Chivas USA Enterprises, LLC; Club Deportivo Guadalajara S.A. de C.V.; Major League Soccer, LLC; Soccer United Marketing, LLC v. Cesar Carbajal

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Chivas USA Enterprises, LLC, et al. v. Cesar Carbajal

Case No. D2006-0551

1. The Parties

Complainants are Chivas USA Enterprises (Chivas USA), Club Deportivo Guadalajara S.A. de C.V. (Chivas Mexico), Major League Soccer, LLC (MLS), and Soccer United Marketing, LLC (SUM). Chivas USA, MLS, and SUM are all limited liability companies organized in the State of Delaware, United States of America. MSL and SUM have their principal place of business in New York, New York, United States of America, and Chivas USA has its principal place of business in Carson, California, United States of America. Chivas Mexico is a Mexican corporation with its principal place of business in Guadalajara, Mexico. Complainants are represented by the law firm Quinn Emanuel Urquhart Oliver & Hedges, LLP, New York, New York, United States of America.

Respondent is Cesar Carbajal, an individual who resides

in Los Angeles, California. Mr. Carbajal has submitted a Response on his own

behalf.

2. The Domain Name and Registrar

The domain name at issue is <chivasusa.com>.

The registrar is Go Daddy Software, Inc.

3. Procedural History and Jurisdiction

The WIPO Arbitration and Mediation Center (the Center) received the complaint on May 2, 2006 (electronic version) and May 5, 2006 (hard copy). The Center verified that the complaint satisfied the formal requirement of the ICANN Uniform domain name Dispute Resolution Policy (the Policy), the Rules for Uniform domain name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform domain name Dispute Resolution Policy (the Supplemental Rules). Complainants made the required payment to the Center.

On May 2, 2006, the Center transmitted, via email to the Registrar, a request for registrar verification in connection with this case, and the Registrar transmitted via email to the Center its Verification Response, confirming that the Respondent is the registrant for all the domain names, that the Respondent is the contact for administrative matters and the Respondent is the technical contact.

Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, on May 8, 2006, the Center transmitted to the Respondent its Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier, facsimile, and e-mail.

On May 26, 2006, Respondent requested a ten-day extension to respond. Complainants did not object. Respondent submitted his Response by e-mail on May 29, 2006, and later, at the Center’s request, furnished exhibits to the Response in hard copy.

The formal date of the commencement of this administrative proceeding was May 8, 2006.

The Center invited Richard G. Lyon to serve as sole panelist. Having received Mr. Lyon’s Statement of Acceptance and Declaration of Impartiality and Independence, on June 8, 2006, as required by the Rules, paragraph 7, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date of June 22, 2006. At the Panel’s request the Center extended the Projected Decision Date.

The Sole Panelist finds that the Administrative Panel

was properly constituted and appointed in accordance with the Rules and Supplemental

Rules and that the Panel has jurisdiction by virtue of Section 4(a) of the Policy.

4. Factual Background

Undisputed Facts.

Complainants are various entities associated with professional soccer in the United States and Mexico. Chivas Mexico and Chivas de Corazón S.A. de C.V. own El Club Deportivo Guadalajara (Chivas de Guadalajara), Mexico’s “most famous” soccer team. The team was created in 1906 as a minor league team in Mexico. In 1948 it earned the nickname “Chivas” when a reporter commented that the team-members resembled a flock of chivas (“goats” in Spanish) after a victory. The team has been popularly known by that nickname ever since. Throughout the late 1950s and into the 1960s, Chivas de Guadalajara enjoyed great success nationally and internationally.

In 2004, Chivas USA, an agent of the Chivas Mexico entities, established Club Deportivo Chivas USA as a member team of MLS, the foremost professional soccer league in the United States. Chivas USA generates revenue through game broadcasts, ticket sales, Chivas merchandise, and advertising.

The Mexican and United States Chivas entities own various trademarks associated with the Chivas name and the Chivas de Guadalajara crest. Chivas Mexico registered the CHIVAS DE GUADALAJARA crest in the United States in February 2006, receiving Trademark Registration Number 3,063,096. Complainants hold other United States trademarks dating back to 1997. The CHIVAS USA Mark is similar, its design being a derivation of this original crest. Since its creation in 2004, the CHIVAS USA Mark has been used extensively for revenue purposes by Chivas USA.

Complainant MLS currently operates a Chivas USA website providing information about Chivas USA’s players, schedule, and tickets. The site also includes an online store selling various products with the CHIVAS USA and CHIVAS MEXICO Marks.

None of the Complainants has licensed Respondents to use its marks or its name. The official Chivas USA cite is located at <www.cdchivausa.com>.

Respondent registered the disputed domain name on January 18, 2003. He asserts that he “intended to create a fan site for the American followers of the Mexican soccer team [Chivas de Guadalajara].” At the time the domain was registered in 2003, Chivas USA did not exist. Respondent changed the orientation of the site from the Mexican to the American team after Chivas USA was created in 2004.

Beginning in 2003 Respondent published a “Coming Soon” page bearing the Chivas de Guadalajara crest near the top.1 Sometime in 2004 the “Coming Soon” page was replaced with a full-content site which included information about the Chivas teams. Respondent’s site was (and is) extensive and rather sophisticated, featuring a well-designed layout with appealing graphics, a chat forum, an “opinion poll” function, registration for an email newsletter, and email addresses at the Domain. At one time included a store offering tickets to Chivas USA games and other merchandise. There were and have been no links to outside vendors and no advertisements. Respondent has apparently maintained the site without many changes other than updates about the teams. The current version features the Chivas USA crest rather than that for Chivas de Guadalajara, and there are no pages offering merchandise or tickets for purchase.

Disputed Facts

Complainants and Respondent offer substantively different accounts of their correspondence over the last several years. According to Complainants, in 2004 Respondent “offered to sell the Domain to Chivas USA for USD 25,000. He was rebuffed and told that Chivas USA would not pay such an extraordinary price[.]” Complainants insist that “this has been the only contact between the two parties regarding [the Domain]” except for a cease-and-desist letter sent to the Respondent on April 11, 2006.

Respondent’s description is more detailed. He asserts that in August 2003 a Chivas de Guadalajara representative contacted him to discuss transferring the Domain.2 Respondent did not offer to sell the Domain at that time, but after exchanging messages and phone calls, he told the representative to “please stop bothering me” because he did not want to sell the domain name and, finally, to “please let me alone or pay me what I have spent,” which Respondent asserts was USD 15,000.3 Complainants did not accept this offer and Respondent states that they had no further contact until early 2005 when a representative of one of the Complainants again approached him about transferring the domain name. This time Complainants offered Respondent “the possibility of working with the content of the website under their policies.” No money was mentioned in these “short” discussions and no action resulted from them. In early 2006 Chivas USA executives invited Respondent to lunch and proposed selling Chivas USA tickets and ticket packages through Respondent’s website. The parties never reached a deal, and Respondent did not follow up on their offer. To date Respondent claims to have spent thousands of dollars on website design, hosting, domain registration, telephone, and Internet costs.4

Respondent admits that he made several online sales. However, he emphasizes

that he did this only with the intent of recovering his expenses and, in fact,

his business endeavors yielded no profits at all—he actually lost money

on the items he sold.

5. Parties’ Contentions

The Panel summarizes the parties’ contentions as follows:

A. Complainants

The domain name is identical to the name of Complainants’ U. S. soccer team and similar to various other marks held by one or more Complainants, and accordingly Respondent’s use of the domain names is likely to cause confusion as to ownership or affiliation of the domain names. Respondent does not operate any business under the Chivas name that is not related to Chivas USA or Chivas Mexico. Neither Chivas USA nor Chivas Mexico authorized any individual or business entity to register the domain name, and Respondent has no rights in the CHIVAS USA Mark. The site contained a store that sold souvenir tickets, Chivas USA email addresses, and regular season tickets, which was an illegitimate commercial use. Additionally, the site collects visitor email addresses for a newsletter. Before the Chivas USA team was created in 2004, the site contained an online store with merchandise relating to Chivas de Guadalajara, and prior to that iteration of the site, the page simply said “Proximamente” (“Coming Soon”). Respondent’s bad faith is shown by his attempt to resell the domain name to Chivas USA in excess of his out-of-pocket expenses of registration. Also, bad faith is evidenced by Respondent’s attempt to sell merchandise by creating likelihood of confusion between its website and Complainants’ official sites.

B. Respondent

At the time of registration of the domain name, Chivas

USA did not exist and the site was intended to be used as a fan site for Chivas

de Guadalajara fans in the United States. Respondent has a legitimate interest

in keeping the site as a channel for fans “free of scrutiny” from

the teams. It enables him to conduct opinion polls, discussion forums, and send

a newsletter to Chivas USA fans. His website has always included a prominent

disclaimer of affiliation with any of the Complainants.5

Visitors’ email addresses are not used for any commercial purposes. His

earlier sale of a few items through the website was an attempt, ultimately unsuccessful,

to recoup his expenses. He discontinued these sales after he actually lost money

on them. Respondent never placed the domain name for general sale and only offered

it to Complainants for the amount he already invested when they pressed him

to name a price. It was Complainants that subsequently proposed commercial collaboration

on several occasions and in any event these activities never came to pass.

6. Standards for Decision

Paragraph 4(a) of the Policy directs that the Complainants must establish each of

the following:

(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service in which the Complainants have rights; and

(2) that the Respondent has no rights or legitimate interests in respect to the domain name; and

(3) that the domain name has been registered and is being used in bad faith.

Complainants bear the burden of proof on each element.

7. Discussion and Findings

Identity and Likelihood of Confusion

The domain name incorporates verbatim Complainants’ marks and the shorthand reference to the U.S. team (one of the Complainants). This similarity is plainly likely to cause confusion as to the ownership of the sites. The fact that respondent registered the domain name before the U.S. team was officially created is not relevant to this element of the Policy, but will be discussed under Rights and Legitimate Interest, below.

Rights and Legitimate Interest

To prevent requiring proof of a negative, Complainants are required only to make out an initial prima facie case that the Respondent lacks rights or legitimate interests in the domain name. They have done so. Respondent has no business interest in the name other than in association with the Chivas USA team, nor has he obtained permission from Complainants to use the trademark. Thus the burden shifts to Respondent to demonstrate that he does have rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy provides three examples of activities that indicate Respondent has rights or a legitimate interest in a domain name. Under clause (iii) a respondent that is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue” has established a legitimate interest. Respondent attempts to find shelter within this safe harbor by showing he operates a noncommercial fan site providing a forum “free of scrutiny” from the Chivas teams.

According to the WIPO

Overview of WIPO Panel Views on Selected UDRP Questions (“Overview”),

paragraph 2.5, there are

two competing views on fan sites. One line of decisions holds that a fan site

operator has a right or legitimate interest in a domain name containing Complainants’

trademark so long as it is “active and clearly non-commercial.”

The other holds that fan sites with confusingly similar domain names cannot

be legitimate uses because one does not have the right to express views on an

entity by representing oneself as that entity.

The Panel proceeds under the first view as the correct interpretation of the Policy. Since the site is “active,” the question is whether Respondent’s site is “non-commercial.” Given the admitted sale of tickets and merchandise, the issue is more refined: whether limited commercial activity, stopped some time ago, takes Respondent outside the protection of paragraph 4(c)(iii) of the Policy.

There is no bright-line rule of decision on this question.

Panels have held that even minor commercial activity on a fan site is fatal

to legitimate use. See Universal City Studios, Inc. v. David Burns and Adam-12

Dot Com, WIPO Case No. D2001-0784.6

However, in Nintendo of America Inc. v. Alex Jones, WIPO

Case No. D2000-0998, the panel held that a video-game fan site that included

links to commercial outlets was maintained in good faith, although it believed

a fan site could not have a legitimate interest in a domain name identical to

the complainant’s mark. If a panel accepts, as this Panel does, the view

that fan sites can be a legitimate use, the logic of the latter case would dictate

that insubstantial commercial activity that does not constitute bad faith use

would not strip the domain name registrant of his claim of legitimate use.

The factual circumstances of this proceeding, as set out in the record, lend

support to Respondent’s contention that the primary purpose, now sole

purpose, of the site was as an information source for team fans. Respondent

used his fan site to sell souvenir tickets, game tickets, Chivas jerseys, and

personal email addresses for an unspecified period of time. There is no evidence

about when Respondent removed these items from his site, but there is nothing

to suggest that it continued through April 2006, when Complainant sent its cease-and-desist

letter, thus notifying Respondent of this dispute. The site is indisputably

non-commercial in its present state and clearly disclaims any affiliation with

any Complainant. From online archives and evidence submitted by Respondent it

appears that online sales were temporary, if not sporadic. Complainants have

submitted no detailed evidence to the contrary. Evidence of ongoing or broader

commercial use, if it existed, would have been available to Complainants. Compare

Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO

Case No. D2004-0383.

It appears that at no time were the sales activities central to the purpose of the site, nor were they the site’s focal point, while the non-commercial fan site features were (and are) extensive. The admitted commercial activity was minor and short-lived.

Complainants cite (1) Galatasaray Spor Kulabu Dernegi

(2) Galatasaray Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar

v. Maksimum Iletisim A.S., WIPO Case No.

D2002-0726, in support of their arguments. In that case the commercial activity

was admittedly substantial, ongoing, and at one time the site’s primary

purpose. Another fan site case, Monty and Pat Roberts, Inc. v. Bill Keith,

WIPO Case No. D2000-0299, is distinguishable

because that respondent’s website included links to the complainant’s

competitors with the purpose of diverting its customers to other businesses.

Here, Respondent included a disclaimer on each page of the site clearly indicating that the site was not associated with the Chivas teams. His limited sales were of goods and tickets he bought and resold for his own account, not supplied to buyers through links to online retailers from which Respondent would be paid a commission. There is no evidence that the site ever included third-party advertisements from which Respondent might have generated revenue. The sophistication of the site indicates that Respondent is knowledgeable about the Internet and Internet practices; had he wanted to generate significant revenue from a fan site he very likely knew how to do so.

There is no evidence, in fact no allegation, that Respondent’s activities tarnished Complainants’ marks, a fact that distinguishes this proceeding from the criticism cases.

One final factual circumstance, the dog that didn’t bark in the night,7 favors Respondent. Even accepting Complainants’ view of the facts, Complainants waited at least fifteen months (from “sometime in 2004” through April 2006) to initiate this proceeding. Throughout this time Respondent continued to invest considerable time and resources in his fan site. Unlike the vast majority of Policy proceedings in which a respondent invoked laches or estoppel8 the undisputed record here demonstrates substantial reliance on Complainants’ inaction. While not itself determinative, this lengthy and unexplained delay is further reason to deny the Complaint.

Bad Faith

“Bad faith, as used in the Policy and the Rules, is intended to be judged by an objective standard, based upon the proof submitted by the parties, rather than a Panel’s subjective evaluation of a respondent’s intentions or state of mind.”9 Complainants’ case for registration in bad faith depends upon their contention that Respondent knew about creation of a Chivas USA team registered the domain name in anticipation of the actual event. 10 On the evidence presented, the Panel cannot determine that this was the case.

Respondent registered the domain name eighteen months before the Chivas USA team actually existed. Respondent maintains that he registered the Domain to create a Chivas de Guadalajara fan site, modifying its content to include the American team only after Chivas USA was established. Complainants assert that the first reports of an American Chivas team surfaced “over a year” before it was created, but this assertion is conclusory, vague, and not supported by any documentary evidence.11 And “over a year” could mean anything from thirteen to twenty months, so without more specificity the statement does not aid Complainants’ case. Respondent’s version is not incredible and in fact has more support in the evidentiary record than Complainants’.

The evidence relating to possible sale of the domain name, discussed above, is similarly conflicting. Once again Respondent’s evidence is just as believable as Complainants’. Without discovery and cross-examination the Panel cannot determine which version is more accurate. Complainants carry the burden of proving bad faith, and the evidence offered is simply too incomplete to satisfy the Panel that Respondent registered the domain name for the reasons Complainants suggest.

Respondent has exhibited none of the behavior typical of true cybersquatters, such as providing false contact information, attempting to auction off the domain name, or offering evasive or unbelievable explanations for their behavior. The Panel’s research indicates that he has never before been a respondent in a Policy proceeding, at least under his own name.

To be sure, some of the objective facts support Complainants’ characterization of what occurred between the parties. It is certainly possible that Respondent registered the disputed domain name in anticipation of a United States Chivas team and profiting as a result. Respondent admits that he offered to sell the domain name to Complainants for an amount undeniably in excess of his cost of registering it (although not necessarily the costs of developing his site). But if Respondent is a cybersquatter, he spent considerable sums of money on what is now an entirely a non-commercial fan site. In no way is this a simple case in which the Respondent’s description of events is incredible, or even one in which Complainants’ description of the factual circumstances fit the conventional description of the cybersquatter.

The Policy was not designed to be used as broadside

Internet trademark protection. Rather it was designed as an expedited means

to redress only “abusive, bad faith cyber squatting.”12

As Complainants bear the burden of proof, “[i]n a close case, the panel

should lean toward the Respondents’ view of things.” eCrush.com,

Inc. v. Cox, Davis & Simpsom, LLC, Mr. Ken Cox, Mr. Brian Simpson, Mr. Ron

Davis, WIPO Case. No. D2004-0552 (citing

Interstate National Dealer Services, Inc. v. Selwyn Colley, WIPO

Case No. D2003-0934; Rug Doctor, L.P. v. Barry Bourdage, WIPO

Case No. DTV2003-0002).

On the record in this proceeding, the Panel finds that Complainant has not

met its evidentiary burden.13

8. Decision

For the foregoing reasons, the Complaint is denied.

Richard G. Lyon

Sole Panelist

Dated: June 30, 2006

1 The Panel acquired this information from archived pages at “www.web.archive.org”; selected images of these pages were also included in the Complaint.

2 Although the Response indicates that a copy of this initial email would be appended, Respondent never submitted a copy to the Panel.

3 Although the website was not live at this time, given its subsequent layout and detail Respondent could well have spent this amount at this point. USD 15,000 is of course substantially more than Respondent’s costs of registering the domain name.

4 Again, the sophistication of Respondent’s website supports this claim.

5 The disclaimer reads: "Website creado por un aficionado sin relación oficial con el Club Chivas" ["Website created by a fan without an official relationship to the Chivas team"].

6 In criticism cases panels have similarly held that any commercial activity on a criticism site renders the activity illegitimate. See Overview, paragraph 2.4, and cases cited. The disqualifying commercial activity is usually an advertisement or click-through revenue from links to commercial sites (especially commercial sites of competitors of the target of the criticism).

7 “ . . . the curious incident of the dog in the nighttime.”

”The dog did nothing in the nighttime.”

“That was the curious incident.” A. Doyle, Memoirs of Sherlock Holmes, “Silver Blaze.”

8 Estoppel cases are

collected and discussed in Iogen Corporation v. IOGEN, WIPO

Case No. D2003-0544.

9 Reliant Energy,

Inc. v. Brent Graeter, WIPO Case No. D2001-0246.

10 Compare ExecuJet

Holdings Ltd. v. Air Alpha America, Inc., WIPO

Case No. D2002 0669; Reliant Energy, Inc. v. Brent Grater, supra.

11 Such evidence, if

it existed, was surely available to Complainants. Brooke Bollea, WIPO

Case No. D2001-0246.

12 Edward Van Halen

v. Deborah Morgan, WIPO Case No. D2000-1313.

13 The Panel's decision

of course is not in any way intended to prejudge or influence any subsequent

court proceedings between the parties (or, for that matter, a re-evaluation

on any substantially changed facts over time). Should such proceedings ensue,

the court will have available an evidentiary record developed through discovery

and cross-examination, and perhaps a different legal standard. See Greyson

International, Inc. v. William Loncar, WIPO

Case No. D2003-0805, at note 17.