Decisión del Panel Administrativo nº D2016-1455 of WIPO Arbitration and Mediation Center, October 21, 2016 (case Green Bay Packers, Inc. v. Moniker Privacy Services / Montgomery McMahon)
| Resolution Date | October 21, 2016 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Complaint denied |
| Dominio | Generic Domains |
Complainant is Green Bay Packers, Inc. of Green Bay, Wisconsin, United States of America (“United States”), represented by Quarles & Brady LLP, United States.
Respondent is Moniker Privacy Services of Fort Lauderdale, Florida, United States / Montgomery McMahon of Chatsworth, United States, represented by Lauson & Tarver LLP, United States.
The disputed domain name [totalpackers.com] (the “Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2016. On July 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 20, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 21, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 26, 2016.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2016. Further to Respondent’s request and Complainant’s agreement, the Response due date was extended until September 7, 2016. The Response was filed with the Center September 7, 2016.
Complainant filed an unsolicited Supplemental Filing on September 15, 2016. Respondent filed an unsolicited Supplemental Filing in response on September 19, 2016.
The Center appointed Christopher S. Gibson, Matthew S. Harris and W. Scott Blackmer as panelists in this matter on September 29, 2016. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Center has already notified the parties that under the Rules no express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental Filings.
Here, the Panel has considered the reasons provided by Complainant in support of its request to file a Supplemental Filing, as well as Respondent’s opposition to that request. Complainant has stated that, among other things, Respondent made certain misstatements in the Response, raised new arguments concerning laches, and made changes to his website after Complainant filed the Complaint. The Panel in its discretion decides that this is an appropriate case in which to admit and consider the Parties’ Supplemental Filings insofar as they provide new information or arguments (e.g., such as Complainant’s response to Respondent’s arguments on laches and references to changes to Respondent’s disclaimer after the Complaint was filed) that could not have addressed in the parties’ initial submissions.
Complainant fields a professional American football team, the Green Bay Packers (the “Packers”), which competes in the National Football League (“NFL”). Complainant’s team is one of the oldest teams in the NFL, having won 13 league championships, more than any other NFL team. The Packers are featured on national television throughout the pre-season, the regular season, and frequently in the post-season. Complainant engages in widespread marketing campaigns to continue to maintain and grow the name and brand for Green Bay Packers.
Complainant is the owner of the PACKERS trademark and several other PACKERS-formative marks, including: (i) PACKERS, registration no. 1100375, registered on August 22, 1978, with first use in commerce dating from January 1921; and (ii) GREEN BAY PACKERS, registration no. 1810704, registered on December 14, 1993, with first use in commerce dating from September 1963. The PACKERS mark is well-known and has developed strong reputation and goodwill among Packers’ fans and the general population in the United States, where both parties are located. Complainant operates its official website for the Packers using the domain name [packers.com].
The Domain Name was registered by Respondent on April 1, 2008. Respondent uses the Domain Name 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.
Complainant’s legal representative first contacted Respondent on April 24, 2014.
The Panel considers it appropriate, before turning to the merits of this dispute, to assess and determine the parties’ arguments concerning 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 per cent 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...
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