ESPN, INC. v. Sonjoy Sutradhor
Claim Number: FA1812001819948
Complainant is ESPN, INC. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Sonjoy Sutradhor (“Respondent”), Bangladesh.
REGISTRAR AND DOMAIN NAME
The domain name at issue is <espnfoxsports.com>, registered with NameCheap, Inc.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on December 7, 2018; the Forum received payment on December 7, 2018.
On December 7, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <espnfoxsports.com> domain name (the Domain Name) is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 December 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of December 31, 2018 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@espnfoxsports.com. Also on December 10, 2018, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 3, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading multinational sports entertainment company reaching an audience of as many as 215 million people per month. Complainant has rights in the ESPN mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,345,096, registered June 25, 1985). Respondent’s Domain Name is confusingly similar to Complainant’s ESPN mark because it fully incorporates Complainant’s ESPN mark, adds the third-party mark FOX, the generic term “sports”, and the “.com” generic top-level domain name (“gTLD”).
Respondent lacks rights or legitimate interests in the Domain Name because Respondent is not commonly known by the Domain Name and Respondent does not have Complainant’s permission to use its ESPN mark. Additionally, Respondent does not use the Domain Name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the Domain Name to redirect Internet users to web sites offering services which compete directly with Complainant.
Respondent registered and uses the Domain Name in bad faith. Specifically, Respondent attempts to disrupt Complainant’s business and to attract, for commercial gain, users to his web site which offers content that competes with Complainant. Respondent failed to respond to Complainant’s cease and desist letters, and Respondent had actual and constructive knowledge of Complainant’s rights in the ESPN mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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.
In view of Respondent's failure to submit a response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
Complainant registered its ESPN mark with the USPTO (Reg. No. 1,345,096) on June 25, 1985. See, Amended Complaint Annex 4. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Domain Name is confusingly similar to Complainant’s mark. It incorporates that mark verbatim, then adds the third-party mark FOX, the generic term “sports,” and the gTLD “.com.” These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Panera, LLC and Pumpernickel Associates, LLC v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation, FA 1760812 (Forum Jan. 8, 2018) (finding confusing similarity where the domain name included the complainants mark, plus the addition of the third-party mark WORKDAY, which belonged to a provider of salary and other services used by Complainant; holding however “that “workday” is a dictionary term which can be treated as generic and of lessor distinctive value when joined with Complainant’s trademark”), Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the ESPN mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made 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) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is 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.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Complainant has not authorized or licensed him to use its ESPN mark, (ii) he is not commonly known by the Domain Name ,and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or as a legitimate noncommercial or other fair use because he is using them to divert Internet traffic to sites which compete directly with Complainant. These allegations are supported by competent evidence.
Complainant states that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The information furnished to The Forum by the registrar lists the registrant as “Sonjoy Sutradhor.” This name bears no resemblance to the Domain Name. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The Panel is satisfied that Respondent has not been commonly known by the Domain Name within the meaning of Policy ¶ 4(c)(ii).
Amended Complaint Annex 15 is a WHOIS report for the Domain Name, which contains a screenshot of the web site resolving from it. That screenshot is shown in greater detail on Amended Complaint Annex 16. The web site displays an ad reading “Watch ALL Sports Live Online.” To the right of that is a line that reads “Click here to watch now.” The page that results from clicking on the Annex 16 page is a web site containing advertising for opportunities to watch sports on line and links reading “JOIN NOW” and “WATCH NOW.” See, Amended Complaint Annex 17. Those links redirect to a third web site that prompts users to sign up to watch a variety of sports programs streamed online. See, Amended Complaint Annex 18. It is clear from this that Respondent is using the Domain Name to redirect traffic to web sites offering exactly the same type of services and programming offered by Complainant. Using a confusingly similar domain name to advertise and offer links to competitors of a complainant does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) respondent has 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 respondent has engaged in a pattern of such conduct;
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s 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 respondent’s web site or location or of a product of service on respondent’s web site or location.
The evidence of Respondent’s use of the Domain Name discussed above in connection with the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent registered and is using the Domain Name to attract users for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. This fits squarely within the circumstances articulated by Policy ¶ 4(b)(iv). Yahoo! Inc. v. Web Master, FA 127717 (Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”).
Respondent is obtaining commercial gain from his use of the Domain Name and the resolving and linked web sites. When a visitor to Respondent’s web site clicks on the link which appears there, Respondent receives compensation from the various website owners who are forwarded from the site. Under the arrangements most typically utilized by owners of pay-per-click sites, the owner of the pay-per-click site, in this case Respondent, receives compensation based upon the number of hits the downstream web sites receive from Respondent’s web site. Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”), AllianceBernstein LP v. Texas International Property Associates - NA NA, Case No. D2008-1230 (WIPO, 2008), and Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In AllianceBernstein, supra, the respondent registered the domain name <allaincebernstein.com>, which was almost identical to complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of Complainant. Id. The Panel inferred that the respondent received click-through fees by directing users to various commercial websites through these links and found that the respondent’s use was for commercial gain and was a bad faith use of the domain name under Policy ¶4(b)(iv). Id.
In Brownells, supra, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Id. The respondent’s website offered pay-per-click links to hunting equipment and related items. Id. The Panel found that such listing of links was provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of click-through fees from the Domain Name results from a pay-per-click link and by itself constitutes commercial gain. Furthermore, and similar to the facts in AllianceBernstein and Brownells, Respondent’s use of the Domain Name and his web site results in a commercial gain for others by forwarding visitors to third parties. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for himself and the various website owners who are forwarded from the links at the Domain Name. There is no other rational explanation for Respondent having registered and maintained the Domain Name and resolving it to pay-per-click sites with commercial links. Respondent’s use of the Domain Name is commercial because the various companies forwarded from the websites benefit from the subsequent interest and purchases of those who visit the sites. UDRP Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO,2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Second, it is evident (i) from the world-wide fame and notoriety of Complainant’s ESPN mark, (ii) from the fact that that mark was incorporated verbatim into the Domain Name, and (iii) from the fact that Respondent’s web site ultimately offers the same type of services and sports programming offered by Complainant that Respondent had actual knowledge of Complainant’s mark in April 2017, when he registered the Domain Name. See, Amended Complaint Annex 15 for registration date. The Policy recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name), Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <espnfoxsports.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
January 4, 2019
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