Soccerzone, Inc. v NBA, Inc.

SOCCERPLEX, INC.

d/b/a SOCCERZONE, INC, COMPLAINANT,

vs.

NBA inc.,

RESPONDENT.

DECISION
Forum File No.: FA0003000094361

This is a domain name dispute pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"). A three-person arbitration panel was requested; this panel consists of James P. Buchele, Chairman, of Topeka, KS; Karl V. Fink of Ann Arbor, MI; and Marilyn W. Carney of Arlington, VA. Each panelist has confirmed to the National Arbitration Forum that he or she has no known conflicts of interest. This matter was submitted upon the written record including supplemental filings of the parties, and all three panelists actively drafted, revised and/or otherwise participated in this decision.

For the reasons explained below, the panel has reached the unanimous decision that the domain name should not be transferred to the Complainant.

PROCEDURAL FINDINGS

Domain Name: SOCCERZONE.COM

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: NBA inc.

Date of Domain Name Registration: July 5, 1996

Date Complaint filed: March 27, 2000

Date of Commencement of Administrative Proceeding in Accordance with Rule

2(a) and Rule 4(c): March 29, 2000

Due date for a Response: April 18, 2000.

Respondent's Response was filed on April 18, 2000.

After reviewing the Complaint and determining it to be in administrative compliance, the NATIONAL ARBITRATION FORUM (THE FORUM) forwarded the Complaint to the Respondent on March 29, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified Network Solutions, Inc., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and the Respondent that the administrative proceeding had commenced. Respondent submitted a response to the Forum within twenty (20) days pursuant to Rule 5(a).

On July 5, 2000 Respondent registered the domain name "SOCCERZONE.COM" with Domain Name Registrar Network Solutions, Inc., the entity that is the current Registrar of the domain name "SOCCERZONE.COM". By registering its domain name with the Registrar, Respondent agreed to resolve any dispute regarding its domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT

The undisputed evidence establishes that:

1.Complainant is a corporation and is the owner and registrant of the trademark name "SOCCERZONE" by virtue of its Petition for Registration filed with the United States Patent Office on August 25, 1995 and registered status awarded on May 14, 1996. The Complainant first used the name in commerce on August 25, 1995.

2. The Respondent is a corporation engaged in the business of registering multiple domain names for sale to third parties. Respondent registered the Domain Name on July 5, 1996 with Network Solutions Inc.

3. Complainant's use of the service mark is associated with facilities for indoor soccer and the sales of associated goods and services such as soccer camps and leagues, youth soccer training, video and equipment sales. Respondent has made limited use of the name SOCCERZONE to provide soccer information and scores. The difference in use leads us to the conclusion that the Respondent has not attempted to attract, for commercial gain Internet users to its website or other online location, by creating a likelihood of confusion with Complainants mark as to the source, sponsorship, affiliation or endorsement of Respondents proposed use of the website.

4. Complainant has not established by a preponderance of the evidence that Respondent has used the website for purposes of publication of pornographic materials or providing links to pornographic materials.

5. " SOCCERZONE" is a nonexclusive name that is used in commerce by businesses other than Respondent.

6. Respondent's current use of the domain name "SOCCERZONE" does not conflict with or interfere with Complainant's business or trademark.

7. Complainant has not established that the name "SOCCERZONE" is exclusively identified with its business.

8. To prevail, Complainant must establish in the record that Respondent:

a. Registered a domain name that is "identical or confusingly similar to a trademark or service mark in which the complainant has rights"; and

b. Has "no rights or legitimate interests in respect of the domain name"; and

c. Has registered and is using the domain name in "bad faith".

9. Respondent does not dispute that "SOCCERZONE.COM" may be confusingly similar to Complaint's trademark, but takes the position that the term "soccer" and "zone" are generic terms used by many others.

10. Complainant has failed to meet its burden of showing that Respondent "registered and …used in bad faith" the domain name in violation of ICANN's Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b)(i), 4(b)(ii), (iii), or (iv).

Complainant's prayer for relief requests that the domain name "SOCCERZONE.COM" be transferred from Respondent to Complainant.

CONCLUSIONS

1. Respondent acknowledges the domain name "SOCCERZONE.COM" registered July 5, 1996, is so close as to be identical or confusingly similar to Complainant's trademark.

2. Complainant failed to show that it should be granted exclusive use of the Domain Name "SOCCERZONE.COM", as it is not exclusively associated with its business.

3. Complainant failed to show that Respondent is attempting to mislead customers or tarnish the name SOCCERZONE to the detriment of the Complainant.

4. Complainant failed to show that Respondent has registered or used the domain name in bad faith.

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "SOCCERZONE.COM" REGISTERED BY RESPONDENT REMAIN WITH RESPONDENT.

DATED: May 25, 2000 by Judge James P. Buchele (Ret.), Chief Arbitrator of the Panel.