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WIPO Arbitration and
Time Inc. v. Max Martel
1. The Parties
The Complainant is Time Inc., a corporation organized and existing under the laws of Delaware, with its principal place of business located in New York, New York, in the United States of America, and represented by the law firm of Arent Fox PLLC, from the state of New York, in the United States of America.
The Respondent is Max Martel, with its principal place of business located
in St. Jonhs Antigu [sic], Antigua and Barbuda [sic].
2. The Domain Name and Registrar
The domain name under dispute is <sportsbookillustrated.com> (the "Domain Name").
The registrar of the disputed domain name is NamesDirect.com, Inc. ("NamesDirect" or
the Registrar), from Vancouver, Washington, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 17, 2004, and on February 19, 2004, through e-mail and hardcopy, respectively, with the required filing fee for a single-member administrative panel. The Complaint was filed in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and WIPO's Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules). An Acknowledgment of the Receipt of Complaint was sent to Complainant by the Center on February 18, 2004.
On February 18, 2004, the Center transmitted by email to NamesDirect a request for registrar verification in connection with the domain name at issue. On March 3, 2004, WIPO received via e-mail from NamesDirect the Registrar's Verification Response confirming that the Domain Name is currently registered to Respondent and that the Domain Name is on "registrar-lock."
On March 4, 2004, the Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules. It is worth mentioning that the undersigned sole panelist has independently determined and agrees with the Center's assessment that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and the Supplemental Rules.
On March 4, 2004, the Center properly sent via e-mail and hardcopy through express mail to Respondent and to the technical and administrative contact, a "Notification of Complaint and Commencement of Administrative Proceeding" enclosing copy of Complainant's Complaint. This sole panelist considers that the Complaint was properly notified to the registered domain-name holder, the technical contact, and the administrative contact as provided for in paragraph 2(a) and 4(a), of the Rules.
In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2004. The Respondent did not submit any response.
On April 20, 2004, the undersigned signed and sent to the Center, a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On April 21, 2004, the Center sent to Complainant and Respondent a "Notification of Appointment of Administrative Panel and Projected Decision Date," appointing Pedro W. Buchanan Smith as Sole Panelist and scheduling May 5, 2004, as the date for issuance for the Panel's decision, pursuant to paragraphs 6(h) and 15(b) of the Rules. The Panel finds that it was properly constituted. On the same date, the Center transferred the case file to the sole panelist, with copy being sent to Complainant and Respondent.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information, statements or documents from the parties (taking note of Respondent's default in responding to the Complaint), nor the need as an exceptional matter, to hold any in-person hearings as necessary for deciding the Complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceedings.
The language of the proceeding is English, as being the language of the Registration
Agreement, pursuant to paragraph 11(a) of the Rules and as confirmed by the
March 3, 2004, Registrar's Verification Response.
4. Factual Background
The Complainant is a magazine publisher and is in the business of publishing, distributing and marketing magazines, books, cd-roms, and other media products under various brands and trademarks, including under the trademark SPORTS ILLUSTRATED. The Complainant, directly and through its subsidiary companies, publishes more than 130 magazines, including TIME, FORTUNE, MONEY, PEOPLE, SPORTS ILLUSTRATED, SPORTS ILLUSTRATED FOR KIDS and ENTERTAINMENT WEEKLY, reaching a total audience of more than 300 million. That as indicated by Complainant, SPORTS ILLUSTRATED Magazine is one of the largest selling sports magazines in the world.
Since 1954, the Complainant has continuously used the SPORTS ILLUSTRATED mark (U.S. Reg. No. 754,203) in connection with the marketing and distribution of SPORTS ILLUSTRATED Magazine. Along with the SPORTS ILLUSTRATED mark, the Complainant has many SPORTS ILLUSTRATED related marks that are used to market and distribute a variety of other products and services, including, but not limited to, clothing, maps, books, videos, games, calendars, posters, bags, blankets, towels, umbrellas, online retail and computer services and an Internet site. The Complainant has used the mark SI, an abbreviation of SPORTS ILLUSTRATED, through advertisements, the Internet and news articles, to identify its SPORTS ILLUSTRATED family of magazines, its website and a variety of other goods to the public.
The Complainant is the owner of all right, title and interest in and to the mark SPORTS ILLUSTRATED, including over 140 registrations and pending applications for the SPORTS ILLUSTRATED mark and SPORTS ILLUSTRATED related marks in over 70 countries throughout the world, including, but not limited to, Australia, Brazil, Canada, China, Denmark, France, Germany, Greece, Ireland, Italy, Japan, Mexico, New Zealand, Norway, Peru, Portugal, South Africa, Spain, Sweden, the United Kingdom and the European Union (CTM). The registrations for these marks are valid and subsisting and they serve as evidence of the Complainant's ownership and the validity of these marks.
The Complainant distributes, advertises and sells magazines, as well as other products and services, under the SPORTS ILLUSTRATED marks, through a variety of channels, including newsstands, subscriptions, retail stores and the Internet, and has expended significant resources advertising and promoting such products and services sold and distributed with the distinctive SPORTS ILLUSTRATED marks. From 1996-2000, the Complainant spent in excess of US$618,000,000 to promote products sold under the SPORTS ILLUSTRATED marks. During this time period, the Complainant earned in excess of US$2,800,000,000 in revenue from the sale of such products and services. As a result of the Complainant's fifty years of extensive and continuous use, advertising and promotion in a variety of media, including extensively through the Internet, the SPORTS ILLUSTRATED marks have acquired commercial strength and goodwill, have come to immediately identify the Complainant's magazine and its other products and services sold under its marks.
One of the most popular issues of SPORTS ILLUSTRATED Magazine is the annual swimsuit edition, which features some of the world's most beautiful women modeling swimsuits in various locations around the world. First published in 1964, the edition has an annual circulation of 4,500,000 copies. The popularity of the swimsuit edition has led to the Complainant's manufacture and sale of a wide variety of merchandise.
The Complainant owns several domain names incorporating the marks SPORTS ILLUSTRATED or SI, including <si.com>, <sportsillustrated.com>, <sportsillustrated.biz> and <sportsillustrated.org>. Of these domain names, <sportsillustrated.com> and <si.com> redirect to "http://sportsillustrated.cnn.com," the only Internet site authorized by the Complainant and operated by the Complainant and its affiliate company, CNN. This website is devoted to the SPORTS ILLUSTRATED brand, providing round-the-clock coverage of breaking sports news, the latest scores and statistics, fantasy sports and games, live-streaming video and multimedia features, and a cover gallery of its popular swimsuit editions. The site also incorporates the distinctive "look and feel" of SPORTS ILLUSTRATED Magazine. Particularly, on the top of each web page of the site, the SPORTS ILLUSTRATED marks are prominently featured along with button links for easy access to information, articles and statistics on different sports.
On August 3, 2001, without authorization from the Complainant, the Respondent registered the domain name <sportsbookillustrated.com>. Since the registration of the Domain Name, the Respondent has operated an extensive sports betting and online gambling website at the Domain Name offering numerous wagering options (e.g., baseball, football, basketball, soccer, Blackjack, Baccarat, Caribbean Stud, Deuces Wild, Jokers Wild, etc.). The phrase "Sportsbook Illustrated" and the abbreviation "SI" in the same stylized font type as that of the Complainant's SPORTS ILLUSTRATED marks were prominently positioned and used repetitively throughout the site. The site further copied the "look and feel" of the authorized SPORTS ILLUSTRATED website by: (i) prominently positioning and featuring the phrase "Sportsbook Illustrated" and the abbreviation "SI" at the top of the site; (ii) using button links with a similar look and wording and in the same order as on the Complainant's authorized website (e.g., "NFL," "NCAAFB," "MLB," "NBA," "NCAABB," "NHL," "SOCCER" and "TENNIS"); (iii) using numerous sports-related images, banner advertisements and features in similar positions as those found on the Complainant's website; (iv) positioning a banner advertisement for a "SI Calendar" for swimsuit models and offering the same on the site; and (v) offering information on sports news, scores, statistics, and games in a similar format as that shown on the Complainant's site.
The Complainant's in-house counsel has received numerous e-mail messages from consumers and employees of the Complainant concerning the Domain Name and its corresponding website.
On April 28, 2003, the Complainant's in-house counsel transmitted a cease and desist letter to the e-mail address provided on the "www.sportsbookillustrated.com" website, to the attention of the Respondent, "Max Martel." The cease and desist letter was returned as undeliverable. The same cease and desist letter was also sent on July 14, 2003, via airmail and on August 28, 2003, via courier to the Respondent at the postal address listed in the registration. Both letters were returned for non-delivery to the Complainant's in-house counsel based on false and inaccurate contact information provided in the Domain Name's Whois record. To date, the Complainant's in-house counsel has not received any communication from the Respondent.
According to an Internet newswire, on or about November 21, 2003,
the website accessible at the domain name <sportsbookillustrated.com>
was "closed." The newswire confirmed that the website at the domain
name <sportsbookillustrated.com> was a Sportingbet website and that "Sportingbet
was forced to shut down this particular site due to trademark concerns."
As of the filing date of the Complaint, there is no website accessible at the
Domain Name and the Domain Name remains registered to the Respondent.
5. Parties' Contentions
- That the Domain Name <sportsbookillustrated.com> is confusingly similar, if not virtually identical, to the Complainant's SPORTS ILLUSTRATED marks.
- That the exclusive, continuous and extensive use of the SPORTS ILLUSTRATED mark since 1954, has garnered goodwill and recognition for this mark for the Complainant. The Complainant's registrations, applications and common law rights in the SPORTS ILLUSTRATED marks, along with the extensive and continuous use of such marks, evidence the validity of the SPORTS ILLUSTRATED marks and of the Complainant being the owner and having the exclusive right to use the SPORTS ILLUSTRATED marks in commerce on or in connection with the specified goods and services.
- That the only difference between the Domain Name under dispute and Complainant's SPORTS ILLUSTRATED marks is the insertion of the generic term "book."
- That the Respondent has no rights or legitimate interests in respect of the domain name <sportsbookillustrated.com>.
- That in view of the Complainant's SPORTS ILLUSTRATED marks and the Complainant's long-time use thereof, the idea suggested by the domain name <sportsbookillustrated.com> is that any goods or services offered in association with the Domain Name are somehow connected with, affiliated with or authorized by the Complainant.
- That combined with the Complainant's many registrations, applications and common law rights in the SPORTS ILLUSTRATED marks and the fame, goodwill and reputation associated with these marks, there is no circumstance in which the Respondent could legitimately use the Domain Name incorporating the SPORTS ILLUSTRATED mark without creating a false impression of an association with the Complainant.
- That the Respondent's actions with respect to the Domain Name and the corresponding website reinforce that the Respondent was well aware of the Complainant's rights in its SPORTS ILLUSTRATED marks when registering the Domain Name and that the Respondent intended to trade on the Complainant's famous and well-known marks and the goodwill associated therewith.
- That the Respondent's actions include: (i) registering and using a domain name containing the Complainant's SPORTS ILLUSTRATED mark in its entirety to lure Internet users seeking the Complainant's site and information on the Complainant's goods and services to the Respondent's site; (ii) providing false and inaccurate contact information in the corresponding Whois record for the Domain Name; (iii) using "Sportsbook Illustrated" and "SI" in a manner and style confusingly similar to that of the Complainant's SPORTS ILLUSTRATED marks; (iv) posting a website at the Domain Name having the same "look and feel" as that of the Complainant's authorized site and SPORTS ILLUSTRATED Magazine; (v) positioning images, banner advertisements and information on its site in a similar manner and format as found on the Complainant's site; and (vi) copying features of the Complainant's site, such as the Complainant's SI swimsuit calendar, and offering such items on the Respondent's site.
- That such actions, confirm that the Respondent has not and will not use the Domain Name in connection with any type of bona fide offering of goods or services.
- That the Respondent's use of the Domain Name to misdirect Internet users to a website promoting and providing sports betting services and online casino gambling shows that the Respondent has not been or will not use the Domain Name in any type of bona fide offering of goods or services.
- that there is no evidence that the Respondent has been or is commonly known by the Domain Name or that the Respondent has acquired any trademark or service mark rights in the Domain Name and; that the Complainant has not authorized, licensed, contracted, franchised or otherwise permitted the Respondent in any way to use any of the SPORTS ILLUSTRATED marks or to register for any domain name incorporating such marks.
- that the Respondent has registered the domain name primarily for the purpose of disrupting Complainant's business.
- That having copied the "look and feel" of the authorized SPORTS ILLUSTRATED website and Magazine as well as the Complainant's SPORTS ILLUSTRATED marks, the Respondent further provided extensive information on sports news, statistics and games and used numerous sports-related images, banner advertisements and features, such as a "SI Calendar" for swimsuit models.
- That the Respondent specifically directed its website to sports-related services to compete with the Complainant and derived a commercial and financial benefit from such direction, particularly, through its sportsbetting services and online gambling, banner advertisements, membership incentives and its affiliate relationship with Sportingbet.
- That the Respondent has intentionally attempted to attract for commercial gain Internet users to its website at the Domain Name by trading on the image and goodwill associated with the SPORTS ILLUSTRATED brand and the SPORTS ILLUSTRATED marks by registering and using the Domain Name, in which it has no legitimate rights or interests.
- That by such registration and use of the Domain Name in view of the distinctiveness of the Complainant's SPORTS ILLUSTRATED marks and specifically the incorporation of the SPORTS ILLUSTRATED mark therein, the Respondent has created a likelihood of confusion with respect to the SPORTS ILLUSTRATED marks as to the source, sponsorship, affiliation and endorsement of the corresponding website and of the products and services offered on the site.
- That the Respondent's website copying the look and feel of the Complainant's website, SPORTS ILLUSTRATED Magazine and marks, the banner advertisements on the site (including the banner offers for the "SI calendar"), and mass e-mail advertisement solicitations for "Sportsbook Illustrated" increases such confusion on the part of Internet visitors.
That the fact that the Respondent has now removed the site at the Domain Name does not somehow change or obviate a finding of the Respondent's bad faith registration and use of the domain name, but rather confirms it.
- That the Respondent provided inaccurate and false contact information when registering the Domain Name under dispute. Cease and desist letters sent to the postal address provided in the Domain Name registration and transmitted to the e-mail address provided on the Respondent's site were returned as undeliverable or in error. That such inaccurate and false contact information confirms that the Respondent registered and used the domain name <sportsbookillustrated.com> in bad faith and wishes to hide behind such inaccurate and false information.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Panel considers that the Respondent by registering the contested domain name with Namesdirect, it agreed to be bound by all terms and conditions of a certain Registration Agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Registration Agreement by reference), which requests that proceedings be conducted according to the Rules and the selected administrative-dispute-resolution service provider's supplemental rules, in the present case being the WIPO Supplemental Rules. Therefore, the dispute subject matter of this proceeding is within the scope of the above-mentioned agreements and Policy, and this Panel has jurisdiction to decide this dispute.
Furthermore, the Panel considers that in the same manner by entering into the above-mentioned Registration Agreement, under section 8 of such Agreement the Respondent acknowledged and agreed to be bound by the Policy.
The Panel also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met.
Such requirements include that the parties and particularly the Respondent in this case be given adequate notice of proceedings initiated against them; that the parties may have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases; that the composition of the Panel be properly made and the parties be notified of the appointment of this Panel; and, that both parties be treated with equality in these administrative proceedings.
In the case subject matter of these proceedings, the Panel is satisfied that these proceedings have been carried out by complying with such elemental due diligence requirements, and particularly contemplating the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond. The failure of the Respondent to submit a response is not due to any omission under these proceedings. There is sufficient and adequate evidence confirming the above.
Considering that the Respondent has defaulted in submitting a response to the allegations of Complainant, this Panel as directed by paragraphs 14(a) and (b) and 15(a) of the Rules shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, and may draw such inferences there from as it may consider appropriate on the basis of Complainant's undisputed representations.
Paragraph 4(a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (i) that the Domain Name registered by the Respondent 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 domain name; and, (iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This Panel finds that Respondent's Domain Name is confusingly similar to Complainant's SPORTSILLUSTRATED trademark, and other SPORTS ILLUSTRATED related marks and to the name of Complainant's web page, as contemplated under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
This Panel finds that there is no indication that the Respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue as contemplated under paragraph 4(c)(iii) of the Policy, in view of (i) Complainant's registrations, applications and legal rights in their well-known SPORTS ILLUSTRATED marks and the goodwill associated with these marks; (ii) the Respondent use of "Sportsbook Illustrated" and "SI" in a manner and style confusingly similar to that of the Complainant's SPORTS ILLUSTRATED marks; and, (iii) by Respondent's posting a website at the Domain Name under dispute having the same "look and feel" as that of the Complainant's authorized site and SPORTS ILLUSTRATED magazine. This Panel considers there is no circumstance under which the Respondent, unless authorized by the Complainant, could legitimately use the Domain Name under dispute incorporating the SPORTS ILLUSTRATED mark without creating a false impression of an association with the Complainant.
C. Registered and Used in Bad Faith
The Panel also finds that Respondent has used the Domain Name in bad faith, in particular but without limitation, pursuant to paragraph 4(b)(iv) of the Policy, in view that by registering and using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of its website or of a product or service on its website; and, also provided false contact information in its registration for the Domain Name, further evidencing its bad faith.
Lastly, it is hereby noted that no settlement has been reached by the Parties
and made known to this Panel prior to the rendering of this Panel's decision,
which may eventually affect or give ground for termination of this administrative
proceedings as provided for under paragraph 17(a) of the Rules, nor is
this Panel aware of the existence or initiation of any other type of legal proceedings
before a court of competent jurisdiction for independent resolution, regarding
the domain name dispute as contemplated under paragraph 4(k) of the Policy.
Therefore, and in consideration to the Complaint's compliance with the formal requirements for this domain dispute proceeding, to the factual evidence and legal contentions that were submitted, to the conclusive confirmation of the presence of each of the elements contemplated in paragraph 4(a)(i), (ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, this Panel considers:
(1) that the Domain Name registered by Respondent is confusingly similar to Complainant's licensed trademark SPORTS ILLUSTRATED;
(2) that Respondent has no rights or legitimate interests in respect of the <sportsbookillustrated.com> Domain Name; and
(3) that the <sportsbookillustrated.com> Domain Name has been registered and is being used in bad faith by the Respondent.
Therefore, the Panel orders, pursuant to what is provided
for under paragraphs 3(c) and 4(i) of the Policy and 15 of the
Rules, that the registration of the domain name <sportsbookillustrated.com>
be transferred to Time Inc., Complainant.
Pedro W. Buchanan Smith
Dated: May 4, 2004