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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

ESPN, Inc. v. IMCO Corporation Pty Ltd

Case No. DAU2005-0005

 

1. The Parties

Complainant is ESPN, Inc., Bristol, Connecticut, United States of America, represented by White & Case LLP, United States of America.

Respondent is IMCO Corporation Pty Ltd, Perth, Australia.

 

2. The Domain Name and Registrar

The disputed domain name <espn.com.au> is registered with Domain Central Pty Ltd.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2005. On November 16, 2005, the Center transmitted by email to Domain Central Pty Ltd a request for registrar verification in connection with the domain name at issue. On November 23, 2005, Domain Central Pty Ltd transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 8, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was December 28, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 5, 2006.

The Center appointed Alan L. Limbury as the sole panelist in this matter on January 17, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

Complainant is a multimedia sports information and entertainment company having five United States-based television networks and 30 international television networks including ESPN Australia, which reaches approximately 1.2 million homes in that country. Its United States-based ESPN network reaches more than 88 million homes in the United States and covers more than 65 mainstream sports.

Complainant owns the following Australian trademark registrations for the mark ESPN: No. 653123 in class 41, issued on May 14, 1996, for entertainment services in the nature of television programs in the fields of sports, general interest and news; No. 653122 in class 38, issued on May 14, 1996, for television broadcast services; No. 860108 in class 25, issued on September 10, 2001, for wearing apparel; No. 860102 in class 26, issued on September 10, 2001, for wearing apparel; and No. 989185 in class 9, issued on November 22, 2004, for toys, games and playthings.

Respondent registered the disputed domain name on October 19, 2004. According to its website, located at “www.imco.com”, Respondent is an “internet outsourcing corporation”. The sole director and shareholder of Respondent and the registrant of the domain name <imco.com> is a Mr. Bradley Stedman Norrish.

 

5. Parties’ Contentions

A. Complainant

Complainant’s ESPN trademark is famous. The disputed domain name is identical to that famous mark.

Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent owns no trademark registrations for and has no common law rights in “ESPN”. It does not hold itself out as, and is not otherwise known as “ESPN”. See GE Capital Finance Australasia Pty v. Dental Financial Services Pty Ltd, WIPO Case No. DAU2004-0007 (January 7, 2005). To the contrary, Respondent’s website, located at “www.imco.com”, reveals that Respondent does not use “ESPN”, but uses the designation “IMCO” to brand its purported “internet outsourcing corporation”.

Complainant has not licensed, authorized, or approved Respondent’s use of its famous ESPN mark nor the disputed domain name. See Kirkbi AG v. Company Require / Karlina Konggidinata and Pool.com, Inc., WIPO Case No. D2004-0359 (July 12, 2004) (finding respondent had no legitimate interest in domain name <legos.com> absent a relationship with owner of LEGO trademark giving rise to such rights).

Complainant further asserts that Respondent has not made a bona fide commercial use of the disputed domain name. Given the worldwide fame of Complainant and its ESPN mark, including its fame in Australia, it is inconceivable that Respondent did not know of Complainant’s mark when it registered <espn.com.au>. Indeed, Respondent registered this domain name because it contained a trademark of such renown. See BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001 (June 1, 2004) (finding it “inconceivable that the Respondent did not know of the Complainant’s widely renowned reputation and registered the disputed domain name because of the fame of the Complainant”).

Complainant says Respondent then used Complainant’s reputation misleadingly to divert consumers to two misleading and deceptive schemes for its own commercial gain. Until approximately September 2005, Respondent used the disputed domain name to redirect users automatically to a purported sweepstakes promotion offering a plasma television as a prize, but which in fact was intended to lure users into subscribing to a weekly horoscope service for which they were charged a fee. Internet users would have no way of knowing that this promotion was not sponsored by or affiliated with Complainant. Indeed, by displaying the statement “[b]efore entering this site, please take a moment to sign-up [sic] to the Plasma HDTV Promotion”, Respondent falsely suggested that signing up for the promotion was a prerequisite to entering Complainant’s website. Thus, Respondent used the domain name misleadingly to draw Complainant’s customers into its sweepstakes scheme.

Since September 2005, Respondent has used the disputed domain name as part of a browser hijacking scheme that forces unsuspecting users to change their home page to “www.searchex.com” so that Respondent can directly profit from Searchex’s affiliate program. Again, Respondent is using Complainant’s reputation misleadingly to attract consumers for its own commercial gain.

Respondent’s use of Complainant’s globally famous trademark to divert Internet traffic looking for Complainant to Respondent’s own for-profit websites is a blatant attempt to trade on Complainant’s goodwill and is not a bona fide commercial use. See University of Melbourne v. union melb, WIPO Case No. DAU2004-0004 (December 3, 2004) (finding diversion of traffic to respondent’s website through use of complainant’s trademark not a bona fide use under the Policy); Chanel, Inc. v. ESTCO Technology Group, WIPO Case No. D2000-0413 (September 18, 2000) (“Respondents may not use Complainant’s famous fashion trademark as a domain name to entice Internet users to its database. This is not fair use but instead infringing use.”).

Further, Respondent’s use of the disputed domain name in connection with a misleading and deceptive sweepstakes scheme or a browser hijacking program is not a bona fide use. See Bank for International Settlements v. BIS, WIPO Case No. D2004-0571 (October 1, 2004) (finding respondent’s use of domain name to collect consumer information in running a fraudulent lottery scheme not bona fide).

Accordingly, Complainant asserts that Respondent has no legitimate interest in the disputed domain name.

The disputed domain name was registered and is subsequently being used in bad faith. Respondent used it automatically to redirect Internet traffic to its misleading “Plasma HDTV Promotion” and to entice consumers to sign up for a weekly horoscope service for which consumers were charged a fee. Even more brazen, Respondent is now using the ESPN brand to hijack the browsers of customers looking for Complainant’s website. Such intentional use of the disputed domain name to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with Complainant’s mark constitutes evidence of bad faith. See Policy, paragraph 4(b)(iv); University of Melbourne v. union melb, WIPO Case No. DAU2004-0004 (December 3, 2004) (finding use of domain name to divert traffic to respondent’s for-profit website evidence of bad faith); see also The Chicago Tribune Company v. Jose P. Varkey, WIPO Case No. D2000-0133 (May 9, 2000) (respondent’s use of domain name to lead consumers to his website was bad faith).

In addition, media reports indicate that the disputed domain name was one of several (including <medicare.com.au> and <lg.com.au>) used in this scheme to attract Internet users to the promotion by using domain names corresponding to famous trademarks owned by others. See Bank for International Settlements v. BIS, WIPO Case No. D2004-0571 (October 1, 2004) (finding bad faith where respondent used domain name to collect consumer information in running a fraudulent lottery scheme).

Furthermore, Mr. Norrish and his companies have been repeatedly fined and enjoined by Australian courts for engaging in similar deceptive conduct, and at least one WIPO UDRP panel has found that Mr. Norrish is a cybersquatter. See BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001 (June 1, 2004).

In 2002, in a proceeding commenced by the Australian Competition and Consumer Commission, the Federal Court of Australia ordered Internet Registrations Australia Pty Ltd, a company of which Mr. Norrish was a director at the time, to refund money and issue a letter of apology to recipients of its misleading “renewal” notices for domain name registrations.

In 2004, the Federal Court of Australia issued a similar order against Mr. Norrish and two of his companies, Diverse Internet Pty Ltd and Internet Payments Pty Ltd, after finding that Mr. Norrish mined the Whois database for “.uk” for registrant contact information and sent misleading and deceptive notices to registrants that were designed to look like invoices for domain name renewals: Nominet UK v. Diverse Internet Pty Ltd., 2004 WL 2111478 (FCA), [2004] FCA 1244.

In 2005, the Perth Magistrates Court found Mr. Norrish guilty of falsely implying his company had the approval of the Department of Consumer and Employment Protection. In that scheme, Mr. Norrish sent unsolicited letters to small businesses and community groups with the aim of selling first aid kits priced at $259 each. The letters were designed to dupe consumers into believing they were dealing with a government agency.

Evidence of a pattern of conduct involving the creation of domain names which are identical or confusingly similar to the trademarks of others in which Respondent has no rights constitutes evidence of bad faith: Ink King v. CamerasDirect.com.au Pty Ltd, LEADR Case No. auDRP 01/2005 (April 6, 2005); Fashion Seal Corporation v. LaPorte Holdings, LLC, WIPO Case No. D2005-0435 (June 30, 2005).

In view of the foregoing, Respondent cannot credibly dispute that it registered and used the disputed domain name in bad faith: GE Capital Finance Australasia Pty v. Dental Financial Services Pty Ltd, WIPO Case No. DAU2004-0007 (January 7, 2005) (rejecting respondent’s good faith allegations as “too much of a co-incidence to accept”); University of Melbourne v. union melb, WIPO Case No. DAU2004-0004 (December 3, 2004).

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well established that the second level domain designator “.com.au” has no material role in assessing similarity or identicality: BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001 (June 1, 2004); GE Capital Finance Australasia Pty v. Dental Financial Services Pty Ltd, WIPO Case No. DAU2004-0007 (January 7, 2005).

The disputed domain name is identical to Complainant’s trade mark ESPN.

B. Rights or Legitimate Interests

The Panel finds that Complainant’s ESPN mark is famous. Respondent is not authorized by Complainant to use that mark in the disputed domain name. Complainant has provided evidence which supports its allegations as to the manner in which the disputed domain name has been used and has thereby established a prima facie case of absence of rights or interests with respect to the disputed domain name on the part of Respondent, to whom the onus therefore shifts to demonstrate that it does have rights or a legitimate interest. In the absence of any response, the Panel accepts Complainant’s submissions and finds Respondent has no rights or legitimate interest in the disputed domain name.

C. Registered or Used in Bad Faith

Based on Complainant’s uncontradicted assertions and on the evidence provided by Complainant, the Panel finds that Respondent registered the disputed domain name with knowledge of Complainant’s famous ESPN mark and has intentionally used it misleadingly to divert Internet users from Complainant’s website for financial gain. This demonstrates both bad faith registration and bad faith use on the part of Respondent.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <espn.com.au> be transferred to Complainant.

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Alan L. Limbury
Sole Panelist

Dated: January 31, 2006