Generic Top Level Domain Name (gTLD) Decisions

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Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com

DOMAIN NAME DISPUTE ADMINISTRATIVE DECISION

ESPN, INC. Complainant, vs. NAUGHTYA PAGE, LLC Respondent.

DECISION Forum File No.: FA0004000094397

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 42^nd 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(c) 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 ICANN’s 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 ICANN’s 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 it’s 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. Respondent’s domain names which are identical to complainant’s 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. Respondent’s use of Complainant’s ESPN Marks creates a likelihood of confusion. Complainant’s 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 Respondent’s 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 Complainant’s 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 Complainant’s 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 Respondent’s website by Complainant. See Rule 4(b)(iii).
9. Respondent’s activities constitute an infringement of Complainant’s 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.

CONCLUSION

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 Complainant’s 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 ICANN’s 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.

Dated: May 17, 2000 Judge Herman D. Michels, Arbitrator