Zuffa, LLC v. LGRE

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Zuffa LLC v. LGRE

Case No. D2001-0458

1. The Parties

Complainant is Zuffa LLC, a Nevada limited liability corporation with its

headquarters in Las Vegas, Nevada, United States of America. Complainant

is represented by Milbank, Tweed, Hadley & McCloy, LLP.

Respondent is LGRE located in West Patterson, New Jersey, United States

of America. Raymond A. Mardo is acting on behalf of Respondent.

2. Domain Name and Registrar

The domain name at issue is: <ultimatefightingchampionship.com>.

The Registrar is Registrars.com of Seattle, Washington.

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received

Zuffa LLC’s complaint (the "Complaint") by hard copy on March

29, 2001 and by email on April 3, 2001. The Center verified that

the Complaint satisfied the formal requirements of the ICANN Uniform Domain

Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform

Domain Name Dispute Resolution Policy (the "Rules"), and the Center’s

Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the

"Supplemental Rules"). Zuffa LLC requested to have the dispute

decided by a single-member administrative panel. All payments required of

Complainant were timely made. The formal date of the commencement of this

administrative proceeding was April 17, 2001.

On May 5, 2001, the Respondent submitted by email its Response to the Complaint.

The Response was submitted in a timely manner and WIPO, on May 10, 2001,

acknowledged receipt of the Response. In its Response, Respondent did not

request a three-member panel to hear the dispute. Accordingly, on May 22,

2001, the Center appointed Barbara Solomon as the panelist for this matter.

The panelist agrees with the Center’s assessment that the Complaint and

Response satisfy the requirements of the Policy, Rules and Supplemental

Rules.

4. Parties’ Contentions

Complainant states that it is the corporate successor to Semaphore Entertainment

Group, the corporation that created the "Ultimate Fighting Championship"

competition. Competitions under the name have been held since 1993 in various

states in the United States as well as internationally. The competitions

have been broadcast in over 51 countries and have been available for

viewing live on Pay-Per-View in North America, Latin American and Japan.

In addition, Complainant states that competitions under the mark ULTIMATE

FIGHTING CHAMPIONSHIP have been converted to a video format available in

various versions. Complainant alleges that the mark ULTIMATE FIGHTING CHAMPIONSHIP

enjoys recognition and brand awareness throughout the martial arts community

and in sports media.

According to the Complaint, effective January 10, 2001, Complainant acquired

the "Ultimate Fighting Championship" name and business in connection

with a purchase of the assets of Semaphore. As a result, Complainant became

the owner of U.S. trademark registrations for ULTIMATE FIGHTING CHAMPIONSHIP

as well as various pending U.S. trademark applications for the mark. In

addition, Complainant became the owner of European and other worldwide trademark

registrations and applications for the mark although the specifics of those

marks are not set forth in the Complaint.

Complainant asserts that as a result of its acquisition of Semaphore’s

trademark rights as well as the use of the mark by its predecessor in interest

and Zuffa, Zuffa has rights in the ULTIMATE FIGHTING CHAMPIONSHIP trademark.

Complainant further asserts that the domain name <ultimatefightingchampionship.com>

is identical or similar to its ULTIMATE FIGHTING CHAMPIONSHIP trademark.

Complainant next asserts that Respondent has no rights or legitimate interests

in the domain name because Respondent has no trademark registrations for

the mark; Zuffa has not agreed or consented to Respondent’s use or registration

of the domain name incorporating the mark; and Respondent has not used the

domain name in connection with an active website.

Further, Complainant states that Respondent registered and is using the

domain name in bad faith. In support of this contention, Complainant states

that Respondent proposed transferring the domain name in exchange for obtaining

employment with Complainant as a promoter of "Ultimate Fighting Championship"

competitions; that Respondent knew or should have known of Zuffa’s prior

adoption, use and rights in the mark since Respondent claims to be operating

in the sports field; that there can be no credible argument that Respondent

arrived at the name independently and without knowledge of Complainant or

its predecessor’s rights; and there was no evidence of any actual or contemplated

good faith use of the domain name by Respondent.

In its Response, Respondent first states that it obtained the domain name

prior to Complainant’s acquisition of any rights in the name "Ultimate

Fighting Championship." Respondent does not suggest that its domain

name was registered before Semaphore, Complainant’s predecessor in interest,

acquired rights in the ULTIMATE FIGHTING CHAMPIONSHIP mark. Respondent further

contends that the mark ULTIMATE FIGHTING CHAMPIONSHIP is generic.

Respondent next asserts that its domain name is not identical or confusingly

similar to Complainant’s registered trademark in part because the Complainant

does not use the term "Ultimate Fighting Championship" but rather

uses only the acronym "UFC."

Respondent also challenges Complainant’s assertion that it lacks legitimate

interest and rights in and to the domain name. Specifically, Respondent

claims that before receiving notice of the dispute it registered the domain

name and posted a web page informing visitors that the site would be moving

in soon. Respondent also claims that it has plans to develop a professional

wrestling/sports entertainment tournament consisting of monthly matches

and that it has registered other domain names to promote the tournaments.

Finally, in addressing Complainant’s claim that Respondent registered and

is using the domain name in bad faith, Respondent states that it never offered

to exchange the URL in question for employment or a job with the Complainant

and that it was, in fact, Complainant who offered Respondent the possibility

of employment with Complainant.

In addition to Responding to the allegations made by Complainant, Respondent

also has affirmatively alleged that Complainant has engaged in reverse domain

name hijacking and has asked the panel to make a finding that the Complaint

was brought in bad faith because it was unsupportable or filed with reckless

disregard as to whether the allegations were supportable.

5. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant must prove each of the

following to obtain the transfer of a domain name:

(1) 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;

(2) that the Respondent has no rights or legitimate interests

in respect of the domain name; and

(3) that the Respondent has registered and is using the domain

name in bad faith.

A. The Domain Name is Identical or Confusingly Similar to the

"Ultimate Fighting Championship" Trademark

Respondent argues that ULTIMATE FIGHTING CHAMPIONSHIP is not a protectable

mark in which Complainant has rights. Specifically, Respondent takes the

position that because the trademark consists of generic terms, somehow the

mark as a whole is not protectable. This is not correct as a matter of U.S.

trademark law.

It is not disputed that Complainant has acquired U.S. trademark registrations

for the mark ULTIMATE FIGHTING CHAMPIONSHIP as a result of its acquisition of

the assets of Semaphore. The existence of these trademark registrations are

prima facie evidence of Complainant’s rights in the ULTIMATE FIGHTING CHAMPIONSHIP

mark. Respondent has the burden of proof of refuting this evidence which burden

it has not carried. As such, Complainant is found to have sufficient rights

in the mark ULTIMATE FIGHTING CHAMPIONSHIP to bring the Complaint. See Educational

Testing Service v. TOEFL, WIPO D2000-0044

(presume mark is distinctive based on existence of trademark registration);

accord, eAuto L.L.C. v. Triple S Auto Parts, WIPO D2000-0047.

Respondent also suggests that its domain name is not similar or identical

to the ULTIMATE FIGHTING CHAMPIONSHIP trademark. However, as can be readily

seen, the domain name in fact is identical to the ULTIMATE FIGHTING CHAMPIONSHIP

mark. The fact that the Complainant, according to Respondent, may use the

acronym "UFC" is beside the point when determining whether the

domain name <ultimatefightingchampionship.com> is similar or identical

to the registered trademark ULTIMATE FIGHTING CHAMPIONSHIP which it clearly

is.

Accordingly, Complainant has satisfied this element of the Policy.

B. The Respondent Does Not Have a Legitimate Interest in the Domain

Name

Although Complainant has the burden of persuasion on all elements of the Policy,

Respondent must offer some evidence of legitimate use once the Complainant has

made a prima facie case that no legitimate interest exists. Here, Complainant

has made such a prima facie case by showing that Respondent owns no trademark

registration for ULTIMATE FIGHTING CHAMPIONSHIP, that Complainant neither consented

nor agreed to Respondent’s use or registration of a domain name incorporating

the ULTIMATE FIGHTING CHAMPIONSHIP mark, that the domain name does not resolve

to any website or online presence and that Respondent has made no legitimate

or commercial use of the <ultimatefightingchampionship.com> domain name.

The Policy sets forth certain circumstances which are sufficient to demonstrate

rights or legitimate interest in a domain name. In this case, Respondent

has no evidence to show that it was using or made demonstrable preparations

to use the domain name before notice to it of the dispute. Policy ¶ 4(c)(i).

While Respondent claims that it has plans to use the domain name, Respondent

has not provided any evidence other than mere allegations to show any preparations

for legitimate use. Because Respondent has failed to provide evidence including,

for example, business plans, use of the name on a non-Internet based business,

or other evidence reasonably related to preparations for legitimate use,

Respondent’s arguments that it is preparing to make a bona fide use of the

domain name cannot be credited. Unlike some of the cases relied upon by

Respondent, here there is no evidence of any preparations, however perfunctory,

that Respondent has made to use the domain name. While it may be the case

that, in fact, Respondent has made some preparations to use the name sufficient

to demonstrate rights or legitimate interests, for purposes of this proceeding

Respondent has failed to prove those rights or interests.

The Policy further states that evidence of rights or legitimate interest

in a domain name can be shown if the Respondent has been commonly known

by the domain name or if the Respondent is making a legitimate noncommercial

or fair use of the domain name. Policy ¶4(c). Here, Respondent does not

allege that either circumstance is applicable in this case. Accordingly,

Complainant has met its burden on this element.

C. The Respondent Registered and is Using the Domain Name in Bad Faith

The purpose of the Policy is to prevent clearly abusive acts of cybersquatting.

The Policy is not designed to address any issue of unfair competition or misuse

of a domain name. It is for this reason that there is a requirement under the

Policy for the Complainant to prove that the Respondent registered and used

the domain name in bad faith. The Policy sets forth various factors to be examined

in considering whether there is such bad faith registration and use although

the Policy recognizes that there may be other circumstances not enumerated in

the Policy that might show bad faith.

In support of its claim that Respondent registered and is using the domain

name in bad faith, Complainant alleges that the Respondent proposed a transfer

of the domain name in exchange for obtaining employment with the Complainant

as a promoter of the ULTIMATE FIGHTING CHAMPIONSHIP competitions. Respondent

denies these allegations, stating that it never offered to exchange the URL

in question for employment or a job and states that it was Complainant who proposed

employment as a possible means to resolve the dispute. As to other evidence

of bad faith use and registration of the domain name, Complainant has not shown

that the domain name was registered in order to prevent the owner of the mark

or service mark from reflecting its own mark in a corresponding domain name,

that the domain name was registered primarily for the purposes of disrupting

the business of Zuffa, or that the domain name has been registered to attract

for commercial gain Internet users by creating a likelihood of confusion. See

Policy ¶ 4(b). Indeed, given that there has been no use of the domain name,

there could be no likelihood of confusion at least at this time.

Thus, the crux of the issue comes down to whether the Respondent offered to

transfer the domain name in exchange for employment. On this, there is obviously

a difference of opinion. Based on the submissions, Complainant has therefore

not carried its burden of proof. Furthermore, the submissions make it apparent

that this case is not the type of clear-cut case of cybersquatting that is appropriate

for resolution under the UDRP. The issues presented by the parties are more

properly determined by a trial court with appropriate offers of evidence.

It should be kept in mind that this determination does not mean or suggest

that the domain name was not registered and used in bad faith, only that a factual

determination on that issue cannot be made on this record. Further, the question

of whether Respondent’s use of the domain name may result in trademark infringement

or other violations of Complainant’s rights is not at issue here, has not been

decided, and is beyond the scope of the policy. Adaptive Molecular Technologies,

Inc. v. Priscilla Woodward & Charles R. Thorton, WIPO

D2000-0006.

Allegation of Reverse Domain Name Hijacking

Respondent has alleged that Complainant is involved in reverse domain name

hijacking. Reverse domain name hijacking is defined in paragraph 1 of the Rules

as meaning "using the Policy in bad faith to attempt to deprive a registered

domain name holder of a domain name." In this case, the Panel does not

find that the complaint was brought in bad faith. When Complainant filed the

complaint, it was the owner of U.S. trademark registrations for the mark ULTIMATE

FIGHTING CHAMPIONSHIP. At the time the complaint was filed, Respondent was not

making active use of the domain name in connection with a website or in connection

with provision of any goods and services. Complainant’s predecessor in interest

had established rights in the mark ULTIMATE FIGHTING CHAMPIONSHIP prior to the

registration date of the domain name. And, as evidenced by the complaint, Complainant

clearly believes that there was an offer made to exchange the domain name for

employment. Taken together, Complainant had a good faith basis for bringing

the complaint.

7. Decision

Despite the fact that Complainant has established rights in the mark ULTIMATE

FIGHTING CHAMPIONSHIP, that the domain name is identical to Complainant’s mark

and that the Respondent did not show rights or legitimate interest in the domain

name, Complainant has failed to prove that the Respondent registered and is

using the domain name in bad faith. This failure of proof is based solely on

the disputed issues of fact raised by the parties which cannot be resolved by

the Panel. Accordingly, for the specific reasons set forth herein, Complainant’s

request for transfer of the domain name is denied.

As to Respondent’s request for a declaration that Complainant has engaged in

reverse domain name hijacking, Respondent has failed to make out such a claim

against the Complainant. As such, Respondent’s request that the Panel make a

finding that the complaint was brought in bad faith is denied. The evidence

shows that Complainant had a good faith basis for proceeding.

Barbara A. Solomon

Sole Panelist

Dated: June 12, 2001

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