Domain name - ICANN Uniform Domain Name Dispute Resolution Policy - ICANN Rules - Forum's Supplemental Rules - United States Patent and Trademark Office - Multimedia sports information - Adult-only Website - Cease and desist - Typographical alterations - Bona fine offering of goods and services - Identical and/or confusingly similar - Legitimate rights or interests - Bad faith registration and use.

Complainant owns many U.S. registered trademarks containing the term ESPN, and is a well-known provider of multimedia sports information. Respondent registered the domain names, ESPNS.COM and ESPM.COM, which redirects Internet users to an adult website that is identical to the website located at ashleysplayground.com. 

Complainant sent Respondent an e-mail message requesting that Respondent cease and desist from its infringement of Complainant's marks. 

Held, Domain Names ESPNS.COM and ESPM.COM cancelled.

The domain names in question are confusingly similar to Complainant's registered mark.    Respondent registered these domain names because they represent common typographical errors typically made by Internet users.  The domain name is confusingly similar when the mark in question is exploited through the use of mistakes by users when entering the URL address.

Respondent made no claims that it was using the domain names in connection with a bona fide offering of goods and services or that it was making a legitimate non-commercial or fair use of the site.  Respondent is also using common typographical alterations of the Complainant's mark to profit.

Respondent registered and used the names to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant's marks, therefore capitalizing on common mistakes made by Internet users in search for Complainant's website.

Policies referred to
ICANN Uniform Domain Name Dispute Resolution Policy and Rules
Forum's Supplemental Rules

Cases referred to
Oxygen Media, LLC v. Primary Source, D2000-0362, WIPO June 19, 2000.
Fanuc Ltd. v. Machine Control Services, FA 93667, Nat. Arb. Forum March 13, 2000.
Yahoo! Inc. v. Zviely, D2000-0273, WIPO June 14, 2000.

Panelist, Carmody- 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on June 22, 2000; The Forum received a hard copy of the Complaint on June 22, 2000. 

On June 26, 2000, NSI confirmed by e-mail to The Forum that the domain names "ESPNS.COM" and "ESPM.COM" are registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's UDRP.

On June 26, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 17, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts by email. 

On July 17, 2000, having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default. 

On July 18, 2000, pursuant to Complainant's request to have the dispute decided by a Single Member panel, The Forum appointed the Hon. James A. Carmody as Panelist.

Having reviewed the communications records in the case file, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, The Forum's Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain names be cancelled.

PARTIES' CONTENTIONS

A. Complainant

The Complainant contends that the Respondent has registered domain names that are confusingly similar to its trademark registered for and in use by the Complainant. Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain names, and that the respondent has registered and is using each of the domain names in bad faith. 

Respondent 

The Respondent submitted no response in this matter. As a result, all reasonable inferences of fact in the allegations of the Complainant will be deemed true.

FINDINGS

The Complainant owns many U.S. registered trademarks containing the term ESPN. The Complainant is a well-known provider of multimedia sports information. Its operations include an interactive Internet site, <ESPN.COM>, four domestic television networks, various international television networks, a television production company, a radio network, a sports magazine, and other related sports ventures. The Complainant's original network was launched on September 7, 1979. 

The Respondent registered the domain names in question on January 21, 1997 and December 2, 1997, respectively. When Internet users type one of these domain names into a browser's navigation bar or into a finding engine (typically through a typing error), they are redirected to an adult website that is identical to the website located at <ashleysplayground.com>. 

On May 18, 2000, after learning of the Respondent's use of these domain names in connection with a pornographic website, the Complainant sent the Respondent an e-mail message requesting that the Respondent cease and desist from its infringement of the Complainant's marks. The Complainant also sent this information to the listed contact in the WHOIS directory via mail. The letter was returned as "undeliverable". On June 8, 2000, the Complainant sent an e-mail message to the e-mail addresses listed on the Ashley's playground website. The Complainant received no response.

DISCUSSION 

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements to support a claim 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.

Identical and/or Confusingly Similar
The Complainant has rights in the registered marks containing the term ESPN. The domain names in question are confusingly similar to the Complainant's registered marks. It is clear that the Respondent registered these domain names because they represent common typographical errors typically made by Internet users. See Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding that the domain name <0xygen.com> (zero in place of letter O) is confusingly similar to Complainant's mark by exploiting upon likely mistakes by users when entering the URL address). 

Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interests in the domain names in question. The Respondent has not denied that assertion.

The domain names in question are not marks by which the Respondent is commonly known. Policy  4(c)(ii). Rather, the Respondent is using common typographical alterations of the Complainant's mark to profit.

The Respondent has made no claim that it is using the domain names in connection with a bona fide offering of goods and services or that it is making a legitimate non-commercial or fair use of the site. Policy  4(c)(i), (iii). Instead, the Respondent seeks to profit from its registration of said domain name by redirecting Internet users to a pornographic site. See Fanuc Ltd v. Machine Control Services, FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent had no rights or legitimate interest because Respondent does not own the registered mark, has no permission from the Complainant to use the mark, nor is affiliated with the Fanuc business in any way).

For the foregoing reasons, the panel determines that the Respondent has no rights or legitimate interest in the domain names at issue.

Registration and Use in Bad Faith

The Respondent has not responded to the Complaint and, therefore, does not deny that the domain names were registered and are being used in bad faith, as alleged by Complainant.

The Respondent registered the domain names in question to attract, for commercial gain, Internet users to the Ashley's Playground website, by creating a likelihood of confusion with the Complainant's marks. Policy  4(b)(iv). The Respondent is capitalizing on common mistakes that Internet users make in searching for the Complainant's website. See Yahoo! Inc. v. Zviely, D2000-0273 (WIPO June 14, 2000) (finding that the domain names <yahoop.com>, <yahoof.com>, <yalhoo.com>, <yhahoo.com>, etc., were registered and used in bad faith)

The Respondent is also acting in bad faith by programming his websites to direct users away from Complainant's site towards pornographic sites. See Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding bad faith where Respondent threatened to develop the domain name, <0xygen.com>, into a pornography site).

The panel concludes that the Respondent registered and used the domain names in bad faith.

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted. 

Accordingly, for all of the foregoing reasons, it is ordered that the domain names, "ESPNS.COM" and ESPM.COM" be cancelled.