Green Bay Packers, Inc. of Green Bay, Wisconsin, just its bid to grab the domain name TotalPackers.com in a three member UDRP decision by Christopher S. Gibson, Matthew S. Harris and W. Scott Blackmer.
The Domain Name was registered by Respondent on April 1, 2008, “for a website that provides news, analysis, commentary, video, gossip and humor related to the Green Bay Packers.
The homepage of the website linked to the Domain Name states that “Total Packers was founded in 2009 to cover Green Bay Packers football — the players, the coaches, games, business and just about anything else related to the Green Bay Packers.” Respondent’s website has operated continuously since its founding.
The Green Bay Packers legal representative first contacted Respondent on April 24, 2014.
The decision goes into a big discussion on the doctrine of Laches which the panel finally says does not apply to UDRP but seems to factor the delay in the Packers delay in enforcing its rights in its final decision.
This domain was used for an actual site which generated over 1,000,000 visitors in 8 years (30% from direct type in traffic) and not a parked domain.
Here are the highlights:
The Panel considers it appropriate, before turning to the merits of this dispute, to assess and determine the parties’ arguments concerning laches.
A. Respondent’s Contentions on Laches
Respondent contends that Complainant’s Complaint is barred under the doctrine of laches because Complainant waited too long to bring it. Respondent argues that laches is a valid defense in any domain name dispute where the facts so warrant, and a complaint may be denied under the doctrine of laches without considering the case on the merits. Respondent also argues that Complainant has cited old cases to say that this defense does not apply, but that the weight of authority and newer cases hold otherwise. In addition, Respondent argues relatedly that when both parties in an UDRP case are from the same country, it is appropriate to consider and apply that country’s legal principles in evaluating the parties’ rights and conduct. In the United States, laches is an equitable defense that has been held to apply in actions to enforce trademark rights. Laches applies when a claimant inexcusably delays asserting its claim and thereby unduly prejudices the party against whom the claim ultimately is asserted. To successfully defend on the basis of laches a defendant must demonstrate: (1) a delay in asserting a claim; (2) the delay was inexcusable; (3) there was undue prejudice to the party against whom the claim is asserted.
Here, Respondent states that Complainant waited eight years to object to Respondent’s use of the PACKERS mark in his Domain Name.
During the eight years, Respondent invested substantial time, effort and resources to develop his website, establish it as a go-to site for news, information and commentary, with a devoted type-in viewership of over 300,000 visitors last year alone, and linking domain names.
Requiring Respondent to transfer the Domain Name would significantly prejudice him, allowing Complainant to destroy what Respondent and a small group of people created over the years.
Respondent alleges that Complainant knew of Respondent’s website, as it contacted him previously in relation to alleged trademark and copyright use issues. Complainant first contacted Respondent in April 2014 regarding some material on Respondent’s website.
Complainant must have been aware of Respondent’s website even prior to that because the NFL had contacted Respondent three years earlier. Respondent states that communications from the NFL and the Packers did not go unanswered. When they made requests for changes, Respondent complied.
In reply to Complainant’s arguments about when its staff attorney first became aware of the Domain Name in April 2014, Respondent questions why Complainant had not acted sooner, especially as there is a large group of individuals working for the Packers’ front office. Respondent claims that the Vice President of Marketing and Fan Engagement, and many others working for Complainant, have known about Respondent’s website for a long time, as the website is well known among the Packers family.
Indeed, there have been over 1 million visits in recent years, more than 30 percent typed in versus arriving via a search engine.
Respondent argues there is no explanation as to why his site was not discovered sooner. Respondent alleges that, on information and belief, many others in the Packers’ organization knew about it for many years, but Complainant acted only recently when it did not like the “Broads” page on Respondent’s website and wanted censorship. Respondent states that the Packers allow many other websites with packers-derivative domain names to operate.
Further, Respondent contends that in its 2014 communication, Complainant did not raise any concerns with respect to Respondent’s use of his Domain Name.
Complainant only objected to use of its trademark in the Domain Name in its January 11, 2016 letter.
Complainant provided no evidence that Respondent’s Domain Name was in any way disrupting its business or confusing Internet users during the prior eight-year period. Respondent is not aware of any such confusion or disruption.
Complainant has no credible explanation as to why it did not act sooner.
Respondent argues that even if the Panel does not deny the Complaint on the basis of laches, Complainant’s delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.
Respondent asserts that lengthy delays in seeking legal or administrative remedies can have the effect of eroding or undermining a complainant’s arguments with respect to a respondent’s rights or legitimate interests in a disputed domain name, or the respondent’s alleged bad faith in registering and using it. Respondent claims the long delay also raises an inference that Complainant did not truly believe Respondent engaged in bad faith registration and use of the Domain Name.
B. Complainant’s Contentions on Laches
Complainant contends that laches is inappropriate in this proceeding, as it is well settled that the doctrine of laches does not apply to proceedings initiated under the Policy.
However, if the Panel finds that laches plays a role, Complainant states that the Panel should find that Complainant was diligent in addressing Respondent’s infringement. Complainant submitted its Complaint within months of Respondent’s recent refusal to communicate and cooperate with Complainant. Upon discovering Respondent’s website in 2014, Complainant contacted Respondent regarding Respondent’s website’s violations of Complainant’s trademark rights. Respondent replied to the letter and represented to Complainant that it had removed certain content from Respondent’s website.
In 2015, Complainant states that it discovered that Respondent had not made the changes as represented and thus Complainant again contacted Respondent regarding violations of Complaint’s trademark rights. Respondent replied to the letter, requesting that Complainant “provide specifics.”
Thus, in 2016 Complainant sent Respondent a detailed cease and desist letter with specific demands. Respondent did not reply. Complainant sent another cease and desist letter shortly thereafter. Respondent, again, did not reply. Based on Respondent’s non-responsiveness, Complainant decided to file a Complaint with the Center. Thus, Complainant submitted its Complaint within two years of first discovering Respondent’s website and within two months of Respondent’s sudden refusal to communicate.
Respondent points to communications from the NFL in an attempt to establish a longer period of time, but Respondent cannot impute the knowledge of one entity to an entirely different entity. Respondent should not be allowed to lead Complainant along with representations of cooperation and then raise laches during a proceeding that was initiated as a result of Respondent’s own non-responsiveness. Moreover, Complainant states that despite Respondent’s insinuations, Complainant aggressively enforces its trademark rights. Respondent asserts that “concurrent use of PACKERS marks in other domain names give an impression Complainant impliedly agrees to such use.” While Respondent cites a number of domain names in support of this assertion, Respondent is not privy to the entire picture. Complainant is continuously sending out cease and desist letters to owners of domain names that contain variations on the PACKERS mark, including to a number of the owners of the domain names listed in the Response. In some cases, the owners enter into agreements with Complainant to avoid infringing on Complainant’s trademark rights. Thus, Respondent’s unsupported assertions of lack of Complainant’s diligence with respect to third-party websites should be disregarded.
Finally, Complainant argues that the Panel should resist Respondent’s attempt to import United States law regarding laches into this case. Prior UDRP panels have held that there is no real justification for importing local laws into the Center’s proceedings and that doing so risks fragmenting the Policy into different systems.
Panel’s Decision on Laches
The Panel has considered carefully the parties’ arguments concerning laches. The Panel unanimously agrees with the view that the defense of laches does not apply in UDRP proceedings.
The Policy offers a limited remedy to avoid future confusion in the marketplace and does not contemplate that such a remedy would be unavailable because of delay in initiating a case. See Uline, Inc. v. Bhavna Babaria, WIPO Case No. D2015-0462. This view accords with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.10, which states:
“Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.”
While not essential to its decision on the question of laches, the Panel also notes that Respondent has argued that laches should be applied because both parties are located in the United States and it is appropriate to apply that country’s legal principles in evaluating the parties’ rights and conduct. The Panel, however, considers that, except perhaps in limited circumstances not present in this case, there is no adequate justification for applying local laws in a case arising under the Policy and that such approach should be avoided wherever possible. As its name implies, the UDRP is intended to provide an international and uniform policy across all top-level domains for resolving disputes between trademarks owners and domain name registrants. As stated in 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007‑1461, an approach applying local rules “risks the UDRP fragmenting into a series of different systems, where the outcome to each case would depend upon where exactly the parties happened to reside.” Moreover, as a policy matter, “the act of bringing local law into the assessment of the Policy when taken to its logical conclusion as a matter of practice undermines the … goal of commercial certainty.” Id. This point is further supported because the Policy, on the one hand, and local laws (and related procedures) as to cybersquatting and trademark infringement, on the other hand, are different in several important respects, such that a set of facts might conclusively establish trademark infringement under domestic law, yet not be considered bad faith registration and use under the Policy, and vice versa. Id.
While the Panel decide that laches should not be applied in this case, the Panel, nevertheless, agrees with the position stated in WIPO Overview 2.0, paragraph 4.10, that “delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith.” See e.g., Uline, Inc. v. Bhavna Babaria, supra (“the Panel observes that lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the complainant’s arguments with respect to the respondent’s rights or legitimate interests in a disputed domain name, or the respondent’s alleged bad faith in registering and using the domain name”).
Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. The overall burden of proof, however, remains with the complainant.
Here, the Panel finds that Complainant has made out a prima facie case. Complainant contends that Respondent deliberately chose the Domain Name because it includes the PACKERS mark and falsely conveys a connection with the Packers; that due to the inclusion of the PACKERS mark, viewers of the Domain Name will reasonably but mistakenly assume that Respondent’s website is somehow affiliated with or endorsed by Complainant; that while Respondent may have a legitimate interest in providing information about the Packers, Respondent has no legitimate interest in unfairly trading on the brand recognition and goodwill associated with Complainant’s marks; that Respondent’s website bears a strong similarity to Complainant’s official website and is likely to confuse viewers into believing that Respondent’s website is somehow associated with Complainant; that Respondent’s disclaimer is insufficient to prevent this confusion; that Respondent does not use the Domain Name for a noncommercial purpose because the website at the Domain Name uses pop-up advertisements powered by Spoutable, a company specializing in monetizing websites; and that Respondent therefore cannot claim it is entitled to the Domain Name for fair use purposes and noncommercial criticism and commentary.
In response, Respondent has gone a long way towards rebutting Complainant’s prima facie showing to demonstrate rights or legitimate interests in the Domain Name. Respondent states that he has used the website linked to the Domain Name as a fan site, making legitimate noncommercial or fair use of the Domain Name by offering news and critical commentary related to the Packers. Respondent points to his track record of continuous use of the Domain Name as a fan site since its registration in 2008, and that Complainant’s long delay in seeking relief, if not resulting in dismissal of the Complaint under the doctrine of laches, is still relevant to the question of whether Respondent has been able to develop rights or legitimate interests. Respondent claims that his website is commonly known by its Domain Name. Respondent also emphasizes that his use of the Domain Name does not affect Complainant’s use of its trademark, particularly as Domain Name is not identical to Complainant’s mark and Complainant has not shown that it is adversely affected by Respondent’s Domain Name. Respondent also contends that he did not intend to confuse anyone, that Complainant has not provided evidence of actual confusion, and that his website’s “About” and “Disclaimer” pages, accessible from every page of the site, indicate that the site is unaffiliated with the Packers. Respondent states that he has been paying for expenses associated with running his website from his own personal funds, with a small portion of advertising revenue helping to cover some expenses, and that he has never sold any merchandise or tried to gain business from Complainant. Moreover, Respondent states that in over eight years of operating the Domain Name, he has never offered to sell it (except, as disclosed through the parties’ Supplemental Filings, in settlement discussions with Complainant once this dispute arose). Respondent also contends that the website and its content does not tarnish Complainant’s trademark. In view of these contentions, Respondent has invoked paragraphs 4(c)(ii) and (iii) of the Policy in support of his position that he has developed rights or legitimate interests in the Domain Name:
“(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
The Panel observes that this case presents a close call. There seems to be no real dispute that Respondent registered and is using the Domain Name in connection with a genuine and active fan site (providing some criticism as well) for the Packers. Respondent has used the Domain Name for this purpose since it was registered in April 2008. There is no claim by Complainant (or evidence in the record) that the site is merely a pretext for commercial gain. Respondent describes himself (and his associates supporting the site) as devoted Packers fans. Respondent’s site demonstrates extensive development and a high amount of original content, sustained over time. However, Complainant has alleged that Respondent’s use of the Domain Name linked to his website does not qualify as noncommercial or fair use, because the website uses pop-up advertisements. In his sworn statement, Respondent states that he personally covered all of the expenses related to setting up his website back in 2008 and since then, has been paying for the expenses associated with running the website and devoting his personal time, effort and resources to it. However, there is also evidence in the record – admitted by Respondent in the same sworn statement – that at least in recent years, his site has generated revenue (USD 10,000 this last year) through pop-up advertisements, which he states has been used to cover operating costs.
In view of all of the above circumstances, the Panel considers that the question of rights or legitimate interests essentially turns on the following two issues:
(i) Does the advertising revenue generated by Respondent’s website, which appears to have been minimal in early years (and not the aim of the website), but more substantial in recent years, preclude a finding of Respondent’s claimed noncommercial and fair use of the Domain Name?
(ii) Does Respondent’s use of the Domain Name as a fan site for approximately eight years (and for more than 6 years before being first contacted by Complainant’s representative by letter of April 24, 2014, with the Domain Name registered on April 1, 2008) provide a basis for recognizing that Respondent may have developed a right or legitimate interest in use of the Domain Name?
Here, on the balance of the probabilities, the Panel concludes that Respondent’s website, although primarily a genuine fan site providing news and commentary about the Packers, does not qualify as a noncommercial (fan) site.
A review of Internet Archive entries for Respondent’s site – there have been 156 captures for Respondent’s site between September 26, 2008 and October 12, 2016 – shows that pop-up ads were present on the site during much of the time it has operated, and that for a short period there was also a link to the “Total Packers Store,” leading to the “Total Packers’ Green Bay Packers Shop” powered by Amazon.com.
Further, even if we accept that the level of advertising revenue generated recently (said to be approximately USD 10,000 this past year) does not cover the complete costs of running the site, this amount is still a substantial sum.
Further, on July 27, 2015, prior to the dispute, Respondent filed an application for the mark, TOTAL PACKERS, declaring a date of first use in commerce of April 18, 2008. While Respondent subsequently abandoned this application on May 16, 2016, following its rejection by the USPTO, it nonetheless provides evidence of Respondent’s own views on the issue of commercial use.
Having decided that Respondent’s website does not qualify as a noncommercial (fan) site under the Policy, the second key issue remains: whether Respondent’s use of the Domain Name as a fan site for approximately eight years (and for more than 6 years before being contacted by Complainant’s representative) provides a basis for finding a right or legitimate interest in its use.
The Panel considers that lengthy delay in seeking legal or administrative remedies may have the effect of undermining a complainant’s arguments with respect to the respondent’s rights or legitimate interests in a domain name, or the respondent’s alleged bad faith in registering and using it.
Here, the Panel determines, in view of the particular circumstances of this case, that Respondent’s use of the Domain Name (for a period of eight years (and 6 years before any contact from Complainant)) in connection with a genuine fan site, providing news and commentary about the Packers, has given rise to a legitimate interest in the Domain Name.
Respondent’s website is well-established and the evidence indicates that it has a large following.
Complainant has not provided evidence of any serious damage to itself or the Packers resulting from Respondent’s use of the Domain Name.
Prior to this dispute, Respondent did not attempt to sell the Domain Name during the eight years he used it, and his website does not compete with or seek to take business away from Complainant.
While Respondent’s website does not qualify as noncommercial, the primary aim of the website has been to provide news and critical commentary related to the Packers. Respondent’s “About” and “Disclaimer” webpages, with prominent links on the homepage of Respondent’s website, although containing some strong language, have always made clear that Respondent’s website is unaffiliated with Complainant. To the extent that there was potential for confusion between Complainant and its PACKERS mark, on the one hand, and Respondent’s website, on the other hand, Respondent’s development and use of his website, establishing an association with the Total Packer name as a fan site, has served to distinguish the site from Complainant and its marks.
The Panel also observes for completeness that Respondent challenged why Complainant had not acted sooner, alleging that the website has been known for a long time among members of Complainant’s front office and the Packers’ community.
While Complainant’s attorney indicated that he discovered the website linked to the Domain Name in early 2014, the Panel is persuaded, on the balance of the probabilities, that Complainant’s organization would likely have been aware of the site well before that date.
Moreover, while a somewhat fine point, Complainant’s first cease and desist letter sent in April 2014, while generally objecting to use of Complainant’s trademarks in the content of Respondent’s website, did not object to use of the Domain Name; objection to use of the Domain Name was not made until January 11, 2016.
The Panel recalls that the overall burden of proof for this second element of the Policy remains with Complainant.
In view of all of the above circumstances, the Panel concludes that Complainant has not demonstrated, on the balance of the probabilities, that Respondent lacks any right or legitimate interest in respect of the Domain Name.
Accordingly, Complainant has failed to satisfy the second element under paragraph 4(a) of the Policy.
Given the Panel’s findings that Complainant has failed to demonstrate Respondent lacks any right or legitimate interest in respect of the Domain Name, the Panel considers that it is not strictly necessary to consider the issue of registration and use in bad faith. The Panel finally notes that the parties remain free to pursue their claims, including as to possible trademark infringement or dilution / tarnishment in the courts.