WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Tournament of Roses Association v. Rose City Enterprises
Case No. D2011-0898
1. The Parties
The Complainant is The Tournament of Roses Association of Pasadena, California, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is Rose City Enterprises of Pasadena, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <roseparade.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2011. On May 25, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 June 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2011. The Response was filed with the Center on June 29, 2011.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 8, 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.
On July 15, 2011, the Complainant submitted to the Center a supplemental filing to reply to certain points raised in the Response. On July 29, 2011, the Respondent countered with its own supplemental filing.
4. Factual Background
The Complainant is a California corporation based in Pasadena, California, which has organized and hosted the annual Tournament of Roses festivals in Pasadena on New Year’s Day since 1895. The festival is launched with a procession of flower-covered floats and vehicles, which has been known as the “Rose Parade” since 1935. An invitational, post-season college game of American football has been a part of the annual events since 1902, and the Complainant has hosted the game in its own stadium, the Rose Bowl, since 1923. Beginning in 1947, the Rose Bowl game became a prestigious match between winning teams from major American collegiate football conferences. The Rose Bowl game is preceded by the Rose Parade, which has been broadcast nationally in its entirety since 1952. The two events are widely publicized and reported, and watching the parade and game on television has been a popular New Year’s Day tradition in the United States for decades. In 2010, the Rose Parade procession had an estimated 51 million viewers in the United States and was also broadcast in 220 other countries and territories.
The Rose Parade has been used to promote Pasadena and surrounding parts of Southern California, and studies in 2005 and 2008 estimated that the parade and related events generate some USD 200 million annually in direct spending in the region. It is undisputed that commercial companies, local governments, and other entities also spend substantial sums to sponsor or participate in the related events, presumably because of their advertising value. The Complainant itself earns more than USD 1 million annually in royalties from licensing its ROSE PARADE and related marks.
The Complainant owns a number of United States trademark registrations for ROSE PARADE and related marks in several classes of goods and services, including the following:
US REG. NUMBER
THE ROSE PARADE
September 30, 1975
October 4, 1994
ROSE BOWL PARADE
November 1, 2005
The Complainant operates a website at “www.tournamentofroses.com” and owns several other domain names that redirect to that website, including <roseparade.net> and <rosebowl.com>.
According to the Registrar, the Domain Name was created on May 25, 1997. The Response states that “the Respondent” purchased the Domain Name in 1997. The Response does not identify the Respondent “Rose City Enterprises” or its business, and there is no evidence in the record or in the relevant state business entities database that the Respondent “Rose City Enterprises” actually exists as a legal entity. It may be a trade name or alter ego for Dr. Tim Langdell of Pasadena, the administrative contact listed for the Domain Name, who filed the Response in this proceeding, listing himself as the contact for the Respondent. (The Response does not indicate whether this is the same Dr. Tim Langdell of Pasadena, founder of video game developer Edge Games, who has been involved in several highly publicized trademark disputes in recent years.) As a consequence, the Panel has very little information concerning the Respondent or its plans for the Domain Name apart from the statement in the Response that the Domain Name was registered “to make a legitimate non-commercial or fair use of the domain name”.
It is not disputed that, as the Respondent asserts, the Domain Name has been “locked” since the Complainant learned of the Domain Name registration and corresponded with the Registrar in 1997. The Complainant states that the Respondent has not been paying maintenance or renewal fees for the Domain Name since then, and the Respondent does not dispute this. Registrar locks for domain names in the “.com” top-level domain indicate that the registration of a domain name cannot be modified, deleted, or transferred. See ICANN Policy on Transfer of Registrations between Registrars (“www.icann.org/en/transfers/policy-en.htm”); DomainTools Guide to Domain Name Status Codes (“http://whois.domaintools.com/domain-help/status-codes.php”). The Response attaches an email from the Registrar confirming that the “original ‘Lock’ was done in 1997 per a trademark dispute.” It does not appear from the record that the Complainant pursued a transfer or cancellation of the Domain Name subsequently, through the UDRP or litigation, until the current proceeding. It also does not appear from the record that the Respondent has taken steps to remove the registrar lock over the past 14 years.
According to screen shots furnished with the Complaint, in November 2010 and May 2011 the Domain Name resolved to a pay-per-click (PPC) advertising portal headed with the Registrar’s name and a message stating that the website was “under construction”. The portal displayed links for third parties offering tickets or accommodations in connection with the Complainant’s ROSE PARADE, TOURNAMENT OF ROSES, and ROSE BOWL events, as well for other sporting and entertainment events, and for goods and services such as parade supplies and the purchase and delivery of roses. These links were evidently generated automatically by key word relevance to the Domain Name. The record does not indicate whether the Respondent received any PPC compensation from these advertising links.
A June 17, 2011 email to Dr. Langdell from the Registrar’s legal office acknowledges Dr. Langdell’s request to change the “Standard Under Construction page” (as displayed in November 2010 and May 2011, with PPC advertising links) to the Registrar’s “Generic Under Construction page”, to which the Domain Name currently resolves. This merely displays a message that the website is under construction and “coming soon”, with no third-party advertising links.
Beginning in November 2010, the Complainant’s licensing representative sent a series of letters and emails to the Respondent, using the contact information shown in the Registrar’s WhoIs database, which was evidently not current information for the Respondent. The Respondent denies receiving these communications. On June 15, 2011, Dr. Langdell communicated with the Center on behalf of the Respondent, acknowledging receipt of a facsimile notice of the current Complaint and providing updated postal and email contact details.
5. Parties’ Contentions
The Complainant observes that the Domain Name incorporates the Complainant’s ROSE PARADE mark in its entirety and argues that the Respondent has no rights or legitimate interests in the Domain Name.
Given the fame of the ROSE PARADE mark and related marks, the Complainant concludes that the Domain Name was registered and used in a bad faith attempt to capitalize on the marks for commercial gain. The Complainant also contends that the Respondent’s “passive holding” of a domain name identical to a well-known mark for more than a decade reflects bad faith within the meaning of the Policy.
The Respondent concedes that the Complainant holds the marks at issue but argues that the Complainant chiefly uses the marks THE ROSE PARADE and TOURNAMENT OF ROSES, which are not identical to the Domain Name, in connection with its ROSE PARADE events. The Respondent contends that the absence of the article “the” in the Domain Name distinguishes it from the Complainant’s mark THE ROSE PARADE. The Respondent also asserts that, because the Complainant’s ROSE PARADE mark is used in connection with jewelry and apparel and not for Internet-related sales or advertising by the Complainant, it would not be confused with the Domain Name.
The Respondent contends that it purchased the Domain Name in 1997 with the intent of making “legitimate non-commercial or fair use of the domain” and not for the purpose of misleading consumers for commercial gain. The Respondent states that it never made such noncommercial use of the Domain Name because the Complainant or some other party promptly “filed a complaint” with the Registrar in 1997, which resulted in the Registrar placing a “trademark dispute lock” on the Domain Name. The Respondent argues that the PPC links formerly displayed on the website associated with the Domain Name were placed by the Registrar and not by the Respondent. The Respondent also argues that the Complainant, which has allowed the Domain Name to remain in registrar lock status for 14 years and has not pursued the registrants of similar domain names, is not genuinely interested in the Domain Name but seems to be “singling Respondent out solely to harass it”.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name 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 in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Supplemental Filings
The Complainant submitted a Reply, along with an explanatory Request to File Reply, to contest “newly asserted facts” raised in the Response. The Respondent submitted a supplemental filing in reply to the Complainant’s submission.
The Rules direct panels to conduct Policy proceedings “with due expedition” (paragraph 10) and make no provision for supplemental filings other than at the request of the panel (paragraph 12). A party’s submission of additional facts or arguments may be viewed as an invitation to the panel to exercise its discretion to consider material beyond that which was included in the complaint and response.
The panel in The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447, made these general observations about such requests:
“The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules (citations omitted). The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.”
The Complainant seeks to reply to two arguments advanced in the Response: (1) that the links on the website associated with the Domain Name were placed by the Registrar, not the Respondent, and (2) that the Complainant did not evince a serious interest in pursuing the Domain Name after having it “locked” by the Registrar in 1997. The Complainant’s submission is a limited factual and legal reply to these unanticipated arguments, presented succinctly and in time to be considered without delaying the proceeding. The Respondent’s supplemental filing addresses the same points. Accordingly, the Panel accepts both the Complainant’s and the Respondent’s supplemental filings as a part of the record on which the decision is based.
B. Identical or Confusingly Similar
The Domain Name (apart from the “.com” top level domain portion of the DNS address, which is irrelevant for Policy purposes) is identical to the Complainant’s registered ROSE PARADE mark. Moreover, the Domain Name is confusingly similar in sight, sound, and sense to the Complainant’s registered marks THE ROSE PARADE and ROSE BOWL PARADE.
The Respondent’s comments about the Complainant’s use of the various marks and the unlikelihood of confusion are unpersuasive and inapposite. The first element of a complaint under the UDRP is generally viewed as a “standing” requirement, not a requirement to establish trademark infringement. UDRP panels typically apply a “low threshold” test for confusing similarity under the first element of a Policy complaint, proceeding to the merits of the case under the other elements of the Policy if there is “sufficient similarity” between the disputed domain name and the relevant trademark. This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression. See, e.g., Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011 (and cases cited therein). That test is amply satisfied here.
Accordingly, the Panel concludes that the first element of the Complaint has been established.
C. Rights or Legitimate Interests
It is undisputed that the Complainant has not authorized the use of its marks in the Domain Name. The Policy, paragraph 4(c), lists nonexclusive circumstances under which a respondent could nevertheless demonstrate rights or legitimate interests in a domain name, including the following on which the Respondent implicitly relies:
“(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 argues that its intent was to make noncommercial use of the Domain Name and suggests that the registrar lock imposed shortly after registration prevented the Respondent from doing so:
“In 1997 at the time Respondent purchased the domain name roseparade.com, the Respondent intended to make a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue. However, before Respondent could make such legitimate non-commercial or fair use of the domain name, Complainant filed a complaint with Respondent’s registrar, Network Solutions, in 1997 which caused Respondent’s registrar to place the domain name roseparade.com in a trademark dispute lock where it has remained ever since . . . .”
The Respondent’s intended use is not described, and the Response includes no evidence concerning demonstrable preparations to use the Domain Name for any legitimate, noncommercial purpose. There is also no evidence in the record supporting the Respondent’s claim that the 1997 registrar lock, which prevented the transfer of the Domain Name, also prevented the Respondent from exercising any control over the use of the Domain Name over the past 14 years. Indeed, in June 2011, at the Respondent’s request, the Registrar changed the page to which the Domain Name resolved so that it no longer displayed PPC advertising links. Moreover, the Complainant contends that after the UDRP was adopted in October 1999, the Registrar’s policy allowed the Respondent to remove the registrar lock in the absence of an actual UDRP or judicial complaint, and the Respondent did not do so. This appears to be an accurate characterization of the Registrar’s current policy as published on its website with respect to registrar locks based on trademark or UDRP disputes.
Thus, the Respondent relies on a baldly asserted intent to make noncommercial use of the Domain Name, with no supporting detail, and with no evidence of such use over a period of 14 years. Instead, the Respondent permitted the Domain Name to be used commercially to display PPC advertising links. The Respondent has not demonstrated that the Registrar prevented any legitimate use of the Domain Name over the past 14 years, or that the Respondent was unable to control PPC use of the Domain Name.
The Panel concludes that the second element of the Complaint has been established.
D. Registered and Used in Bad Faith
The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following:
“(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 web site or location.”
The Respondent denies such intent. However, the Respondent (a Pasadena resident) does not deny prior knowledge of the Complainant’s highly publicized ROSE PARADE events and marks. As discussed above in connection with the second element of the Complaint, the Respondent has failed to provide convincing evidence of an alternative, legitimate motivation for registering a domain name identical or confusingly similar to the Complainant’s well-known and long established marks, or for allowing the Domain Name to be used for PPC advertising.
The Respondent asserts that the Registrar automatically placed the PPC links on a landing page associated with the Domain Name, a common practice with respect to undeveloped domain names. But the Respondent allowed this practice to continue at least since November 2010, before directing the Registrar in June 2011 to replace the landing page with a generic “under construction” message.
Even without developing its own website associated with the Domain Name, the Respondent’s passive holding of a domain name identical or confusingly similar to such well-established marks could represent bad faith for purposes of paragraph 4(b) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, sec. 3.2 (and cases cited therein); Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith). In this case, where the Respondent offers no proof of a legitimate, non-infringing use of the Domain Name over a period of 14 years, or even preparations for such use, the presumption is warranted that the Respondent registered and held the Domain Name because it sought in some fashion to trade on the strong reputation associated with the Complainant’s corresponding marks. This reflects bad faith for purposes of the Policy.
The Panel rejects the Respondent’s suggestion that the Complaint should not be granted because the Complainant evinced a lack of interest in the Domain Name and failed to pursue a UDRP decision for more than a decade. There has been recent discussion by some panels on whether to apply the equitable principle of “laches” in a UDRP proceeding. This Panel endorses the reasoning of the three-person UDRP panel in Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011, on this point:
“The parties in the current proceeding are both located in the United States, where courts recognize the equitable doctrine of laches, which can result in the dismissal of a complaint for undue delay in asserting legal claims. However, in the United States, the defense of laches typically bars the recovery of damages incurred before the filing of a lawsuit, and courts have concluded that the rationale behind the doctrine of laches does not militate against injunctive relief in a trademark action that seeks to avoid future confusion in the marketplace. See 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed. 2005) §31:10, p. 31-35 and cases cited therein. The remedies under the Policy are similarly injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of goods or services. Thus, UDRP panels have generally declined to apply the doctrine of laches. [Citations omitted] . . .
…[h]owever, the Panel observes that lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the complainant’s arguments with respect to the respondent’s rights or legitimate interests in the disputed domain name, or the respondent's alleged bad faith in registering and using the domain name. The Panel considers it more appropriate to address such issues squarely within the terms of paragraphs 4(a)(ii) and (iii) of the Policy, rather than analyzing them under the equitable doctrine of laches.”
In this case, despite the passage of time, there is sufficient evidence on the available record to conclude that the Complainant has established the second and third elements of the Complaint, and that the Complainant is entitled to relief under the Policy to avoid “future confusion in the marketplace”.
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 Name, <roseparade.com>, be transferred to the Complainant.
W. Scott Blackmer
Dated: August 1, 2011