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Generic Top Level Domain Name (gTLD) Decisions |
Atlanta National League Baseball Club,
Inc. v. Braves Cleaning Service and Lindsey Crawley
Claim Number: FA0409000319615
PARTIES
Complainant is Atlanta National League Baseball Club, Inc. (“Complainant”),
represented by Bryan Day of Major League Baseball Properties, Inc., 245 Park Avenue, New York, NY 10167. Respondent is Braves
Cleaning Service and Lindsey Crawley (“Respondent”), represented by Ari Goldberger of ESQwire.com Law Firm,
35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <braves.com>,
registered with Network Solutions, Inc.
PANEL
The undersigned certify that they have
acted independently and impartially and to the best of their knowledge have no
known conflict
in serving as Panelists in this proceeding.
Richard DiSalle, Diane Cabell and Jeffrey M. Samuels are the Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on August 31, 2004; the
Forum received
a hard copy of the Complaint on September 1, 2004.
On September 2, 2004, Network Solutions,
Inc. confirmed by e-mail to the Forum that the domain name <braves.com> is registered with Network Solutions, Inc. and
that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions, Inc. registration agreement and
has thereby
agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the
“Policy”).
On September 3, 2004, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”),
setting a deadline of September 23, 2004 by which Respondent
could file a Response to the Complaint, was transmitted to Respondent
via
e-mail, post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing
contacts, and to
postmaster@braves.com by e-mail.
A timely Response was received and
determined to be complete on October 4, 2004.
Additional Submissions of both the
Complainant and the Respondent were received and considered by the Panel.
On October 14,
2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Richard DiSalle, Diane Cabell and
Jeffrey M. Samuels
as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The Complainant contends that for more
than nine decades, Complainant Atlanta National League Baseball Club, Inc.
and/or its predecessors
have owned the Major League Baseball club, since 1966
known as the Atlanta Braves club and previously known as the Boston Braves
and
the Milwaukee Braves clubs (collectively the “Braves” or the “Club”), thought
to be one of the oldest continuously operating
professional sports clubs in the
United States.
For decades and since long prior to
Respondents’ registration of <braves.com>, the Braves Club has
used and continues to use the distinctive BRAVES name and trademark alone or
with other elements (the “BRAVES
Marks”) to identify its baseball club, its
baseball game and exhibition services, and a wide variety of goods and services
associated
with the Club. In
recognition of the Club’s rights, the United States Patent & Trademark
Office has granted the Braves Club numerous federal
trademark registrations for
the BRAVES mark, as follows: Reg. Nos.
829,308; 829,309; 845,032; 1,484,697; 1,561,774; 1,562,115; 1,596,052; and
1,620,113.
Through Major League Baseball Properties,
Inc. (“MLBP”), the Club’s licensing agent responsible for the enforcement and
protection
of the BRAVES marks, the Braves Club has licensed hundreds of entities
to use the BRAVES marks on or in connection with a wide variety
of goods and
services. As a result of these
licensing efforts, over the last ten years, retail sales of BRAVES merchandise
have exceeded $1.4 billion in
the U.S. and Canada alone.
In addition, the BRAVES marks have been
licensed by the Braves Club and MLBP in connection with local and/or national
sponsorship
promotions to a wide range of entities spanning numerous industries
including, for example, Coca-Cola, Lexus, Mastercard, Anheuser-Busch,
and Home
Depot. These sponsorship deals account
for millions of dollars in revenues for the Club and/or MLBP as well as
widespread use and promotion
of the BRAVES marks in connection with various
products and services bearing the BRAVES marks together with the names and
marks of
the third party sponsors.
For decades, the BRAVES marks have also
been marketed and promoted extensively in major magazines and newspapers, on
the Internet,
and via television and radio, and have been the subject of extensive
unsolicited media coverage, not only in the greater Atlanta,
Georgia area where
both Complainant and Respondents are located, but also internationally by media
such as Sports Illustrated, ESPN,
CNN, and other major news networks. In
addition to such extensive media coverage, the Club spends millions of dollars
annually on various types of advertising for the
goods and services identified
by the BRAVES marks.
The BRAVES marks are an essential part of
the Club’s ability to conduct business on-line. The Club owns numerous domain names, through its agent, MLBP, that
consist of or contain the BRAVES marks, including among others,
<Braves.us>, <Bravesbaseball.com>, <Bravesclub.com>,
<Braves.info>, <Braves1.com>, <Atlantabraves.com>,
<Atlantabraves.info>, and <Atlantabraveslive.com>. All of the domain names connect directly to
the official Internet website of the Braves Club (“Braves Official Website”)
which is
maintained at the URL <http://atlanta.braves.mlb.com>. This extensive and distinctive website is a
highly valuable asset of the Club, one which received nearly 20 million
visitors in 2003. On the Braves
Official Website, the Club promotes its goods and services by providing
information about itself, selling tickets to
Braves baseball games, and selling
licensed merchandise bearing BRAVES marks, including jerseys, caps, T-shirts,
sweatshirts, jackets,
baseball cards, memorabilia, collectibles, books and
DVD’s, among other items. The Braves
Official Website also offers audio and video streaming of Braves games, on-line
message boards, screen savers, interactive
games, interactive fantasy baseball
leagues, and news and other information, all relating to the Braves Club.
The BRAVES marks have enjoyed fame and
distinctiveness since long prior to Respondents’ registration of the domain name <braves.com>
on May 10, 1995, and as a result of the extensive sales, advertising, and
promotions of BRAVES goods and services as discussed above,
the Braves Club has
created enormous goodwill in the BRAVES Marks, of great value to the Club.
Respondent Braves Cleaning Service is
not, and never has been, a functioning business. A search of Georgia Secretary of State records, Whitepages.com,
Atlanta directory assistance, and on-line search engines failed to
reveal any
references for this business. In
addition, the telephone and fax numbers listed for Respondent Braves Cleaning
Service in the WHOIS information provided by Respondents
to Network Solutions
are both “999-999-9999,” numbers which are obviously false and
nonexistent.
Respondents’ address as stated in the
WHOIS database, i.e. 2049 Tuxedo Avenue, Atlanta, Georgia, is located only
about ten miles from
Turner Field, the home stadium and corporate office of the
famous Atlanta Braves club, an area in which there is extensive media
coverage
of the Club. Upon information and
belief, Respondents registered the <braves.com> domain name with
full knowledge of Complaint’s prior and longstanding use of the BRAVES
marks.
Complainant recently conducted a search for
<braves.com> via the website archive WaybackMachine.com and was
able to review portions of the Respondents’ historical use of <braves.com>
from 1995 to the present. From May 10,
1995 until May 10, 2000, Respondents did not link <braves.com> to
any active website.
Upon information and belief, since on or
about May 10, 2000 until the date of this Complaint, Respondents have linked <braves.com>,
a name that contains a mark identical to the Braves Club’s mark BRAVES and
which is confusingly similar to the various BRAVES Marks,
primarily to a single
page website that purports to offer the services of “Braves.com Consulting” and
includes vague references to
security assessment services. Braves.com Consulting is not and has never
been a legitimate business and the website posted at <braves.com>
does not promote the services of any legitimate, functioning company. Neither the Georgia Secretary of State
records, Whitepages.com, Atlanta directory assistance, nor on-line search
engines reveal any
current references to this business. Upon information and belief, Respondent
Crawley is the alter ego of Braves.com Consulting.
Upon information and belief, Respondents
have never used the website linked to <braves.com> for any
legitimate business purpose, but instead to divert consumers to the website for
personal gain. Specifically, on or
about March 31, 2001 and continuing to date, Respondents began including paid
advertising links on the website
linked to <braves.com>, such as
banner advertisements for third party products and companies like the Iomega
HipZip Digital Audio Player, the Iomega Predator
CD-RW, Abel Solutions,
ImageServe, and Dynasis. Respondents have also placed the text “(please support
our sponsors)” and “(please
visit the homes of the best in e-business
development, services, and support in the Southeast)” near these banner ads on
the website
linked to <braves.com>.
B.
Respondent
The Respondent contends that Braves is a common word in the
dictionary defined as a “Native American warrior.” The term “braves” is subject to substantial third party use on
the Internet unrelated to Complainant.
A Google.com search for “braves,” excluding the words “Atlanta;”
“Boston;” “baseball;” “ball” and “major league” (to avoid references
to
Complainant) yielded over 330,000 third party web pages containing this common
term. Because “braves” is a common
term referring to “warriors,” it is a particularly desirable name for many
types of sports teams as competitive
sports teams desire to be known as
fighters.
There is no basis for transferring the
disputed domain name <braves.com> (the “Disputed Domain”) to
Complainant. Complainant does not have
exclusive rights to the common dictionary word “braves,” which is subject to
substantial third party use. A “Brave”
is defined as a Native American warrior.
Complainant did not coin the term, but merely adopted the term as is
evident from the Native American tomahawk that appears in its
logo. Complainant does not have a monopoly on this
term.
Respondent registered the Disputed Domain
almost 10 years ago because it was a common word available for anyone to
register. Respondent selected the
Disputed Domain because it incorporates a common word to which no single party
has exclusive rights. There is no
evidence of bad faith registration and use.
Respondent did not register the Disputed Domain to sell to Complainant,
to disrupt its business, prevent it from acquiring a domain
name incorporating
its trademark or to confuse users. The term “braves” is subject to substantial
third party use on millions of
Internet web pages, so it is certainly not a
term exclusively associated with Complainant.
Respondent simply did not register the Disputed Domain because it
incorporates Complainant’s mark – or any mark.
Respondent registered the Disputed Domain name because it contains a
common word. Such registration is
entirely permissible under the UDRP and under trademark law. The registration
of a common word domain name establishes
the Respondent’s legitimate interest.
Respondent’s use of the Disputed Domain
for business purposes further supports Respondent’s legitimate interest. Respondent is a successful entrepreneur who
has operated numerous internet businesses.
After registering the Disputed Domain he allowed his sister to use it
for a cleaning service she operated.
After selling an ISP he operated, Respondent began a new security
consulting business, which he launched as Braves.com Consulting.
The prior
cleaning service business and the current computer security business both
constitute the bona fide offering goods and services,
clearly establishing
Respondent’s legitimate interest under the Policy. Finally, Respondent also has a legitimate interest because he has
been commonly known by the domain name (Braves.com Consulting) since
the year
2000.
C.
Additional
Submissions
In its additional submissions,
Complainant states Respondents’ assertion that a registrant “ipso facto has a legitimate interest” if
the domain name at issue is a common word is incorrect. “[A] respondent should not be permitted to
establish legitimate rights and interests in a domain name that is identical to
complainant’s
registered, incontestable trade or service mark on the ground
that the trademark or service mark is [a] ‘common generic word’.” BPI Communications,
Inc. v. Boogie TV LLC, No. 105755 (NAF April 30, 2002) (transferring
<billboard.tv> domain name to owner of BILLBOARD family of marks). Respondent Crawley’s assertion that he chose
to register <braves.com> because BRAVES is a descriptive term
strains credulity in light of the fact that the term BRAVES has nothing to do
with his purported
consulting business, his sister’s alleged cleaning service,
or the sale of his home. That assertion
might have some credibility if he had registered <consulting.com>,
<cleaningservice.com> or <houseforsale.com>. Instead, his choice of <braves.com>
obviously has everything to do with his attempt to capitalize on the fame of
his neighbors, the famous Atlanta Braves Major League
Baseball Club.
In its additional submissions, Respondent
asserts: Complainant has not pointed to
one credible piece of evidence showing that Respondent has engaged in bad
faith. No efforts
to sell the domain name, to confuse
users, disrupt Complainant’s business, and no efforts to sell the domain name,
to confuse users,
disrupt Complainant’s business, and no evidence of any other
domain names registered by Respondent that incorporate trademarks. Essentially, the Complainant is asking this
Panel to rewrite the UDRP to make a special exception for “famous marks.” Register a domain name incorporating a
famous mark, even if it’s a common word, and you have engaged in bad faith
registration. That is not what the UDRP
says, and there is no decision that simply holds that the registration of a
common word domain name, in
and of itself, constitutes bad faith just because
the Respondent has knowledge the common word is a famous mark. There simply is no evidence of bad faith
registration or use as those terms are defined under the Policy. Complainant’s main argument is simply that
Respondent knew that Braves was a famous mark and was, therefore, prohibited
from registering
and using it except for, perhaps a site about Native
Americans. Complainant is simply wrong
that Respondent has not used the Disputed Domain in connection with the bona
fide offering of goods and
services.
Respondent has provided evidence that it has promoted its Braves.com
consulting business for years prior to the initiation of this
dispute with an
active web site that was updated as Respondent traveled and moved offices
attempting to grow his business. The
fact that Respondent may not have been tremendously successful does not mean
the use has not been bona fide. As
noted in the Response, the Policy places no minimal requirements on the use of
a disputed domain name.
FINDINGS
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”)
instructs this 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.”
Paragraph 4(a) of the Policy requires
that the Complainant must prove each of the following three elements to obtain
an order that
a domain name should be cancelled or transferred:
(1)
the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant
has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
Complainant
asserts that it has established rights in the BRAVES mark by registering it
with the United States Patent and Trademark
Office (Reg. No. 829,308 issued May
23, 1967; Reg. No. 829,309 issued May 23, 1967; Reg. No. 845,032 issued
February 27, 1968; Reg.
No. 1,562,115 issued October 24, 1980). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under U.S. trademark law, registered marks hold a presumption that they
are inherently
distinctive and have acquired secondary meaning.”); see also
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
Complainant asserts that the <braves.com> domain name is identical to Complainant’s
BRAVES mark because the domain name fully incorporates Complainant’s mark,
merely adding
the generic top-level domain (gTLD) “.com.” The Panel finds that the addition of a gTLD
to Complainant’s registered mark is irrelevant and does not negate the
identical nature
of the domain name. See
Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain
name for the purpose of
determining whether it is identical or confusingly similar); see also Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain
(gTLD) “.com” after the name
POMELLATO is not relevant). This is
sufficient to satisfy Policy ¶ 4(a)(i).
See Shirmax Retail Ltd. v. CES Mktg. Group Inc., AF-0104
(eResolution Mar. 20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the
conjunctive rather than disjunctive sense in
holding that “mere identicality of
a domain name with a registered trademark is sufficient to meet the first
element [of the Policy],
even if there is no likelihood of confusion
whatsoever”).
Complainant
contends that Respondent is not, and had never been, commonly known by the <braves.com>
domain name and that Respodent has not been licensed or given permission
by Complainant to use the BRAVES mark. See
Gallup
Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known
by the mark); see also
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where Respondent was not commonly known by the mark and
never applied
for a license or permission from Complainant to use the trademarked name).
Complainant alleges that Respondent has
used the <braves.com> domain name for a variety of purposes,
including redirecting Internet users to a website for a nonexistent business
entitled Braves.com
Consulting, advertisements for the sale of Respondent
Crawley’s house, and paid banner advertisements for third parties. Respondent’s use of a domain name identical
to Complainant’s well-known BRAVES mark to redirect Internet users to
Respondent’s commercial
website is not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use of the domain name pursuant
to Policy ¶ 4(c)(iii). See U.S. Franchise Sys.,
Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of
Complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users
to an unrelated business was not a bona fide offering
of goods or services); see also Am.
Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding that use of Complainant’s mark “as a portal to suck surfers into
a site sponsored
by Respondent hardly seems legitimate”); see also MSNBC
Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights
or legitimate interests in the famous MSNBC mark where Respondent attempted to
profit using Complainant’s mark by redirecting Internet traffic to its own
website).
Furthermore, once Complainant makes a prima
facie case for Policy ¶ 4(a)(ii), Respondent then has the burden to
establish that it has rights or legitimate interests in the domain
name. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate
interests with respect to
the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion
because this information is “uniquely within
the knowledge and control of the respondent”); see also Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that
once Complainant asserts that Respondent has no rights or legitimate interests
with
respect to the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate
interests in the
domain name).
Complainant argues that Respondent
registered the <braves.com> domain name, containing Complainant’s BRAVES
mark in its entirety, for Respondent’s commercial gain. Complainant asserts that Respondent’s domain
name diverts Internet users seeking information about Complainant to
Respondent’s website
that advertises third-party products and services and
Respondent’s house. Respondent’s
practice of diversion, motivated by commercial gain, is evidence of bad faith
registration and use pursuant to Policy
¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered
and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because
Respondent was using the confusingly similar domain name to attract Internet
users to its commercial website);
see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum
Sept. 12, 2000) (finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe
on Complainant’s goodwill and attract Internet
users to Respondent’s website).
Furthermore, while each of the four
circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use
and registration
of a domain name, the Panel considers additional factors in
determining if there is bad faith registration and use. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel
must look at the “totality of
circumstances”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
Complainant asserts that Respondent had
actual or constructive knowledge of Complainant’s rights in the BRAVES mark,
because Respondent’s
address is located approximately ten miles from Turner
Field, where the Atlanta Braves baseball team plays and where Complainant’s
home offices are located. Furthermore,
this is an area with regular and extensive print, radio, and television media
coverage of the Atlanta Braves baseball
team.
Thus, the Panel may find that Respondent registered and used the domain
name in bad faith pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb.
Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith,
when Respondent reasonably should
have been aware of Complainant’s trademarks,
actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly
known mark at the time of registration); see also
Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of
Complainants' famous marks, Respondent had actual
or constructive knowledge of
the BODY BY VICTORIA marks at the time she registered the disputed domain name
and such knowledge constituted
bad faith).
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <braves.com>
domain name be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Diane Cabell and Jeffrey
M. Samuels, Panelist
Dated: October 28, 2004
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