Domain Dynasty: The Ongoing Battle over Presence on the World Wide Web

By Emily Bayton
 
With the continual growth of the Internet, sports organizations, teams and athletes face a plethora of online threats that could jeopardize their intellectual property (IP) rights. One issue that continues to plague the sports world is cybersquatting, also known as domain name squatting. Even with established case law and mechanisms in place for fighting domain name disputes, infringers still run rampant–attempting to capitalize on the goodwill associated with a particular organization, team or athlete.
 
The World Intellectual Property Organization (WIPO), the leading ICANN-accredited domain name dispute resolution service provider, indicates that cybersquatting cases are on the rise. In 2011 alone, WIPO estimates that roughly 2,764 cybersquatting cases covering 4,781 domain names were filed with the WIPO Arbitration and Mediation Center – an estimated increase in 2.5% from the previous high set in 2010. See “WIPO Prepares for Launch of New gTLDs while Cybersquatting Cases Continued to Rise,” http://www.wipo.int/pressroom/en/articles/2012/article_0002.html, (last accessed: January 14, 2012).
 
This article provides a summary of two recent domain name battles in the sports industry decided by WIPO under the Uniform Domain Name Dispute Resolution Policy (UDRP). In both cases, the complainant sports organization argued that its IP rights had been violated because: 1) the domain was confusingly similar to its trademarks; 2) the cybersquatter had no legitimate rights to the domain; and 3) the domain was registered and used in bad faith.
 
Case #1: PGA TOUR, Inc. v. Eka Paramartha, Case No. D2012-1904
 
One of the most recent UDRP decisions in the sports world involved a complaint filed by PGA TOUR, Inc. (“PGA”) against the individual Eka Paramartha of Denpasar, Indonesia (“Respondent”) relating to registration and use of the domain name . As most know, PGA organizes and televises professional golf tournaments. The Respondent registered and used the domain in connection with an informational website to display golf-related articles, product reviews, and links.
 
PGA filed a complaint with WIPO objecting to Respondent’s registration and use of the domain on the following grounds:
 
Identical or Confusingly Similar Mark: To establish that the domain name at issue was identical or confusingly similar to PGA’s trademarks, PGA relied on its ownership of U.S. trademark registrations for WORLD GOLF TOUR and similar marks covering golf and entertainment related services. PGA argued that its registrations served as prima facie evidence of ownership of the trademark WORLD GOLF TOUR, which was incorporated in its entirety in the domain. PGA also argued that based its ownership of various WORLD GOLF- and WORLD-formative trademarks that it owned a family of “WORLD GOLF” marks “synonymous with its golfing contests.”
 
The WIPO Panel (“Panel”) found that PGA had provided sufficient evidence to demonstrate trademark rights in WORLD GOLF TOUR and a family of “World Golf” marks in the U.S. and that the domain was an exact reproduction of PGA’s trademarks – with the only difference being that the domain was hyphenated and followed by a generic top-level domain (.net). These differences were not enough to distinguish it from PGA’s trademarks. As a result, the Panel held that the domain incorporated an identical or confusingly similar mark.
 
No Rights or Legitimate Interests: With regard to the second prong of the analysis, the Panel analyzed the information provided by Respondent as to why he registered the domain to determine whether he had any rights or legitimate interests in the domain. Although Respondent failed to file a formal response to PGA’s complaint, he sent two emails stating that he was not a “golf tour” company, but was only using the domain for the “purpose of provid[ing] information such as news and tutorials to play golf.” Respondent also argued that he obtained the domain “through research in the Google keywords research tool. . . and at the time of [registering] this domain [he] did not get a warning or ban from [PGA].” Respondent focused on the fact that the website was non-profit and that there were no book or product sales conducted through the site and that the “website [was] not a priority for [him] because there was no traffic coming to this website.”
 
The Panel found that although third parties have a right to register and use domains incorporating commonly used descriptive phrases, this is true “only if the domain name [is] registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words.” In this case, the Panel found that although the words “world,” “golf,” and “tour” are descriptive, the fact that PGA established a family of marks indicates that the “amalgamation of these three words has trademark value” for PGA. Respondent’s use of the domain to display problematic content, such as photographic images taken at PGA tournament events, as well as golf-related articles and references to PGA’s World Golf Tour, supported PGA’s claim that Respondent was not using the domain in its primary descriptive sense, but rather in a manner that was intended to trade off the goodwill associated with PGA’s trademarks. As a result, Respondent failed to demonstrate any legitimate interests in his registration and use of the domain.
 
Registered and Used in Bad Faith: In determining whether the domain was registered and used in bad faith, the Panel focused on Respondent’s admission that the domain was no longer a priority based on the lack of traffic coming to the website. The Panel found that this admission supported the contention that Respondent was “only interested in the ‘traffic’” to the website, which “reinforce[d] the perception of an apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademark,” which supported a finding of bad faith. The Panel also discounted Respondent’s claim that he was making a non-commercial use of the domain because he was not actively selling products or services. The evidence indicated that the Respondent was trying to generate profit passively based on click-through revenues for traffic diverted to the site, which supported a finding of bad faith.
 
Because all factors weighed in favor of PGA, the Panel found for PGA and ordered Respondent to transfer the domain name.
 
Case #2: National Football League v. EE Nation, Case No. D2011-1228
 
The NFL, which aggressively protects its SUPER BOWL trademark, filed a complaint against EE Nation alleging that its registration and use of the domain without the NFL’s authorization or consent violated its trademark rights. The NFL relied on the following evidence in support of its claim.
 
Identical or Confusingly Similar Name: Like the PGA, the NFL relied on federal registrations for SUPER BOWL and highly similar marks to establish rights in the SUPER BOWL trademark. It also presented evidence of extensive advertising and unsolicited media coverage of the SUPER BOWL mark to demonstrate that it has come to be recognized and relied upon by the public as referring to the NFL and its championship football game. The Panel found that based on the evidence submitted, the NFL had established rights in SUPER BOWL, and that Respondent’s domain incorporated SUPER BOWL in its entirety, with the only difference the addition of the generic of descriptive word “concierge,” which was not enough to differentiate it from the NFL’s trademark. Thus, the domain was identical or confusingly similar to the NFL’s trademark.
 
No Rights or Legitimate Interests: As to whether Respondent had any rights or legitimate interests in the domain, the NFL presented evidence that Respondent registered the domain decades after it had established rights in the SUPER BOWL trademark, and that the NFL had not authorized any use by Respondent of the SUPER BOWL mark in the domain name or in any other manner. Although Respondent failed to file a formal response to the complaint, it sent an e-mail requesting guidance on how it could modify the domain so as to not violate the NFL’s trademark rights. Respondent also stated that the information provided through the website was not intended to generate profit, but rather was purely informational and not intended to “harm anyone” — arguments similar to those raised in the PGA case. The Panel discounted these arguments and found that Respondent failed to present any evidence or arguments as to why it has a right or legitimate interest in using the domain name. Moreover, the fact that Respondent was trying to figure out a way to use the domain so as to not pose a problem for the NFL did not negate the Panel’s finding that Respondent had no rights or interests in the domain.
 
Registered and Used in Bad Faith: To establish bad faith, the NFL focused on the content of Respondent’s website. NFL supplied evidence that Respondent’s website displayed information on NFL stadiums, as well as hotel and travel-related links for the Super Bowl game. It also contained a link for “Super Bowl Packages.” The NFL argued that Respondent’s hotel and travel-related services and game packages directly compete with the NFL and the services it offers for its championship game. Based on the evidence presented, the Panel found that “Respondent’s use of the Domain Name to promote Super Bowl-related services demonstrates that Respondent targeted [the NFL] and its SUPER BOWL trademark when it registered the Domain Name” and was used to “take advantage of [the NFL]’s goodwill and to divert users to Respondent’s commercial website, which offered directly competitive services.”
 
Accordingly, the panel ordered the domain name to be transferred to the NFL.
 
Conclusion
 
The statistics indicate that there will continue to be domain name disputes and opportunistic cybersquatters waiting in the virtual “shadows” and that this will impact all industries – the sports industry being no exception. One way sports organizations can get a leg up on these infringers is to proactively register and protect trademarks and associated IP. It is also vital to continually monitor the marketplace and identify infringements early on. If a problem is identified, all evidence should be gathered prior to sending a letter to the registrant to avoid a situation where an infringer pulls all problematic content, because as shown above, the content of the website is vital in establishing bad faith. Also, make sure to retain all correspondence with the registrant because statements made during the course of an e-mail exchange can be used to support a claim of bad faith in domain name disputes.
 
Emily Bayton is a partner in the firm’s Intellectual Property and Technology Practice Group. She focuses her practice primarily in the areas of trademarks and copyrights. She can be reached at EBayton@LRLaw.com.