WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Football League v. EE Nation (Patricia Maggio)
Case No. D2011-1228
1. The Parties
Complainant is National Football League, New York, United States of America represented by Debevoise & Plimpton, United States of America.
Respondent is EE Nation (Patricia Maggio), Texas, United States of America and Illinois, United States of America, respectively.
2. The Domain Name and Registrar
The disputed domain name <superbowlconcierge.com> (the “Domain Name”) is registered with DomainPeople, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2011. On July 19, 2011, the Center transmitted by email to DomainPeople, Inc. a request for registrar verification in connection with the Domain Name. On July 21, 2011, DomainPeople, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 12, 2011.
The Center appointed Mr. Christopher S. Gibson, as the sole panelist in this matter on August 26, 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 August 12, 2011, after the Response due date, the Center received an email from Mr. Ray Maggio submitting arguments on support of the Respondent. In this regard, the Center acknowledged receipt of the email and informed the sender that said communication would be brought to the Panel’s attention and it would be at the discretion of the Panel to consider it. The Panel has determined that it will consider the email received on August 12th, which is included below.
The Respondent has sent at least four additional emails, all of which were received by the Center after the August 12, 2011 submission and after deadline for the Response. These emails have been brought to the Panel’s attention. Although the Panel has reviewed these communications, they do not change the Panel’s position as set forth below.
4. Factual Background
Complainant, National Football League (NFL), is an unincorporated association of thirty-two Member Clubs, each of which owns and operates a professional football team. For over 80 years, the NFL and its Member Clubs have provided entertainment to sports fans worldwide in the form of professional American football games. The NFL has televised live broadcasts of its football games since 1958, and NFL games are watched by millions of American viewers each week and millions more around the world.
Complainant’s championship game is known as the “Super Bowl.” The Super Bowl game is popular with both sports fans and the general public, and is among the highest-rated television programs in the United States. According to press reports, the Super Bowl game held on February 6, 2011 in Arlington, Texas (Super Bowl XLV) was the most watched television program in American history, with an average of 111 million viewers, and with a total of 162.9 million people in the United States watching at least some part of the game.
Complainant is the owner of a number of federally registered trademarks in the United States for the SUPER BOWL trademark, including Reg. Nos. 882283, 2954420, 3138590 and 3343714. The oldest, Reg. No. 882283, was filed and registered in 1969 and includes a claimed date of first use and use in commerce of 1967. The SUPER BOWL trademark (in particular, Reg. Nos. 882283 and 2954420) is incontestable in the United States pursuant to Section 15 of the Lanham Act. The SUPER BOWL mark is also registered in over fifty jurisdictions outside the United States.
Complainant’s official website for the Super Bowl game is located at “www.superbowl.com”. This domain name was registered by the NFL on December 23, 1995.
Respondent registered the Domain Name on January 26, 2007.
5. Parties’ Contentions
Complainant contends that as a result of extensive advertising, marketing and unsolicited media coverage, its SUPER BOWL mark has come to be recognized and relied upon by the trade and the public as identifying Complainant and its sports entertainment services.
Complainant controls the distribution of all Super Bowl game tickets. It operates “NFL On Location”, an official service that provides Super Bowl packages. Groups can choose from a number of packages, which can include tickets, accommodations and exclusive game day hospitality. Complainant also authorized the Super Bowl XLV host committee to operate an official fan reservation service for Super Bowl XLV. This service was designed to provide accommodations to individuals and groups coming to Texas for Super Bowl XLV. Moreover, Complainant operates an official service that organizes Super Bowl-related parties and hospitality events. One of those events is the “NFL Super Bowl Touchdown Club”, which includes food, an open bar and entertainment. The “NFL Super Bowl Touchdown Club” provides a party atmosphere for football fans attending the Super Bowl game. In addition, it is well known that, during the days surrounding the Super Bowl game, the NFL and the Super Bowl host committee each host or co-host a number of official events and parties.
Respondent registered the Domain Name without authorization from Complainant, long after Complainant had established rights in the SUPER BOWL mark.
When a user arrives at Respondent’s site, he or she will see “Super Bowl Concierge” in large bold letters displayed prominently at the top of the page. Directly below is a flash window that states: “Welcome to Super Bowl Concierge.” The flash window shuffles through various still photographs of Member Clubs’ stadiums, Super Bowl tickets, the official Super Bowl logo, a giant official NFL football with “NFL” displayed, a picture of the Dallas Cowboys’ field with part of the word “cowboys” visible, and other NFL scenes. Flanking the flash window are two official football helmets with the logos and colors of the Pittsburgh Steelers and Green Bay Packers, the two teams who participated in the most recent Super Bowl game. None of these uses has been authorized by Complainant.
If a user scrolls down Respondent’s website, several links at the bottom indicate “Hotels/Rooms” and “Super Bowl Packages.” These are precisely the kinds of services that the NFL offers through its “NFL On Location Service” and it’s “NFL Super Bowl Touchdown Club”. If a user clicks on the “Hotels/Rooms” link, he or she will be taken to a separate page, which displays “Super Bowl Concierge” at the top, above pictures of NFL players in their official NFL uniform and helmet designs as well as football fields, with hyperlinks below that are labeled, for example, “Dallas Lodging” and “Fort Worth Lodging.” If a user clicks on the “Super Bowl Packages” link at the bottom of Respondent’s website, he or she will be taken to a separate Web page for transportation and tickets to Super Bowl XLV. This Web page prominently displays “Super Bowl Concierge” at the top, and offers eight different packages of tickets and transportation to the Super Bowl game. These features on Respondent’s website compete directly with Complainant’s official fan reservation service and the “NFL On Location” service. Other links on Respondent’s website, with offers for concerts, sports events and TV programming, compete at least in part for consumers of NFL services.
Complainant has sent four cease and desist letters to Respondent in January and April, 2008, and in January and October, 2010, objecting to the unauthorized use of Complainant’s trademarks and other intellectual property on Respondent’s website and objecting, in particular, to Respondent’s use of the Domain Name and demanding that it be transferred to Complainant. Respondent did not respond to any of these letters.
Complainant contends that Respondent is aware of Complainant’s rights in the SUPER BOWL mark at the time it registered the Domain Name, given the widespread fame of the Super Bowl game and mark -especially in the United States where Respondent is located - and the fact that Respondent’s business capitalizes on public knowledge of the SUPER BOWL mark and game in order to offer for sale accommodations, tickets and other services to that game.
With respect to the three key elements of the UDRP, Complainant contends first that the Domain Name is confusingly similar to Complainant’s famous SUPER BOWL trademark. Confusing similarity exists because the Domain Name incorporates the SUPER BOWL mark in its entirety and simply adds a generic or common term. It is well established that the addition of a gTLD such as “.com” and/or the elimination of spaces are without legal significance in determining similarity. Respondent’s registration is even more likely to create confusion because of the ongoing activities of the “NFL On Location” service and the Super Bowl host committee’s fan reservation service and the official events and parties hosted by the NFL and the Super Bowl host committee around the time of the Super Bowl game. Thus, the overall impression given to an Internet user by the Domain Name makes it appear that it is Complainant’s domain name.
Complainant maintains that Respondent lacks rights to or legitimate interests in the Domain Name under all three provisions of 4(c) of the Policy: (1) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services; (2) Respondent is not commonly known by the Domain Name; and (3) Respondent is not making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers. There is no relationship or affiliation between Complainant and Respondent giving rise to any license, permission or other right by which Respondent could own or use any domain name incorporating Complainant’s SUPER BOWL mark. Respondent is not commonly known as “Super Bowl Concierge”; instead, it is an entity known as EE Nation, operated by an individual named Patricia Maggio. Nor could the Respondent become known by the Domain Name – in light of Complainant’s continuous use of the SUPER BOWL mark for nearly 40 years prior to the earliest date on which the Respondent registered the Domain Name – without infringing on the exclusive trademark rights of the Complainant. Although Respondent operates its website under the name “Super Bowl Concierge,” which incorporates the SUPER BOWL mark, this is clearly insufficient to establish a legitimate interest in the Domain Name. Respondent only began to employ this name in connection with its registration of the Domain Name, long after rights were established by Complainant in its SUPER BOWL mark.
Complainant states that with respect to the Policy 4(c)(i), the critical question is not whether there was a prior offering of goods or services, but whether the offering was bona fide. Respondent’s unauthorized and infringing use of the Domain Name, which intentionally trades on the fame of Complainant’s mark, cannot be bona fide. WIPO panels consistently have held, in highly similar factual scenarios, that a registrant’s use of a famous trademark to attract users to a site offering goods or services that compete with those offered by the mark holder is trademark infringement and cannot constitute a bona fide offering within the meaning of the Policy. Moreover, Respondent uses the Domain Name to offer services not only for the Super Bowl game, but also for non- Super Bowl related services, in a bait and switch. Complainant also states that Respondent’s use of the Domain Name fails under 4(c)(iii) of the Policy, because Respondent’s use of the website is for the purpose of commercial gain, as it clearly is a commercial website that seeks to profit from an association with Complainant. Nor can Respondent claim that its use is fair, because it uses the Domain Name in order to divert consumers to its own site for commercial gain. In sum, Respondent’s use of the Domain Name unlawfully trades off the value and goodwill of Complainant’s SUPER BOWL mark.
Finally, Complainant maintains that the Domain Name has been registered and used in bad faith pursuant to Policy 4(b)(iv). According to Complainant, Respondent registered the Domain Name in order to confuse Internet users who were expecting to find a website belonging to or associated with the NFL and to divert these users to Respondent’s commercial website (to sell accommodations and packages to the Super Bowl game as well as other goods and services), and Respondent continues to derive a commercial benefit from its suggested affiliation with Complainant. WIPO panels consistently have held, in almost identical factual scenarios, that a registrant’s use of a famous trademark to attract users to a site that offers goods or services that compete with those offered by the trademark holder constitutes bad faith within the meaning of the Policy.
In addition, Complainant urges the Super Bowl Domain Name has been registered and used in bad faith under Policy 4(b)(iii) because Respondent’s activities in offering accommodations for the Super Bowl game and tickets to Super Bowl events compete with those services offered by Complainant and the Super Bowl host committee (which receives the NFL’s authorization). Respondent thus registered the Domain Name primarily for the purpose of disrupting the business of a competitor. Moreover, the disclaimer that appears on Respondent’s website - in tiny print at the very bottom of the page - is insufficient to prevent consumer confusion, especially initial interest confusion. This is especially true given the prominent use of the SUPER BOWL mark in the Domain Name and at the top of the webpage as part of the name of Respondent’s business as well as the use of the official team helmets/logos of the teams that participated in last year’s Super Bowl game. In fact, Respondent’s use of a disclaimer that states that its website is not affiliated with any “box office, promoter, venue, theatre, stadium or teams,” and that “and any copyrights, trademarks, trade names used within this web site are for descriptive purposes only,” highlights the fact that Respondent expected users to be confused about Respondent’s association with Complainant. Thus, the disclaimer comes too late to negate the effect of the user’s initial mistaken impression.
As noted above, Respondent did not submit a Response. However, after the deadline for submitting a response had passed, the Center received the following email from Ray Maggio:
The name SuperBowlConcierge.com was made years ago to just give useful knowledge of professional games, with no intention to harm anyone or profit anything.
The NFL contacted us years ago to remove pictures, etc, so we did, then they wanted the name. We revised the website to being a big Soup Bowl, with helpful information regarding a big event.
What should we do in order to make the name ours, since we've paid for the domain years ago? If we have to reword the site, I have no problem with doing that, it's just our name, with no intent to harm anyone.
What should we do to keep the name ours?
I understand they have other websites similar to Super Bowl, to make profits, but not hours. We intend to pass along useful information to everyone, without any type of profit for ourselves. I believe they have a Super Bowl lanes somewhere in the US, bowling,
Should I make the website differently to look like a big Super Bowl shaped object, referring to travel and nothing to do with football?
Please let me know what to do because I believe if they wanted domain names with any type of combination with Super Bowl, they should have purchased them a long time ago.
I would be happy to revise the entire site, but don't want to lose the site. Please let me know what to do.
Super Bowl Concierge”
6. Discussion and Findings
As has been recited in many UDRP decisions, in order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied, as follows:
(1) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(3) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel determines that Complainant is the owner of the well-known mark SUPER BOWL which is known to millions of Americans and sports fans around the world. This mark has been used in commerce since at least 1967.
The Panel also finds that the Domain Name <superbowlconcierge.com> is confusingly similar to Complainant’s mark. Confusing similarity exists because the Domain Name, aside from the addition of the gTLD “.com” and the elimination of spaces between three words, incorporates the SUPER BOWL mark in its entirety and simply adds a generic and descriptive term, “concierge”. See, e.g., Six Continents Hotels, Inc. v. credoNIC.com, WIPO No. D2004-0987 (February 4, 2005) (the “addition of generic terms or common terms to a mark does not change the overall impression of the designations as being domain names connected to Complainant.when a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar”); National Football League v. Peter Blucher, WIPO No. D2007-1064 (September 24, 2007) <superbowlxliiipackages.com> confusingly similar to SUPER BOWL trademark to satisfy first factor of the Policy); National Football League v. Alan D. Bachand, Nathalie M. Bachand d/b/a superbowl-rooms.com, WIPO No. D2009-0121 (April 20, 2009) <superbowlroom.com> confusingly similar to Complainant’s SUPER BOWL mark.
Because the Domain Name is identical or confusingly similar to the trademark of Complainant, the Panel considers that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
A complainant is normally required to make out a prima facie case that respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See WIPO Overview 2.0, paragraph 2.1.
In this case, Complainant has demonstrated that it owns the well-known SUPER BOWL trademark and that it has not authorized use by Respondent of this trademark in the Domain Name or otherwise. Respondent is not commonly known as “Super Bowl Concierge”, nor is Respondent affiliated with, sanctioned or sponsored by Complainant. Complainant contends that Respondent is using the mark to compete improperly with Complainant. As noted above, it is clear that Respondent only began to use this name for the Domain Name long after rights were established by Complainant in its SUPER BOWL mark. The Panel finds that Respondent’s unauthorized use of the Domain Name intentionally trades on the fame of Complainant’s mark, which is not a bona fide use. See Disney Enterprises v. Janice McSherry, NAF No. 15489 (June 17, 2003) (unauthorized use of name “Disney Vacation Villas” on website does not establish legitimate interests in <disneyvacationvillas.com>).
The Panel finds that Complainant has made a prima facie showing that Respondent does not have rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
Accordingly, once Complainant has established its prima facie case, the burden is on Respondent to prove it has a right or legitimate interest in the Domain Name. Here, Respondent has failed to submit a Response but did send an untimely email, which is set forth in full above and has been considered by the Panel. Respondent’s email, however, does not respond to Complainant’s allegations and fails to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the Domain Name. Instead, Respondent pleads for advice on how it can hang on to the Domain Name by changing its practices, amending the language on its website, or adopting proper uses for the Domain Name. The UDRP, however, is not a procedure for advising domain name registrants of their responsibilities. Indeed, paragraph 2 of the UDRP places burden on registrants where it states: "It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights."
The Panel thus finds that Respondent has no rights or legitimate interests in respect of the Domain Name pursuant to Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
With Respondent’s lack of any right or legitimate interest in the Domain Name, the Panel is left to determine whether the Domain Name was registered and is being used in bad faith. The Panel finds that this is the case. Respondent’s use of the Domain Name to promote Super Bowl-related services demonstrates that Respondent targeted Complainant and its SUPER BOWL trademark when it registered the Domain Name. Respondent then used the Domain Name to take advantage of Complainant’s goodwill and to divert users to Respondent’s commercial website, which offered directly competitive services. As noted above, WIPO panels have held that a registrant’s use of a famous trademark to attract users to a site that offers goods or services that compete with those offered by the trademark holder constitutes bad faith within the meaning of the Policy. See National Football League v. Vernard Bonner, WIPO No. D2008-0605 (May 29, 2008) (“Respondent registered the domain name at issue at a time when Complainant’s mark had attained nationwide and worldwide recognition, and Respondent could not have been unaware of Complainant’s mark. Not only did Respondent use the domain name at issue to resolve to a web site on which Complainant’s famous mark was prominently featured, but the web site also contained uses of other intellectual property of Complainant and advertised events that directly competed with Complainant’s staged events”).
For all of the above reasons, the Panel finds that all the Domain Name was registered and is being used in bad faith pursuant to Policy.
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, <superbowlconcierge.com>, be transferred to Complainant.
Christopher S. Gibson
Dated: September 25, 2011