A three member UDRP panel has awarded the domain name ElectricFootball.com to Tudor Games, Inc. of Sammamish, Washington which owned the domain name until 1997 when they “unintentionally” let it expire and that is when Vertical Axis Inc. who was represented by ESQwire.com Law Firm, acquired the domain on the drop.
The Complaintant did not apply for the trademark with the USPTO until 1999 but found the term was not a true generic but related to a particular type of game the kind currently featured in a Bud commercial with Jimmy Johnson (that comparison came from myself not from the panel)
The case has a very detailed discussion of constructive notice as to the issue of bad faith which is worth a read.
Here are the highlights:
4. Factual Background
In May 1999, the United States Patent & Trademark Office (“USPTO”) issued trademark registration number 2,244,553 to Michael Landsman for the word trademark ELECTRIC FOOTBALL (the “Mark”), in connection with a “football game in which playing pieces representing football players are lined up on a metal playing surface, and movement of the pieces is driven by an electric current.” The first use of the ELECTRIC FOOTBALL mark in commerce was March 1949.
In an affidavit submitted in this proceeding, Mr. Landsman states that he is the founder of Miggle Toys, Inc., and that in February 2012, he and Miggle Toys entered into two contracts with Complainant Tudor Games, Inc. Complainant was incorporated in the State of Washington, United States, in January 2012.
According to Complainant, it “‘owns and/or controls’ the ELECTRIC FOOTBALL Mark pursuant to an exclusive License Agreement and Purchase and Sale Agreement with Miggle Toys, Inc., including but not limited to the rights to all trade names, marks, service marks, trademarks (specifically including ‘Electric Football’), copyrights, trade secrets, website domain addresses, websites, e-mail addresses.” Mr. Landsman’s affidavit appears consistent with this assertion, and Mr. Landsman adds: “Upon completion of the five year term in 2017, under the Agreements all of the subject intellectual property held by Miggle and myself relating to the Miggle business, including trade names, marks, service marks, trademarks, copyrights, trade secrets, website domain addresses, websites, and e-mail addresses, and specifically including the trademark ‘Electric Football,’ are scheduled to transfer to Tudor.”
Mr. Landsman owned the Domain Name
Respondent Vertical Axis, Inc. registered the Domain Name in December 2007 shortly after the prior registration lapsed and it became available at auction.
According to the affidavit of Leandra Wilfred-Boyce, Respondent’s director of finance, Respondent purchased the Domain Name “because ‘electricfootball.com’ is comprised solely of two common dictionary words ‘electric’ and ‘football,’ which we believed no party could claim exclusive rights.” The Wilfred-Boyce affidavit goes on to say: “Respondent did not register the Disputed Domain with Complainant’s trademark in mind and had no knowledge of Complainant, its web site, its business name or trademark when we purchased the Dispute Domain seven (7) years ago.”
Respondent has registered numerous domain names consisting of one or more common dictionary words, including several containing either “electric” or “football.” Examples include:
The Domain Name resolves to a website which provides various commercial hyperlinks, including some links to websites related to football, football games, and “Electric Football Players.” According to Complainant, none of these links relates to Complainant’s products and some of them relate to products which compete with Complainant’s products.
Near the top of the website is the text: “Welcome to electricfootball.com.” Underneath this text are two “related links”: “Electric Football” and “Football Games.” According to Ms. Wilfred-Boyce, the links at the site are “auto-generated by Google and are constantly changing based on Google’s keyword advertising inventory and user search behavior.” It is undisputed that the hyperlinks provide pay-per-click revenue for Respondent.
The website also bears a banner at the top stating: “This domain is listed at Mark.com.” Next to this text is a box stating: “BUY IT.”
There is no doubt that the Domain Name is identical to the registered trademark ELECTRIC FOOTBALL. Respondent, however, asserts that Complainant lacks standing to bring this Complaint because Complainant is not the owner, but a mere licensee, of the trademark.
Consensus view: In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding. Panels have in certain cases been prepared to infer the existence of a license and/or authorization from the particular facts, but in general, relevant evidence is desirable. Although not a requirement, panels have on occasion found it helpful, where a complaint relies on a common source of trademark rights, for all relevant rights holders to be included as co-complainants.
The Panel concludes that, by virtue of the Policy requirement that the complainant “has rights” (without restricting such rights to outright ownership or assignment) in the subject trademark, and the consensus view articulated in the WIPO Overview 2.0, Complainant has standing to pursue this proceeding.
Accordingly, the Panel concludes that Policy paragraph 4(a)(i) has been satisfied.
Respondent argues, because the registration of domain names “that contain common words are [sic] permissible on a first-come, first-served basis,” this gives rise to a right or legitimate interest in a domain name, and that on the evidence in the present case, “Respondent registered the Disputed Domain based on its common descriptive meaning and not to target a trademark.” The first proposition is on its face unassailable as a general proposition.
However, as applied to the evidence forming the record in this case, the Panel does not support the submission that the words “electric football” have a “common descriptive meaning” as alleged.
Moreover, the numerous examples furnished by Respondent of other innocuous domain names that it has registered and which contain the words “electric” or “football” do not aid Respondent’s claim on this score.
Most of those other domain names, such as
Respondent’s difficulty in the present case is that, although each of “electric” and “football” is a generic or descriptive word, taken together, as they are clearly meant to be, they give the reader the impression that they are not generic but are meant to indicate something far more specific and perhaps in the nature of a trademark.
The Panel is also unable to accept Respondent’s second argument under the “legitimate interests” head.
Respondent asserts generally that if a respondent “is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in the word, then it is a legitimate interest.” Again, there is no real quarrel with that statement as a general proposition, subject to there being evidence that supports it in a given case. However, for reasons discussed in greater detail in the “bad faith” section below, the Panel concludes, on a balance of probabilities and having regard to the evidence adduced, which makes up the record established in this case, that Respondent is intentionally taking advantage of the Mark in which Complainant has rights.
Accordingly, the Panel concludes that Policy paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
The Panel is unanimous in concluding that this is a very close case.
Ultimately, the Panel concludes on the basis of the specific facts established by the evidence that Complainant has carried its burden of proving that Respondent registered the Domain Name in bad faith.
The core issue of bad faith in this case is whether a respondent who has registered a domain name identical to the complainant’s trademark, but who denies having any actual knowledge of the trademark at the time of registration of the domain name, can be said to have registered the domain name in bad faith.
This issue has been addressed in various contexts by numerous prior panels under the Policy, and no overwhelming consensus of opinion seems to have emerged. This is readily apparent from the discussion in the WIPO Overview 2.0, under Question 3.4, entitled “Can constructive notice, or a finding that a respondent ‘knew or should have known’ about a trademark, or willful blindness, form a basis for finding bad faith?” The WIPO Overview 2.0 discussion of this issue is set forth below (with internal references and case citations omitted):
This paragraph considers a number of inter-related concepts which pertain to the issue of a domain name registrant’s “knowledge” of the relevant trademark, as discussed by WIPO UDRP panels.
Constructive Notice: Panels have mostly declined to introduce the US concept of constructive (deemed) notice per se into the UDRP.
However, some panels have been prepared to do so in certain circumstances including where a respondent was located in the US and a complainant had a federal US trademark registered before the domain name was obtained by the respondent, and there are indicia of cybersquatting. In such cases, in the absence of positive evidence that the respondent had actual notice, a finding that the respondent was on constructive notice of the complainant’s registered trademark has sometimes been used to support a finding of bad faith, with the panel concluding that the respondent had relevant notice of the trademark. Some panels in this type of case have been less inclined to find registration in bad faith based solely upon a claim of such notice where the complainant’s trademark is less well-known or corresponds to a common word or phrase.
“Knew or Should Have Known”: Some panels have in certain circumstances found bad faith registration based in part on proof that the respondent “knew or should have known” about the existence of the complainant’s trademark (other than through the above-mentioned US concept of constructive notice). This may be seen as an instance of the panel attributing readily obtainable knowledge to a respondent even if the respondent avers that it did not have the knowledge.
Circumstances in which panels have made such finding have included those in which the complainant’s trademark was shown to be well-known or in wide use on the Internet or otherwise at the time the domain name was registered, or when a respondent’s denial of knowledge is otherwise highly improbable. Some panels have applied a related concept of “constructive knowledge” in particular circumstances, notably where a respondent has acquired a domain name through a process of automated bulk transfer of domain names. Some panels have adopted this approach on the back of paragraph 2 of the UDRP which puts some burden on registrants where it states: “It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.” Other panels have observed that unless some level of constructive knowledge is recognized, automated transfers will represent a blanket defense to bad faith.
Willful Blindness: Some panels have applied a concept of willful blindness in UDRP cases as a basis for finding bad faith. For example, a respondent’s registration of large numbers of domain names through automated processes, with no appropriate mechanism for ascertaining whether these may be identical or confusingly similar to such trademarks, may support a finding of bad faith. Panels holding that a respondent must accept the consequences of turning a blind eye to any third-party trademarks through failure to conduct adequate searches have tended to limit the application of this principle to cases in which the respondent is a professional domain name registrant, or has been found to have engaged in a pattern of abusive registration and use of domain names identical or confusingly similar to trademarks (although some panels have also noted that, in theory, such general principle may be just as applicable to non-professional domain name registrants, who, after all, are also subject to paragraph 2 of the UDRP, which provides: “It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”)
Some panels have found that in certain circumstances there may be an affirmative obligation on registrants more generally to make reasonable good faith efforts to avoid registering and using a domain name that is identical or confusingly similar to a mark held by others, for example, through an Internet search on the domain name through Google or Yahoo!.
A review of the foregoing discussion from the WIPO Overview 2.0 makes it clear that, in a given case, the record put before the panel by the parties, by evidence adduced during the proceeding, may prove critical to the disposition of the dispute at hand. The only real exception to this proposition appears to the Panel to be where the panel in the proceeding in question had adopted a rather categorical view about the duties, if any, to be imposed on a respondent to investigate whether registration and use of the prospective domain name would infringe the trademark rights of a third party.
Those panelists who believe on principle that a domain name registrant is under some type of affirmative duty to ensure that the subject domain name will not violate another’s rights seem to the Panel to be far more likely to find bad faith registration under a concept of “constructive notice” or a concept that, as it is sometimes put, the respondent “knew or should have known.”
In the present case, the Panel does not accept that constructive notice, i.e., the legal incident under United States trademark law of imputing knowledge to a party by virtue of the fact that a trademark is registered, even absent any evidence of actual knowledge of that mark’s existence, is a substitute for the requirement in the Policy that bad faith registration of a domain name requires a showing that the respondent more likely than not actually knew of the complainant’s mark. The Panel here observes further in this vein that constructive notice is particularly ill-suited to circumstances where the complainant holds (or has rights to) a registered trademark in one country (in this case the United States) and the respondent resides in another country (Barbados).
The Panel is thus of the view that the concept of constructive notice will not get the job done here for Complainant.
Under the WIPO Overview 2.0, other concepts – such as “should have known” and “willful blindness” – have been discussed, and even adopted in certain cases to establish that a respondent registered a domain name in bad faith. Again, it is not apparent that an overwhelming consensus has emerged in support of these concepts, and caveats abound. Moreover, the factual contexts vary from case to case, and various combinations of factors (e.g., whether the domain name had previously been registered by another party but had expired, whether the respondent is a bulk domain name registrant or uses automated systems to search for and register domain names, whether the domain name corresponds to a common word or phrase, whether the trademark is well-known, etc.) differ in prominence from case to case.
Ultimately, the Panel here does not embrace the concept that a respondent “should have known” or had shown “willful blindness” as substitutes for a finding that, on a balance of probabilities as developed by the record at hand, Respondent more likely than not had actual knowledge of the trademark invoked by Complainant.
Rather, the Panel makes its finding regarding bad faith registration by asking whether it is more likely than not from the record of the evidence in the proceeding that Respondent had the ELECTRIC FOOTBALL trademark in mind when registering the Domain Name.
The Panel concludes that Complainant has carried its burden of proving that Respondent more likely than not had the ELECTRIC FOOTBALL Mark in mind when registering the Domain Name. That is so for the following reasons.
First, although Respondent argues that “electric” and “football” are purely descriptive words, it does not argue that the combined term “electric football” is purely descriptive and the Panel’s opinion is to the same effect.
Second, the very expression “Electric Football”, being as it is an unusual combination of words, connotes and gives the impression that it is invoking a specific named product or brand. Accordingly, the expression puts a potential registrant of the Domain Name on notice that it may well be about to use another party’s trademark and that it should, before registering the Domain Name, conduct some form of search to ascertain whether this is so or not.
Third, the website to which the Domain Name resolves contains links – which presumably generate per-click revenue for Respondent – to various sites, including “Electric Football”, “Football Games”, “Electric Football Players” and various online football games. These terms suggest to the Internet user who arrives at Respondent’s website that football games are available through the hyperlinks, and even that “Electric Football Players”, i.e., game pieces for Complainant’s game, are available.
In addition, one version of the website put into the record of evidence shows several sponsored listings, including two companies under the header “Play Football Game.” Both of these links advertise a “fun and free football game.”
Hence, an Internet user who keyed in the Domain Name in search of Complainant’s product promoted under the trademark ELECTRIC FOOTBALL would land at a website which did not offer Complainant’s game, but invited the visitor to check out some other (and reportedly free) football games, thus potentially diverting business away from Complainant.
As a result, the visitor might well opt for an alternative to Complainant’s game, Respondent will have derived some pay-per-click revenue from the whole episode, and Complainant’s business will have suffered from the diversion of Internet hits to competitors of Complainant.
The further difficulty for Respondent on the evidence is that the website contains what purport to be links to “Tudor Electric Football Teams” and “Miggle Electric Football teams.” These links clearly have the potential, and presumably the intention, of suggesting to the Internet user that the website is under some sort of imprimatur of the two companies, namely Complainant and Miggle Toys, most closely associated with the trademarked Electric Football game.
Finally, although it is an open question as to precisely how prominent and well-known the ELECTRIC FOOTBALL brand and mark were at the time Respondent acquired the Domain Name in 2007, the uncontradicted evidence is that the actual game has been promoted in the United States for 67 years and under the trademark ELECTRIC FOOTBALL since at least its registration as a trademark on May 11, 1999.
The Supplementary Declaration of Mr. Strohm, the founder and president of Tudor Games, is instructive in this regard, as it describes the game’s popularity and refers to the book, The Unforgettable Buzz: The History of Electric Football and Tudor Games, extracts from which appear on the website “http://theunforgettablebuzz.com”. That website itself carries a great deal of other information about the history of the game and the specific involvement in its development by Mr. Landsman, the registered owner of the ELECTRIC FOOTBALL Mark.
The Panel concludes on the basis of this evidence that the history of the game that is offered under the Mark shows that by 2007, although the product had gone through some ebb and flow of popularity, it had achieved reasonable prominence, at least within the United States. That degree of prominence is a further indication that anyone considering the registration of the Domain Name electricfootball.com in 2007 probably had knowledge that it was also the brand of a reasonably well-known product.
Under these circumstances, the Panel takes the view that although it is not conclusive, Respondent more likely than not had the ELECTRIC FOOTBALL mark in mind when registering the Domain Name. The use to which the Domain Name has been put over the years suggests that Respondent more likely than not was aware of the fact that ELECTRIC FOOTBALL was a football game marketed commercially by a company, even if the precise name of the trademark owner may not have been known. Put another way, the Panel does not accept on the evidence available to it that Respondent had no knowledge of the ELECTRIC FOOTBALL Mark when it registered the Domain Name.
Whether such knowledge came to Respondent by way of one or more of its officers or employees, or by way of some third party agent using computer algorithms, it came to Respondent. The Panel is careful to observe that it does not take issue with Respondent’s overall business model, or with the fact that it searches and registers domain names on an automated basis, or with the fact that its parking page creates automated content and hyperlinks. At some point along the way, however, a respondent must take some responsibility for the acts of its own people and/or automated agents when it stumbles upon a domain name available for purchase that is potentially identical to or confusingly similar to another party’s registered trademark. Notwithstanding technological facilities available to Respondent and others, paragraph 2 of the Policy does state that the registrant of a domain name is responsible for determining whether its domain name registration violates another party’s rights.
It was also entirely within Respondent’s power to put up a website which created no prospect of consumer confusion vis-à-vis the ELECTRIC FOOTBALL product. Had Respondent done so, it might have been able to prevail in this case. Instead, the evidence is that, by using Complainant’s trademark as the entirety of its Domain Name, it has put up a website that offers alternative goods and services to those of Complainant, even going as far as to carry links to “Tudor Electric Football Teams” and “Miggle Electric Football teams” associated with Complainant’s trademarked products. This virtually guarantees that some Internet users will assume that the website is associated in some way with those products.
In reaching its decision, the Panel need not and does not rely on the concepts, referred to above, of whether a respondent “should have known” of a trademark or “willful blindness”.
Rather, on record of the evidence and in the specific circumstances of the case, the Panel finds that Respondent had the requisite knowledge of Complainant’s mark to establish bad faith registration. As regards the allegation of bad faith use, the Panel concludes that the evidence brings the case within Policy paragraph 4(b)(iv) by virtue of Respondent’s deriving pay-per-click revenues from links provided at a website accessible via a Domain Name which creates a likelihood of confusion with the ELECTRIC FOOTBALL Mark.
Accordingly, the Panel concludes that Policy paragraph 4(a)(iii) has been satisfied.
Robert A. Badgley
The Hon Neil Brown Q.C.