P a g e | 1 You can’t put a limit on anything. The more you dream, the farther you get. -Michael Phelps P a g e | 2 TEAM PLAWYERED Editorial Board Gaurav Misra , Publishing Editor , Plawyered He is currently pursuing B.A. LL.B. (Hons.) from Chanakya National Law University, Patna. A voracious reader and an ardent Arsenal supporter, Plawyered is his way of bringing his love for law and sports on one single platform. Tejaswini Ranjan, Managing Editor, Plawyered She is currently pursuing B.A. LL.B. from Chanakya National Law University, Patna. She is a sports enthusiast and a big fan of cricket. It is her love for sports that made her come up with this portal. Apart from this, she also holds the experience of working with several legal portals and research journals. Content Editors Vishakha Srivastava is currently pursuing B.A. L.L.B. (Hons.) from Chanakya National Law University, Patna. She is an avid reader and has a special corner for fiction. She is also a Student Editor at CNLU Law Journal. P a g e | 3 Ashutosh Kashyap is currently pursuing B.A. LL.B.(Hons.) from Chanakya National Law University, Patna. He is a keen reader and an enthusiast orator. His love for poems can be reflected through his blog. *The views expressed in the articles are solely the views of the respective authors. **The copyright of the magazine vests with www.plawyered.com . All communications are to be made at [email protected]. R.I.P all those who died in the plane crash in Columbia. Stay strong , Chapecoense. P a g e | 4 #1 CASE LAWS : CYBERSQUATTING IN SPORTS TEJASWINI RANJAN Identical or Confusingly Similar Mark: 1. PGA TOUR, Inc. v. Eka To establish that the domain name at Paramartha1 issue was identical or confusingly similar to PGA‟s trademarks, PGA One of the most recent UDRP relied on its ownership of U.S. decisions in the sports world involved trademark registrations for WORLD a complaint filed by PGA TOUR, Inc. GOLF TOUR and similar marks (“PGA”) against the individual Eka covering golf and entertainment Paramartha of Denpasar, Indonesia related services. PGA argued that its (“Respondent”) relating to registration registrations served as prima facie and use of the domain name <world- evidence of ownership of the golf-tour.net>. As most know, PGA trademark WORLD GOLF TOUR, organizes and televises professional which was incorporated in its entirety golf tournaments. The Respondent in the <world-golf-tour.net> domain. registered and used the domain in PGA also argued that based its connection with an informational ownership of various WORLD GOLF- website to display golf-related articles, and WORLD-formative trademarks product reviews, and links. that it owned a family of “WORLD PGA filed a complaint with WIPO GOLF” marks “synonymous with its objecting to Respondent‟s registration golfing contests.” and use of the <world-golf-tour.net> The WIPO Panel (“Panel”) found that domain on the following grounds: PGA had provided sufficient evidence to demonstrate trademark rights in WORLD GOLF TOUR and a family of 1 PGA TOUR, Inc. v. Eka Paramartha, Case No. D2012-1904 “World Golf” marks in the U.S. and P a g e | 5 that the <world-golf-tour.net> domain [PGA].” Respondent focused on the was an exact reproduction of PGA‟s fact that the website was non-profit trademarks - with the only difference and that there were no book or product being that the domain was hyphenated sales conducted through the site and and followed by a generic top-level that the “website [was] not a priority domain (.net). These differences were for [him] because there was no traffic not enough to distinguish it from coming to this website.” PGA‟s trademarks. As a result, the The Panel found that although third Panel held that the domain parties have a right to register and use incorporated an identical or domains incorporating commonly used confusingly similar mark. descriptive phrases, this is true “only if No Rights or Legitimate the domain name [is] registered Interests: With regard to the second because of its attraction as a prong of the analysis, the Panel descriptive phrase comprising analyzed the information provided by dictionary words, and not because of Respondent as to why he registered the its value as a trademark and that domain to determine whether he had website is then used to post links that any rights or legitimate interests in the are relevant only to the common domain. Although Respondent failed meaning of the phrase comprising to file a formal response to PGA‟s dictionary words.” In this case, the complaint, he sent two emails stating Panel found that although the words that he was not a “golf tour” company, “world,” “golf,” and “tour” are but was only using the <world-golf- descriptive, the fact that PGA tour.net> domain for the “purpose of established a family of marks indicates provid[ing] information such as news that the “amalgamation of these three and tutorials to play golf.” Respondent words has trademark value” for PGA. also argued that he obtained the Respondent‟s use of the domain to domain “through research in the display problematic content, such as Google keywords research tool. and photographic images taken at PGA at the time of [registering] this domain tournament events, as well as golf- [he] did not get a warning or ban from related articles and references to PGA‟s P a g e | 6 World Golf Tour, supported PGA‟s Panel also discounted Respondent‟s claim that Respondent was not using claim that he was making a non- the domain in its primary descriptive commercial use of the domain because sense, but rather in a manner that was he was not actively selling products or intended to trade off the goodwill services. The evidence indicated that associated with PGA‟s trademarks. As the Respondent was trying to generate a result, Respondent failed to profit passively based on click-through demonstrate any legitimate interests in revenues for traffic diverted to the site, his registration and use of the which supported a finding of bad faith. domain2. Because all factors weighed in favor of Registered and Used in Bad PGA, the Panel found for PGA and Faith: In determining whether the ordered Respondent to transfer the domain was registered and used in bad domain name. faith, the Panel focused on 2. National Football League v. Respondent‟s admission that the EE Nation3 domain was no longer a priority based on the lack of traffic coming to the The NFL, which aggressively protects website. The Panel found that this its SUPER BOWL trademark, filed a admission supported the contention complaint against EE Nation alleging that Respondent was “only interested that its registration and use of the in the „traffic‟” to the website, which domain <superbowlconcierge.com> “reinforce[d] the perception of an without the NFL‟s authorization or apparent lack of any good faith consent violated its trademark rights. attempt to ascertain whether or not the The NFL relied on the following Respondent was registering and using evidence in support of its claim. someone else‟s trademark,” which Identical or Confusingly Similar supported a finding of bad faith. The Name: Like the PGA, the NFL relied on federal registrations for SUPER 2 Domain Dynasty: The Ongoing Battle Over BOWL and highly similar marks to Presence on the World Wide Web, February 8, 2013, Lewis ROCA, available at http://www.lrrc.com/domain-dynasty-the-ongoing- 3 National Football League v. EE Nation, battle-over-presence-on-the-world-wide-web-02- Case No. D2011-1228 08-2013 P a g e | 7 establish rights in the SUPER BOWL Although Respondent failed to file a trademark. It also presented evidence formal response to the complaint, it of extensive advertising and sent an e-mail requesting guidance on unsolicited media coverage of the how it could modify the domain so as SUPER BOWL mark to demonstrate to not violate the NFL‟s trademark that it has come to be recognized and rights.4 Respondent also stated that relied upon by the public as referring the information provided through the to the NFL and its championship website was not intended to generate football game. The Panel found that profit, but rather was purely based on the evidence submitted, the informational and not intended to NFL had established rights in SUPER “harm anyone” - arguments similar to BOWL, and that Respondent‟s domain those raised in the PGA case. The incorporated SUPER BOWL in its Panel discounted these arguments and entirety, with the only difference the found that Respondent failed to addition of the generic of descriptive present any evidence or arguments as word “concierge,” which was not to why it has a right or legitimate enough to differentiate it from the interest in using the NFL‟s trademark. Thus, the domain <superbowlconcierge.com> domain was identical or confusingly similar to name. Moreover, the fact that the NFL‟s trademark. Respondent was trying to figure out a way to use the domain so as to not No Rights or Legitimate pose a problem for the NFL did not Interests: As to whether Respondent negate the Panel‟s finding that had any rights or legitimate interests Respondent had no rights or interests in the domain, the NFL presented in the domain. evidence that Respondent registered the domain decades after it had Registered and Used in Bad established rights in the SUPER BOWL Faith: To establish bad faith, the NFL trademark, and that the NFL had not authorized any use by Respondent of 4Domain Dynasty: The Ongoing Battle Over Presence on the World Wide Web, February 8, the SUPER BOWL mark in the domain 2013, Lewis ROCA, available at http://www.lrrc.com/domain-dynasty-the-ongoing- name or in any other manner.