Chargers Football Company; National Football League Properties, Inc. v. One Sex Entertainment Company and One Sex Entertainment Company a/k/a ChargerGirls.net

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 [1].

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 ("hector@onesex.com").

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

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)

B. Respondent

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 [2].

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 [3].

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 [4], 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"

[5].

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 [6]. 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.

7. Decision

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

Panelist

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