National Football League Players Association, Inc. v. Terry Cintra
Claim Number: FA1301001478213
Complainant is National Football League Players Association, Inc. (“Complainant”), represented by Douglas A. Rettew of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C., USA. Respondent is Terry Cintra (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nflpaonline.com>, registered with GODADDY.COM, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 2, 2013; the National Arbitration Forum received payment on January 2, 2013.
On January 2, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <nflpaonline.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, 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 January 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 23, 2013 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@nflpaonline.com. Also on January 3, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 contends as follows:
Complainant has common law rights in the NFLPA mark dating back as early as 1956. Complainant is the union for professional football players in the National Football League. Complainant provides various association services under the NFLPA brand as well as offering collateral products such as apparel and memorabilia and online retail store services at <nflpa.com>.
Complainant extends its brand by running various events and awards programs, some of which are nationally televised. Over the years, Complainant has sold and licensed many millions of dollars with of services and products under the NFLPA mark. Complainant has extensively advertised the NFLPA mark for decades and has expended significant resources in doing so.
Complainant owns a United States Patent and Trademark Office (“USPTO”) registration for its football player logo (Reg. No. 3,882,494 registered Nov. 30, 2010).
The <nflpaonline.com> domain name is confusingly similar to Complainant’s NFLPA mark. Respondent’s addition of the generic term “online” and the generic top-level domain (“gTLD”) do not prevent the Panel from finding that the domain name is confusingly similar to Complainant’s mark.
Respondent does not have rights or legitimate interests in the <nflpaonline.com> domain name.
Respondent is not commonly known by the disputed domain name. Nothing in the WHOIS record for the <nflpaonline.com> domain name suggests that Respondent is known by the domain name.
The disputed domain name is used by Respondent to sell goods in competition with those that Complainant offers.
Respondent is attempting to pass off as Complainant. Respondent uses Complainant’s trademarked logo as well as virtually copying large portions of Complainant’s genuine website, such as the entire homepage.
Respondent’s registration and use of the <nflpaonline.com> domain name constitutes bad faith.
Respondent’s registration and use of the <nflpaonline.com> domain name is disruptive to Complainant’s business.
Respondent attempts to divert Internet users by misleadingly and falsely identifying Respondent’s website as Complainant’s website and offering competing products, such as jerseys.
Respondent uses the <nflpaonline.com> domain name to intentionally attract, for commercial gain, Internet users to the domain name by creating a likelihood of confusion with the NFLPA mark as to the source, sponsorship, or affiliation of Complainant to the <nflpaonline.com> domain name.
Respondent’s attempt to pass off as Complainant is further evidence of bad faith. Respondent copies large portions of Complainant’s genuine website and uses Complainant’s trademark-protected logo.
Respondent had knowledge of Complainant’s rights in the NFLPA mark prior to registering the <nflpaonline.com> domain name. Respondent uses the <nflpaonline.com> domain name to impersonate Complainant and sell competing products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant demonstrates colorable common law trademark rights in its NFLPA mark.
Complainant acquired rights in its NFLPA mark prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark in any capacity.
The at-issue domain name addresses a website which displays a copy of much of Complainant’s official website and sells goods in competition with those offered by Complainant.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules 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 (Nat. Arb. 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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
The Panel finds, based on Complainant’s uncontroverted submissions showing that the NFLPA mark has been extensively used in commerce since 1956, that the NFLPA mark has acquired secondary meaning at least sometime prior to Respondent’s registration of the at-issue domain name. Complainant thereby establishes common law trademark rights in the NFLPA mark for the purpose of the Policy. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing and secondary meaning was established).
Respondent’s <nflpaonline.com> domain name is confusingly similar to Complainant’s NFLPA trademark. Respondent’s addition of the generic term “online” and the top level domain name “.com” to Complainant’s mark is inadequate to distinguish the confusingly similar <nflpaonline.com> domain name from Complainant’s NFLPA mark. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
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.
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Terry Cintra” as the registrant of the at-issue domain name and there is no evidence before the Panel which suggests that Respondent is nevertheless known by the at-issue domain name despite the contrary WHOIS information. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the website addressed by the at-issue domain name to sell goods in competition with those offered by Complainant. The operation of a competing business selling competing products via a confusingly similar at-issue domain name is evidence of a Respondent’s lack of rights and legitimate interests in such domain name. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name).
Furthermore Respondent, through its <nflpaonline.com> website, is attempting to pass itself off as Complainant. Respondent uses Complainant’s trademarked football helmet logo and copies large portions of Complainant’s official website, including the website’s homepage to create its knock-off website. These circumstances indicate that Respondent has no rights or legitimate interests in respect of the at-issue domain name. See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (holding that the attempt to pass off as a complainant demonstrates a lack of rights and legitimate interests).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstance are present as well as non-Policy ¶4(b) evidence from which the Panel may conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
Respondent’s registration and use of the <nflpaonline.com> domain name is disruptive to Complainant’s business. Respondent attempts to divert Internet users by misleadingly and falsely identifying Respondent’s <nflpaonline.com> website as Complainant’s website and offering competing products for sale thereon. Selling competing products via a confusingly similar domain name demonstrates bad faith under Policy ¶4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent uses the <nflpaonline.com> domain name to intentionally attract, for commercial gain, Internet users to Respondent’s <nflpaonline.com> website by creating a likelihood of confusion between the website and Complainant’s NFLPA mark as to website’s source, sponsorship, and/or affiliation. As mentioned above, the <nflpaonline.com> domain name resolves to a website where Respondent sells products in direct competition with those of Complainant. Therefore, the Panel concludes that Respondent has registered and used the at-issue domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).
Respondent’s attempt to pass itself off as Complainant is additional indepentant evidence of Respondent’s bad faith. Respondent copies large portions of Complainant’s genuine website and uses Complainant’s trademark-protected logo. Thereby, Respondent attempts to make Internet users believe that the at-issue domain name addresses Complainant’s genuine website. Such use of the domain name shows that Respondent has acted in bad faith in registering and using the at-issue domain name. See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Finally, Respondent had knowledge of Complainant’s NFLPA mark when it registered the <nflpaonline.com> domain name. The NFLPA mark is well-known and Respondent is using the mark in order to intentionally trade off of Complainant’s trademark by impersonating Complainant on the <nflpaonline.com> website. Given the foregoing, there can be no doubt that Respondent had actual knowledge of Complainant's mark and its rights therein prior to registering the at-issue domain name. Registering another’s trademark in a confusingly similar domain name with prior knowledge thereof indicates bad faith under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name"); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. 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);
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nflpaonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 31, 2013
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