Sports stadiums score in UDRP decisions

Two Uniform Domain Name Dispute Resolution Policy (UDRP) decisions involving sports stadium names have ended in success for the US baseball and football teams involved.

In the first case, World Intellectual Property Organization panellist Joan Clark transferred the domain name 'PNCPark.com' to the complainant PNC Financial Services Group, which is one of the largest national financial services companies in the United States. In 1998 PNC entered into an alliance with the Pittsburgh Pirates baseball team, in which it acquired the naming rights to the Pirates' new ballpark. PNC has filed several applications to register the trademark PNC PARK since 1998 and first used the mark in March 2001. But in May 2002 'pncpark.com' was registered by Azra Khan, a resident of Pakistan, who used the domain name to redirect internet users to internet gambling sites and advertisements. Khan did not file a response to the complaint.

Clark held that the widely-used and well-known character of the PNC mark, together with the unusual combination of letters, created a presumption of bad-faith registration and use. She also concluded that (i) any offer of goods or services under the domain name did not constitute bona fide use under the UDRP, and (ii) the registrant was exploiting the famous mark for commercial gain.

The second decision involved the transfer of the domain name 'ralphwilsonstadium.com' to the Buffalo Bills football team, which first used the mark RALPH WILSON STADIUM in December 1998 and registered the service mark in December 2000. Although the respondent, Official Merchandise, registered the domain name in 1999, prior to the team's registration of the service mark, National Arbitration Forum panellist Tyrus R Atkinson held that the football team had acquired common law rights in the stadium name following its first use in 1998. Atkinson concluded that Official Merchandise, which did not file a response, had no legitimate interest in the domain name and stated that the passive holding of a domain name for three years "permits an inference of registration and use in bad faith."

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff LLP, Washington DC