Domain name – Domain name dispute resolution – Registered trademark – Common law trademark claimed – Generic term – Legitimate interest – No bad faith registration – No attempt to suggest affiliation.

Complainant held registered trademark for “Referee” for use as magazine. Respondent registered domain names “eReferee.com”, “eReferee.org” and “eReferee.net”.  Word “Referee” is a generic term for an officical umpiring a sporting event.  Complainant asks that these domain names be transferred.

Held, Names Not Transferred

Respondent has legitimate rights or interests in the domain names in question.  Respondent is involved in sports. Furthermore, there is no bad faith registration on the part of Respondent. Respondent has not tried to suggest any sort of affiliation between the domain names and Complainant’s trademark.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
 

Panel Decision referred to
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Kupferman, Panelist: -

This domain name dispute was heard by the undersigned Arbitrator pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy upon the written submissions of the parties.  The Complainant is represented by Barry Mano, founder and President, and by Elisabeth Townsend Bridge, Esq. of the Law Firm of Jansson, Shupe, Bridge & Munger, Ltd. Respondent is represented by Russel J. Eagan, Esq. and Bradley Batt of Right Sports, Inc.

Procedural Findings
Domain Names in Dispute:  “eReferee.com”, “eReferee.org”, and “eReferee.net”.
Domain Name Registrar:                       Network Solutions, Inc. (NSI).
Domain Name Registrant:                     Planet Ref., Inc. 
Date of Domain Name Registration:      February 15, 1999 for EReferee.com, 
                                                            August 23, 1999 for EReferee.net and EReferee.org
Date Complaint Filed:                           April 28, 2000. 
Date Complaint Commenced:               May 10, 2000. 
Due Date for Response:                        May 30, 2000 
Relief Requested:                                  Transfer of Domain Names to Complainant.

Findings of Fact
1)         The three Domain Names were assigned from Planet Ref., Inc. by Jim Flores, President, to Right Sports, Inc. on March 27, 2000.  However, the records of Network Solutions, Inc. do not reflect the transfer or assignment.  Nevertheless, Jim Flores is the principal in Right Sports, Inc. and so to the extent the assignment is valid, the decision herein will cover both Planet Ref., Inc. and Right Sports, Inc.
2)         All time factors under the applicable Rules have been complied with.
3)         Complainant is the owner of U.S. Trademarks, for the word Referee for a magazine on the subject of sports officiating since 1989, renewed for ten years from December 5, 1999 and use claimed since 1975.
4)         Complainant claims common law trademark rights on the name for wearing apparel, publications, newsletters, bags, watches, pens, promotional items, and services.
5)         Complainant has a website with the name Referee.
6)         Complainant actively promotes the name Referee.
7)         Jim Flores has known about Complainant’s use of the name Referee prior to the registration of the Domain names in question.
8)         Complainant contends that the Domain names are confusingly similar to the names Referee and the prefix e (not capitalized) does not ameliorate the confusion.
9)         The principal of the Respondent Jim Flores is a veteran in sports and so is his associate Batts.
10)       The word Referee is generic for an official who serves as an umpire officiating at sports events and is a weak mark.
11)       While for a magazine, sufficient secondary meaning may have been established by the Complainant for the word Referee, all uses cannot be preempted.
12)       Pursuant to ICANN Policy 4(a), the Complainant must establish each of these three elements:  
            1.   The domain names registered by the Respondent are identical or confusingly 
                  similar to a trademark or service mark or service mark in which the 
                  Complainant has rights;
            2.   The Respondent has no legitimate interest in respect of the domain name; and
            3.   The domain names have been registered and used in bad faith.
13)       Respondent has a legitimate interest in the Domain name in view of the sports background of the principal of Respondent and there is no bad faith use. 
14)       There is no attempt by the Respondent to suggest an affiliation with the Complainant.

Decision
15)       Under the circumstances, and on balance, I find for the Respondent as to the three Domain names and deny the Petition.