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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Hockey League v. Daniel Krusz
Case No. D2001-0234
1. The Parties
The Complainant is: the National Hockey League, a Canadian not-for-profit association whose address is 1251 Avenue of the Americas, New York, New York 10020-1198, U.S.A. The Complainant is represented by David H. Bernstein, Esq. of Debevoise & Plimpton, 875 Third Avenue, New York, New York 10022.
The Respondent is: Mr. Daniel Krusz, 44 Endicott St., Dedham, Massachusetts, 02026, U.S.A.
2. The Domain Name and Registrar
The domain name in dispute is <nhlcoolshots.com>. The registrar for the disputed domain name is Network Solutions, Inc. ("NSI"), 505 Huntmar Park Dr., Herndon, Virginia, 20170, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on February 15, 2001. Also on February 15, 2001, the Center requested that the Registrar NSI check and report back on the registrant for the domain name <nhlcoolshots.com>. On February 20, 2001, NSI reported to the Center that the registrant was the Respondent in this proceeding, Mr. Daniel Krusz.
On February 21, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. Respondent did not file a response within the twenty (20) day time period required by Rule 5, and thus on
March 13,2001 was declared to be in default.
The Administrative Panel submitted a Declaration of Impartiality and Independence on March 20, 2001, and on March 22, 2001 the Center sent out notification of the appointment of the Panel.
The Panel finds the Center has adhered to the Policy and the Rules while administering this Case.
This Decision is due by April 4, 2001.
4. Factual Background
The Complainant has been using the mark "NHL Cool Shots" in conjunction with a television series on National Hockey League games since 1997. The program is televised weekly on a number of television stations that broadcast in the U.S.A. and Canada. The Respondent registered the disputed domain name <nhlcoolshots.com> on June 2, 1999. Beginning on October 14, 1999, the Complainant contacted the Respondent to assert trademark infringement and to attempt to convince the Respondent to transfer the disputed domain name to the Complainant. There ensued a lengthy and heated exchange of letters and telephone calls, but the parties failed to reach an agreement.
On March 15, 2000, the Respondent began using the disputed domain name <nhlcoolshots.com> to show pictures of New Hampshire lakes and links to state of New Hampshire tourism sites. A pop-up window also allowed the navigator to visit the Respondent's sports gambling site <tophandicappers.com>.
The Complainant is now seeking transfer of the domain name in this proceeding.
5. The Parties' Contentions
- The domain name registered by Respondent is identical to the famous NHL Cool Shots trademark owned by Complainant.
- Respondent has no rights or legitimate interests with respect to the nhlcoolshots.com domain name. NHLCoolShots.com bears no legitimate relationship to the business or personal affairs of Respondent, nor has Respondent ever been commonly known by the domain name (the Policy 4(c)(ii).
- Respondent can not legitimately argue fair use because Respondent's intent was to procure commercial gain.
- Respondent registered the domain in bad faith and well aware of the NHL family of trademarks as evidenced by their later use on his tophandicappers.com gambling website.
- Respondent's posting of snapshots purporting to be New Hampshire lakes is an obvious pretext that both undermines any claim of legitimacy and demonstrates Respondent's bad faith.
- Respondent is a cybersquatter who seeks to take advantage of the owners of famous marks and to attract traffic to his tophandicappers.com sports and betting site by improper use of famous marks.
- Respondent's intention to sell the domain name for far more than he paid for it is evidenced by his placing the domain for sale at an auction site.
- The Respondent registered the disputed domain name to prevent the Complainant from registering it and has engaged in a pattern of such registrations.
- The domain name should be transferred to the Complainant.
The Respondent did not file a response and is in default in this proceeding.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name <nhlcoolshots.com> transferred to itself, the Complainant must prove the following (the Policy, para 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant has produced an exemplary copy of its service mark registration NHL COOL SHOTS, registered on the principal register of the United States Patent and Trademark Office dated June 2, 1998 in international class 41 for entertainment services, including television programs (Complaint, Exhibit C). First use is claimed as of September 30, 1997. The Complainant also has produced a number of other exemplary copies of its NHL marks (Complaint, Exhibits C and D).
The Panel finds that, in registering the disputed domain name, <nhlcoolshots.com>, the Respondent registered a name identical to the Complainant's mark, and that the Complainant has satisfied the Policy at 4(a)(i)(eAuto L.L.C. v. Triple S Auto Parts), ICANN/WIPO Case No. D2000-0047, March 24, 2000).
Legitimate Rights or Interests
The Complainant contends the disputed domain name bears no legitimate relationship to the business or personal affairs of the Respondent. The Respondent is in default and thus has made no attempt affirmatively to show that he does have legitimate rights and interests in the disputed name.
The Panel finds the Respondent has no legitimate rights or interests in the disputed name. For although the Respondent is using the name, his uses are more appropriately discussed in the bad faith section of this Decision below, and bad faith uses are not legitimate uses (Chanel, Inc. v. ESTCO Technology Group, ICANN/WIPO Case No. D2000-0413, September 18, 2000).
Registered and Used in Bad Faith
The Respondent undoubtedly was aware of the National Hockey League and its stable of famous trademarks, including the disputed domain name, at the time of registration. Like many other ICANN panels, the Panel finds this is evidence of bad faith in registration per the Policy 4(b) (Guerlain S.A. v. Peikang, WIPO/ICANN Case No. D2000-0055,
March 21, 2000).
After the Respondent registered the disputed domain name on June 2, 1999, he did nothing with it until March 15, 2000. In the interim, on numerous occasions, for example by letter on October 14, 1999, the Complainant contacted the Respondent alleging trademark infringement and demanding the name be transferred to the Complainant (Complaint pp.7-8; Exhibits P, R and T). After March 15, 2000, the Respondent website framed pictures of New Hampshire scenery, offered links to state of New Hampshire tourism sites, and offered a pop-up link to the Respondent's sports gambling site at tophandicappers.com (Complaint Exhibit K). Later, the Respondent also listed the domain name for sale at the auction site GreatDomains.com (Complaint p. 13). The Complainant also has shown that the Respondent has registered numerous other domain names that include famous trademarks such as: Dallas Cowboys, NFL football, ESPN and Fox as used in broadcasting (Complaint Exhibit E).
Based on these facts, the Panel finds the Respondent was using the domain name in bad faith under the Policy on the following grounds.
First, the Respondent, having registered a domain name identical to the Complainant's famous mark, was using the name to funnel traffic intended for the Complainant to the Respondent's gambling site for commercial profit in violation of the Policy at 4(b)(iv). The Panel agrees with the Complainant that the Respondent's attempts also to pose as a New Hampshire tourism site were "pretextual".
Next, the Respondent was using the domain name in bad faith because it tried to sell the domain name to the Complainant and the general public for far more than the Respondent paid for it. While the Respondent was far too clever to leave a written record of explicit requests, the Panel finds this can readily be inferred from the Respondent's conduct and from his letters of November 17, 1999, January 5, 2000 and January 19, 2000 (Complaint Exhibits Q, S, U, X and Y). For example, on January 19, 2000 the Respondent wrote: "(Respondent)…. is prepared to relinquish its right to the domain name in exchange for a recognition of its efforts and good will gesture as well as of future expenditures that it will need to incur upon such a transfer." The Respondent kept hinting that some type of accommodation could be reached and then later simply put the name up for auction at GreatDomains.com (Complaint p. 13). The Panel finds the Respondent violated the Policy at 4(b)(i) by attempting to sell the name back for far more than it paid for it.
Lastly, the Respondent violated the Policy at 4(b)(ii) in that he registered a name to prevent the owner from registering it and engaged in a practice of such registrations which included these famous marks (among others): Fox as used in broadcasting, NFL football league, and the Dallas Cowboys football team (the Complaint, Exhibit E).
Therefore, in accordance with ICANN Policy 4(i) and Rule 15, the Panel orders that the registrar NSI transfer the disputed domain name, <nhlcoolshots.com>, from the Respondent, Daniel Krusz, to the Complainant, the National Hockey League. The domain name is identical to the Complainant's service mark, the Respondent has no legitimate rights or interests in the name, and the Respondent registered and was using the name in bad faith.
Dennis A. Foster
Dated: April 4, 2001