainant].”8 Asserting that it had been prejudiced by the Complainant’s refusal to settle, Respondent sought a second, unspecified extension of time to file its Response.9
Respective counsel copied the Center on all their e-mails concerning this issue. The following day, the Center then expeditiously forwarded these e-mails to the Panel for his consideration. After reviewing the respective parties’ positions as reflected in their attorney’s e-mails, on April 20, 2005, the Panel issued, and the Center transmitted via e-mail, Procedural Order No 1. That Order stated, in full:
“Respondent is instructed to file its Response to the Complaint together with a separate, written request for leave to accept the late-filed pleading (“Request”). Such Request may contain whatever argument, citations, attachments or other information Respondent relies upon to demonstrate “good cause”. Although Respondent did not specify the period of time it needs to prepare its Response to the Complaint, the Panel observes that in one of Respondent’s e-mail submissions of yesterday, April 19, 2005, Respondent states: “[h]ad Respondent known on April 8, 2005, [the due date for the Respondent’s filing] that Complainant would not settle the matter, it would have filed a response that day.” (emphasis added). Thus, the Panel does not think it unreasonable to require both of these pleadings (the response to the Complaint and the Request) be submitted no later than this Friday, April 22, 2005, Noon, (EDT) via e-mail transmission to WIPO and opposing counsel with a hard copy sent via overnight courier to the same. Complainant may file a reply to the Request on or before Wednesday, April 27, 2005, Noon (EDT) via the same transmission procedures. After these submissions are made, the Panel will then determine, when it reviews the entire file, whether to accept and consider the late-filed pleading in making its final decision. In light of these additional pleadings, pursuant to Paragraph 15 (b) of the Rules, I would determine that exceptional circumstances exist and move the date of transmission of the Panel’s decision, if necessary, to May 11, 2005.”
E. Respondent Seeks Order of Transfer
Subsequently, Respondent did not file either a formal request asking the Panel to consider a late-filed pleading or any Response to the Complaint by the stated deadline. Similarly, Respondent did not seek a further extension of time to comply with the Panel’s April 20, 2005 directive. Instead, on Tuesday, April 26, 2005, counsel for Respondent transmitted an e-mail to the Center in which Respondent stated that it would not file a “substantive response” to the Complaint after all. Rather, Respondent now requested “that the Panel issue an Order transferring the disputed domain name to Complainant as contemplated by the settlement agreement negotiated by the parties but ultimately not signed by the Complainant.”
Upon considering Respondent’s new position, and cognizant that other UDRP panels have adopted different approaches to deciding cases where, as here, a Respondent has acquiesced in a request to transfer (see discussion, below at Section 6 B) the Panel issued Procedural Order No. 2 which, in relevant part, directed that the
“Complainant submit a short reply to Respondent’s e-mail statement of April 26, 2005. In its submission, counsel for Complainant should state in what manner its client would expect the Panel to proceed. In other words, does Complainant continue to seek a full determination on the merits of its petition, or does it now request some alternative order memorializing what appears to be Respondent’s concession to the imposition of the remedy of transfer. This reply should be transmitted via e-mail on or before the close of business, Thursday, May 5, 2005. The expected date of transmission of the Panel’s Final Decision remains, as set forth in Procedural Order No. (1), May 11, 2005.”
On May 3, 2005, Complainant responded to Procedural Order No. 2 stating that it “continues to seek a full determination on the merits of its Complaint.”
On May 12, 2005, in accordance with Paragraph 10(c) of the Rules, the Panel extended the decision due date up to and including May 16, 2005.
4. Factual Background
The following facts are derived from a review of the full record in this matter, which includes the unrebutted allegations contained in the Complaint that are amply supported by a compendium of attached exhibits, including the Affidavit of Joseph H. Nahra, Esq.10
A. The Complainant and its Intellectual Property Rights
Complainant, the National Football League Players Association, Inc. is the officially recognized labor union for National Football League (“NFL”) players. Established in 1956, the Complainant negotiates and assures the terms of the league’s collective bargaining agreement, negotiates and monitors retirement and insurance benefits, and promotes the image of the players. The Complainant represents 1,800 active and 3,000 retired players in matters concerning wages, hours and working conditions and provides other membership services and activities including assistance to charitable and community organizations, and enhances and defends the image of players and their profession.
In 1993, the Complainant negotiated a landmark Collective Bargaining Agreement with the NFL, which, as extended in 1995, 1998 and 2002, will govern the sport of American football at least until the year 2007. To establish how it is known by the media, sports community and the public, Complainant submitted a considerable sampling of internet, magazine, and newspaper articles. These documents uniformly refer to Complainant interchangeably as the National Football League Players Association, National Football League Players, and by the acronym, the NFLPA.
i) Registered Trademarks and Service Marks
Complainant is the owner of the following trademarks and service marks that are registered with the United States Patent and Trademark Office (“USPTO”):
a) NATIONAL FOOTBALL LEAGUE PLAYERS ASSOCIATION (Service Mark)
(Words plus design): for association services, namely to represent and promote the interests of National Football League Players in International Class 42; Reg. No. 1.931,367 as of October 31, 1995; First Use in Commerce on September 9, 1994.
b) NATIONAL FOOTBALL LEAGUE PLAYERS (Trademark)
(Words plus design) for books and publications in International Class 16; Reg. No. 947,952 as of November 28, 1972; First Use in Commerce on December 31, 1969.
c) PLAYERS INC (Trademark)
(Words plus design) for precious metal trading cards, metal key chains in International Class 6; for trading cards, posters, telephone debit cards, fine art prints, mounted photographs, book covers, paper pennants, file folders, stationary portfolios, color prints, art prints, cartoon prints, photographic prints, magazines, books, newsletters, newspapers, magazine supplements to newspapers, discs, namely round shaped game pieces, collectibles or premium items made of plastic, cardboard or similar material containing images in International Class 16; for plaques, non-metal key chains in International Class 20; for headwear, uniforms, replica jerseys, athletic shoes, wearing apparel, namely, athletic clothing, t-shirts, sweatshirts, sweat shorts, mesh shorts, jackets, shirts, pants, sweaters, socks, shoes in International Class 25; and for computer game cartridges and associated equipment, video game cassettes and associated equipment, CD-ROM games and associated equipment, board games, footballs, jigsaw puzzles in International Class 28, Reg. No. 2,179,669 as of August 4, 1998; First Use in Commerce on January 1, 1995.
d) PLAYERS INC (Trademark)
(Words plus design) for ornamental pins in International Class 14; for pennants not of paper in International Class 24; and ornamental novelty pins in International Class 26 Reg. No. 2,177,629 as of July 28, 1998; First Use in Commerce on January 1, 1995.
As disclosed in the USPTO filings included in the record, the Complainant has been using the NATIONAL FOOTBALL LEAGUE PLAYERS ASSOCIATION service mark since 1994, the NATIONAL FOOTBALL LEAGUE PLAYERS trademark since 1969, and the NATIONAL FOOTBALL LEAGUE PLAYERS INC. trademarks since 1995. These trademarks remain in full force and effect.
ii) Registered Domain Names and Web Sites
Prior to Respondent’s registration of the challenged domain name11, Complainant had registered several domain names incorporating either its trade or services marks or, what Complainant contends to be a derivative of those marks, the initials “NFLPA”. For example, Complainant had registered:
<nflpa.net>: Registration date of April 18, 2001;
<nflpa.org>: Registration date of February 9, 1999;
<nflplayers.com>: Registration date of June 17, 1998;
<playersinc.com>: Registration date of November 12, 1998. 12
The Complainant operates two websites: one at “www.nflpa.org” and the other at “www.nflplayers.com”. When one types in the <nflpa.net> domain name, the computer resolves to the home page of Complainant’s “wwwnflpa.org” website. If the <playersinc.com> domain name is sought, the computer resolves to the home page of Complainant’s “wwwnflplayers.com” website.13
In carrying out all the above activities, Complainant has expended substantial sums of money to advertise and market its services under its various trade and service marks.
B. The Respondent, its Business Activities and the Website to which <nflpa.com> Resolves
According to the Registrar, Respondent registered the challenged domain name on June 11, 2003. At some point thereafter, Respondent created and erected a website. A true and correct copy of the website to which <nflpa.com> resolves as it appeared on February 16, 2005, was submitted by Complainant as an exhibit and is a part of the case file. This web page displays on the upper right corner, in large type, the disputed domain name itself. Directly underneath are the words “What you need, when you need it.” The page displays a list of hyperlinks under various topic headings. On the first line, from left to right, appear seven links entitled, without further elaboration or description: “Nfl Football”(sic);”Agents”; “Contracts”; “Jobs”; “Financial Advisors”; “Nfl” (sic); and “Denver Broncos”. On the left side of the page is a rectangular box entitled “Popular Links”. This box contains the same seven words as appear on the top line and include three additional links: “Super Bowl”; “Football Pick”; and “Fantasy Football”.
To the immediate right of this box and below the top line is a larger box that lists a number of hyperlinks. The lead heading in this area of the web page is entitled “Popular Categories”. The secondary heading is denominated “Favorite Categories” Beneath these two headings appear search engine links for both football-related topics and for more generic topics that have nothing to do with football, e.g., “travel” “services” “leisure” “money savers” and “gambling”. Indeed, one of the non-football related sites to which the “wwwnflpa.com” website is linked is “www.sexsearch.com”, a purported “adult” dating service.
On the one hand, while certain information concerning the identity of the Respondent and its principals is both unknown and apparently shrouded in secrecy, on the other hand, there are many facts about the Respondent that have, over the past several years, been established and memorialized in the factual findings contained in literally dozens of UDRP panel decisions. In brief, this is what the record shows about Respondent’s business as it relates to the registration of domain names.14 The Respondent maintains, as was the case here, basic portal websites that contain numerous hyperlinks to other unrelated websites. Respondent has been documented to have registered over 2,200 domain names15. A good portion of the names registered by Respondent are either identical to, misspellings of, or otherwise confusingly similar to many well-known trademarks owned by unrelated entities. Thus, Respondent has been found on at least thirty-four (32) separate occasions by UDRP panels to have registered and used a challenged domain name in bad faith. The cases submitted by Complainant which fall into this category16, in reverse chronological order, are as follows:
The State Bar of California v. Cayman Trademark Trust, NAF Claim No. FA0411000371470 (January 14, 2005);
Pelmorex Communications Inc. v. weathernetwork, WIPO Case No. D2004-0898 (December 28, 2004);
Title 9 Sports, Inc. v. Modern Web Development, NAF Case No. FA0411000359888 (December 22, 2004);
Gevity HR, Inc. v. Modern Web Development, NAF Claim No. FA0408000318264 (November 15, 2004);
The Vanguard Group, Inc. v. Trademark, NAF Claim No. FA0409000319651 (October 12, 2004);
Chattanooga Lookouts Baseball Club v. Cayman Trademark Trust, NAF Claim No. FA0408000309920 (October 11, 2004);
Keffer Dodge, Inc. v. Modern Limited-Cayman Web Development c/o Domain Administrator, NAF Case No. FA0408000311382 (September 20, 2004);
WeddingChannel.com Inc. v. Modern Limited - Cayman Web Development, NAF Case No. FA0405000271153 (September 9, 2004);
Government Employees Insurance Company (GEICO) v. Gico, WIPO Case No. D2004-0545 (September 7, 2004);
Société Française du Radiotéléphone - SFR v. Modern Limited - Cayman Web Development, WIPO Case No. D2004-0385 (August 5, 2004);
SiteComp, Inc. v. Modern Limited-Cayman Web Development, NAF Case No. FA0405000280552 (July 12, 2004);
Downey Communications, Inc. v. Modern Limited-Cayman Web Development, NAF Case No. FA0404000260657 (June 28, 2004);
Infinity Broadcasting Corporation v. Cayman Trademark Trust, WIPO Case No. D2004-0251 (June 21, 2004);
Anne Geddes v. Cayman Trademark Trust, NAF Claim No. FA0404000257938 (June 5, 2004);
Société des Hôtels Méridien v. Modern Limited - Cayman Web Development, WIPO Case No. D2004-0321 (June 14, 2004);
Caesars Entertainment, Inc. (“CEI”) v. Modern Limited - Cayman Web Development, WIPO Case No. D2004-0267 (May 28, 2004);
Martin P. Stevens v. Modern Limited-Cayman Web Development, NAF Case No. FA0403000250005 (May 17, 2004);
CHUM Limited v. Modern Web Development, NAF Case No. FA0401000230262 (March 8, 2004);
MediaNews Group, Inc. v. Cayman Trademark Trust, NAF Claim No. FA0401000223036 (February 27, 2004);
Shinders, Inc. v. Modern Limited Cayman Web Development, NAF Case No. FA0312000218903 (January 29, 2004);
InfoSpace, Inc. v. Modern Limited-Cayman Web Development; NAF Case No. FA0312000215371 (January 19, 2004);
Microsoft Corporation v. Modern Limited - Cayman Web Development, WIPO Case No. D2003-0919 (January 13, 2004)
Nevada State Bank v. Modern Limited - Cayman Web Development a/k/a Administrator Domain, NAF Case No. FA0310000204063 (December 6, 2003);
The Fresh Market, Inc. v. Modern Limited-Cayman Web Development a/k/a Cayman Trademark Trust, NAF Case No. FA0310000203205 (December 4, 2003);
Atlanta Lawn Tennis Association, Inc. v. Modern Web Development, NAF Case No. FA0310000203203 (December 1, 2003);
Cine Colombia, S.A. v. Modern Limited - Cayman Web Development, WIPO Case No. D2003-0671 (October 24, 2003);
Joe David Graedon v. Modern Limited - Cayman Web Development, WIPO Case No. D2003-0640 (October 15, 2003);
Les Laboratoires Servier v. Cayman Trademark Trust, WIPO Case No. D2003-0667 (October 8, 2003);
Albertson’s, Inc. and Albertsons Employees Federal Credit Union v. Modern Limited - Cayman Web Development, NAF Case No. FA0308000178222 (September 30, 2003);
Barrett Enterprises Group v. Modern Limited - Cayman Web Development, NAF Case No. FA0306000162191 (July 28, 2003);
The Sportsman’s Guide, Inc. v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305 (June 13, 2003);
Georgia Boot LLC v. Modern Limited - Cayman Web Development, NAF Case No. FA0303000149173 (April 21, 2003).
Complainant first learned that Respondent had registered the challenged domain name when it attempted to register <nflpa.com> but could not do so. Upon discovering the identify of Respondent, Complainant transmitted a letter on February 2, 2005, via e-mail and United States Certified Mail, Return Receipt Requested, to the contacts listed for the registrant of <nflpa.com> on the WHOIS database. That communication demanded that Respondent cease and desist from using the disputed domain name and that it facilitate the transfer of <nflpa.com> to Complainant. Complainant requested that Respondent provide written assurances, within five (5) business days, that it had complied with the foregoing demands. Complainant further indicated that if such written assurances were not provided; it would be forced to take appropriate action to protect Complainant’s rights. As of the filing of the Complaint, Respondent did not respond to Complainant’s February 2, 2005, letter.
5. Parties’ Contentions
1. The domain name <nflpa.com> is identical or confusingly similar to Complainant’s: registered trademarks and service marks; common law service mark NFPLA; and, registered domain names because:
a) Complainant owns the NATIONAL FOOTBALL LEAGUE PLAYERS ASSOCIATION AND NATIONAL FOOTBALL LEAGUE PLAYERS federal trademark registrations that are confusingly similar to the domain name in question.
b) Complainant’s registered trademarks and service marks have long symbolized, and have been readily identified with the proper recognition and representation of NFL players’ interests and rights. Complainant has thus developed considerable goodwill in these trademarks through their extensive national marketing and promotional efforts in defending and protecting the rights of players. The trademarks’ valuable goodwill has been enhanced further because of the global recognition of the organization for consistently achieving successful outcomes for its players.
c) In addition to its registered trade and service marks, Complainant claims to be the owner of the common law service mark “NFLPA”, which are the initials or acronym for the Complainant’s full name. Complainant has referred to itself, and others have identified it as NFPLA since at least 1970. As examples of this activity, Complainant refers to the many services it provides to its members using the NFPLA initials. So too, numerous media organizations, specifically their reporters, writers and sports commentators consistently refer to Complainant as the NFLPA. Documentary examples of both Complainant’s literature and published news articles reflecting the use of the NFLPA acronym were submitted as exhibits to support this contention.
d) Because Complainant has used the NFLPA common law mark in interstate commerce for almost 34 years, Complainant maintains that its common law mark is protected by the UDRP just as if it had been registered. American Home Products Corp. v. Healthy Futures, WIPO Case No. D2000-0454; Cho Yong Pi1 v. ImageLand, Inc., WIPO Case No. D2000-0229; Seek America Networks, Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131; and Bennett Coleman & Co. Ltd. v. Steven S. Lalwani, and Bennett Coleman & Co. Ltd. v. Lone; Distance Telephone Company, WIPO Case Nos. D2000-0014 and D2000-0015.
e) Complainant extensively and prominently uses the NFLPA acronym, as well as domain names incorporating its marks and its initials, in disseminating, marketing and advertising its services. The disputed domain name <nflpa.com> is identical to the famous common law trademark in which Complainant contends it has rights or is confusingly similar to its registered trademarks. UDRP panels have held that a shortened form of a trademark can be held to be identical or confusingly similar to the mark itself. See, e.g., The NASDAQ Stock Market, Inc. v. Global America, WIPO Case No. D2002-0002 (the domain name <nasdaq.nu> is identical and/or confusingly similar to Complainant’s marks where Complainant is commonly referred to as “NASDAQ” by the general public, rather than The NASDAQ Stock Market, Inc); Sjova-Almennar tryggingar hf. v. Peacecall Ltd., WIPO Case No. D2004-0861 (the domain name <sjova.info> is identical and/or confusingly similar to Complainant’s marks where Complainant was commonly referred to as Sjova, rather than Sjova-Almennar tryggingar hf).
f) Despite Complainant’s extensive intellectual property rights in the NFLPA acronym, and the NATIONAL FOOTBALL LEAGUE PLAYERS ASSOCIATION and NATIONAL FOOTBALL LEAGUE PLAYERS trademarks and, notwithstanding the marks’ worldwide recognition, Respondent obtained a registration for the domain name at issue here, <nflpa.com>.
2. The Respondent has no rights or legitimate interests with respect to the disputed domain name because:
a) Respondent’s website diverts Internet traffic from Complainant’s site and redirects those users to other sites offering other goods and services. Such conduct does not constitute a bona fide offering of goods and services as those terms are employed in Paragraph 4(c) (i) of the Policy. See, Societe des Hotels Meridien v. Modern Limited -Cayman Web Development, WIPO Case No. D2004-0321;
b) Absent specific authorization, mere offers to sell goods or provide services do not constitute a legitimate use or interest in a domain name when that domain name incorporates the famous and distinctive trademark of a third party. See, Nokia Corp. v. Holmes, WIPO Case No. D2002-0001.
c) Complainant did not grant any such authorization to Respondent. Moreover, Respondent is not a licensee of Complainant nor associated with Complainant in any way whatsoever, nor is Respondent affiliated with or commonly known as “NFLPA”.
d) One of the non-football related sites the “www.nflpa.com” website links to under “leisure/dating” is “www.sexsearch.com” -- an “adult” dating service, certainly not the type of service that Complainant would ever promote or sponsor.
e) Respondent’s name is Trademark which appears to be doing business as Cayman Trademark Trust, although it has done business under other names as well, e.g., Modern Limited--Cayman Web Development. Respondent conducts its business as holding company that frequently infringes the intellectual property rights of famous brands.
3. The domain name was registered in bad faith based on the following facts:
a) As its first point, Complainant argues that Respondent has registered and uses the disputed domain name with the illicit motive to profit from the famous NFLPA and National Football League Players Association names. Specifically, Respondent’s primary purpose is to divert consumers from the Complainant’s websites and redirect them to Respondent’s website for Respondent’s own commercial gain. Such conduct is deemed bad faith under Paragraph 4(b)(iv) of the Policy. Wal-Mart Stores, Inc. v. Steve Powers, WIPO Case No. D2003-1051.
b) Indeed, the domain name is so obviously connected to Complainant’s well-known marks and services that its “very use by someone with no connection with the [services] suggests opportunistic bad faith.” Parfums Christian Dior v. Quintas, WIPO Case No. D2000-0226; Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
c) Given the widespread use and worldwide fame of Complainant’s marks, Respondent knew or should have known of their existence and Complainant’s associated services at the time Respondent registered and used the disputed domain name. See Parfums Christian Dior v. Quintas, WIPO Case No. D20000-0226; Gaulme SA & Jean-Paul Gaultier SA v. JeanPaulgaultier Funclub DBA New York Link, WIPO Case No. D2000-0822; Countess Mara, Inc. v. Choi Kwangho, WIPO Case No. D2001-0089 (“Taking into account the highly distinctive nature of Complainant’s trademark [‘Countess Mara’], as well as its numerous registrations in several countries, the Panel is of the opinion that it is reasonable to infer that, at the time the domain name was registered, Respondent was aware of the existence of Complainant’s trademark.”).
d) Thus, given the fame and popularity of Complainant, it would defy common sense for Respondent to argue that it was not aware that it was registering a domain name incorporating Complainant’s famous intellectual property rights. See, Societe des Hotels Meridien v. Modern Limited -Cayman Web Development, WIPO Case No. D2004-0321.
e) By using <nflpa.com> to advertise other services, Respondent has attempted to associate and market itself with the famous National Football League Players Association name. In so doing, Respondent has created the mistaken impression that it is somehow affiliated with or endorsed by the Complainant, which is simply not the case. Such conduct constitutes bad faith under the Policy. See, e.g., Nokia Corp. v. Holmes, WIPO Case No. D2002-0001 (bad faith found where “Respondent, by registering and using the domain name <eworldnokia.com> has created the (incorrect) impression of association with the Nokia Corporation, thereby creating a likelihood of confusion with that trademark.”). Indeed, this conduct is particularly egregious when one of the listed categories on Respondent’s web page links to an adult entertainment website, thus further tarnishing Complainant’s image and reputation.
f) Probably the most compelling example of Respondent’s bad faith is found in its long history and pattern of abusive registration, infringement and cybersquatting. Domain names that have been previously registered by the Respondent (or its “predecessors”) have blatantly incorporated famous and distinctive trademarks. Not surprisingly, Respondent’s registrations have regularly been the subject of UDRP proceedings. In almost every case, the panels have ordered the transfer of the disputed domain names. Such conduct -- the registration of multiple domain names that are confusingly similar to established trademarks -- is evidence of bad faith. CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273 (Registration of multiple domain names that are confusingly similar to established trademarks is evidence of bad faith).
g) Finally, although Respondent’s failure to reply to Complainant’s “cease and desist” letters alone does not rise to the level of bad faith, such conduct taken together with the other factors presented can be considered a further indication of bad faith. RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242; Joanne Rowling v. Alvaro Collazo, WIPO Case No. D2004-0787; Amazon.com Inc. v. Amazoninsu Company, WIPO Case No. D2001-1275; News Group Newspapers Limited and News Network Limited v. Momm Amed la, WIPO Case No. D2002- 0001.
4. Relief Requested: Complainant seeks, in accordance with Paragraph 4(i) of the Policy, a decision that the contested domain name, <nflpa.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Standards and Burdens of Proof
1. Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Under Paragraph 4(a) of the Policy, the Complainant must prove each of the following:
i) the domain name in issue is identical or confusingly similar to the Complainant’s trademark or service mark; and
i) 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.
2. Paragraph 4(b) of the Policy sets out four illustrative, non-exclusive circumstances, which, if demonstrated by the Complainant, for the purposes of Paragraph 4(a) (iii) shall be deemed evidence of the Respondent’s bad faith registration and use of the disputed domain name.
3. Paragraph 4(c) of the Policy sets out three descriptive, non-exclusive situations, any one of which, if proved by a Respondent, shall be considered as evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of Paragraph 4(a)(ii).
In this case, pursuant to Paragraph 15(a) of the Rules, the Panel has fully reviewed the Complaint, exhibits and other documents submitted and constitute the case file. The Panel has been guided in its decisions by the Policy, the Rules and the applicable principles of law that apply to this dispute. In so doing, not only has the Panel conducted a review of the submissions of Complainant, but also, pursuant to Paragraph 14(b), has drawn appropriate inferences from Respondent’s default, which is deemed a failure to comply with the Rules. After considering all the relevant facts and law, the Panel makes the following findings in accordance with Paragraph 4 (a) of the Policy.
B. Effect of Respondent’s Acquiescence
The first issue that must be addressed is procedural in nature and concerns what effect, if any, does Respondent’s eventual acquiescence to Complainant’s request for relief have on these proceedings. In particular, other than a direction to transfer the challenged domain name, should the Panel’s decision contain additional discussion that addresses the issues initially raised in the Complaint? Apparently, the answer has proved somewhat elusive. As aptly put in the matter of Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386:
“What should the Panelist do when the Respondent does not contradict the Complainant’s contentions and agrees to its request to transfer the domain name?17 Should it just take the Complainant’s arguments as proven without any consideration or should it go into the merits and consider whether all requirements have been cumulatively fulfilled for a transfer of a domain name to be effected? Past WIPO cases have taken both approaches. The former view has been taken in decisions such as Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398, Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620, Juventus F.C. S.p.a. v. Sergio Bragança WIPO Case No. D2000-1466, and Deutsche Bank AG v. Carl Sieger, WIPO Case No. D2000-0984. In the cases The State of the Netherlands v. Goldnames Inc., WIPO Case No. D2001-0520 and Eurobet UK Limited v. Grand Slam Co., WIPO Case No. D2003-0745 the Panels took the view that even though the Respondent agreed to transfer the domain name, there was still a necessity to make substantive findings.”
See also, NTSI Corp. v. John Segreti, WIPO Case No, D2004-0632 (undertaking an analysis of Paragraph 4(a)(iii) and finding bad faith registration and use) and Sanofi-Aventis v. Day Corporation, WIPO Case No. D2004-1075 (same).
Indeed, this is not the first time that this Respondent has opted to acquiesce in a transfer but at the same time “request the Panel to forego a substantive analysis of the Complaint” over the objection of the Complainant. See, Chattanooga Lookouts Baseball Club v. Cayman Trademark Trust, NAF Claim No. FA0408000309920 (October 11, 2004) (Panel conducted analysis of Complaint) Some panels have accepted Respondent’s suggestion and simply entered an order of transfer. See, Boehringer Ingelheim International GmbH v. Modern Limited - Cayman Web Development, NAF Case No. FA021 1000133625 (January 9, 2003). Others have found that such a request is evidence of bad faith. Albertson’s, Inc. and Albertsons Employees Federal Credit Union v. Modern Limited - Cayman Web Development, NAF Case No. FA0308000178222 (September 30, 2003).
In circumstances such as those presented here, where a Complainant has been forced to expend considerable time, energy and resources to marshal its evidence, it would seem fundamentally unfair to then permit the party against whom Complainant has sought relief to circumvent a final adjudication because, for whatever reason, the Respondent indicates it is finally willing to do what the Complainant has requested. Moreover, it appears that in most cases where a Respondent has determined to accede to a transfer request after a proceeding has been initiated, the analysis of the issues is usually fairly straightforward. In the present case, providing a decision on the merits is not burdensome and may be of some benefit when similar problems concerning abusive domain name registrations arise. The Panel also notes that a decision will not grant the Complainant additional remedies, such as costs or damages, but only the relief to which the Respondent has already agreed – a transfer of the domain name. Based on these considerations, the Panel has in this particular case decided to proceed to an adjudication of the merits of Complainant’s allegations.
C. Identical or Confusingly Similar
The first substantive point that the Complainant is required to establish is whether the domain name at issue is identical or confusingly similar to its own trademark or service mark. In this case, inasmuch as the Complainant does not have a registered trademark for the exact acronym “NFLPA”, it must either: (a) demonstrate that the initials for its organization are derivative of its registered marks and thereby gained protected status; or, (b) establish a common law right in the initials “NFLPA”.
As expected, Complainant does argue that the initials NFPLA are derivative of its registered marks, and common sense seems to suggest that such a position is reasonable. However, the cases it cites in support of its argument are inapposite. For example, in the matter of The NASDAQ Stock Market, Inc. v. Global America, WIPO Case No. D2002-0002, unlike the situation here, the Complainant had registered trademarks containing its acronym, “NASDAQ” Thus the question of derivation or common law service marks was not in issue. Accord, The NASDAQ Stock Market, Inc. v. Steve Grewal, WIPO Case No. DTV2001-0001. Similarly, Complainant’s reliance on Sjova-Almennar tryggingar hf. v. Peacecall Ltd., WIPO Case No. D2004-0861, is misplaced. In Sjova, the Complainant held an Icelandic trademark for “SJOVA-ALMENNAR TRYGGINGAR HF” with the Icelandic trademark registration No. 500/1999 SJÓVÁ. The challenged domain name was <sjova.com>. Because the portion of the trademark after the term “Sjova” contained letters from the Icelandic alphabet that were not translatable for technical reasons into a domain name, the Panel deemed the shortened version of Complainant’s full name, “Sjova”, which actually appeared in its trademark registration, was a registered trademark.
More instructive are those cases where a Complainant’s acronym, although not a part of a formal registered trademark, has gained sufficient notoriety that the acronym can be deemed to have attained common law protection. Such was the situation in Irish Institute of Purchasing and Materials Management v. Association for Purchasing and Supply, and Owen O’Neill, WIPO Case No. D2001-0472, where the challenged domain name, <iipmm.com>, contained the Complainant’s initials and the Complainant was able to establish a common law right to its acronym. Also supporting this proposition is the case of The National Deaf Children’s Society and Ndcs Limited v. Nude Dames, Chat, Sex, WIPO Case No. D2002-0128, in which the Panel determined that the Complainants had acquired common law trademark protection to their acronym “NDCS” in a challenge to the domain name registration of <ndcs.org>. Accord, Freedom of Information Foundation of Texas v. Steve Lisson, WIPO Case No. D2001-0256 (Complainant had common law rights to acronym “foift” in challenge to domain name <foift.com>). Thus, as these cases demonstrate, there is no need to explore the legal intricacies of the relationship between registered marks and possible derivative protection to a Complainant’s initials that are not contained in formal registrations when, as here, the Complainant can and has submitted overwhelming proof that establishes its common law rights to its acronym.
The evidence submitted by the Complainant here shows an extensive and continuous use of the acronym “NFLPA” by the Complainant sufficient to identify and distinguish its particular services from those of any competitor. Accordingly, the Panel determines that Complainant has established its common law rights, pursuant to United States trademark law, to the “NFLPA” acronym. Because the challenged domain name contains Complainant’s actual common law service mark, the disputed domain name is not just confusingly similar, it is “identical”. Therefore, Complainant has satisfied the test required by Paragraph 4(c)(i) of the Policy.
D. Rights or Legitimate Interests
As for the issue regarding Respondent’s possible rights or legitimate interests in the domain name, little discussion is required. It is now well-settled that “[w]hile the overall burden of proof is on Complainant, the element of possible rights or legitimate interests of Respondent in the disputed domain name involves Complainant proving matters, which are peculiarly within the knowledge of Respondent. It involves the Complain[ant] in the often-impossible task of proving the negative. This should, as indicated correctly in Julian Barnes v. Old Barn Studios, WIPO Case No. D2001-0121, be approached as follows: Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, Respondent has no rights to the name of which he is aware, he has not given any permission to Respondent). Unless the allegation is manifestly misconceived, Respondent has to demonstrate his rights or legitimate interests in respect of the domain name under Paragraph 4(c) of the Policy.” Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
In this matter, Complainant has established the necessary prima facie case. To briefly recapitulate, the Complainant has shown that Respondent’s domain name is specifically designed to capture traffic that would have otherwise been directed to one of the Complainant’s web pages. That traffic is then diverted to sites not related to Complainant that offer other goods and services. Such a scheme is an abusive practice and not a legitimate use.
Similarly, Complainant did not grant Respondent any authorization to use its common law mark “NFLPA” and most certainly, Respondent is not a licensee nor in any manner associated with Complainant. These conclusions are underscored by the fact that one of the sites to which the “www.nfpla.com” page directs a visitor is an adult entertainment site – something which would cast Complainant in a negative light and with which it would never be connected.
So too, Respondent is neither affiliated with nor commonly known as the NFLPA. Rather, Respondent’s current name is Cayman Trademark Trust, d/b/a Trademark. As has been established in the voluminous cases cited above, Respondent’s “business” is as a holding company that frequently infringes the intellectual property rights of famous brands. It simply has no connection to the sport of American-style football.
Finally, “[s]ince the Respondent has not replied to the Complainant’s contentions, there is no argument indicating that the Respondent had a legitimate interest in respect of the domain name. (See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221, finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).” Government Employees Insurance Company (GEICO) v. Gico, WIPO Case No. 2004-0545.
In light of these facts, Complainant has satisfied Paragraph 4(c)(ii) and shown that the Respondent has neither a right nor legitimate interest in the challenged domain name.
E. Registered and Used in Bad Faith
The final criterion that Complainant must establish is that both the registration and use of <nflpa.com> was in bad faith. The following points summarize what the record shows in this case: First, Respondent diverted consumers from the Complainant’s website to its own website for its own commercial gain. Next, Respondent used the challenged domain name to advertise other services and marketed itself as being associated with the Complainant’s well-known common law service mark, “NFLPA”. This, in turn, caused consumer confusion as to the source, sponsorship or endorsement of Respondent’s website. In addition, Respondent has registered and used -- without authorization -- countless other domain names that are confusingly similar to well known, famous and distinctive trademarks. Finally, while not wholly determinative, but certainly as contributing factors, Respondent failed to respond to Complainant’s “cease and desist” demands and now, without filing any substantive Response, Respondent has agreed to the relief that Complainant has all along sought -- transfer of the domain name.
Thus, this record establishes, for all the above-mentioned reasons, that the challenged domain name was both registered and used in bad faith. Therefore, the Complainant has met its burden of establishing the requisites of Paragraph 4(c)(iii).
For all the foregoing reasons, having established all the requirements of Paragraph 4(a) of the Policy, Complainant is entitled to the relief it seeks. Therefore, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <nflpa.com> be transferred to the Complainant.
Craig Edward Stein
Dated: May 13, 2005
2 Although the Center also requested that NewDentity provide information relating to the domain name registrant’s “billing contact”, no such data was included in the Registrar’s response. This lack of disclosure is curious inasmuch as NewDentity’s own Registration Agreement requires that its domain name registrants submit and keep current their “billing contact” identification data.
3 That provision states that the period in which a Response must be filed may be extended by written stipulation of the parties, which was not the situation at the time Respondent made its request. In the alternative, the Provider (in this matter, the Center) may grant such a request “in exceptional circumstances.”
4 E-mail from Respondent’s counsel to the Center transmitted on April 19, 2005, at 4:42 P.M.
7 E-mail from Complainant’s counsel to Respondent’s counsel transmitted on April 19, 2005, at 9:44 A.M.
8 E-mail from Respondent’s counsel to the Center transmitted on April 19, 2005, at 4:42 P.M
10 Mr. Nahra is one of Complainant’s staff counsel who is responsible for the licensing of intellectual property rights for Complainant’s individual members.
11 As mentioned below in Section 4 B, Respondent registered <nflpa.com> on June 11, 2003.
12 After Complainant discovered that Respondent had registered <nflpa.com>, it took further actions to protect its claimed intellectual property rights by registering the domain names of <nflpa.info>, <nflpa.biz> and <nflpa.us>.
13 The home pages from Complainant’s two web sites as they appeared on February 14, 2005, were printed off a computer screen and submitted as a composite exhibit.
14 Complainant has not only cited these cases in support of its various legal arguments, but also has submitted copies of these decisions as a composite exhibit.
15 In fact, in one proceeding, Respondent itself relied upon the fact that “it owned over 2,000 domain names” in an effort to justify its “belief that [there] are common words or descriptive terms which do not interfere with the trademark rights of others.” Downey Communications, Inc. v. Modern Limited-Cayman Web Development, NAF Case No. FA0404000260657 (June 28, 2004);
16 After a careful review of all the decisions, the Panel eliminated from this list any decision where the connection between the Respondent named here and the Respondent in a previous case was less than clear. Thus, only those cases that support the limited factual conclusion for which they are cited are included herein.
17 The Panel described this question as “[a]n interesting and not entirely infrequent issue”.