DECISION

 

National Hockey Now LLC v. Tim Williams

Claim Number: FA2404002093304

 

PARTIES

Complainant is National Hockey Now LLC ("Complainant"), represented by Roberto Ledesma of Lewis & Lin, LLC, New York, USA. Respondent is Tim Williams ("Respondent"), North Carolina, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pittsburghbaseballnow.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nathalie Dreyfus as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 16, 2024; Forum received payment on April 16, 2024.

 

On April 16, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <pittsburghbaseballnow.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 April 17, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 2024 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@pittsburghbaseballnow.com. Also on April 17, 2024, 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 May 13, 2024.

 

On May 14, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nathalie Dreyfus as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

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

 

PRELIMINARY ISSUE: BUSINESS OR CONTRACTUAL DISPUTE OUTSIDE THE SCOPE OF THE UDRP

The Complainant claims common law rights in and to the NOW Brand, launched in 2015.

 

The question that arises in claims of common law rights is whether the name qualifies as a trademark or service mark.

 

Qualification for common law rights must take into account the distinctiveness of the terms claimed to be recognized by the general public indicators of source or simply a general category of merchandise.

 

To this effect, the Panel majority in Shoe Mart Factory Outlet, Inc. v. DomainHouse.com, Inc. c/o Domain Administrator, FA 462916 (Forum June 10, 2005) (<shoemart.com>) explains that : "[T]he sine qua non of a complainant prevailing in a UDRP case is that the complainant establish conclusively that the complaint is based upon ownership of either a registered trademark or a mark which would be recognized by a court as a common law trademark". However, "a mark which is either generic or descriptive cannot be registered and cannot become a protected common law trademark unless it is conclusively shown to have become distinctive in the sense that it has achieved a secondary meaning such that consumers identify those common terms exclusively with the goods or services of the owner of the mark." 

 

Panels have generally required that a complainant make a strong showing with relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) through a range of factors, such as (i) the duration, extent and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. [See section 1.3 of WIPO Overview 3.0. Proof of such rights cannot be based on conclusory allegations].

Thus, in Timec Oil and Gas, Inc. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Guy Ngassa, The Solution Engineering Group, D2022-0064 (WIPO Feb. 23, 2022):

 

"Proving the existence of such common law or unregistered rights requires a complainant to show with actual evidence when its claimed mark became a distinctive identifier which consumers associate with the complainant's goods or services."

 

The Panel finds that the evidence submitted by the Complainant in annexes A (Declaration of Daniel Kingerski) and B (screenshots of the Complainant's website and of its social medias) is not sufficient to prove or disprove the common law right claim.

 

Moreover, the dispute as to the agreements between the parties, the benefits of the Disputed Domain Name and associate website and the misuse of the Respondent's photo library does not fall within the jurisdiction of this forum.

 

This decision does not mean that Complainant has no means for redressing his grievance against Respondent, as to the merits of which the Panel offers no opinion. The Panel decides only that Complainant must, if he so chooses, seek relief for his claim in a court of competent jurisdiction because the facts supplied to us do not allow him to pursue it here.

 

PARTIES' CONTENTIONS

A. Complainant

 

The Complainant's contentions can be resumed as follows:

 

The Complainant asserts that the Disputed Domain Name <pittsburghbaseballnow.com> is confusingly similar to the Complainant's common law trademarks. The complainant asserts that they own common law rights in the NOW Brand since 2015, used primarily for Pittsburgh sports trademarks and domain names comprising the wording "Pittsburgh [sport] NOW.com"., and that their continuous and exclusive use has established the NOW Brand's distinctiveness. The Complainant also asserts that the Disputed Domain Name mirrors the NOW Brand, incorporating "Pittsburgh," a sport, and "NOW" along with ".com".

 

The Complainant asserts that the Respondent lacks rights to the Disputed Domain Name. He insists that the Respondent cannot show rights or legitimate interests because they were not authorized by the Complainant to use its trademark, have not used the domain for a bona fide offering of goods or services, and have not made legitimate noncommercial or fair use. Instead, the Respondent used the domain to create a false appearance of affiliation and to direct traffic to a competing website. The Respondent acknowledged the Complainant's superior trademark rights and registered the domain to help the Complainant expand into baseball. The Complainant claims that the Disputed Domain Name was registered to target the Complainant's NOW Brand and divert traffic to the Respondent's site, www.PiratesProspects.com. This registration and usage do not constitute a bona fide offering of goods or services. The Respondent's actions misappropriate the goodwill of the NOW Brand to gain an advantage over a competitor, showing a lack of legitimate interest. The Complainant also affirms that the Respondent is not licensed nor authorized to use his trademark.

 

The Complainant asserts that Respondent has failed to demonstrate rights or legitimate interests in the Disputed Domain Name, leading to an inference of bad faith registration and use. The Respondent intentionally attempted to attract users for commercial gain by creating confusion with the NOW Brand, without authorization from the Complainant. The Respondent's actions misuse the Complainant's trademark to redirect traffic to a competing website. Complainant insists that this misleading use, intended to profit from the Complainant's established goodwill, demonstrates bad faith. Complainant also adds that the Respondent's use of privacy protection for the domain registration further supports the finding of bad faith.

 

B. Respondent

The Respondent contends that he owns HIMYNAMEISTIM, LLC, which operates the Disputed Domain Name. He coordinated its launch with Alan Saunders and Joe Steigerwald in 2021, providing resources and support from his site, www.PiratesProspects.com. Williams denies attempting to control the baseball media market and asserts that any links to www.PiratesProspects.com were offered by Saunders or Steigerwald.

 

The Respondent claims that Mr. Kingerski misrepresented their agreements and repeatedly demanded the domain for free or at a low cost, which Williams rejected without an audit of the NOW network's success. Williams argues that he aimed to help independent writers and did not view Kingerski as a competitor. He demanded the removal of Pirates Prospects branding from the website at <PittsburghBaseballNow.com>, which was refused.

 

The Respondent alleges that www.PittsburghBaseballNow.com misused his photo library without payment and that its traffic is lower than www.PiratesProspects.com, contradicting claims of mutual benefit. He accuses Kingerski of attempting to rewrite his contributions and falsely portray him as an enemy. Williams plans legal action if his demands, including compensation and branding removal, are not met before transferring the domain.

 

FINDINGS

1)       The facts set out below are taken from the Complainant:

 

In November 2015, Mike Vukovcan and Joe Steigerwald founded PITTSBURGH SPORTS NOW with the <PittsburghSportsNOW.com> domain, establishing a website focused on Pittsburgh sports. This venture quickly succeeded, leading to a network of online sports information sites under the "NOW Brand." The NOW Brand is now owned and operated by National Hockey Now LLC.

 

The NOW Brand includes various city and sport-specific trademarks and domains, such as PITTSBURGH HOCKEY NOW, PITTSBURGH SOCCER NOW, and PHILADELPHIA HOCKEY NOW. Since its inception, the NOW Brand has amassed over 4,800 subscribers, reached over 200 million readers, and generated $4 million in revenues. It has a significant presence on social media and exclusive media deals.

 

The NOW Brand is prominent in Pittsburgh's sports news scene, featuring regularly on TV and radio. This presence has built substantial goodwill in its trademarks and domain names. In June 2020, the Respondent, presumably Tim Williams, registered the <PittsburghBaseballNOW.com> domain. At that time, the Complainant had established a strong reputation and intended to expand into Pittsburgh baseball.

 

The Respondent, aware of the NOW Brand, registered the domain to prevent the Complainant from expanding and to control the Pittsburgh baseball media market. He offered to let the Complainant use the domain if it linked to his competing site, www.PiratesProspects.com. The Complainant, unaware of the trademark issue, initially agreed. However, Tim Williams used this to falsely suggest an affiliation with the NOW Brand, controlling the domain and potentially manipulating its content.

 

Tim Williams further claimed he registered the domain to prevent "industry plants" from dominating the market, falsely alleging the Complainant was funded by the Pittsburgh Pirates. The Complainant now fears Respondent's control over the domain jeopardizes their business, built over nearly a decade, leaving them at the mercy of a cybersquatter.

 

2)       The facts set out below are taken from the Respondent:

 

The Respondent, Timothy Williams, owner of HIMYNAMEISTIM, LLC, registered the Disputed Domain Name <PittsburghBaseballNow.com> in June 30, 2020, and was involved in the planning of the site in the summer of 2021. The Respondent also owns <PiratesProspects.com>, a domain name with a website operating since 2010 and credentialed by the Pittsburgh Pirates since 2012. Alan Saunders and Matt Gajtka, who have worked as credentialed writers on www.PiratesProspects.com, started sites on the Pittsburgh Sports Now network.

 

In July 2020, the Respondent inquired about Pittsburgh Sports Now's plans for expanding to baseball and was informed there were no such plans. He then shared his idea to create www.PittsburghBaseballNow.com to support independent writers. A year later, Alan Saunders revisited this plan, and the Respondent coordinated with Saunders and Joe Steigerwald to launch the site, providing credentialed access, free photos, and promotional links from www.PiratesProspects.com.

 

Pittsburgh Baseball Now launched, claiming that expansion into baseball would be challenging without Pirates Prospects' support. The Respondent asserts that he did not attempt to control the baseball media network or prevent the NOW network's expansion, contrary to Mr. Kingerski's claims.

 

The Respondent states that any links to www.PiratesProspects.com were offered by Saunders or Steigerwald, not requested by him. He also offered to provide branded content to www.PittsburghBaseballNow.com>, which has since used Pirates Prospects' branding for its minor league coverage. The Respondent learned of Mr. Kingerski's acquisition of Pittsburgh Baseball Now in July 2022 through a Twitter announcement and has since received repeated requests from Kingerski to transfer the domain, which he declined.

 

The Respondent proposed transferring the domain for free if an audit could substantiate the NOW network's success claims, which was rejected. He also asked for the removal of Pirates Prospects branding from www.PittsburghBaseballNow.com, which was also denied. He claims he informed Alan Saunders and Joe Steigerwald of his domain ownership with the intent to support their network after learning they had no plans for expansion.

 

In January, during a conversation with Mr. Kingerski, the Respondent was informed of Kingerski's adversarial stance. The Respondent denies viewing Kingerski as a competitor or enemy, claiming he only intended to help independent writers. He mentions that his plan to upgrade Pirates Prospects' photo library in 2022 was hindered by www.PittsburghBaseballNow.com's continued use of his photos without payment.

 

As of August 2023, the traffic for www.PittsburghBaseballNow.com remains lower than www.PiratesProspects.com, contradicting claims that the former benefits Pirates Prospects. www.PiratesProspects.com remains the Respondent's full-time job, generating sufficient revenue.

 

The Respondent intended to share traffic and revenue with independent writers in Pittsburgh to reduce his control over the market. Pittsburgh Sports Now expressed concern in December 2021 that this plan would "cannibalize" online Pirates content traffic, making it difficult for www.PittsburghBaseballNow.com to exist.

 

The Respondent denies claiming that Pittsburgh's media is controlled by the Pirates. He views the Complaint as an attempt by Mr. Kingerski to rewrite the Respondent's contributions and correct his own planning mistakes. Pittsburgh Sports Now initially intended for www.PittsburghBaseballNow.com to absorb Pirates Prospects, which the Respondent repeatedly rejected, aiming for the site to succeed on its own merits.

 

The Respondent plans legal action if Mr. Kingerski does not remove Pirates Prospects branding and compensate for advertising, traffic, photos, and other contributions. Only then will he transfer the domain. He asserts that his declarations can be verified through communications and the www.PittsburghBaseballNow.com website, while denying the accuracy of Kingerski's claims.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

In light of the Panel's preliminary findings, the Panel cannot consider whether or not the Disputed Domain Name is Identical or confusingly similar to the Complainant's common law rights.

 

Rights or Legitimate Interests

In light of the Panel's finding under the first limb, the Panel need not consider whether or not the Respondent has rights or legitimate interests in the Disputed Domain Name.

 

Registration and Use in Bad Faith

In light of the Panel's finding under the first limb, the Panel need not consider whether or not the Disputed Domain Name was registered and used in bad faith.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <pittsburghbaseballnow.com> domain name REMAIN WITH Respondent.

 

 

 

Nathalie Dreyfus, Panelist

Dated: May 27, 2024