Well here is something you don’t see very often in UDRP land a Fortune 500 Company defending a domain name it owns against a UDRP claim and they didn’t even elect to pay for a three member panel
The UDRP was brought by Sports South, LLC on the domain SportsSouth.com which is owned by Fox Sports Networks, LLC
and registered at Mark Monitor
The Sports South, LLC domain name claimed that there company was formed in 1972 but they just filed for a trademark on the term Sports South in January 2014.
Mark Monitor bought the domain name in 2010 on Sedo for $6,500 on behalf of Fox.
It does not seem that the domain SportsSouth.com has even resolved since the purchase and currently does not resolve.
However the one member panel of David L. Kreider, Esq found that, the Complainant failed to allege actual ‘bad faith’ use of the Disputed Domain Name by Fox, but alleged nothing more than bare ‘non-use’ by Fox.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant asserts that ‘Sports South’ has been its company name since 1973, and that, but for the space between the words, which are not used in domain names, the Disputed Domain Name is identical to Complainant’s company name.
Complainant registered the name with the USPTO on January 7, 2014, in connection with the business of wholesale distributorships of sporting goods, firearms, ammunition and accessories. The Complainant alleges that the Respondent has no legitimate interest in the Disputed Domain Name because the domain is not being used at all, and does not resolve to a web page, or anything else.
In relation to the ‘bad faith’ registration and use requirement, under ¶ 4(a)(iii) of the Policy, the Complainant avers: ‘We do not believe the Respondent is necessarily using the domain name in question in bad faith, they are simply not using it at all. By doing so, they are “squatting” on our legitimate rights of owning the domain name in question’.
B. Respondent
The Respondent contends that, over the years, it has registered, acquired, and/or used numerous domain names comprised of the FOX SPORTS mark and geographic terms that identify the location of its services, and that the Respondent has maintained these domain names for years.
Examples cited by the Complainant include the domain names FOXSPORTSSOUTH.TV and FOXSPORTSSOUTHWEST.TV, acquired by the Respondent in 2001, and the domain names FOXSPORTSSOUTH.NET, FOXSPORTSSOUTHTV.COM, FOXSPORTSSOUTHTV.NET, FOXSPORTSSOUTHWEST.NET, FOXSPORTSSOUTHWESTTV.COM, and FOXSPORTSSOUTHWESTTV.NET, which were acquired or registered by the Respondent in 2009.
The Respondent avers that it does not currently use these domain names for its websites, but maintains the domain names as part of its business plans.
The Respondent further alleges that it has registered numerous domain names for its regional websites, and has used some of its domain names for its regional websites including, for example, FOXSPORTSNORTH.COM which directs Internet users to Respondent’s website at http://www.foxsports.com/north, FOXSPORTSWEST.COM which directs Internet users to Respondent’s website at http://www.foxsports.com/west, FOXSPORTSSOUTHWEST.COM which directs Internet users to Respondent’s website at http://www.foxsports.com/southwest, as well as the domain names FOXSPORTSARIZONA.COM, FOXSPORTSDETROIT.COM, FOXSPORTSFLORIDA.COM, FOXSPORTSHOUSTON.COM, FOXSPORTSOHIO.COM, and FOXSPORTSTENNESSEE.COM that the Respondent also uses for its regional websites.
In May or June 2010, the Respondent acquired the Disputed Domain Name from a third party as part of its pre-existing and long-term domain-name registration strategy and business plans for its existing FOX SPORTS SOUTH and SPORTSOUTH businesses and services.
Specifically, in 2010, the domain name SPORTSSOUTH.COM was offered for sale to the general public by a prior registrant.
The Respondent asserts that it owns rights and has obvious legitimate interests in the Disputed Domain Name for several reasons:
First, Respondent’s rights and legitimate interests are established under UDRP ¶ 4(c)(i), which provides that ‘before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services’.
Before any notice to Respondent of the dispute, Respondent used its marks FOX SPORTS SOUTH and SPORTSOUTH, each of which corresponds to the Disputed Domain Name, in connection with a bona fide offering of goods or services for many years. On this point alone, Respondent avers, it has conclusively demonstrated its rights and legitimate interests in the Disputed Domain Name sufficient to deny the Complaint.
Further, the Respondent’s investment in the Disputed Domain Name, as shown by its purchase of the Disputed Domain Name on a domain-marketplace website as part of its business plans for its FOX SPORTS SOUTH and SPORTSOUTH businesses and services, constitutes demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services under UDRP ¶ 4(c)(i).
Respondent also has rights and legitimate interests in the Disputed Domain Name under UDRP ¶ 4(c)(ii), which provides that “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,” based on the Respondent’s long-term prior ownership and use of its SPORTSOUTH Mark and SPORTSOUTH Business Names.
Respondent further claims a legitimate interest in the Disputed Domain Name based on the USPTO’s finding that “SPORT SOUTH” is descriptive of its sports broadcasting services.
Moreover, to the extent the Respondent is successful in establishing acquired distinctiveness to “SPORT SOUTH” in its pending applications before the USPTO, such a finding would constitute a recognition by the USPTO that the wording “SPORT SOUTH” was a source indicator associated with Respondent’s sports broadcasting services.
Regardless of the USPTO’s decision, the Respondent contends that it has established a legitimate interest to the Disputed Domain Name based on the actions of the USPTO.
The Panel considers that the Respondent’s holding of the Disputed Domain Name for potential future use, in line with its sports broadcasting services, constitutes demonstrable preparations within the understanding of ¶ 4(a)(ii) of the Policy.
Respondent has rights or legitimate interests in the domain name, and the Respondent’s use is protected by the Policy.
In view of the Panel’s conclusion that Respondent has rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), it follows, and the Panel so concludes, that Respondent did not register or use the disputed domain name in bad faith pursuant to ¶ 4(a)(iii) of the Policy.
