It was held in the case of ESPN Inc. v. Domain Admin 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.
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.
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.