WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cleveland Browns Football Company LLC v. Andrea Denise Dinoia
Case No. D2011-0421
1. The Parties
The Complainant is Cleveland Browns Football Company LLC of Brea, Ohio, United States of America, represented by Debevoise & Plimpton, United States of America.
The Respondent is Andrea Denise Dinoia of Pineto, Italy.
2. The Domain Name and Registrar
The disputed domain name <browns.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2011. On March 4, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On March 7, 2011, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
The Center verified that the 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 March 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2011.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on April 13, 2011. 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.
4. Factual Background
The facts pertaining to the Complainant are taken from the Complaint. The “Cleveland Browns”, also known as the “Browns”, is the name of a professional football team of some sixty years standing, which is owned by the Complainant.
The Complainant owns trademarks including the following:
BROWNS (word mark), United States Patent and Trademark Office (the “USPTO”), principal register, registration number 1,226,244, registered February 1, 1983;
CLEVELAND BROWNS, USPTO, principal register, registration number 1,863,677, registered November 22, 1994;
BROWNSTOWN, USPTO, principal register, registration number 2,778,101, registered October 28, 2003;
BROWNSTOWN (service mark), USPTO, principal register, registration number 3,882,869, registered November 30, 2010;
BROWNS BACKERS, USPTO, principal register, registration number 2,723,649, registered June 10, 2003;
BROWNS MATCHUP, USPTO, principal register, registration number 2,923,920, registered February 1, 2005;
BROWNS (design), Canadian Intellectual Property Office (CIPO), registration number TMA253529, registered December 5, 1980;
CLEVELAND BROWNS, CIPO, registration number TMA249487, registered August 15, 1980.
NFL Properties Europe B.V., (which has since merged with NFL Europe GMBH) is an affiliate of the Complainant that holds a number of the Complainant’s registrations outside of North America, and owns International Registrations for both the BROWNS mark (Registration Number 523079; granted April 6, 1988) and the CLEVELAND BROWNS mark (Registration Number 504249; granted June 5, 1986) that extend coverage to, among other places, Italy. NFL Properties Europe B.V. also owns a trademark registration in the European Union for the CLEVELAND BROWNS mark (Registration Number 001837491 registered September 7, 2001).
Nothing is known about the Respondent other than the registration details provided for the disputed domain name. From the publicly available WhoIs information the disputed domain name appears to have been first registered on November 13, 2001, however the Wayback Machine indicates usage as early as 1998. The Registrar, Fabulous.com, was unable to confirm the original date of registration.
5. Parties’ Contentions
The Complainant details a history of dealings with the Respondent leading up to the filing of the Complaint. As of March 5, 2010, the Complainant states that the disputed domain name was registered to “Gioacchino Zerbo”. On that date the Respondent was sent a cease, desist and transfer letter, a copy of which is produced in evidence. No response to this letter was received and the website of the disputed domain name subsequently became inactive. In these circumstances the Complainant expected that the disputed domain name would lapse on the renewal date of November 13, 2010, however, it was renewed by Mr. Zerbo.
On or about January 4, 2011, the disputed domain name was found to be in use again as a portal site with links to commercial football and other sites. On January 5, 2011, another cease, desist and transfer letter was sent to Mr. Zerbo. No reply was received and on January 12, 2011, the due date for the reply, the name of the registrant was found to have been changed to “Andrea Denise Dinoia” and the disputed domain name was again inactive. The Complainant contends that the foregoing conduct was an attempt to thwart a proceeding under the UDRP.
The Complainant has produced copies of documentary evidence of the trademark and service mark registrations listed in section 4 above. The Complainant says that its name as “Browns” and/or “Cleveland Browns” is distinctive and, by virtue of its membership of the National Football League (“NFL”), is known internationally. Whereas the word “brown” is an ordinary word for a colour, the word “browns” is not.
The Complainant says that the trademarks BROWNS and CLEVELAND BROWNS pre-date the registration of the disputed domain name.
The Complainant contends that the disputed domain name, of which the gTLD directory indicator “.com” may be disregarded, is identical to its trademark BROWNS and confusingly similar to its trademark CLEVELAND BROWNS.
The Complainant contends that the Respondent does not have rights or legitimate interests in the disputed domain name; and has not been authorised to use any domain name incorporating the Complainant’s trademarks. The Respondent has not used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Since the corresponding website has promoted the goods and services of competitors of the Complainant, its use cannot be legitimate. The Respondent has not been commonly known by the disputed domain name, and has not made a noncommercial or fair use of it.
The Complainant further contends that the disputed domain name was registered and has been used in bad faith. The Complainant’s trademarks have been used since 1946, and were famous and distinctive at the time of registration of the disputed domain name. There can be little doubt that the Respondent has been aware of the Complainant’s trademark rights because the website associated with the disputed domain name contained numerous references to the “Browns” and to the NFL; and provided links to football-related websites.
Specifically, in the terms of paragraph 4(b)(iv) of the Policy, visitors to the website of the disputed domain name have been redirected through links to third-party suppliers of goods and services in competition with the Complainant. It is contended that there can be no other purpose in the Respondent having done this than for commercial gain. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks.
It is contended that the present state of inactivity of the disputed domain name is of no consequence because passive holding does not preclude a finding of bad faith.
The Complainant says that the registrant of record, until shortly before the Complainant was filed, Mr. Zerbo, has a history of being the Respondent in at least 26 different domain name complaints, all resulting in transfer. Although the present Respondent “Andrea Denise Dinoia” has not been listed previously as a Respondent, a “Michele Dinoia” has been the Respondent in at least 59 domain name complaints, 53 of which resulted in transfer. It is suggested by the Complainant, partly on the basis of an analysis of the timing and changes of registration between these Parties in previous decided cases, that the named individuals are partners, agents or pseudonyms; and that this may be evidence of cyberflight in the present case. The Complainant submits that previous UDRP decisions may be authority for the position that, in circumstances similar to the present, a new owner of a domain name would have been aware of the content of its website before acquiring it (Interoute Communications Limited v. Gioacchino Zerbo, WIPO Case No. D2010-1345).
The Complainant contends that in the terms of paragraph 4(b)(ii) of the Policy, the Respondent intentionally registered the disputed domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name, and that a pattern of such conduct may be inferred in the event of multiple UDRP cases with similar fact situations, as here.
The Complainant has referred the Panel to a number of other previous UDRP decisions that it considers to be relevant precedent.
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identity of Respondent
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Policy makes clear in preamble note 3 that: “Thus, the policy uses ... "you" and "your" to refer to the domain-name holder”. Furthermore, paragraph 1 of the Rules states: “Respondent means the holder of a domain-name registration against which a complaint is initiated”. The Panel is satisfied that this proceeding was properly initiated against the registrant and named holder of the disputed domain name at the time of the Complaint, i.e., Andrea Denise Dinoia.
B. Identical or Confusingly Similar
The Complainant has produced documentary evidence of ample rights of long standing in the registered trademarks BROWNS, to which the Panel finds that the disputed domain name is clearly identical. On the strength of the evidence that the “Cleveland Browns” team is commonly known as the “Browns”, and the registered trademark status of CLEVELAND BROWNS, BROWNS, and various trademarks incorporating BROWNS, the disputed domain name <browns.com> is found, on the evidence, to be confusingly similar to the trademark CLEVELAND BROWNS. The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has asserted prima facie that as the owner of the trademarks BROWNS and CLEVELAND BROWNS it has not authorised or licensed the Respondent to use them in any way and that it has no relationship with the Respondent. The Respondent has not contested this assertion.
The Respondent had the opportunity to refute the Complainant’s prima facie case by seeking to establish rights or legitimate interests by reference to the provisions of paragraph 4(c) of the Policy, which are without limitation:
“(i) before any notice to you [the Respondent] of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 offered any such refutation, or replied at all, and the Panel is not aware from the evidence of any means by which the Respondent could succeed under the provisions of paragraph 4(c) of the Policy, or otherwise, to establish rights or legitimate interests in the disputed domain name. The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, namely:
“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith registration or use may be found otherwise.
The circumstances of the registration of the disputed domain name require some examination.
According to the evidence including the WhoIs records and enquiries made by the Complainant, the disputed domain name was previously registered in the name of “Gioacchino Zerbo” and last renewed by him on November 13, 2010. On a date between then and January 12, 2011, the name of the registrant was changed to “Andrea Denise Dinoia”, and it is noted that the registration record was updated on January 12, 2011. This raises questions as to whether the disputed domain name had changed ownership, or whether the entity holding it had made an internal administrative change. The possible significance of changes of registration and ownership, whether apparent or substantive, is discussed in part in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 2011 ("WIPO Overview 2.0") at section 3.7.
One possible interpretation of the facts of the present case is that the disputed domain name may have remained within the same entity, under the same guiding mind, before and after the registrant, administrative, technical and billing contacts were changed from “Gioacchino Zerbo” to “Andrea Denise Dinoia” on or before January 12, 2011; and therefore a new registration did not occur with that event. There may be valid reasons for a registrant’s details to be changed without constituting a new registration, for example with a reallocation of responsibilities within a company. On the other hand such a transfer could be an attempt to frustrate anticipated proceedings under the UDRP.
In the exercise of the Panel’s power to make limited enquiries of the public record (section 4.5 of WIPO Overview 2.0), the Wayback Machine was inspected by the Panel and indicated usage of the disputed domain name dating back to 1998 (under construction) with content relating to Cleveland and sport on March 2, 2000. In 2005, specific references and links appeared, to among other things, “Cleveland Browns”, “Cleveland Browns Tickets” and “National Football League”. By 2006, there were additional references to associated merchandise and to other football clubs, with similar content through 2009. The Complainant has produced evidence of content strongly impinging on its trademark and activities until January 4, 2011, interspersed with some periods of inactivity.
The Panel has weighed all the available evidence and the above findings of identity or confusing similarity between the disputed domain name and the Complainant’s trademarks, together with the lack of any Respondent rights or legitimate interests in the disputed domain name. It has also taken into account the absence of any reply to cease and desist letters sent by the Complainant, a factor commonly treated as supporting evidence of bad faith (Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632). On the totality of the evidence and having regard to all the circumstances, the Panel finds it to be more probable than not that the disputed domain name, when transferred into the name of “Andrea Denise Dinoia” on or before January 12, 2011, remained under the same umbrella of effective control as before the transfer, probably in anticipation of an impending proceeding under the UDRP, thereby constituting sufficient evidence of attempted cyberflight to support a finding of registration and use in bad faith.
A consequence of the above finding is that the disputed domain name has been effectively under the control of the same entity from at least as early as 2001 (the apparent registration date) until the present. The nature of the corresponding website since at least as early as 2005 until January 4, 2011, has been essentially a click-through operation in which visitors have been offered links to a variety of goods, services and tickets related to football, and other things. The business model of an Internet click-through or pay-per-click operation is well understood and relies essentially on the attraction of viewers who may decide to follow the referral links offered, for which the website operator may receive commissions and derive commercial gain. Such a business may be legitimate, but it cannot be legitimate, in terms of the UDRP, if another’s trademark is adopted without authority or legitimate reason as the device for attracting the attention of potential visitors by confusion with that trademark. The focus of much of the content of the Respondent’s website, with references to “Cleveland Browns” and the context of football makes it unlikely that the Respondent was unaware of the Complainant and its activities. The Panel finds bad faith registration and use in the terms of paragraph 4(b)(iv) of the Policy.
In the alternative, if it is to be argued that transfer of the disputed domain name to “Andrea Denise Dinoia” created a new registration on or before January 12, 2011, then the findings against the Respondent under paragraphs 4(a)(i) of the Policy (confusing similarity) and 4(a)(ii) of the Policy (lack of Respondent’s rights) remain as decided above, for the reasons previously given. Under paragraph 4(a)(iii) of the Policy however, relating to bad faith registration and use, it is noted that the disputed domain name resolves to a website displaying the message “sito in costruzione”. This may reasonably be interpreted as meaning that the disputed domain is not in use.
A principle widely adopted by panels since shortly after the inception of the UDRP has been to examine all the surrounding circumstances in which a disputed domain name may appear to be, or is claimed to be, held passively without any evident usage or purpose (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The current registrant is the holder of a domain name identical to a well-known trademark of long standing, dating back to 1946. The Respondent, before acquiring the disputed domain name, can reasonably be expected to have conducted diligent enquiries as to the possible trademark significance of the word “browns” and to have ensured, as set out in paragraph 2(b) of the Policy, that “the registration of the domain name will not infringe upon or otherwise violate the rights of any third party”. In the absence of any explanation as to why the current registrant and Respondent “Andrea Denise Dinoia” has registered a well-known trademark as a domain name and has made no genuine use of it or demonstrated any intention to do so, the Panel finds registration and use in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
It is noted that the Complaint invokes paragraph 4(b)(ii) of the Policy, that the Respondent intentionally registered the disputed domain name in order to prevent Complainant from reflecting its trademark in a corresponding domain name. The Panel does not consider there has been sufficient argument to proceed on this point.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <browns.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: April 27, 2011