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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net
Case No. D2000-0118
1. The Parties
The Complainant is National Football League Properties, Inc., a corporation organized in the State of California, United States of America (USA), with place of business in New York, USA, and Chargers Football Company, a professional football organization chartered under the laws of the State of California (USA).
The Respondent is One Sex Entertainment Co., with address in Cardiff, California, USA. Respondent is also known as chargergirls.net, with address in Cardiff, California, USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain names are "chargergirls.com" and "chargergirls.net".
The registrar of the disputed domain names is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
a. The Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on March 2, 2000, and by courier mail received by WIPO on March 3, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On March 5, 2000, WIPO completed its formal filing compliance requirements checklist.
b. On March 5, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to the Respondent via e-mail. On March 6, 2000,WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via telefax and courier mail . On March 5, 2000, WIPO transmitted notification of the complaint to ICANN, Network Solutions and Complainant’s authorized representative.
c. On March 29, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint by e-mail and courier mail.
d. On March 31, 2000, WIPO invited the undersigned to serve as sole panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On April 2, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
e. On April 3, 2000, the Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by April 17, 2000. On April 3, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. On April 6, 2000, the Panel received a hard copy of the file in this matter via courier mail from WIPO.
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 from the parties (taking note of Respondent’s default in responding to the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant has provided a copy (Complaint, Exhibit C) of its U.S. Patent and Trademark Office service mark registration dated March 17, 1992, for "CHARGER GIRLS", number 1,679,687, on the Principal Register. Complainant states that this service mark registration remains valid and subsisting. The validity of Complainant’s service mark registration for "CHARGER GIRLS" has not been contested by Respondent, and the Panel accepts as an undisputed fact that Complainant is the holder of a valid service mark registration for "CHARGER GIRLS" in the United States.
Complainant has used the "CHARGER GIRLS" service mark in commerce for nearly ten years (at least) to identify entertainment services in the form, inter alia, of dance routines (Complaint, para. 10). Respondent has not contested Complainant’s use of the service mark in commerce.
Network Solutions’ WHOIS database query response (Complaint, Exhibit A) indicates that One Sex Entertainment Co., with Administrative Contact at "Sanchez, Hector", is the registrant of the domain name "CHARGERGIRLS.COM". The record of this registration was created on December 7, 1998, and was last updated on June 7, 1999.
Network Solutions’ WHOIS database query response (Complaint, Exhibit O) indicates that chargergirls.net, with Administrative Contact at ""Sanchez, Hector", is the registrant of the domain name "CHARGERGIRLS.NET". The record of this registration was created on Feb. 5, 2000, and was last updated on February 5, 2000. The registrant address listed on the "CHARGERGIRLS.NET" registration (P.O. Box 1257, Cardiff, CA 92007, US) is identical to the registrant address listed on the "CHARGERGIRLS.COM" registration, noted above, as is the e-mail address of the Administrative Contact ("firstname.lastname@example.org").
As of February 2, 1999, the domain name "chargergirls.com" was posted for sale at a website with domain name "usabuy.com" (Complaint, Exhibit D). A Network Solutions’ WHOIS database query undertaken by the Panel on April 14, 2000, indicated that One Sex Entertainment Co., with Administrative Contact at "Sanchez, Hector", is the registrant of the domain name "USABUY.COM". One Sex Entertainment Co. was specifically identified as the offer for sale of "all domains" on the "usa.com/domain.htm" web page as of February 2, 1999. The domain name "chargergirls.com" was offered for sale along with a number of other domain names, some of which combined trademarks owned by parties other than Respondent (e.g., "Bud", "Miller" and "Lycos") with other words (e.g., "girl", "girls" and "sex"). As of April 14, 2000, the "usabuy.com" web page no longer displayed the aforesaid offers for sale, but instead displayed a website under construction. The designer of the "usabuy.com" website under construction, "Xblvd", is promoted as a One Sex Entertainment Co. business (Complaint, Exhibit S).
As of February 14, 2000, the web site associated with the domain name "chargergirls.net" provided a link to the "onesex.com" website. It stated: "In this site you will find girls who like to charge their accounts! So if you are e-commerce website be sure to join the webring!" (Complaint, Exhibit P). The "onesex.com" website is a pornographic site (Complaint, Exhibits Q and S).
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions’ dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.
5. Parties’ Contentions
Complainant states that it is the owner of the registered service mark "CHARGER GIRLS", and that it has used this mark in commerce for a substantial period of time. (Complaint, paras. 10-11) (See Factual Background, supra). Complainant also states that it is the owner of a trademark registration for "SAN DIEGO CHARGERS" (Reg. No. 1,882,586). Complainant refers to these marks together as "Complainants’ Marks". It states "The Complainants’ Marks are incontestable in the United States pursuant to Section 15 of the Lanham Act, 15 U.S.C. § 1065". (Id., para. 11)
Complainant states: "By reason of the extensive advertising and unsolicited media coverage of Complainants’ services, the Complainants’ Marks have come to be recognized and relied upon by the trade and the public as identifying Complainants and their entertainment services, and as distinguishing them from others and the services of others." (Id., para 13)
Complainant indicates that Respondent registered the domain names "chargergirls.com" and "chargergirls.net" without its consent, and that "chargergirls.net" was registered by Respondent well after it had been notified by Complainant of its pre-existing rights in "CHARGER GIRLS". (Id., paras. 16-24)
Complainant recites the history of its efforts to require Respondent to transfer "chargergirls.com" to it under the Network Solutions’ domain name dispute policy that predated the current Policy. (Id., paras. 21-24)
Complainant states: "Respondent has no rights or legitimate interests with respect to chargergirls.com and chargergirls.net. The domain names chargergirls.com and chargergirls.net bear no relationship to the business of Respondent." (Id., para. 29)
Complainant states: "The chargergirls.com and chargergirls.net domain names have been registered and are being used in bad faith by Respondent. Respondent is a cybersquatter who seeks to take advantage of the owner of a famous mark and to attract traffic to its own site by improper use of a famous mark. In fact, Respondent appears to have registered in bad faith other domain names that have no legitimate connection to its business and that contain other prominent marks, including budgirl.com, millergirls.com and lycosex.com." (Id., para. 30)
Complainant states: "Respondent has used Complainants’ Marks to drive visitors to its Web site in numerous ways. First, Respondent used the domain name chargergirls.com to drive traffic to a Web site at which Respondent brazenly advertised the numerous domain names it had registered for sale. Second, Respondent created a Web site at chargergirls.net with the sole purpose of directing Internet users to its site at www.onesex.com. Third, Respondent embedded the Charger Girls® mark in the code for its pornographic site at www.onesex.com. Respondent thus attempts to generate commercial gain by creating confusion as to the affiliation of its pornographic site with Complainants’ Marks. As such, its activities correspond to those listed in paragraph 4(b)(iv) of the Policy as evidence of bad faith registration and use of a domain name." (Id., para. 31)
Complainant states: "Respondent also has exhibited a pattern of cybersquatting behavior because it registered the domain names chargergirls.com and chargergirls.net in order to prevent Complainants from having access to and reflecting the mark in a corresponding domain name. As such, its activities correspond to those listed in paragraph 4(b)(ii) of the Policy as evidence of bad faith registration and use of a domain name." (Id., para. 32)
Complainant states: "Respondent has not used the domain names in connection with any bona fide offering of goods or services, has not been commonly known by the domain names, and has not made any noncommercial or fair use of the domain names." (Id., para. 33)
Complainant states: "Although United States law is not directly applicable to these proceedings, Complainants and Respondent are United States entities and as such, are subject to United States law, which also supports Complainants’ claims." (Id., para. 34)
Complainant states: "Respondent has registered domain names incorporating a trademark that was both famous and distinctive at the time the domain names were registered. Respondent’s registration and use, including its attempt to sell the domain name chargergirls.com, dilute the Complainants’ Marks. By engaging in this diluting behavior, Respondent has engaged in cyberpiracy in connection with services distributed in interstate commerce in violation of Section 43(d) of the Lanham Act, 15 U.S.C. § 1125(d)." (Id., para. 35)
Complainant states: "Moreover, because Respondent has registered domain names incorporating Complainants’ Marks to lure visitors to its sexually explicit site, Respondent has violated Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c). The use of a trademark in connection with a sexually explicit site represents the epitome of tarnishment in violation of Section 43(c)." (Id., para. 36)
Complainant states: "The unlawful acts of Respondent have caused and are continuing to cause irreparable injury to the goodwill and reputation of Complainants and, unless restrained, will cause further irreparable injury." (Id., para. 37)
Complainant requests that the Panel ask the Registrar to transfer the domain names "chargergirls.com" and "chargergirls.net" from Respondent to it. (Id., para. 38)
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion . The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. There is ample evidence in the form of air courier receipts, and confirmations of the sending of e-mail and receipt of fax transmissions, that the party designated as the Administrative Contact for the Respondent was notified of the Complaint and commencement of the proceedings (see Procedural History, supra).
Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, para. 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant’s undisputed representations (id., para. 14(b)).
The Rules provide that "[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder" (Rules, para. 3(c)). In this case, the Panel is satisfied that the domain name registrants "One Sex Entertainment Co." and "chargergirls.net" are the same person. As Complainant determined through its Network Solutions’ WHOIS database search, and as the Panel has verified by its own Network Solutions’ WHOIS database search (see Factual Background, supra), the domain name registration information provided under these two names, including the post office box number and Administrative Contact e-mail address, is identical. The Panel considers that it would place an unjustifiable economic burden on the Complainant to require it to initiate two separate administrative proceedings, and that it would be a burden on the administrative process to require duplication of effort, in this context of this case . The Respondent will hereinafter be referred to as "One Sex Entertainment Co.", and will be treated as the registrant of "chargergirls.com" and "chargergirls.net", except as otherwise may be necessary for the sake of clarity.
The Complainant National Football League Properties, Inc. ("NFLP" ) and co-Complainant Chargers Football Company ("CFC") are linked through a commercial arrangement pursuant to which CFC has authorized NFLP to act as its exclusive representative for licensing and protecting its trademark rights (Complaint, paras. 1-2). In the particular context of this case, the Panel is satisfied that the legal interests of NFLP and CFC are such that they may be joined as complainants. They are referred to herein as "Complainant".
Complainant is the holder of a registered service mark for "CHARGER GIRLS" in the United States and is using that mark in commerce (see Factual Background, supra). Complainant’s registration of the service mark on the Principal Register at the PTO establishes a presumption of validity of the mark in U.S. law , and Respondent has not challenged this presumption. The Panel determines that Complainant has rights in the service mark "CHARGER GIRLS". Based on the March 17, 1992, date of Complainant’s registration of the service mark "CHARGER GIRLS", the Panel determines that Complainant’s rights in the service mark arose prior to Respondent’s registration, on December 7, 1998, and February 5, 2000, respectively, of the disputed domain names "chargergirls.com" and "chargergirls.net" .
Respondent has registered the domain names "chargergirls.com" and "chargergirls.net". These names are identical to Complainant’s service mark "CHARGER GIRLS", except that (1) the domain names eliminate the space between the two words constituting the mark, (2) the domain names add the generic top-level domain names ".com" and ".net", respectively, and (3) the domain names employ lower case letters, while the service mark is generally used with an initial capital letter on each word (see Complaint, Exhibit J). For purposes of this proceeding, it is unnecessary to decide whether, in light of these factors, Respondent’s domain names are "identical" to Complainant’s service mark, since Respondent’s domain names "chargergirls.com" and "chargergirls.net" are without doubt confusingly similar to Complainant’s service mark "CHARGER GIRLS".
Complainant has met the burden of proving that Respondent is the registrant of domain names that are identical or confusingly similar to a service mark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.
There is no evidence on the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain names "chargergirls.com" and "chargergirls.net", other than that it has registered these domain names. If mere registration of the domain names were sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in a domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy.
As decided below, Complainant has used the disputed domain names in bad faith within the meaning of paragraph 4(b) of the Policy. Bad faith use of domain names does not establish rights or legitimate interests in respect of such names in the sense of paragraph 4(a)(ii) of the Policy.
Respondent has furnished no evidence of any legitimate use or preparation to use the disputed domain names. There is no evidence on the record of this proceeding of any such legitimate use or preparation to use by Respondent. The Panel determines that Respondent has no rights or legitimate interests in the disputed domain names. Thus, the Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a respondent "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent’s] documented out-of-pocket costs directly related to the domain name" (Id., para. 4(b)(i)); (2) that a respondent has registered the domain name "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)), and (3) that a respondent "by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).
Respondent evidenced bad faith use of the domain name "chargergirls.com" by offering it for sale on a public web site. This did not specifically involve an offering for sale to the Complainant or its competitor since the domain name might, in theory, have been purchased by a party that was neither Complainant nor its competitor . The name might, for example, have been purchased by a party wishing to host a discussion group. If the drafters of the Policy had intended to preclude all offers of sale of domain names that were identical or similar to service marks of complainants, regardless of the circumstances of the offerees, they might have expressly provided. Nonetheless, the list of bad faith circumstances in paragraph 4(b) of the Policy is illustrative, not exclusive. Under the circumstances of this case, the Panel determines that there would be no justification for allowing Respondent to earn a monetary reward (above its out-of-pocket expenses) for registration and sale of the domain name "chargergirls.com", and decides that its offer to sell the name on a public website constituted bad faith use of the disputed domain name "chargergirls.com".
Respondent used the domain name "chargergirls.net" to direct Internet users to its pornographic website "onesex.com". As such, Respondent used the name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion regarding whether Complainant was the source, sponsor, affiliate or endorser of its website. Although Internet users might soon discover the unlikelihood of a business relationship between Complainant and Respondent, Respondent would have gained website traffic from the establishment of the link via the "chargergirls.net" domain name. Paragraph 4(b)((iv) of the Policy does not require a demonstration that Complainant suffered or would be likely to suffer harm as a consequence.
By registering and using "chargergirls.com" and "chargergirls.net", Respondent has prevented Complainant from reflecting its service mark in corresponding domain names. It has arguably engaged in a pattern of such conduct by its registration of names similar to "Bud", "Miller" and "Lycos" ("budgirl.com", "millergirls.com" and "lycosex.com") (Complaint, Exhibit D). However, in light of the Panel’s findings that Respondent has engaged in abusive registration of the disputed domain names on other grounds, the Panel need not make a determination regarding whether Respondent’s "Bud", "Miller" and "Lycos" combination domain names would be names "corresponding" to third party-owned marks.
The Panel determines that Respondent has registered and used the domain names "chargergirls.com" and "chargergirls.net" in bad faith within the meaning of paragraph 4(b) of the Policy. Complainant has thus established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.
The Panel will therefore request the registrar to transfer the domain names "chargergirls.com" and "chargergirls.net" to the Complainant.
Based on its finding that the Respondent, One Sex Entertainment Co., also known as chargergirls.net, has engaged in abusive registration of the domain names "chargergirls.com" and "chargergirls.net" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names "chargergirls.com" and "chargergirls.net" be transferred to the Complainant, National Football League Properties, Inc. and Chargers Football Company.
Frederick M. Abbott
Date: April 17, 2000
1. Paragraphs 2(a) and 4(c) of the Rules for Uniform Domain Name Dispute Resolution Policy require that the Provider send the complaint to the Respondent via postal-mail, facsimile and e-mail to commence the proceeding. The telefax and courier mail from WIPO to Respondent did not technically originate until March 6, 2000. However, the Rules provide WIPO with discretion to extend the period of time for filing a response to a complaint (Rules, para. 5(d)), and in the absence of any such request by the Respondent, the panel considers it reasonable for WIPO to have considered the date on which it transmitted the complaint to Respondent by e-mail as the date on which these proceedings commenced.
2. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
3. See Adobe Systems Incorporated v. Domain OZ, Case No. D2000-0057, decided March 22, 2000
4. 15 USCS § 1057(b). See, e.g., Avery Dennison v. Sumpton, (9th Cir. 1999), 1999 U.S. App. LEXIS 19954.
5. For purposes of making a determination in this proceeding, it is unnecessary for the Panel to consider the legal significance of Complainant’s registered mark "San Diego Chargers".
6. See Educational Testing