DECISION

J.W. Spear & Sons PLC v. Fun League Management

Claim Number: FA0308000180628

PARTIES

Complainant is J.W. Spear & Sons PLC, El Segundo, CA (“Complainant”) represented by William Dunnegan of Perkins & Dunnegan. Respondent is Fun League Management, Duluth, GA (“Respondent”) represented by Jennifer Osbon.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <scrabblemania.com> registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Clive Elliott as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 6, 2003; the Forum received a hard copy of the Complaint on August 11, 2003.

On August 11, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <scrabblemania.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On August 28, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 17, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@scrabblemania.com by e-mail.

A timely Response was received by e-mail and determined to be complete on September 17, 2003. However, the hard copy arrived after the deadline for a Response.

Complainant submitted a timely and complete Additional Submission on September 22, 2003.

On September 29, 2003 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Clive Elliott as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant has provided evidence of trademark registrations for the SCRABBLE mark in several countries throughout the world, (other than the United States and Canada) including Australia, Ireland, New Zealand and South Africa.

In Mattel, Inc. and J.W. Spear & Sons, PLC v. Hasbro, Inc., Hasbro Interactive Worldwide, Inc., Milton Bradley Company, Network Solutions, Inc. and Does 1-20, in the United States District Court for the Central District of California, the Court found: “Mattel owns all right, title and interest in and to SCRABBLE products and services for every market in the world except for the United States, Canada and their respective territories.”

Complainant claims that the registration of this domain name blocks Complainant from using this domain name for its own business. Complainant asserts that Respondent is not commonly known by the Scrabble name and has acquired no trademark or service mark rights in the <scrabblemania.com> domain name.

Complainant says Respondent has used the domain name <scrabblemania.com> with the intent to trade on the goodwill Complainant has earned in its SCRABBLE products, and to enhance the commercial value of his own services. Respondent has created a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, as well as damaged the reputation, business and goodwill of Complainant.

B. Respondent

Respondent submitted a timely Response to the Forum via e-mail. However, the hard copy of the Response was not received in a timely fashion. Therefore, the Forum considers this Response to be a deficient submission because it is not in compliance with Rule (5)(a). At its discretion, the Panel may decide whether to consider Respondent’s deficient submission. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the Response is solely in the discretion of the Panelist); and Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a Panel may consider a response which was one day late, and received before a Panelist was appointed and any consideration made).

The Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight, in line with the principles enunciated in the above decisions.

Respondent (Fun League Management) is in the business of operating a series of online Scrabble leagues. Scrabblemania is one of those leagues.

Respondent recognizes that Mattel owns the Scrabble trademark in all countries except the United States and Canada, and respects the Certificates of Registration for the trademark in all of the countries listed in the complaint.

The following official Scrabble sites are said to be well known:

<scrabble.com> for Hasbro, <mattelscrabble.com> for Mattel.

Respondent contends that its <scrabblemania.com> domain name is not confusingly similar to Complainant’s SCRABBLE mark because the addition of the suffix “mania” indicates that there is something interactive at Respondent’s website.

Respondent contends their site contains the word Scrabble but the “mania” suffix indicates that there is actually something interactive on their site. Respondent states they are not in the business of selling game boards or any other item that carries the Scrabble trademark, so claim that they are not taking any revenue or brand equity from the trademark holders. Respondent admits that they do serve as an outlet for the Scrabble Complete software game (Hasbro-Infogrames partnership), but they are selling the game at cost, so that players have software to play online. As such, it is asserted that Fun League Management is a client of Hasbro. It is argued that the Internet crosses the boundaries of the United States and Canada, and Respondent’s intent is to have customers exclusively from those two countries. Respondent claims that differences in time zones around the world impact the real-time aspect of their league enough that is impractical to include players from Europe, Asia, Africa, or Oceana.

Respondent claims their goals, as stated in several instances on their website, is to grow the game of Scrabble, especially via online versions. They believe that this is consistent with protecting and enhancing the brands of all trademark holders of Scrabble. They note that there are many other websites that either contain the word Scrabble in the domain name (<scrabbleboard.com>, for example), or provide Scrabble-related services (<gamespy.com>). It is contended that these sites also do not detract from the brands of trademark holders.

Respondent states that they are in a completely different line of business than Mattel and that they run online leagues and Mattel makes game boards. Scrabblemania is the name of Respondent's online Scrabble league. As such, they assert that there is no practical way to avoid using the term “Scrabble” when talking about this particular league and that their legitimate interest lies in that no one else is running an online Scrabble league, and neither Hasbro nor Mattel have demonstrated the interest or the ability to produce the technology required to handle thousands of Scrabble players playing online simultaneously.

C. Additional Submissions

Complainant submitted an Additional Submission.

Complainant asserts that Respondent competes directly with Complainant through the website at the disputed domain name because Respondent sells computer software that enables Scrabble players to compete over the Internet, which software is in direct competition with Complainant’s software.

Complainant also asserts that Respondent incorrectly suggests:

- That Complainant’s first attempt to contact it was with this arbitration. They point out that Complainant sent a cease and desist e-mail on June 12, 2003, to jennifer@funleaguemanagement.com, the same e-mail address Respondent has provided to this panel. Complainant sent another e-mail to the same address on June 23, 2003. Respondent did not acknowledge either e-mail.

- That Respondent can avoid confusion with the SCRABBLE trademark by adding the suffix “mania” to its domain name. Mattel, Inc. v. Bertolini, FA 28820 (Nat. Arb. Forum Dec. 26, 2002) (“The addition of the adjectives “American” and “Australian” and/or the designation “club” do not in any way substantially change the overall impression of the primary and famous mark . . . . The fact that the domain name references a “club” does not detract from the predominant feature of the domain names which is the mark ‘BARBIE.’”)

- That running an “online SCRABBLE league” gives Respondent “rights to or legitimate interests in” the domain name <scrabblemania.com>. Mattel, Inc. v. Bertolini, FA 28820 (Nat. Arb. Forum Dec. 26, 2002) (“Further, this arbitrator does not believe that merely being a fan of trademarked goods or services and setting up a ‘fan club’ website is sufficient to give a Respondent ‘rights to or legitimate interests in’ domain names which include as their predominant feature the trademark registered and owned by another.”)

- That Complainant has acquiesced in the use of the domain name <scrabbleboard.com>. Complainant sent the registrant of that domain name a cease and desist e-mail on June 12, 2003.

- That it does not compete with Complainant in the market for Internet play. Complainant manufacturers and distributes its own SCRABBLE computer software that offers the ability to play against others over the Internet.

FINDINGS

Having reviewed all of the papers and submissions, the Panel finds that:

(1) the domain name registered by the Respondent is confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Identical or Confusingly Similar

Complainant has provided evidence of trademark registrations for the SCRABBLE mark in several countries, including Australia, Ireland, New Zealand and South Africa. The Panel may conclude that this evidence establishes Complainant’s rights in the SCRABBLE mark for purposes of Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates. It is sufficient that Complainant can demonstrate a mark in some jurisdiction); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Complainant has rights to the name when the mark is registered in a country even if Complainant has never traded in that country).

Complainant argues that Respondent’s <scrabblemania.com> domain name is confusingly similar to Complainant’s SCRABBLE mark because the disputed domain name appropriates Complainant’s entire mark and merely adds the generic or descriptive term “mania” to the end of the mark. The Panel may find that the addition of a generic or descriptive term to Complainant’s mark does not significantly distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

In the present case the use of the word “mania” in conjunction with the trademark SCRABBLE creates a mark or name with both distinctive and descriptive qualities. All or most of these qualities relate to Complainant’s business or its game and a desirable attribute or consequence of playing the game itself. The connection with or identification to the Complainant is an obvious and desirable one.

Given the widespread recognition of the SCRABBLE trademark and its association with games, the addition of the word “mania” to SCRABBLE does little to break the obvious connection between the domain name and the complainant company.

In the Panel’s view, the addition of a descriptive term to a well known trademark does little to alter the inherent trademark nature of the word SCRABBLE. Accordingly, it is found that the <scrabblemania.com> domain name is not identical to but extremely similar to the SCRABBLE mark.

Given the lack of connection in fact between the Complainant and Respondent the domain name is likely to confuse and is thus confusingly similar to a trademark or service mark in which the Complainant has rights and is one falling within the contemplation of Policy ¶ 4(a)(i).

The ground is made out.

Rights and Legitimate Interests

Complainant asserts that Respondent is not commonly known by the Scrabble name and has acquired no trademark or service mark rights in the <scrabblemania.com> domain name. The Panel may conclude that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Respondent is using the <scrabblemania.com> domain name to host online Scrabble leagues. Complainant maintains that Respondent also uses the website at the disputed domain name to sell Scrabble software manufactured by Hasbro, Inc. The Panel may find that Respondent’s regsitration and use of a domain name confusingly similar to Complainant’s mark to operate an unauthorized commercial website for online Scrabble players is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See U.S. Franchise Sys., Inc. v. Thurston Howell III, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).

In its Additional Submission, Complainant asserts that Respondent competes directly with Complainant through the website at the disputed domain name because Respondent sells computer software that enables Scrabble players to compete over the Internet, which software is in direct competition with Complainant’s software. The Panel may decide that Respondent’s use of the <scrabblemania.com> domain name to compete with Complainant does not demonstrate rights to or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website).

Respondent contends they are not in the business of selling game boards or any other item that carries the SCRABBLE trademark and as a result they are not taking any revenue or brand equity from the trademark holders. However this argument sits uneasily with the effective acknowledgement by the Respondent that Complainant has trademark rights in the SCRABBLE mark.

On this basis, it is found that the Respondent clearly has no rights to or legitimate interest in the domain name. The ground is thus made out.

Registration and Use in Bad Faith

Complainant contends that Respondent’s commercial use of the <scrabblemania.com> domain name to host a Scrabble league shows that Respondent is intentionally attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent can accomplish his stated purpose of providing news and information about State Farm without the use of State Farm’s trademark in a name).

Both decisions are apposite here. The Panel finds that the domain name in question is obviously connected with Complainant’s mark, the Respondent knew this and it is hard to see how its conduct amounts to good faith efforts to use the mark in the course of trade, particularly given the overlaps in the parties’ businesses.

The Panel may find that Respondent had actual or constructive knowledge of Complainant’s rights in the SCRABBLE mark when the <scrabblemania.com> domain name was registered. The registration and use of a domain name confusingly similar to Complainant’s mark despite actual or constructive knowledge of Complainant’s rights evidences bad faith registration and use with regard to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).

It is common ground that Respondent is in the business of operating a series of online Scrabble leagues, one of which is Scrabblemania. Respondent does not dispute the repute in and goodwill associated with the SCRABBLE name/mark. Its case is that its <scrabblemania.com> domain name is not confusingly similar to Complainant’s SCRABBLE mark because the addition of the suffix “mania” indicates that there is something interactive at Respondent’s website.

Actual knowledge of the Complainant’s rights thus exists. The argument that confusion will not occur has been dealt with above and rejected. The ground is thus made out.

Accordingly, the Complainant has successfully made out all three of the above grounds and is entitled to appropriate relief.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <scrabblemania.com> domain name be TRANSFERRED from Respondent to Complainant.

Clive Elliott, Panelist
Dated: 17 October 2003

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