The Complainants are MLB Advanced Media, The Phillies, and Padres LP of New York, Pennsylvania and California, respectively, United States of America, represented by Cowan, Liebowitz & Latman, PC, United States of America.
The Respondent is OreNet, Inc. of Oregon, United States of America.
The disputed domain names <padresbaseball.com> and <philliesbaseball.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2009. On July 22, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On July 22, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amended Complaint on July 28, 2009. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 21, 2009.
The Center appointed William R. Towns as the sole panelist in this matter on September 9, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant The Phillies is the owner of the Major League Baseball (“MLB”) Club the Philadelphia Phillies (the “Phillies Club”), often referred to simply as the Phillies. Complainant Padres LP is the owner of the MLB Club the San Diego Padres (the “Padres Club”), often referred to simply as the Padres. The Phillies and Padres Clubs were founded in 1883 and 1968, respectively. The Complainants The Phillies and Padres LP respectively own valid and subsisting United States registrations for the trademarks PHILLIES and PADRES, which have long been used as source indicators for the each of the respective Complainants' baseball clubs, entertainment and exhibition services, and other goods and services, including merchandise. The Phillies and Padres LP hereinafter are referred to collectively as “the MLB Club Complainants”.
There currently are thirty (30) Major League Baseball Clubs, including the Phillies and Padres. The Complainant MLB Advanced Media (“MLBAM”) is the MLB's interactive media and Internet Company, responsible for all of MLB's internet operations. In said capacity MLBAM has responsibility for the licensing, monitoring and enforcement of all MLB and MLB Clubs trademarks and service marks on the Internet and in interactive media. MLBAM, as agent, is the registered owner of all MLB and MLB Clubs domain names, and overseas the Official Websites of MLB and each of the MLB Clubs, including the Phillies and Padres Clubs.
The Respondent registered the disputed domain names <philliesbaseball.com> and <padresbaseball.com> on or about April 28, 2002. The disputed domain names currently direct Internet users to parked websites (“www.philliesbaseball.com”; “www.padresbaseball.com”), containing advertising links (“sponsored listings”) to third party commercial websites offering for sale, inter alia, tickets to Phillies, Padres and other MLB games, as well as PHILLIES, PADRES and MLB merchandize and memorabilia. The present parking pages are provided by GoDaddy.com.
Prior to receipt of the Complainant's cease and desist letter of January 11, 2008, the Respondent had used the disputed domain names with parked websites provided by Sedo, which similarly included advertising links to third-party commercial websites that, according to the Complainants, engage in the unauthorized resale of tickets to PHILLIES and PADRES games, as well as the unauthorized resale of PHILLIES and PADRES merchandise.
The Complainants assert that they are all properly included as Complainants and have standing bring this proceeding under the Policy because of their common legal interests and MBLAM's status as the exclusive licensee with respect to the use of the PHILLIES and PADRES marks on the Internet and in interactive media. The Complainants contend that the disputed domain names are confusingly similar to the Complainants' marks because the domain names incorporate the marks in their entirety and combine them with the generic term “baseball”, identifying the specific services most closely associated with the marks. As a result of long, continuous and exclusive use, extensive promotion and advertising, and significant unsolicited media coverage, the Complainants maintain that the PHILLIES and PADRES marks are not only highly distinctive but have become famous as well.
The Complainants maintain that the Respondent has no legitimate rights to or interests in the disputed domain names because the Respondent has never been commonly known by either of the disputed domain names, has not been authorized by the Complainants to use either the PHILLIES or PADRES marks, but instead wrongfully acquired the disputed domain names in order to exploit and profit from the goodwill developed in the Complainants' marks. The Complainants assert that the Respondent's use of the disputed domain names with parked, pay-per-click websites containing links to other commercial sites engaged in the unauthorized resale of PHILLIES and PADRES game tickets and PHILLIES and PADRES merchandize in direct competition with the Complainants does not constitute use of the domain names in connection with a bona fide offering of goods or services.
The Complainants conclude from the foregoing that the Respondent registered and is using the disputed domain names in bad faith. According to the Complainant, the facts and circumstances establish beyond doubt that the Respondent was aware of and had the Complainants' marks in mind when registering the disputed domain names. The Complainant asserts that the very nature of the commercial links on the Respondent's website clearly reflects an intent to exploit and profit from the Complainants' trademark rights. The Complainants assert that the Respondent registered and intentionally is using the disputed domain names in an attempt to attract, for commercial gain, Internet users to the Respondent's pay-per-click websites, by creating a likelihood of confusion with the Complainant's marks.
The Respondent did not submit a formal Response. The record reflects that the Respondent responded to the cease and desist letter sent by the Complainants prior to the commencement of this proceeding. According to the Respondent's reply, the disputed domain names were registered in connection with the Respondent's mysportsmail.com website, which the Respondent describes as a free email service catering to high-school student-athletes and high school teams. The Respondent claims to have de-linked the disputed domain names from the Sedo parking pages after receiving the Complainants' notice of this dispute.
The Policy and the Rules do not expressly contemplate the consolidation of multiple complainants (or respondents) in a unitary administrative proceeding, and generally speak in singular terms of a “complainant” when referring to proceedings under the Policy. A number of WIPO Panels nonetheless have concluded that the use of the singular “complainant” in the Policy and Rules was not meant to preclude multiple legal persons in appropriate circumstances from jointly seeking relief in a single administrative proceeding under the Policy. See Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331; ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., WIPO Case No. D2008-0936. See also National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021.1 The Panel has found little or no disagreement with this approach based on a review of relevant UDRP Panel decisions; however, as noted in Fulham Football Club (1987) Limited, supra, until recently little substantive attention has been given to defining the circumstances in which it might be appropriate to permit a consolidated complaint involving multiple complainants and multiple domain names against a single domain name registrant.
It is of course axiomatic that a complainant must establish rights in a trademark or service mark with respect to which a domain name is identical or confusingly similar in order to have standing to invoke the Policy. See paragraph 4(a)(i) of the Policy. UDRP Panels most often have accepted consolidated complaints in situations where multiple complainants have demonstrated common legal interests in the trademark rights on which a complaint is based. Such situations typically involve shared or common legal interests based on an agency, licensing, or affiliate relationship between the co-complainants. See, e.g., ITT Manufacturing Enterprises, Inc., supra; Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc. v. SkyLabs Corporation and DL Enterprises, WIPO Case No. D2004-0220; Eli Lilly and Company, ICOS Corporation, and Lilly ICOS LLC v. RM-RS, LLC, WIPO Case No. D2005-1052.
Consolidated complaints also have been accepted by UDRP Panels where multiple complainants are seen to form part of a “single entity” – i.e., individual companies that are part of a larger corporate group or joint venture. In this situation, it has been said that each company has a common legal interest in trademarks held collectively by or within such entity, sufficient to justify a unitary complaint against a single respondent in respect of multiple domain names alleged to contain such marks in whole or part. See, e.g., Media West-CPI, Inc., Media West-DMR, Inc., Media West-GMP, Inc., Media West-GSI, Inc., Media West-PNI, Inc., Media West-PNJ, Inc., Media West-SJC, Inc., Media West-NPP, Inc., Cape Publications, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Multimedia Holdings Corp., Phoenix Newspapers, Inc., Gannett Co., Inc. v. Unasi, Inc., WIPO Case No. D2005-1336.
A third scenario in which consolidated complaints have been accepted involves an assertion of common legal interests based on the multiple complainants' common membership in an established association or league (such as a sports league) in which the enforcement of the members' individual trademark rights has been entrusted or delegated to the league or association. See NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128; Fulham Football Club (1987) Limited, supra. In some cases, such as NFL Properties, Inc. et al., the members of the association are the owners of the association, which is itself a separate legal entity, whereas in other cases, such as Fulham Football Club (1987) Limited, the element of common ownership or contol of the association does not appear to be present.
The recent WIPO Panel decisions in National Dial A Word Registry Pty Ltd, supra, and Fulham Football Club (1987) Limited, supra, have undertaken to distill from the body of relevant UDRP decisions principles to apply in determining when consolidation of multiple complainants should be permitted, having regard to all of the relevant circumstances. The overriding principle articulated by the panel in National Dial A Word Registry Pty Ltd, decided under the auDRP, and adopted by the panel in Fulham Football Club (1987) Limited in the context of the UDRP, can be stated as follows: The consolidation of multiple complainants in a single complaint should be permitted if the complainants have a truly common grievance against the respondent, and it is equitable and procedurally efficient to do so.
Under the consolidation principles set forth in National Dial A Word Registry Pty Ltd and Fulham Football Club (1987) Limited, petitioning multiple complainants may have a common grievance against the respondent where they have a common legal interest in relevant right or rights allegedly affected by the respondent's conduct. A common grievance may also be present, even in the absence of a shared legal interest in a specific trademark, where the multiple complainants are the target of common conduct by the respondent that has clearly affected their individual legal interests. These instances are not intended under the National Dial A Word Registry Pty Ltd/Fulham Football Club (1987) Limited analysis to be exclusive of circumstances in which a common grievance sufficient to justify consolidation may exist; however, a “truly common grievance” must be demonstrated, and consolidation must be equitable to all parties and procedurally efficient.
The concept of “common legal interests” as reflected in the body of relevant UDRP Panel decisions referred to above has proven somewhat elastic. Common legal interests have been recognized in situations where: (1) the multiple complainants have a shared interest in a particular trademark, such as may exist between a licensor and a licensee; (2) the multiple complainants form part of a “single entity” where the individual companies are part of a larger corporate group or joint venture; and (3) the multiple complainants are members of an established association or league in which individual members have rights authorized to be enforced by the association. Consolidation in the first of these situations clearly involves a common legal interest in a particular trademark, whereas the consolidation in the second and third situations seems to be predicated either on the multiple complainants' existence within an “overarching legal system” or the presence of an “overarching legal entity” in which the complainants' individual rights have been vested. See National Dial A Word Registry Pty Ltd, supra.
As noted by the distinguished panel in National Dial A Word Registry Pty Ltd, in situations where petitioning multiple complainants do not have a shared interest in a particular trademark, and otherwise there is no “overarching legal system” or “overarching legal entity”, it is unlikely that the complainants can demonstrate a common legal interest sufficient to justify their consolidation in a single complaint. Nevertheless, under the National Dial A Word Registry Pty Ltd/Fulham Football Club (1987) Limited analysis, even in the absence of a sufficient common legal interest, consolidation may still be appropriate where multiple complainants can demonstrate they are the targets of common conduct by the respondent, and that such conduct has affected their relevant individual legal interests in a common manner.
Assuming that a common grievance against the respondent is demonstrated, multiple complainants should still be permitted to proceed under a single complaint under the National Dial A Word Registry Pty Ltd/Fulham Football Club (1987) Limited approach only where to do so is (1) equitable to all of the parties (i.e., fair and just), and (2) procedurally efficient from the perspective of judicial economy. Giving due consideration to all of the foregoing, it seems to this Panel that a “common grievance” sufficient to justify consolidation in multiple complainant cases most likely would be one in which the relief sought by the multiple complainants arises from the same transaction or substantially related transactions, and common questions of law or fact are present if not predominant. Further, even where such a “common grievance” is presented, the dispute also must be one which is appropriate for disposition in the context of the summary administrative proceeding provided for under the Policy.
In this instance, the Panel finds that the Complainants have demonstrated that they have a common grievance against the Respondent sufficient to justify consolidation of their claims in a single proceeding. The Panel further concludes in the circumstances of this case that consolidation would be equitable to all the parties and procedurally efficient.
As reflected above, the PHILLIES mark is individual to the Complainant The Phillies, and the PADRES mark is individual to the Complainant Padres LP. However, both Complainants are MLB Clubs, and the record reflects that the Complainant MLBAM has responsibility for the licensing, monitoring and enforcement of all MLB and MLB Clubs trademarks and service marks on the Internet and in interactive media. Given the association of the MLB Club Complainants and the vesting in the Complainant MLBAM of the enforcement of their respective trademark rights on the Internet and in interactive media, the Panel is of the view that a common legal interest has been demonstrated sufficient to support consolidation consistent with prior relevant UDRP decisions.
Moreover, and to the extent that the claims of the MLB Club Complainants arguably could be said to depend on the assertion of individual trademark rights, the record clearly reflects common conduct by the Respondent clearly affecting their individual legal rights. The Respondent registered both of the disputed domain names on the same day. The disputed domain names are comprised of the MLB Club Complainants' respective marks and the word “baseball”, which is the primary service provided by each Complainant. Further, the disputed domain names have been used in an identical manner to attract Internet visitors to parked websites containing advertising links to third-party websites selling tickets to Phillies, Padres and other MLB games, as well as PHILLIES, PADRES and MLB merchandize. In addition, the Respondent has claimed that the disputed domain names were acquired for common purposes (i.e., for use as email addresses), which likely is the basis upon which the Respondent, had it submitted a Response, would have asserted rights or legitimate interests in respect of both of the disputed domain names.
In short, the Complainants' multiple grievances against the Respondent in this instance (1) arise from common or shared legal interests, (2) concern common conduct on the part of the Respondent clearly affecting each of the Complainants' rights, and (3) involve common questions of fact and law. Given all of the foregoing, the Panel concludes that consolidation of the Complainants' grievances against the Respondent would be procedurally efficient and fair and equitable to all parties. Consolidation permits multiple Complaints lodged against one Respondent arising from a common nucleus of facts and involving common legal issues to be heard and resolved in a single administrative proceeding. Doing so promotes the shared interests of the parties in avoiding unnecessary duplication of time, effort and expense, reduces the potential for conflicting or inconsistent results arising from multiple proceedings, and generally furthers the fundamental objectives of the Policy. Doing so under the circumstances present here, in the Panel's opinion, will not unfairly favor or prejudice any party.
Accordingly, this Panel, having regard to all relevant circumstances, concludes that the consolidation of the Complainant's multiple grievances against the Respondent is consistent with the Policy and Rules, comports with prior relevant UDRP decisions in this area, and is appropriate in light of the sound principles articulated in National Dial A Word Registry Pty Ltd and Fulham Football Club (1987) Limited. The Panel therefore will proceed to a decision on the merits.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domains names <philliesbaseball.com> and <padresbaseball.com> are confusingly similar to the trademarks PHILLIES and PADRES, in which the Panel finds the Complainants have established rights. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
The disputed domain names <padresbaseball.com> and <philliesbaseball.com> are confusingly similar to the Complainants' PADRES and PHILLIES marks as each of the respective domain names incorporate the Complainant's corresponding mark in its entirety. Such confusing similarity is not diminished by the addition of the word “baseball”, which obviously calls to mind the primary commercial activity of the Complainants, and which when combined with the Complainants' marks most likely serves to exacerbate the confusing similarity of the disputed domain names. See National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc., WIPO Case No. D2007-1524.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once a complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is undisputed that the Complainants have not authorized the Respondent to use the Complainants' PADRES and PHILLIES marks, and there is no indication that the Respondent has been commonly known by the disputed domain names. The Complainant has demonstrated that the subject marks are well-known source indicators for Major League Baseball (MLB) and the San Diego PADRES and Philadelphia PHILLIES franchises, respectively. The record reflects the Respondent's registration of domain names that incorporate the Complainants' marks in their entirety and leaves little doubt as to the association sought to be drawn by the Respondent. Further, the record reflects that the Respondent has used the disputed domain names to attract Internet traffic to commercial websites purportedly reselling without the Complainants' authorization PHILLIES and PADRES baseball tickets and merchandize in direct competition with the Complainants' Official Websites.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal Response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.2 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
There is no indication in the record that the Respondent has ever been commonly known by the disputed domain names, and it is undisputed that the Complainants have not authorized the Respondent to use the Complainants' PADRES and PHILLIES marks. Nor does the record reflect the Respondent's use or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services prior to any notice to it of the dispute. To the contrary, the record in this case reflects the use of the disputed domain names in connection with pay-per-click parking websites to exploit and profit from the Complainants' marks through the creation of initial interest confusion. See Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986 (and decisions cited at paragraph 6.18 therein). Such use of the disputed domain names to trade on Complainants' goodwill and reputation precludes any bona fide offering of goods or services under paragraph 4(c)(iii) of the Policy. See, e.g., First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No. D2000-1840 (for offering under paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under paragraph 4(a)(iii)). See also Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093.
As noted above, while the Respondent provided no answer to the Complaint, it did reply to the Complainants' cease and desist letter. According to the Respondent's reply, the disputed domain names were registered in connection with the Respondent's “www.mysportsmail.com” website, which the Respondent has characterized as a free email service catering to high-school student-athletes and high school teams. The Respondent indicated that evidence of such use might be found on the Internet Archive. Panels not infrequently reference the Internet Archive, commonly known as the “Wayback Machine”, in order to attempt to determine the historic use of a domain name. See, e.g., Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786 (and cases cited therein). The Internet Archive, a non-profit organization, maintains historical web pages that have appeared on the Internet over time, and the archive is available to the public. Id.
The Respondent's apparent contention that is has in the past made a legitimate noncommercial or fair use of the disputed domain names is not sustainable based on this Panel's perusal of the available archival records regarding the historical use of disputed domain names. First, there is evidence that the disputed domain names have been used with pay-per-click parking websites for a number of years. Second, to the extent that the archived records reflect use of the disputed domain names with the “www.mysportsmail.com” webpage, there is indisputable evidence of the Respondent's stockpiling of domain names reflecting the trademarks of a large number of well-known professional sports teams, including a number of other MLB Clubs.
There is no indication that the Respondent was authorized to use such third-party marks, and there is no disclaimer on the Respondent's website of any affiliation with the third parties whose marks the Respondent so appropriated. Nor, despite the Respondent's unsupported allegations, is it clear from the face of the Respondent's website that any intended use of the disputed domain names was purely noncommercial in nature. In short, the available archived records do not in the Panel's opinion demonstrate any legitimate noncommercial or fair use of the disputed domain names within the contemplation of paragraph 4(c)(iii) of the Policy. See also C.S. Lewis (PTE.) Ltd. v. Richard Saville-Smith, WIPO Case No. D2008-0821 (no rights or legitimate interests are established under paragraph 4(c) of the Policy by a respondent's deliberate registration of a domain name appropriating the complainant's mark for use as an email address).
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
The Panel considers it an inescapable conclusion from the undisputed facts and circumstances reflected in the record that the Respondent knew of and had in mind the Complainants' marks when registering the disputed domain names. See Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant, the very use of the domain name by a registrant with no connection to the Complainant suggests “opportunistic bad faith”. See also Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453. In view of the foregoing, and for reasons discussed as well under the preceding heading, the Panel can ascribe no motive for the Respondent's registration and use of the disputed domain names as reflected in the record except to trade on the goodwill associated with the Complainants' marks. See Aubert International SAS and Aubert France SA v. Tucows.com Co., supra. This includes the Respondent's use of the disputed domain names to attract Internet visitors to the Respondent's “www.mysportsmail.com” website, as well as the use of the disputed domain names to attract paid advertising related to the Complainants' marks.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <padresbaseball.com> and <philliesbaseball.com> be transferred to the Complainant MLB Advanced Media.3
William R. Towns
Dated: September 28, 2009
1 The auDRP in many salient respects mirrors the UDRP, and the analysis of the Panel in National Dial A Word Registry Pty Ltd, supra, was adopted by the UDRP Panel in Fulham Football Club (1987) Limited, et. al, supra. The Panel in National Dial A Word Registry Pty Ltd looked for guidance to decisions under the UDRP in arriving at its conclusion. Refer to Section 6 infra.
2 Some panels have held that a respondent's lack of response in particular circumstances can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See, e.g., Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent's failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
3 The Complaint indicates that all domain names associated with the various MLB Clubs are registered in the name of Complainant MLBAM. Thus, the Panel concludes that the disputed domain names should be transferred to MLBAM, in light of the agreement or understanding that exists between the MLB Clubs and MLBAM.