Identifying Bad Faith in Registered Domain Names: ESPN
Inc. Domain Admin
It was held in the case of ESPN Inc. v. Domain Admin[1] that the use of a domain name that is a well-known mark to promote competing or infringing products cannot be considered bonafide offering of goods and services. Even where a party passively holds a domain name conflicting with that of a well-known mark, it constitutes bad faith.
Brief facts and background of the
case
It
is known that the complainant ESPN Inc. is a well-known company incorporated
under prevalent Corporate Laws of the United States of America. The complainant
provides sports entertainment services, including media coverage and
broadcasting of sports world over through all media sources.
A
complaint was filed with the National Internet Exchange of India on August 18,
2016 by ESPN against the Respondent “Domain Admin” who registered the domain
name www.espn.co.in
GoDaddy.com. The Exchange had verified the complaint and discerned that it
satisfied all the formal requirements of the Indian Domain Name Dispute
Resolution Policy and the Rules framed thereunder.
A
copy of the complaint was sent by the Sole Arbitrator Mr. Vinod K Agarwal to
the respondent at their address registered in the WHOIS data records. However,
no response was received from the end of the respondents pursuant to which the
proceedings were initiated ex-parte. Also, the respondent’s activities remain
unknown.
Complainant’s Submission
The
complainant contended that all elements specified in the policy were applicable
to the dispute at hand. The complainant stated that they have been using their
trademark ESPN in India as trade name, corporate name, business name, trading
style etc. since 1994 without any interruption. The complainant further
contended that their trademark registration in respect of ESPN is valid and
still subsisting.
Pursuant
to this contention they are the sole and absolute owners of copyright vesting
in all artistic works around their trademark. Moreover, they own some other
domain names incorporating the word ESP such as www.espn.com,
www.espn.net,
www.espn.in,
www.espntv.com,
www.espn.go.com,
www.espncricinfo.com
indicating that they are well known users of the word ESPN as their owners and
that their domain name has become a business identifier for them and the
conflicting domain name is likely to cause confusion and mislead netizens as it
is similar/ identical to their name.
Respondent’s Submission
The
respondent’s contentions were not known as they did not submit any response.
Furthermore, their identity could not be determined owing to the unavailability
of their complete address.
National Internet Exchange of India
observed
The
Sole Arbitrator observed that the complainant owns the trademark ESPN along
with several domain names incorporating the word ESPN created much before the
creation of the disputed domain name by the Respondent which is confusingly
similar or identical to ESPN’s marks.
As
no response was received from the respondents and lack of evidence that the
disputed domain name is known anywhere in the world. Further, it could be
inferred from the conduct of the Respondents that they had no legitimate
interest, license, or authority to use the Complainant’s trademark in a domain
name.
The
sole Arbitrator deduced that the Respondent had intentionally attempted to
attract netizens to their disputed domain name for commercial gain by creating
a likelihood of confusion with the complainant’s trademark.
Therefore,
the disputed domain name was declared confusingly similar to that of the
Complainant’s. The arbitrator inferred that the disputed domain name was
registered in bad faith under the Guiding Policies and the Rules thereunder and
passed an order transferring the disputed domain name www.espn.co.in
to the Complainant.
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