Arena Football One, LLC d/b/a Arena Football League v. Orlando Predators / Orlando Predators Entertainment, Inc
Claim Number: FA1408001575126
Complainant is Arena Football One, LLC d/b/a Arena Football League (“Complainant”), represented by William Niro, Illinois, USA. Respondent is Orlando Predators / Orlando Predators Entertainment, Inc (“Respondent”), represented by Eamon Kelly of Sperling & Slater, P.C., Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <orlandopredators.com>, registered with Wild West Domains, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Nelson A. Diaz as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 14, 2014; the National Arbitration Forum received payment on August 14, 2014.
On August 14, 2014, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <orlandopredators.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@orlandopredators.com. Also on August 15, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 4, 2014.
On September 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Nelson A. Diaz as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the P ORLANDO PREDATORS mark to promote its football/soccer business. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,379,460 registered Feb. 5, 2008). The domain name is identical to the mark.
Respondent has no rights in the domain name. Further, Respondent was a former operator of the P ORLANDO PREDATORS team, but those rights were terminated on April 30, 2014, and Respondent was obligated to relinquish control of all proprietary materials, including trademarks and domain names. Respondent then make the domain name resolve to a list of sexual predators in the Orlando area as promulgated by the Florida Department of Law Enforcement. The prior relationship between the parties illustrates that using the domain name to show sexual predators is a mere pretext in Respondent’s attempt to avoid transfer of the domain name—the use of the domain name to show information related to sexual predators in the Orlando area arose only after Respondent and Complainant’s business relationship with respect to P ORLANDO PREDATORS came to an end.
Respondent has acted in bad faith. The domain name is being used solely to disrupt Complainant’s business. Respondent’s refusal to hand the domain name over to Complainant evidences bad faith, especially when Complainant has since 1998 otherwise controlled the content of this domain name.
Complainant claims Respondent’s refusal to hand the domain name over to Complainant evidences bad faith, especially when Complainant has since 1998 otherwise controlled the content of this domain name.
B. Respondent
Complainant does not own rights in the trademark ORLANDO PREDATORS, only P ORLANDO PREDATORS. The operating agreement as between the parties did not guarantee or ensure the transfer of any trademark rights to Complainant. Respondent continues to have rights in the ORLANDO PREDATORS mark in the common law manner, as Respondent is the most recent and continuous user of the mark.
Respondent has rights in the domain name. First, Respondent is indeed commonly known by the <orlandopredators.com> domain name. Further, the two parties to this dispute are involved in a broader litigation campaign, of which this UDRP proceeding is but one move made by Complainant. Respondent has rights to continue to use the domain name until such a time as a court of competent jurisdiction determines otherwise.
Respondent did not register and use the domain name in bad faith. First, Respondent obtained control of the domain name through a mutual agreement of the parties—regardless of the parties’ status today, there was goodwill between the parties when Respondent obtained registration. Therefore, there is no bad faith registration. Furthermore, Respondent’s use of the domain name was predominately for purposes of promoting the ORLANDO PREDATORS mark, until the time Complainant purported to terminate the operating agreement and began the now-existing litigation between the parties.
Complainant is using the UDRP in a scheme of reverse domain name hijacking. Complainant knew it entered an agreement with Respondent and allowed the registration of the domain name to Respondent. As such, Complainant clearly understood that showing Policy ¶ 4(a)(iii) bad faith registration was not possible due to Complainant’s own agreement with Respondent.
Preliminary Issue: Legal Issue Outside the Scope of the UDRP
The Parties are involved in two ongoing lawsuits, Arena Football One, LLC v. Orlando Predators Sports Group LLC, Civil Action No. 2014 CH 11988 (Cir. Ct. Cook Cnty, Ill.) and Arena Football One, LLC v. Orlando Predators Sports Group LLC, Civil Action No. 2014 CH 6833 (Cir. Ct. Cook Cnty, Ill.).
Respondent argues that the domain name is a part of the ongoing Illinois state court litigation, that Illinois does have jurisdiction to render a decision transferring the domain name, and that Complainant is circumventing the litigation that Complainant itself elected to start by now resorting to this UDRP. Respondent claims that in any case it is the purview of Illinois state court to decide if it can or will transfer the domain names, and that Respondent is unsure a UDRP panel is in the best position to determine the scope of jurisdiction for the judicial system of an American state such as Illinois. Respondent attached a copy of the civil action complaint.
In situations where concurrent court proceedings are pending, as is the situation with respect to the instant Complaint, some panels have chosen to proceed with the UDRP filing. See W. Fla. Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008) (deciding to proceed under the UDRP despite concurrent court proceedings because “the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation”); see also Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (choosing to proceed under the Despite concurrent court proceedings for multiple reasons, including that the proceedings appeared to be filed in a court that did not commonly adjudicate intellectual property issues and that the court proceedings were filed by the respondent on the same day the response in these proceedings was filed).
This Panel elects to proceed with the UDRP proceedings.
ICANN Policy ¶ 4(a)(i), Policy ¶ 4(a)(ii), Policy ¶ 4(a)(iii), ¶ 4(b)(i), have been violated by Respondent.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has satisfied all of the elements of Policy ¶ 4(a), and thus the Panel finds that Complainant has not engaged in reverse domain name hijacking.
Complainant uses the P ORLANDO PREDATORS mark to promote its football/soccer business. Complainant claims the mark has been registered with the USPTO (e.g., Reg. No. 3,379,460 registered Feb. 5, 2008). The Panel agrees that Respondent’s holding of the P ORLANDO PREDATORS mark shows its rights in that mark for purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant claims the domain name is identical to the mark. The Panel notes the domain name sees the removal of the letter “p,” the removal of the mark’s spacing, and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds the <orlandopredators.com> domain name is confusingly similar to the ORLANDO PREDATORS mark as the changes made are not sufficient to create a distinctive domain name. See, e.g., Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel notes Complainant makes no allegations under Policy ¶ 4(c)(ii), and further notes Respondent is in fact referred to by its business name of “Orlando Predators / Orlando Predators Entertainment, Inc. The Panel believes the subsequent events have in fact barred Respondent from using that name, and the Panel finds Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). See True Value Co. v. Andrew Bucklin d/ba True Value Web, FA 1497691 (Nat. Arb. Forum June 13, 2013):
The Panel is hesitant to recognize Respondent’s company as being commonly known by the disputed domain name when he has demonstrated little evidence of that company’s existence other than . . . the disputed domain name. . . every respondent in a UDRP proceeding could claim a legitimate interest in a disputed domain name merely by virtue of ownership of that name. The Panel believes it is within the consensus of opinions of previous UDRP panels by requiring that Respondent’s company be commonly known as the disputed domain name prior to that name’s registration for Policy ¶ 4(c)(ii) to be invoked successfully.
Further, Complainant claims Respondent was a former operator of the P ORLANDO PREDATORS team, but those rights were terminated on April 30, 2014, and Respondent was obligated to relinquish control of all proprietary materials, including trademarks and domain names. Respondent then made the domain name resolve to a list of sexual predators in the Orlando area as promulgated by the Florida Department of Law Enforcement. See Compl., at Attached Ex. 2. Complainant claims that the prior relationship between the parties illustrates that using the domain name to show sexual predators is a mere pretext in Respondent’s attempt to avoid transfer of the domain name—the use of the domain name to show information related to sexual predators in the Orlando area arose only after Respondent and Complainant’s business relationship with respect to P ORLANDO PREDATORS came to an end. The Panel agrees that Respondent’s use of the domain name to promote the unrelated website is not bona fide or legitimately noncommercial given the prior relationship between the two parties that preceded Respondent’s use of the domain name to create awareness about potential predators in Florida. See, e.g., Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
No Reverse Domain Name Hijacking in the Present Case
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i) and ¶ 4(a)(ii) and thus the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Complainant claims the domain name is being used solely to disrupt Complainant’s business. The Panel agrees that in one sense, the posting of the Florida sexual predators website is not disruptive to Complainant’s business because Respondent’s use has absolutely nothing to do with football/soccer. On the other hand, the Panel agrees the use of the domain name in the context of the two parties battle over the control of the trademark might be viewed as competitive under Policy ¶ 4(b)(iii). See generally Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion). In total, the Panel is inclined to find a Policy ¶ 4(b)(iii) series of disruptive actions here.
Complainant claims Respondent’s refusal to hand the domain name over to Complainant evidences bad faith, especially when Complainant has since 1998 otherwise controlled the content of this domain name. The Panel agrees that Respondent’s refusal to turn over the domain name serves as evidence of bad faith under Policy ¶ 4(a)(iii), because the Panel does believe the agreement between the parties is in breach. See, e.g., MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding bad faith use and registration where a disgruntled former employee registered an infringing domain name to open an online business that competed with the complainant); Procter & Gamble Co. v. Hlad, FA 126656 (Nat. Arb. Forum Nov. 20, 2002) (finding that the disputed domain name was registered and used in bad faith where the respondent, a distributor of the complainant’s products who was not a licensee of the complainant, used the complainant’s mark in its domain name, suggesting a broader relationship with the complainant and fostering the inference that the respondent was the creator of the complainant’s products rather than a mere distributor).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <orlandopredators.com> domain name be TRANSFERRED from Respondent to Complainant
Hon. Nelson A. Diaz, Panelist
Dated: September 25, 2014
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