Sport Supply Group, Inc. v. Kendell Lang

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Sport Supply Group, Inc. v. Kendell Lang

Case No. D2004-0829

1. The Parties

The Complainant is Sport Supply Group, Inc. of Farmers Branch, Texas, United States of America, represented by Jacobson Holman PLLC of Washington, D.C., United States of America.

The Respondent is Kendell Lang of Del Mar, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <usgames.com> is registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2004. On October 11, 2004, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On October 12, 2004, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 14, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2004. The Response was filed with the Center on October 31, 2004.

The Center appointed Terrell C. Birch as the sole panelist in this matter on December 2, 2004. 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.

Complainant filed a Request for Leave to File a Brief

in Reply to Respondent’s Response on November 18, 2004. Respondent has

opposed that Request. The Panel declines to accept any Supplemental Filings

or Responses in this matter and, therefore, denies Complainant’s Request.

4. Factual Background

The Panel finds the following facts from the Complaint and Response:

A. Sport Supply Group’s long use of and exclusive rights in its U.S. GAMES trademark/service Mark.

SSG, a United States publicly traded corporation, is one of the largest direct suppliers of sporting goods and leisure products to the institutional marketplace in the United States. Indeed, SSG sells over 8,000 different products to over 100,000 customers.

SSG has long been using the trade name, service mark, and trademark U.S. GAMES (collectively, the “U.S. GAMES Mark”). SSG has been selling its products under the U.S. GAMES trademark since 1972, and operating under the U.S. GAMES service mark and trade name since 1973. During this period, SSG has made a substantial investment in developing the goodwill and reputation of its U.S. GAMES Mark, in advertising and promoting its U.S. GAMES Mark to the industry and to the public, with the result that the U.S. GAMES Mark has come to signify SSG and the goods sold and services rendered by it.

SSG is the owner of incontestable United States Service Mark Registration No. 1,246,494, issued July 26, 1983, by the United States Patent and Trademark Office for U.S. GAMES in connection with “mail order services in the field of games, toys, and sporting goods” and “playing equipment for physical exercise games-namely, bats of various sizes and shapes, balls of various sizes and shapes, ring-shaped pucks for a hockey-type game, goals, nets, game boundary markers, and storage and transportation bags and containers for the foregoing sold separately or in combination with the foregoing.”

In sum, SSG has made a significant investment in its U.S. GAMES Mark, and enjoys considerable goodwill under such mark and name. As a result, SSG’s U.S. GAMES Mark is of inestimable value to SSG and its business.

On May 28, 2004, SSG sent a cease and desist letter to Respondent by email (three addresses), facsimile and next day mail. The May 28th letter set forth SSG’s rights in its U.S. GAMES Mark, including a copy of SSG’s federal registration, and requested transfer of the domain name registration. A response was requested no later than June 15, 2004. Id.

The Complainant contends that Respondent Lang’s response was to improperly link the <usgames.com> uniform resource locator to the content of a third party website. That is, in June of 2004, the content of the website located at “www.usgames.com” identically, and without authorization, “mirrored” the content of the website of the Amateur Athletic Foundation of Los Angeles (“AAFLA”), located at “www.aafla.org” (hereafter, the “AAFLA Website”).

Lang’s improper use of AAFLA’s content at his “www.usgames.com” website clearly was not authorized or sanctioned by AAFLA. Indeed, upon learning of the improper use of AAFLA’s content, AAFLA demanded that Lang cease mirroring its official website. Shortly thereafter, as of July 7, 2004, the “www.usgames.com” website reverted to a “passive” website, devoid of substantive content.

Despite having received SSG’s cease and desist letter and after being rebuked by AAFLA for “mirroring” its content, on or about August 5, 2004, Lang renewed the <usgames.com> registration.

By letter of October 4, 2004, SSG sent a final letter to Lang demanding, inter alia, transfer of the subject domain name registration.

Finally, on October 7, 2004, Lang responded to SSG’s letters. In the face of SSG’s demonstrable trademark, service mark and trade name rights in SSG’s U.S. GAMES Mark, Lang responded by claiming that he intended to transfer the disputed domain name – not to SSG - but to a seemingly unrelated third party, namely, an entity located in Chiang Mai, Thailand.

The Panel notes that Respondent has not refuted the

foregoing factual findings.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)).

2. The Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2)).

3. The domain name was registered and is being used in bad faith (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3)).

B. Respondent

In short, Respondent has alleged that Complainant

has failed to prove the requirements of Policy, paragraphs 4(a)(i), (ii), and

(iii). Furthermore, Respondent has questioned the force, effect, and validity

of Complainant’s trademarks and service marks.

6. Discussion and Findings

The Panel finds that the domain name at issue, <usgames.com> is substantially identical and confusingly similar to the trademark or service mark in which the Complainant has rights in violation of Policy, paragraph 4(a)(i) for the following reasons:

A. Identical or Confusingly Similar

Complainant, SSG, is the owner of incontestable United States Registration No. 1,246,494, issued by the United States Patent and Trademark Office (“USPTO”) for the U.S. GAMES Mark in connection with “mail order services in the field of games, toys, and sporting goods” and “playing equipment for physical exercise games-namely, bats of various sizes and shapes, balls of various sizes and shapes, ring-shaped pucks for a hockey-type game, goals, nets, game boundary markers, and storage and transportation bags and containers for the foregoing sold separately or in combination with the foregoing.” The registration issued on July 26, 1983. On July 17, 1989, a Section 15 Declaration of Incontestability was filed with, and later acknowledged by, the USPTO. SSG’s registration is valid and subsisting and constitutes conclusive evidence of SSG’s ownership of the U.S. GAMES Mark, and its exclusive right to use same. See 15 U.S.C. §1065.

Respondent’s domain name <usgames.com> is essentially identical

to SSG’s previously registered U.S. GAMES Mark. The only differences between

the designations (spacing, “periods” and the “.com”

top-level domain) are, individually and collectively, irrelevant. See Texas

Lottery Commission v. Kendell Lang, FA0212000137707 (National Arbitration

Forum, February 14, 2002) (“Respondent’s <texaslottery.org>

domain name is plainly identical to Complainant’s [TEXAS LOTTERY] mark

because the disputed domain name simply removes the space between the words

and adds the generic top-level domain (gTLD) ‘.org’ after texaslottery.”)

(bracketed text supplied). See also, Rollerblade, Inc. v. Chris McCrady,

WIPO Case No. D2000-0429 (June 25, 2000)

(In ordering transfer of respondent’s <rollerblade.net> domain name,

the Panel stated, “It is already well established that the specific top

level of the domain name such as ‘net’ or ‘com’ does

not affect the domain name for the purpose of determining whether it is identical

or confusingly similar.”). Moreover, “said differences are derived

from the current technical structure of the domain names and, consequently,

they should not be considered as a difference between the disputed domain name

and the Complainant’s trademarks.” Miroglio S.p.A. v. Stanley

Filoramo, WIPO Case No. D2003-0887

(December 26, 2003).

Accordingly, Complainant has established that the <usgames.com> domain name is so substantially identical to SSG’s U.S. GAMES Mark, a trade name, service mark and trademark in which SSG has demonstrable rights, as to create a likelihood of confusion therewith.

B. Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name pursuant to Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2) for the following reasons:

Respondent has presented no evidence that demonstrates any rights or legitimate interests in adopting and using ‘usgames.com’ as a trademark, service mark or domain name.

Complainant continuously has used its U.S. GAMES Mark for more than thirty years, since 1972. The application to register the U.S. GAMES Mark was filed in the USPTO on December 14, 1981. Under United States law, “[c]ontingent on the registration of a mark on the principal register provided by this Act, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person.” 15 U.S.C. §1057(c). The U.S. GAMES Mark was registered on the Principal Register of the USPTO on July 26, 1983. Accordingly, Complainant SSG may rely on a date of priority from at least as early as December 14, 1981. However, as indicated, actual use of the U.S. GAMES Mark precedes this date by more than a decade.

Respondent registered the <usgames.com> domain name on August 13, 1998. The Panel finds that said domain name registration by Respondent was with actual or, at a minimum, constructive knowledge of its use by Complainant. Samsonite Corporation v. Colony Holding, FA 94313 (National Arbitration Forum, April 17, 2000) (Ordering transfer of respondent’s <samsonite.org> domain name.)

Respondent has submitted no evidence to establish – either prior to Complainant’s first notice to the Respondent, or thereafter – that Respondent made any use of, or demonstrable preparations to use, <usgames.com> in connection with any bona fide offering of any goods or services. To the contrary, Respondent briefly created an unauthorized, infringing website that “mirrored” the AAFLA Website; but took it down after receiving a demand from AAFLA. If anything, this pirating of another’s website content in the face of Complainant’s notice constitutes strong evidence that Respondent lacks legitimate rights or interests in the disputed domain name.

Respondent’s failure to operate a website in connection with the <usgames.com> domain name “permits the inference that it lacks rights and legitimate interests in the domain name.” FDNY Fire Safety Education Fund, Inc. v. Roger Miller, FA 145235 (National Arbitration Forum, March 26, 2003). Indeed, a UDRP panel found that Respondent’s “passive holding of a domain name for such a length of time gives rise to the presumption that Respondent lacks rights and legitimate interests in the domain name because they are not being used in connection with a bona fide offering of goods or services pursuant to Policy, paragraph 4(c)(i) or a legitimate, non-commercial or fair use pursuant to Policy, paragraph 4(c)(iii).” See Washington State Lottery v. Kendell Lang d/b/a Virtual CIO, FA0208000123893 (National Arbitration Forum, October 21, 2002). The application of this rule is even more appropriate in this case since Respondent has passively held the domain name much longer than he did in the Washington State Lottery case (6+ years vs. 4+ years), and when he did “use” the name here, it was a bogus use, misrepresenting a relationship with AAFLA.

At no time has Respondent, either prior to Complainant’s first notice to the Respondent, or thereafter, been commonly known by the “usgames” designation, nor has Respondent acquired any trademark or service mark rights in U.S. GAMES

Respondent’s attempt to transfer the disputed domain name in the face of Complainant’s threat to enforce its valid rights further demonstrates that Respondent has no rights or legitimate interests in the disputed domain name registration.

Complainant has not authorized, licensed, or permitted

Respondent to use the “usgames” designation. Accordingly, Respondent

has no rights or legitimate interests in respect of the <usgames.com>

domain name. See Compagnie de Saint Gobain v. Com-Union Corp,

WIPO Case No. D2000-0020 (March 14, 2000)

(finding no rights or legitimate interests where the respondent was not commonly

known by the mark and had never applied for a license or permission from complainant

to use the trademarked name).

C. Registered and Used in Bad Faith

The Panel finds that the domain name was registered and is being used in bad faith (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3)), for the following reasons:

1. The Panel finds that Respondent’s post-notice “mirroring” of the AAFLA Website constitutes bad faith.

Shortly after receiving notification from SSG concerning the <usgames.com> domain name registration, Respondent Lang pirated AAFLA’s content by “mirroring” the AAFLA Website at “www.usgames.com” – a piracy that continued until AAFLA demanded Lang cease and desist. It is clear that such actions, inter alia, evince Respondent’s bad faith use of the domain name and Respondent’s bad faith attempt to subvert the Policy.

2. The Panel finds that Respondent’s post-notice attempt to transfer the disputed domain name constitutes bad faith.

After Lang’s AAFLA ruse failed, after improperly renewing the disputed domain name registration in August of 2004, and after receiving Complainant’s final request for transfer, Respondent declared his intention to transfer the disputed domain name to another party. Attempting to transfer a disputed domain name in this fashion further evinces Respondent’s bad faith.

3. The Panel finds that Respondent registered the <usgames.com> domain name in order to prevent Complainant from reflecting the mark, consistent with Respondent’s pattern of conduct.

Consistent with Respondent’s pattern of registering the trademarks of third parties, Lang registered the <usgames.com> domain name in order to prevent SSG from reflecting its U.S. GAMES Mark in a corresponding domain name. See paragraph 4(b)(ii) of the Policy. The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings in which Lang was the Respondent. See Texas Lottery Commission v. Kendell Lang, FA0212000137707 (National Arbitration Forum, February 14, 2002); and Washington State Lottery v. Kendell Lang d/b/a Virtual CIO, FA 0208000123893 (National Arbitration Forum, October 21, 2002) (hereafter sometimes collectively referred to as, the “Lang Lottery Cases”). In each proceeding, the Panel found that Lang had registered and used the domain names in bad faith based, in part, on Lang’s pattern of warehousing the trademarks of third parties. Both Panels transferred the disputed domain name registrations to the Complainant-trademark owner.

In Washington State Lottery, supra, the Panel noted that “Complainant’s investigation has revealed that Respondent engages in the practice of warehousing domain names in order to sell them.” The Washington State Lottery Panel relied upon this fact in finding Lang’s bad faith use and registration of the disputed domain names. In the second of the Lang Lottery Cases, the Panel found that:

“Respondent’s pattern of registering the

trademarks of third parties is independent evidence of registration and use

in bad faith pursuant to Policy, paragraph 4(b)(ii). See BIC Deutschland

GmbH & Co KG v. Paul Tweed, WIPO Case

No. D2000-0418 (June 20, 2000) (finding that the Respondent violated paragraph

4(b)(ii), as revealed by the number of other domain name registrations incorporating

others’ trademarks and the fact that the domain names in question do not

link to any on-line presence or website); see also Armstrong Holdings, Inc.

v. JAZ Associates, FA 95234 (National Arbitration Forum, August 17, 2000)

(finding that the Respondent violated Policy, paragraph 4(b)(ii) by registering

multiple domain names that infringe upon others’ famous and registered

trademarks).”

See, Texas Lottery Commission v. Kendell Lang, supra.

Additionally, Lang registered the disputed domain name at about the same time he registered the domain names at issue in the Lang Lottery Cases, suggesting that the bad faith found in connection with those domain names was present in Lang’s registration of the <usgames.com> domain name registration.

Thus, the Panel finds that Respondent’s pattern of cybersquatting establishes that Lang registered and uses the <usgames.com> domain name in bad faith.

4. The Panel finds that Respondent’s passive holding of the disputed domain name constitutes bad faith.

Respondent registered the <usgames.com> domain name on August 13, 1998.

Respondent has not linked an active website to the disputed domain name –

other than the temporary infringing use of the AAFLA Website which, of course,

is not a bona fide use. Thus, Respondent has been passively holding the

disputed domain name since 1998. After a domain name registrant “has passively

held a domain name for two years a presumption of bad faith registration and

use arises.” See, Washington State Lottery (finding that “Respondent’s

behavior is evidence of bad faith registration and use pursuant to Policy, paragraph

4(a)(iii)”), citing DCI S.A. v. Link Commercial Corporation,

WIPO Case No. D2000-1232 (December 7, 2000)

(concluding that Respondent’s passive holding of the domain name satisfies

the requirement of paragraph 4(a)(iii) of the Policy); see also Mary-Lynn

Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business

as Big Daddy’s Antiques, D2000-0004

(February 16, 2000) (holding that Respondent’s failure to develop its

website in a two year period raises the inference of registration in bad faith).

While passive holding of a domain name for two years raises the presumption

of bad faith use and registration, such holding for over six years should render

the presumption nearly irrebuttable, especially in these circumstances.

5. The Panel finds that the <usgames.com> domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant.

Complainant has satisfied its burden of demonstrating bad faith registration and use by presenting circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. See Policy, paragraph 4(b)(i). Such an inference arises in this case, as it did in another reported case. For example, in Texas Lottery Commission case, the Panel found:

“Respondent [Lang] has registered numerous domain names that incorporate the trademarks of third parties, e.g., <azlotto.com>, <floridalottery.net>, <floridalottery.org>, etc. In light of this pattern and the fact that Respondent has made no use of <texaslottery.org>, the Panel infers that Respondent registered the disputed domain name to sell its registration. Registration of a domain name that infringes on another’s mark primarily for the purpose of selling, renting or transferring it is evidence of bad faith registration and use pursuant to Policy, paragraph 4(b)(i).”

Id. Such an inference is bolstered where, as here, the disputed domain does not resolve to an active website. However, this case is especially remarkable for the length of time that the website has been inactive – over six years.

Two different UDRP Panels have found that Respondent’s “pattern

of registering the trademarks of third parties” and his “warehousing

of domain names for sale” warranted a finding of bad faith. Furthermore,

there is evidence of Respondent’s passive holding of the <usgames.com>

domain name over six years, refusal to respond to Complainant’s communications,

unconscionable pirating of the AAFLA Website in a vain attempt to forestall

or defeat a UDRP proceeding, and stated intention to transfer the disputed domain

name registration. Still further, Respondent has presented no evidence to support

the allegations of the Response or to refute the allegations of the Complaint.

In light of the above, the Panel finds, therefore, that the domain name was

registered and is being used by the Respondent in bad faith.

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, <usgames.com> be transferred to the Complainant .

Terrell C. Birch

Sole Panelist

Dated: December 10, 2004