The Complainant is National Football League, New York, New York, United States of America, represented by Debevoise & Plimpton, United States of America.
The Respondent is Online Marketing International, also known as International Marketing Group, San Jose, Costa Rica.
The disputed domain names
<bet-nfl-online-gambling.com>
<bet-nfl-sportsbooks.com>
<bet-pro-nfl-football.com>
<nfl-betting-guide.com>
<nfl-betting-sports-odds.com>
<nfl-football-betting-guide.com>
<nfl-football-gambling-odds.com>
<nfl-football-gambling-online.com>
<nfl-football-online-betting.com>
<nfl-gambling-football-betting.com>
<nfl-gambling-sportsbooks.com>
<nfl-nba-nhl-mlb-ncaa-online-betting-lines-odds.com>
<nfl-odds-online.com>
<nfl-sportsbooks-gambling.com>
<nfl-sportsbooks-wagering.com>
<online-superbowl-betting-odds.com>
<pro-football-odds-super-bowl-betting.com>
<super-bowl-gambling-odds.com>
<superbowl-gambling-sportsbooks.com>
are all registered with GoDaddy.com, Inc. (the “Registrar”).
The disputed domain names are referred to collectively in this decision as the “Domain Names”.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2008. On January 5, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 5, 2009, the Registrar transmitted by email to the Center its verification response, advising as follows.
The registrant of the following five Domain Names, <bet-nfl-online-gambling.com>, <nfl-odds-online.com>, <nfl-sportsbooks-wagering.com>, <bet-nfl-sportsbooks.com>, and <nfl-sportsbooks-gambling.com> (collectively referred to by the Panel hereafter as the “Group A Domain Names”), is Online Marketing International of San Jose, Costa Rica.
The registrant of the following ten Domain Names, <bet-pro-nfl-football.com>, <nfl-betting-sports-odds.com>, <pro-football-odds-super-bowl-betting.com>, <superbowl-gambling-sportsbooks.com>, <nfl-betting-guide.com>, <nfl-football-betting-guide.com>, <nfl-gambling-football-betting.com>, <nfl-nba-nhl-mlb-ncaa-online-betting-lines-odds.com>, <online-superbowl-betting-odds.com>, and <super-bowl-gambling-odds.com> (collectively referred to by the Panel hereafter as the “Group B Domain Names”), is International Marketing Group of San Jose, Costa Rica.
In respect of the remaining four Domain Names, <nfl-football-gambling-odds.com>, <nfl-football-online-betting.com>, <nfl-gambling-sportsbooks.com>, and <nfl-football-gambling-online.com> (collectively referred to by the Panel hereafter as the “Group C Domain Names”), the Registrar advised that it did “not have a registrant on the file as there appears to have been a data error from the previous registrar Directnic”.
For each of the Group A Domain Names (i.e. those where Online Marketing International is listed as the registrant), the registrant's address was listed as: “200 meters N Taco Bell, san Jose, San Jose 999999, Costa Rica”. The administrative and technical contact for each of the Group A Domain Names, was listed as Dolly Ignacio, of the same address.
The listed address for the registrant of the Group B Domain Names (i.e. International Marketing Group), was “San Pedro, San Jose, Costa Rica”. The administrative and technical contact for the Group B Domain Names was, in each case, International Marketing Group, of “150 N De Tacobell edif., orre este 6to Piso San Pedro, San Jose, Costa Rica”.
The Registrar did not provide any registrant contact information for the Group C Domain Names (i.e. where no registrant information is held), but the Registrar did provide email addresses for the administrative and technical contacts for the Group C Domain Names. The email addresses were info@online-marketing-international.com, and payments@online-marketing-international.com.
A telephone number was provided for the registrant of the Group A Domain Names, and telephone and fax numbers were provided for the registrant of the Group B Domain Names.
In response to a query from the Center, the Registrar confirmed on January 13, 2009 that no registrant information had been transferred with the Group C Domain Names, and that the current holders of the Group C Domain Names had not since provided such information.
On January 15, 2009, the Center advised that it would proceed with the Complaint, using the email addresses for the administrative and technical contacts for the Group C Domain Names. The Center asked the Registrar to advise the Center if the Registrar obtained more registrant information for the Group C Domain Names.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on January 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on February 3, 2009.
The Center appointed Warwick Smith as the sole panelist in this matter on February 16, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
In the absence of any Response, the Panel has checked that the proceeding has been properly notified to the Respondent. The Panel notes that the Center's attempt at delivering hard copies of the Complaint and the Notification of the proceeding to the respective addresses provided in the Whois particulars for Online Marketing International and International Marketing Group, were unsuccessful, as was an attempt to transmit a copy of the Complaint and Notification to the facsimile number provided in the Whois particulars for International Marketing Group. However, the Complaint and Notification documents appear to have been successfully emailed to the email addresses provided in the Whois particulars, and it seems likely that the Respondent has received actual notice of the Complaint. In any event, the Panel is satisfied that the Center has discharged its responsibility to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.
The following (uncontested) facts are taken from the Complaint.
The Complainant (also referred to in this decision as “NFL”) is an unincorporated association of 32 member clubs, each of which owns and operates a professional American football team. NFL has televised live broadcasts of its football games on American television since 1958, and the broadcasts are watched by millions of American viewers each week, and millions more around the world.
NFL is the owner of a number of United States-registered trademarks which consist of or include “NFL”. First, the Complainant is the registered proprietor of the service mark NFL under registration number 841,001, for “association services namely, promoting the interests of member football clubs, scheduling games, and promoting interest in football”, in international class 42. The application for that mark was filed on March 24, 1969, and the registration refers to a first use in commerce date of June 30, 1941. Secondly, the Complainant is the registered proprietor of an “NFL” device mark, consisting of a shield device incorporating the letters “NFL” immediately beneath a football superimposed over a number of stars (“the NFL shield device mark”). The NFL shield device mark covers the same services as registered mark No. 841,001. The application for the NFL shield device mark was filed on October 6, 1975. Thirdly, the Complainant is the proprietor of an “NFL” football device mark (“the NFL football mark”). The NFL football mark consists of the letters “NFL”, in stylized form, immediately beneath five stars, with the “NFL” and the stars superimposed over a football placed in a horizontal position. The application for the NFL football mark was filed on July 22, 2003, and the application proceeded to registration on November 22, 2005. The registration covers various services in international classes 38 and 41.
NFL's championship game is known as the “Super Bowl”. Telecasts of the Super Bowl game are among the highest-rating television programmes in the United States of America, and are usually the single most-watched television programme in any given year. According to the Complaint, the February 2008 Super Bowl game was the most-watched sporting event on record, and the second most-watched television programme in history.
NFL is also the owner of a number of United States-registered trademarks consisting of or including the expression “Super Bowl”. It is not necessary to refer to them all. It is enough to refer to registration number 882,283 for the word mark SUPER BOWL, registered in international class 41 for entertainment services in the nature of football exhibitions. The application for this registered mark was filed on March 7, 1969, and claimed a first use in commerce date of January 15, 1967.
According to the Complaint, the Complainant has extensively marketed and promoted its NFL and SUPER BOWL marks in sports magazines and newspapers, on television and the Internet, and in various other media. The two marks have been the subject of extensive unsolicited media coverage, including in Sports Illustrated, the New York Times, and the publications of other major news organizations. The Complainant asserts that its NFL and SUPER BOWL marks have become extremely well-known around the world.
NFL also has an active presence on the Internet. Its domain names in current use include <nfl.com> (registered May 20, 1996), and <superbowl.com> (registered December 23, 1995).
The Domain Names were registered, without authorization from the Complainant, on various dates between May 22, 2002, and July 15, 2003.
The Complainant says that an Internet user who enters one of the Domain Names into a browser looking for an NFL or SUPER BOWL website, or a website affiliated with the NFL, instead arrives at a website to which one of the Domain Names resolves (such websites are collectively referred to in this decision as “the Respondent's websites”).
All of the Respondent's websites contain information on how to bet on NFL games, and links to third-party gambling sites.
Some of the Respondent's websites feature the NFL shield device mark or the NFL football mark. The NFL shield device mark appears on the websites linked to the following Domain Names: <bet-nfl-online-gambling.com>, <bet-nfl-sportsbooks.com>, <bet-pro-nfl-football.com>, <nfl-betting-guide.com>, <nfl-gambling-sportsbooks.com>, and <nfl-sportsbooks-wagering.com>. The websites at the following Domain Names feature the NFL football mark: <nfl-football-gambling-online.com>, <nfl-odds-online.com>, and <nfl-football-gambling-odds.com>.
The Complaint refers to two of the Domain Names which are said to be generally representative (in style and content) of all of the Domain Names. These two Domain Names are <bet-nfl-online-gambling.com>, and <super-bowl-gambling-sportsbooks.com>. The websites at both of those Domain Names provide links to third-party gambling sites.
In the case of the website at “www.bet-nfl-online-gambling.com”, there are links (under a heading “Our recommended Sportsbooks”) to third party gambling sites, including “www.gamblerspalace.com”, “www.sportbet.com”, “www.islandcasino.com”, and “www.skytowercasino.com”. The third-party gambling sites provide users with the opportunity to bet on NFL games. Other click-on links on the website at “www.bet-nfl-online-gambling.com” take the site visitor to web pages which in turn contain links to the same third party gambling sites. (To take one example, if a visitor to the website at “www.bet-nfl-online-gambling.com” clicks on “NFL & College Football sites, the site visitor is taken to a page with links to various gambling websites, including some which make use of the Domain Names at issue in this proceeding.) On the website at “www.superbowl-gambling-sportsbooks.com”, there are a number of click-on images shown on the left hand side of the web page. Clicking on these images takes the user directly to the third party gambling sites. Also, clicking on a “Top Sportsbooks” link on the home page at this website takes the user to a page containing links to the same third party gambling sites.
The Complainant has also referred to a website, said to be owned or operated by the Respondent, at “www.online-marketing-international.com”, and to a particular passage on that website which is said to describe the general nature of the Respondent's activities. Under a heading “Link & Word Search Marketing”, the text reads: “Online Marketing International directs quality & target audience to your site through online partnerships. Relocate your targeted audience online and weave channels for your audience to be funnelled to your site. Online promotions generate volume visitation in a window of time, while increasing link Popularity & click-volume to your site.”
The Complainant contends:
1. Notwithstanding the different registrant listings, the Respondent is the registrant of all 19 Domain Names. First, the Respondent's own website (at “www.online-marketing-international.com”) identifies each of the Respondent's websites as “clients” on its “Our Clients” page. Secondly, many of the Respondent's websites state on their home pages, using identical language, that they are “a member of Online Marketing International”. Thirdly, all 19 of the Respondent's websites contain links to the Online Marketing International website. Fourthly, the contact information for all 19 of the Domain Names includes an email address that ends in “@online-marketing-international.com”. Fifthly, all 19 Domain Names consist of the same basic structure – the NFL or SUPER BOWL mark, and a word or words that relate to gambling (gambling, betting, wagering, etc), with hyphens separating the words. Sixthly, all of the Respondent's websites are similar in nature in that they contain information on how to bet on NFL games and links to the same gambling websites. Seventhly, all of the Domain Names reside on the same two servers, and all are registered with the Registrar. Eighthly, “Online Marketing International” and “International Marketing Group” are both located in San Jose, Costa Rica. San Pedro is just a district in San Jose. Both use the same telephone number. Ninthly, several of the Domain Names registered by International Marketing Group, and all of the Domain Names with no listed registrant, were registered on the same day, namely May 22, 2002.
2. Fifteen of the Domain Names are confusingly similar to the Complainant's NFL trademark, and four of the Domain Names are confusingly similar to the Complainant's SUPER BOWL mark. Confusing similarity exists because the Domain Names all incorporate the NFL or SUPER BOWL marks in their entirety, and merely add generic terms.
3. The Respondent lacks rights or legitimate interests in respect of the Domain Names, having regard to the following factors:
(i) The Respondent has not used or prepared to use the Domain Names in connection with any bona fide offering of goods or services.
(ii) The Respondent has not been commonly known by any of the Domain Names.
(iii) The Respondent has not made any non-commercial or fair use of the Domain Names.
(iv) There is no relationship or affiliation between the Complainant and the Respondent which might give rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant's NFL or SUPER BOWL marks.
(v) The Respondent's use of the Domain Names unlawfully trades off the value and goodwill of the Complainant's NFL and SUPER BOWL marks.
(vi) The Domain Names are used as conduits to channel users to third party gambling websites. The Domain Names were registered by the Respondent in order to “weave” users to various gambling sites and “increase link popularity & click volume” to these for-profit sites (referring to the passage quoted above from the Respondent's website at “www.online-marketing-international.com”).
4. The Respondent has registered and used the Domain Names in bad faith, having regard to the following factors:
(i) The Complainant's NFL and SUPER BOWL marks were both famous and distinctive at the time the Respondent registered the Domain Names.
(ii) The Domain Names have been registered and used in bad faith under paragraph 4(b)(iv) of the Policy. The Respondent registered the Domain Names in order to confuse Internet users who were expecting to find a website belonging to the NFL, and to divert those users to the Respondent's websites. The Respondent's websites offer paid advertising for, and links to, gambling websites belonging to third parties.
(iii) Using a domain name that is confusingly similar to another's trademark to hyperlink to a gambling site constitutes bad faith (United Parcel Service of America, Inc. v. Intermos/Alex Storm, WIPO Case No. D2004-0211, and Encyclopaedia Britannica Inc. v. Shedon.com, WIPO Case No. D2000-0753. See also adidas-Salomon AG v. Worldnet Companies Inc., WIPO Case No. D2001-1156).
(iv) It is apparent that the Respondent derives a financial benefit through its use of the Domain Names, apparently by receiving revenues from third parties whose gambling websites are accessed via the Respondent's websites (referring to Caesars Entertainment, Inc. v. Infomax Ltd, WIPO Case No. D2005-0032: Scotsman Publishing, Inc. v. LaPorte Holdings, Inc., WIPO Case No. D2005-0228: Park Place Entertainment Corporation v. Bowno, WIPO Case No. D2001-1410, and PepsiCo, Inc. v. LaPorte Holdings, Inc. and Pepsiemployment.com a/k/a Henry Chan, WIPO Case No. D2005-0087).
(v) The Domain Names have also been registered and used in bad faith pursuant to paragraph 4(b)(ii) of the Policy. The Respondent has registered at least 15 Domain Names incorporating the famous NFL trademark and at least four Domain Names incorporating the famous SUPER BOWL trademark. Registering multiple domain names that incorporate a famous mark supports an inference that the Respondent knew of the NFL and SUPER BOWL marks and intentionally registered the Domain Names in order to prevent NFL from reflecting its NFL and SUPER BOWL trademarks in corresponding domain names. The registration of the Domain Names also constitutes a “pattern of conduct” under the Policy (See Royal Bank of Canada v Henry Chan, WIPO Case No. D2003-0031, where a pattern of conduct was found in circumstances where the respondent registered three domain names which were identical or confusingly similar to the complainant's trademarks, and Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, finding a pattern of conduct where the respondent registered 15 domain names that involved the complainant's mark).
(vi) In addition to the Domain Names, the Respondent has registered a number of domain names that contain the names of sports associations, in a similar attempt to funnel users to third-party gambling sites.
(vii) Finally, the Respondent appears to have furnished false or incomplete contact details when registering the Domain Names. In addition to the Whois records that contain no registrant name or mailing address, the records that do contain addresses are inaccurate or incomplete. For example, the postal code listed for several of the addresses, “999999”, is not an active postal code in Costa Rica. Other addresses in the Whois particulars do not include any postal code at all. Providing false contact details may be regarded as an indication of registration and use in bad faith (see Edmunds.com, Inc. v. Domain Administrator, WIPO Case No. D2006-1195, and Consitex S.A. v. Mr. Hugo Bazzo, WIPO Case No. D2003-0520).
The Respondent did not reply to the Complainant's contentions.
In the absence of any Response, the Panel is satisfied that “Online Marketing International”, and “International Marketing Group”, are controlled by the same entity, and that it is appropriate for the Group A Domain Names to be dealt with in the same proceeding as the Group B Domain Names. The evidence points overwhelmingly in that direction. First, neither Online Marketing International nor International Marketing Group appears on its face to be a corporation (with or without limited liability), and both appear to be based in San Jose, Costa Rica. Secondly, the relevant Whois particulars show that these two registrants have the same telephone number (which is also listed as the fax number for International Marketing Group), and that the email addresses for the administrative and technical contacts for the Group A Domain Names and the Group B Domain Names are both “@online-marketing-international.com” addresses. The physical address in the Whois particulars for the Group A Domain Names seems improbable (“200 meters N. taco Bell”), and the postal code provided for that address (“999999”) appears to be non-existent. Thirdly, the registrar and the domain servers are the same for both the Group A Domain Names and the Group B Domain Names.
In addition to those matters, many of the Respondent's websites contain a statement to the effect that the website operator is “a member of Online Marketing International”. By way of example only, the Domain Name <nfl-betting-sports-odds.com>, which is registered to International Marketing Group, contains the statement that that Domain Name “is a member of Online Marketing International”. And all 19 of the Respondent's websites contain links to the Online Marketing International website at “www.online-marketing-international.com”.
Those factors in combination justify the inclusion in the one administrative proceeding of the complaints relating to the Group A Domain Names and the Group B Domain Names.
The Whois particulars for all four of the Group C Domain Names list email addresses for the administrative and technical contacts which are identical to email addresses provided in the Whois particulars for Online Marketing International and International Marketing Group. In addition, the Group C Domain Names are in very similar format to the format of the Group A Domain Names and the Group B Domain Names. Each includes the Complainant's NFL or SUPER BOWL mark together with words, separated by hyphens, relating generally to gambling (such as “betting”, “gambling”, “odds” and so on). On the evidence which has been produced, the Panel is satisfied that the Group C Domain Names are owned or controlled by the same entity which owns and controls the Group A Domain Names and the Group B Domain Names, and that it was appropriate to include the Group C Domain Names in this proceeding.
As for the notification of the Complaint in respect of the Group C Domain Names, the Center has done all that it could have done to effect notification in accordance with the Rules, and the Panel sees no reason why a complainant should be deprived of a remedy in respect of a disputed domain name simply because a registrar has permitted that domain name to be registered and used without obtaining basic registrant particulars such as name and address from the registrant (and the registrant itself has failed to provide that information). The purpose of the Policy would be defeated altogether if complaints had to be rejected because of such deficiencies in the Whois information, and the absence of registrant information does not prevent registrars from implementing any panel orders for transfer or cancellation such orders effectively operate “in rem” against the disputed domain names themselves.
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the 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”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
The Panel is satisfied that the Complainant has proved this part of its Complaint.
First, the Complainant has established that it is the registered proprietor in the United States of America of the word marks NFL and SUPER BOWL. Each of the 19 Domain Names includes one of those marks.
Panels deciding cases under the Policy have frequently held that it is sufficient to establish confusing similarity under paragraph 4(a)(i) of the Policy, if a disputed domain name includes in its entirety the complainant's mark. See, for example, Nokia Group v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782, referred to by this Panel in The Ritz Hotel v. Damir Kruzicevic, WIPO Case No. D2005-1137 and Quintessentially (UK) Limited v. Mark Schnorrenberg, Quintessentially Concierge, WIPO Case No. D2006-1643. In some cases, a respondent may have added sufficient additional letters or numerals to “camouflage” the complainant's mark, and so avoid a finding of confusing similarity, but that is not the case in this proceeding. In 12 of the Domain Names the letters “nfl” are the first three letters in the Domain Names, and they are separated from the remaining words by hyphens. In each of those cases, the expression “nfl” forms the distinctive part of the relevant Domain Name: the hyphens have no bearing on the meanings those Domain Names convey to Internet users, and the words apart from “nfl” are all generic and non-distinctive. The Panel has no difficulty in concluding that the Domain Names in which the letters “nfl” appear first, followed by a hyphen, are confusingly similar to the Complainant's “NFL” mark.
For similar reasons, the Panel finds that the Domain Names <bet-nfl-online-gambling.com>, <bet-nfl-sportsbooks.com>, and <bet-pro-nfl-football.com>, are confusingly similar to the Complainant's NFL mark. In each case, the Complainant's NFL mark stands apart, separated by hyphens from other generic, non-distinctive words, and appearing as the second or third expression in the Domain Name.
Turning to the four Domain Names which include the expressions “superbowl” or “super-bowl”, the Panel finds that these four Domain Names are also confusingly similar to the Complainant's SUPER BOWL mark. Two of these Domain Names, <superbowl-gambling-sportsbooks.com>, and <super-bowl-gambling-odds.com>, have the “super bowl” or “super-bowl” at the beginning, separated by hyphens from strings of non-distinctive, generic words. In the Panel's view, Internet users would immediately associate these two Domain Names with the Complainant's Super Bowl football game. Similarly, in the Domain Name <online-superbowl-betting-odds.com>, the expression “superbowl” appears as the second word in the Domain Name, separated from a number of non-distinctive words by a hyphen on either side. The Panel is satisfied that the expression “superbowl” is the dominant and distinctive part of that particular Domain Name.
The Domain Name <pro-football-odds-super-bowl-betting.com> is closer to the “confusingly similar” line. In this case, the “super-bowl” is “hidden” in the middle of a lengthy domain name. However, the opening part of this Domain Name consists of the expression “pro-football”, and of course the Complainant's Super Bowl event is the premiere event in professional American football. Further, the use of the hyphens in the Domain Name ensures that the expression “super-bowl” is not “buried” in the Domain Name. There is a hyphen between “super” and “bowl”, but the Panel is satisfied that Internet users who were familiar with the Complainant's Super Bowl event would recognize the “super-bowl” part of this Domain Name as a reference to that event, especially having regard to the use of the expression “pro-football” at the beginning of the Domain Name. The Super Bowl event is one of the two “ideas” conveyed by this Domain Name (the other is the idea of gambling on that event), and “super-bowl” is a distinctive part of the Domain Name. In the Panel's judgment, the use of “super-bowl” in this Domain Name is enough to bring the Domain Name within the line of cases illustrated by Nokia Group v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782, in which the incorporation of a complainant's mark in a disputed domain name has been sufficient to make the disputed domain name “confusingly similar” to that mark. (The hyphen is not part of the SUPER BOWL mark, but it is non-distinctive and does not significantly reduce the similarity between the Domain Name and the SUPER BOWL mark.)
Accordingly, the Panel finds that all 19 of the Domain Names are confusingly similar to trademarks or service marks in which the Complainant has rights.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Respondent has registered a total of 19 Domain Names which are confusingly similar to trademarks or service marks in which the Complainant has rights. The Respondent had no licence or authority from the Complainant to use its trademarks, whether in domain names or otherwise. There is nothing in the record to suggest that the Respondent (or any business operated by it) might be commonly known by the Domain Names or any of them, so there could not be any right or interest under paragraph 4(c)(ii) of the Policy. Nor could there be any right or legitimate interest under paragraph 4(c)(iii) of the Policy (legitimate non-commercial or fair use of a disputed domain name without intent for commercial gain) the Domain Names in this case are all commercial in nature.
The Complainant has also produced ample evidence that the Respondent's use of the Domain Names has not been bona fide, so there is no question (on the evidence which is available to the Panel) of any right or legitimate interest arising under paragraph 4(c) (i) of the Policy. (The evidence of the Respondent's lack of bona fide is the same as that discussed in Section 6.E. of this decision, dealing with the subject of registration and use of the Domain Names in bad faith.)
The foregoing matters sufficiently establish a prima facie case, so the evidentiary onus moves to the Respondent to establish that it has some rights or legitimate interests in respect of the Domain Names. The Respondent has not filed a Response, and has therefore failed to discharge that evidentiary onus. The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of any of the Domain Names.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include:
“(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location.”
The Panel is satisfied that the Respondent has registered and used all 19 Domain Names for that particular bad faith purpose. The Panel has reached that conclusion for the following reasons.
1. The Respondent was obviously aware of the Complainant's NFL and SUPER BOWL marks when the Domain Names were registered. Both marks are extremely well known, and the contents of the Respondent's websites leave no room for doubt that the Respondent was aware of the marks.
2. Without any authority from the Complainant, the Respondent has reproduced on the Respondent's websites the Complainant's trademarks, including (on some of the Respondent's websites) the NFL shield device mark and the NFL football mark. It is difficult to conceive of any legitimate reason the Respondent might have had for reproducing the device marks. In the absence of any explanation from the Respondent, the Panel concludes that the device marks were used to make it appear as if the Respondent's websites in which those marks were used, were either official NFL websites, or were authorized by or affiliated with NFL in some way.
3. The Panel did not note anything on the Respondent's websites in the nature of a disclaimer of a relationship with the Complainant. There was nothing to disabuse a site visitor of the impression that there was some association between the Respondent's websites and the Complainant.
4. This is not a case where the Respondent has been operating as a genuine reseller of the Complainant's products, or in an “after market” (for goods or services accessory to or associated with those of the Complainant) where the Respondent's services could only sensibly be described by using the Complainant's marks. In such cases, UDRP panels have consistently held that the respondent has a right or legitimate interest in using the complainant's trade mark in the disputed domain name, provided the respondent's use meets certain conditions. Those conditions were articulated in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, and they have been applied in numerous panel decisions since then (for a fairly recent example, see the decision of this Panel in Oracle International Corporation v. Contractors Network Limited, WIPO Case No. D2008-1493). In this case, the Respondent fails to meet at least three of the “bona fide use” conditions laid down in the Oki Data Americas Inc. case. First, the Respondent's websites fail to make it clear that there is no relationship between the Complainant and the Respondent. Secondly, the Respondent is not selling only the Complainant's products, or only genuine goods or services which the Respondent could not practically market without referring to the Complainant's marks. In this case, the Respondent has been using the Respondent's websites not only to provide advice to those wishing to bet on NFL football games, but also to provide tips and advice on online gambling generally, and to provide links to third party gambling websites which offer numerous gambling services which are unrelated to the Complainant or its football games. Finally under this head, the Respondent has registered no fewer than 19 domain names, being a number far greater than would have been necessary to meet the legitimate requirements of a bona fide reseller, or of a bona fide supplier to an “after market” for products which associated with or accessory to a trademark owner's products.
5. In the Panel's view, the Respondent has registered the Domain Names with a view to trading off the Complainant's goodwill in its NFL and SUPER BOWL marks, by attracting to the Respondent's websites site visitors who have been confused into assuming that the Respondent's websites are owned by or connected with the Complainant. In short, by using the Domain Names, the Respondent has intentionally attempted to attract Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's NFL and SUPER BOWL marks, as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites and the services offered through the Respondent's websites. The Panel is satisfied that the Respondent has done that for commercial gain (the links to the third party gambling websites would not sensibly have been provided by the Respondent for nothing), and that the circumstances therefore come within paragraph 4(b)(iv) of the Policy.
6. The Panel's strong impression of bad faith registration and use is reinforced by the following additional factors:
(i) the Respondent's failure to respond to the Complaint; and
(ii) the Respondent's failure to provide proper contact details for the Domain Names, including in particular its failure to provide proper registrant details for the Group C Domain Names. Also, the apparently false address provided for Online Marketing International in the Whois particulars for the Group A Domain Names.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names listed in the Schedule hereto be transferred to the Complainant.
In respect of the Domain Name <nfl-nba-nhl-mlb-ncaa-online-betting-lines-odds.com>, the Panel notes that the Domain Name includes what might be trademarks owned by other entities. In those circumstances, there is an issue as to whether there should be an order for the transfer of this Domain Name to the Complainant, or an order for cancellation. The difficulty with an order for cancellation, is that such an order would leave open the possibility of the Respondent immediately re-registering this Domain Name, and the Complainant then being obliged to file a further proceeding under the Policy. In those circumstances, the Panel considers that the more appropriate course is to direct that the Domain Name be transferred to the Complainant, on the basis that the transfer shall be without prejudice to the rights of the owners of any trademarks which are identical or confusingly similar to any of the expressions “nba”, “nhl”, “mlb”, or “ncaa”, to file their own complaint or complaints relating to the Domain Name <nfl-nba-nhl-mlb-ncaa-online-betting-lines-odds.com>. The Panel so orders.
Warwick Smith
Sole Panelist
Dated: March 2, 2009
SCHEDULE
Domain Names to be transferred to the Complainant
<bet-nfl-online-gambling.com>
<bet-nfl-sportsbooks.com>
<bet-pro-nfl-football.com>
<nfl-betting-guide.com>
<nfl-betting-sports-odds.com>
<nfl-football-betting-guide.com>
<nfl-football-gambling-odds.com>
<nfl-football-gambling-online.com>
<nfl-football-online-betting.com>
<nfl-gambling-football-betting.com>
<nfl-gambling-sportsbooks.com>
<nfl-nba-nhl-mlb-ncaa-online-betting-lines-odds.com> (transfer to be without prejudice to the rights of any third party trade mark owners in accordance with section 7 of this decision).
<nfl-odds-online.com>
<nfl-sportsbooks-gambling.com>
<nfl-sportsbooks-wagering.com>
<online-superbowl-betting-odds.com>
<pro-football-odds-super-bowl-betting.com>
<super-bowl-gambling-odds.com>
<superbowl-gambling-sportsbooks.com>