ESPN, INC. v. NAUGHTYA PAGE, LLC
[Indexed as: ESPN, INC. vs. NAUGHTYA PAGE, LLC]
[Indexed as: ESPN2.COM et al.]
National Arbitration Forum
Administrative Decision
Forum File No.: FA0004000094397
Commenced: May 15, 2000.
Judgement: Dated: May 17, 2000.
Arbitrator Judge: Herman D. Michels
Domain name - ICANNs Rules for Uniform Domain Name Dispute Resolution Policy - U.S. Trade Mark Domain names identical of misleading to the public Rights and legitimate interest Domain name confusing and suggests affiliation Bad faith registration Sole purpose of registration was to sell domain name to owner of trade marks.
Respondent registered ESPN.net, ESPN2.net and ESPN.coms. These are the registered service marks and trademarks of ESPN with the United States Patent and Trademark Office. Complainant claims that Respondent has no legitimate rights or interest in the domain names and has registered them in bad faith with the sole purpose of selling them to the complainant.
Held, Name Transferred to Complainant.
Respondents domain names are identical to Complainants and misleading
to the consuming public, in which Complainant has legitimate rights and
Respondent has none.
Respondents use of Complainants marks causes confusion, and suggests
affiliation when no such affiliation exists. Respondent registered
the domain name in bad faith for the purpose of selling it to the complainant
who is the owner of the trademarks. It is clear that Respondent registered
the domain name in bad faith due to the fact that it deliberately attempted
to attract internet users to its website by creating a likelihood of confusion
with complainants marks
Policies Referred to:
ICANN Rules for Uniform Domain Name Dispute Resolution Policy
The above entitled matter came on for an administrative hearing on May 15, 2000 before the undersigned Arbitrator on the complaint of ESPN, Inc. (Complainant) represented by Allan Chang, Esq. against Naughtya Page, LLC (Respondent) represented by Martin Severn. Upon the written submitted record, including the Complaint and the Response to the Complaint, the following decision is rendered:
Procedural Findings
Domain Names: ESPN.NET ESPN2.COM ESPN2.NET
Domain Name Registrar: As to ESPN.NET and ESPN2.NET
Network Solutions, Inc.
3894 Courtney Street ? Suite 150
Bethlehem, PA 18017
As to ESPN2.COM
Network Solutions, Inc.
8070 LaJolla Shores Drive ? No. 516
LaJolla, CA 29037
Domain Name Registrant: Naughtya Page, LLC
2000 NE 42nd Ave. ? No. 292
Portland, OR 97213
Date of Domain Name Registrations:ESPN.NET April 28, 1997
ESPN2.COM July 16, 1997
ESPN2.NET April 29, 1997
Date Complaint Filed: April 8, 2000
Date Response Filed: April 28, 2000
After reviewing the Complaint and determining it to be in administrative
compliance, the National Arbitration Forum (the Forum) forwarded the
Complaint to Respondent in compliance with Rule 2(a) and the administrative
proceeding was commenced pursuant to Rule 4© in compliance with Rule
4(d). The Forum immediately notified Network Solutions, Inc., the
INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and Respondent
that the administrative proceeding had commenced. Respondent submitted
a Response to the Forum within twenty (20) days pursuant to Rule 5(a).
The Complaint and the Response were docketed and forwarded to the undersigned
Arbitrator for decision.
The record shows that on July 16, 1997, Respondent registered the domain
name ESPN2.COM with the domain name registrar Network Solutions, Inc. Network
Solutions, Inc. verified that Respondent is the registrant for the domain
name ESPN2.COM. Accordingly, Respondent agreed to resolve any dispute regarding
its domain name through ICANNs Rules for Uniform Domain Name Dispute Resolution
policy. The record further shows that on April 28, 1997, Respondent registered
the domain name ESPN.NET with the domain name registrar Network Solutions,
Inc. Network Solutions, Inc. verified that Respondent is the registrant
for the domain name ESPN.NET. Finally on April 29, 1997, Respondent registered
the domain name ESPN2.NET with the domain name registrar Network Solutions,
Inc. Network Solutions, Inc. verified that Respondent is the registrant
for the domain name ESPN2.NET. Accordingly, Respondent agreed to resolve
any disputes regarding its domain name registrations pursuant to ICANNs
Rules for Uniform Domain Name Dispute Resolution policy. Neither the Complainant
nor Respondent contests the jurisdiction of the Forum or the undersigned
Arbitrator to resolve these controversies.
Findings of Fact
1.ESPN owns an extensive number of registrations in the United States
and throughout the world for its various service marks and trademarks including
ESPN and the ESPN2 which are registered with the United States Patent and
Trademark Office. ESPN has also a trademark application for ESPN.COM [Serial
No. 75/440,475]. The trademarks and service marks owned and the applications
for trademarks filed by ESPN are referred to collectively as the ESPN
Marks.
2.ESPN spends billions of dollars annually to advertise and promote
the ESPN marks as embodied in its various business activities through various
media including its own television, radio, internet magazines and magazines
throughout the world. As a result of its activities, as well as the widespread
public attention and coverage of ESPN by third?party media, the ESPN marks,
including the ESPN.COM domain name have become famous throughout the United
States and are universally recognized and relied on as identifying ESPN.
3.On September 7, 1979, ESPN launched its flagship network ESPN.
It is the largest sports cable television network in the United States
and reaches more than 77 million U.S. homes. On October 1, 1993, ESPN launched
its second sports television cable network ? ESPN2, which is now distributed
in over 67 million U.S. homes. ESPN and ESPN2 cover almost every sport
including National Football League and NCAA Football mens and womens college
basketball, the college world series and numerous other NCAA championships,
major league baseball, the Womens National Basketball Association, the
National Hockey League, Major League Soccer, professional golf, tennis,
motor sports, international figure skating and skiing, horse racing among
other sports. ESPN is also recognized as the preeminent sports journalism
organization in the world with its nightly Sports Center program, the Emmy
award winning Outside the Lines investigative series and an entire network
ESPNews dedicated to sports related news and information.
4.In 1994, ESPN pioneered the dissemination of sports, news and information
in the computer on?line world. On October 4, 1994, ESPN registered the
domain name ESPN.COM with Network Solutions, Inc. for e?mail purposes.
Then in April, 1995, ESPN launched the first internet?based sports news
and information related website under the domain name ESPN.SPORTSZONE.COM
which on September 3, 1998 became ESPN.COM. ESPN.COM remains the most visited
sports cite on the internet and provides features such as real time game
coverage, fantasy games, highlight footage, up?to?the?minute sports stories,
game scores, statistics in?depth analysis and commentary, live chats and
other cutting edge sports related accounts.
5.Respondents domain names which are identical to complainants ESPN
marks are misleading consuming public as to the source and origin of the
services it is selling and suggests affiliation with the Complainant that
it does not have. Respondent does not have any rights or legitimate interests
in the domain names ESPN2.COM, ESPN.NET, ESPN2.NET. Complainant has the
exclusive right to use and to license the ESPN marks.
6.Respondents use of Complainants ESPN Marks creates a likelihood
of confusion. Complainants trademark users and consumers are likely to
be confused into believing that there is some affiliation, connection,
sponsorship, approval or association between Respondent and Complainant
when, in fact, no such affiliation or association exists.
7. Respondent registered the domain names ESPN2.COM, ESPN.NET, and ESPN2.NET in bad faith due to the fact that Respondent has registered or otherwise acquired the Domain Names primarily for the purpose of selling or otherwise transferring the domain name registrations to Complainant who is the owner of the ESPN trademark or service marks for valuable consideration in excess of Respondents documented out?of?pocket costs directly related to the domain names. See Rule 4(b)(i).
8.Respondent registered the domain names ESPN2.COM, ESPN.NET, and ESPN2.NET in bad faith due to the fact that Respondent has intentionally attempted to attract internet users to its website by creating a likelihood of confusion with Complainants ESPN Marks as to the source, sponsorship, affiliation or endorsement of its website. The unauthorized and continued use by Respondent in interstate commerce of the domain names incorporating Complainants ESPN Marks constitutes a use of a false designation of origin as well as a false description or representation that is likely to cause confusion, mistake or deception as to (a) the affiliation, connection or association between Complainant and Respondent and (b) the sponsorship or endorsement of Respondents website by Complainant. See Rule 4(b)(iii).
9.Respondents activities constitute an infringement of Complainants rights in its ESPN Marks and have caused and will continue to cause substantial and irreparable harm to Complainant and its business reputation and good will. Complainant demands that Respondent transfer the domain names ESPN2.COM, ESPN.NET, and ESPN2.NET.
Conclusions
The undersigned certifies that he has acted independently and has no
known conflict of interest to serve as the Arbitrator in this proceeding.
Having been duly selected and being impartial and neutral, the undersigned
makes the following findings and conclusions:
1.The domain names ESPN2.COM, ESPN.NET, and ESPN2.NET registered by
Respondent are identical to Complainants ESPN Marks, registered trademarks
and service marks registered with the United States Patent and Trademark
Office by Complainant and in which Complainant has all rights and interests.
2.Respondent does not have any substantial rights or legitimate interests
in respect to the domain name ESPN2.COM, ESPN.NET, and ESPN2.NET.
3.Respondent has registered and used the domain name ESPN2.COM, ESPN.NET,
and ESPN2.NET in bad faith.
Decision
Based upon the above findings and conclusions and pursuant to Rule 4
(1) of the Rules of the Uniform Domain Name Dispute Resolution Policy and
the National Arbitration Forum Supplemental Rules of ICANNs Uniform Domain
Resolution Policy, I hereby Order that:
1.The domain names ESPN2.COM, ESPN.NET, and ESPN2.NET registered by
Respondent Naughtya Page, LLC be transferred forthwith to Complainant ESPN,
Inc.; and
2.Respondent Naughtya Page, LLC shall cease and desist from any and all use of the domain names ESPN2.COM, ESPN.NET, and ESPN2.NET.
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