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Fan websites’ use of trademarks in their domain names: fair or foul
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Fan websites’ use of trademarks in their domain names.
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Since 1846, when the first baseball game was played in Hoboken, New Jersey, (1) baseball has occupied a central place in the hearts and minds of millions of Americans. With the birth of this truly American sport, dubbed by many as the American “national pastime,” (2) came the existence of its admirers, who are referred to as fans. While baseball and its fans have had a somewhat tumultuous relationship over the years, which include a World Series corrupted by gamblers in 1919 (3) and eight work stoppages, (4) the sport and its fans always seem to gravitate back towards each other in this symbiotic relationship. Baseball needs its fans, and its fans need baseball.
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The advent of the Internet fueled baseball fans’ cravings
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In the summer of 2002, amid discussions of another possible player strike and suspicion of possible steroid use by its players, (6) Major League Baseball Properties (“MLBP”) sent cease-and-desist letters to Hoch (7) and Frasch, (8) informing them that their websites violated applicable Internet and trademark law.
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This Note demonstrates how MLBP’s claims against the operators of fan-based non-profit websites lack a legal basis and discusses the danger that situations such as this pose to the future of the Internet. Part I of this Note shows how the Internet has affected baseball and its fans. Part II discusses Internet trademark law. Part III looks at Frasch’s and Hoch’s fan-based, non-profit websites devoted to their favorite baseball teams and MLBP’s claims against them. Part IV analyzes MLBP’s claims and shows why Frasch and Hoch would prevail against such claims. Part V argues that Frasch’s and Hoch’s use of MLBP’s trademarks constituted a fair use. Part VI discusses the disparity in bargaining positions that existed between MLBP and the website operators. This Note concludes by discussing how situations such as this will affect the future of speech on the Internet.
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II. THE INTERNET AND ITS EFFECT ON BASEBALL
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According to Howard Goldberg, Senior Vice President of Scarborough Sports Marketing, “the Internet has enabled sports fans to have more frequent and in-depth information about their favorite teams and leagues.” (9) While all sports fans can use the Internet to further their interest in sports, (10) Patrick Keane, an analyst at the Jupiter Communications Internet research company, feels that more than any other sport, “baseball takes the most advantage of the [Internet’s] strengths.” (11) Keane’s assertion is based primarily on baseball fans and what he believes is their “obsessive quest for statistics and [their] desire to constantly compare players’ performances.” (12)
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Because of this wealth of statistics and the demonstrated fan demand for access, baseball is the major American sport best suited for the Internet, and baseball fans certainly take advantage of this fact. Howard Goldberg believes that the Internet allows baseball fans to “make their passion for the game a part of their daily lives” and “keep up with their favorite [Major League Baseball] teams.” (13) Moreover, in 1988, before most Americans had even heard of the Interact, baseball fans were using the Internet and e-mail to chat about baseball and to archive baseball information. (14) According to a Nielsen//NetRatings study of Internet usage in 1998, eighty-nine percent of baseball fans said that they had used the Internet, compared to eighty-six percent of all respondents. (15)
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In 1998, Major League Baseball maintained one website for the entire League
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Everything changed in January 2000 when the owners of all thirty Major League Baseball franchises unanimously voted to transfer ownership and control of their team’s websites to the League “in an effort to be more economical.” (21) Under the arrangement, the owners of all thirty Major League Baseball teams agreed to finance and own a newly created company, M.L.B. Advanced Media, which would have the responsibility of running the League’s official website, “www.mlb.com.” (22) Robert A. Bowman, whom Major League Baseball chose to run M.L.B. Advanced Media, stressed that to attract new users, he and his 120 employees needed to ensure that the League’s new website contained team webpages that were “hard-hitting” and maintained their “local” feel. (23) While most of the content on the new official site was still free, some content was accessible only for a fee, including radio and video broadcasts of games. (24)
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While Major League Baseball’s Internet presence has grown every year, so has the League’s international standing. In 2000, foreign-born players comprised twenty-four percent of the opening day rosters of Major League Baseball teams, with 198 players representing sixteen different countries as well as Puerto Rico. (25) Due in large part to these international players, Major League Baseball has fans spanning the globe. (26) These international fans have enhanced baseball’s presence on the Internet because they use the Internet to follow their countrymen who are playing baseball in the United States. (27)
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After adding Japanese stars Ichiro Suzuki and Kazuhiro Sazaki to their roster, the Seattle Mariners’ website became more popular than any other Major League Baseball team’s website because of the added Internet traffic provided by Japanese fans. (28) The Mariners even created a Japanese version of their website. (29) In fact, the Seattle Mariners were so popular in Japan that Internet giant Amazon.com launched a Seattle Mariners store on its Japanese website. (30) When the league enabled fans to cast online votes for its annual All-Star game, (31) Ichiro Suzuki received more All-Star-votes than any other Major League player in 2001 and 2002. (32) Many of Ichiro’s votes were cast across the Pacific Ocean by Japanese fans voting online. (33)
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Problems associated with the game even failed to diminish Major League Baseball’s standing on the Internet. In 2002, T.S. Kelly, director and principal analyst at NetRatings, Inc., believed that despite all of the challenges facing Major League Baseball, including the possibilities of a work stoppage, team contraction, and players’ steroid use, “Major League Baseball’s online presence ha[d] never been stronger.” (34)
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With baseball fans in the United States as well as all over the world using the Internet to follow Major League Baseball and enhance their interest in the game, baseball was conquering the Internet. M.L.B. Advanced Media, which owned the League’s official website, “www.mlb.com,” saw its revenues grow from $36 million in 2001 to $91 million in 2003. (35) In fact, in March 2004, M.L.B. Advanced Media was valued at more than $1 billion and rumors circulated that the League was considering selling off a piece of the company in a public offering. (36) Given the economics involved with its Internet business, one can begin to see why the League might not hesitate to go to any means necessary to protect its valuable Internet property.
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III. TRADEMARKS, THE INTERNET, AND THE LAW
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To access a baseball website, or any website for that matter, one must know that site’s Internet address
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Problems arise when people register the well-known names and marks of others as domain names before the rightful owners of these names and marks are able to do so. This conduct is called cybersquatting, and it blocks the actual owner of the trademark from registering it as an Internet domain name. (42) Dennis Toeppen became the first well-known cybersquatter when he personally registered the domain names “deltaairlines.com,” “eddiebauer.com,” and “neiman-marcus.com,” among others. (43)
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A website that uses another company’s mark in its domain name may lead people who visit the site to mistakenly believe that an affiliation exists between the website and the owner of the mark. (44) Thus, the operator or registrant of the website is “trading upon the goodwill and fame associated with the [marks] for [his] own profit.” (45) Furthermore, a cybersquatter will often use a person’s or company’s mark in a domain name solely because the cybersquatter hopes that he will subsequently be able to sell that domain name back to the rightful owner of the mark for a hefty profit. (46)
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Existing statutes like the Lanham Act (47) and the Federal Trademark Dilution Act (48) (“FTDA”) failed to adequately address the use of trademarks on the Internet and cybersquatting. (49) Consequently, there were cries for new legislation in this area. (50) In 1997, the Clinton Administration strongly believed that governance of the Internet should be consistent worldwide. (51) Therefore, in 1998, the U.S. Department of Commerce went to the World Intellectual Property Organization (“WIPO”) to develop a uniform trademark and cybersquatting resolution. (52) WIPO created a nonprofit international corporation called the Internet Corporation for Assigned Names and Numbers (“ICANN”). (53) ICANN is comprised of Internet stakeholders from the private sector and “exists to develop and administer international policy for domain names.” (54)
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ICANN created the Uniform Domain Name Dispute Resolution Policy (“UDRP”) to address disputes over the ownership of domain names and to provide an alternative to litigation, which was often expensive and sluggish. (55) The ICANN UDRP governs all domain names that end in “.com,” “.org,” and “.net.” (56) Thus, all websites whose domain names end in these suffixes must be operated in accordance with the UDRP’s provisions. If there is a dispute concerning a domain name, according to Paragraph 4(a) of the UDRP, the Complainant has the burden of proving to a WIPO panel that:
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(i) The domain name at issue “is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
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(ii) the Respondent has “no rights or legitimate interests in respect of the domain name
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(iii) the domain name at issue “has been registered and is being used in bad faith.” (57)
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Paragraph 4(b) of the UDRP provides that the following circumstances, if found by the Panel, (58) shall be evidence of bad faith: (59)
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(i) [C]ircumstances indicating that [the Respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name
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(ii) [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct
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(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor
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(iv) that by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location. (60)
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Soon after the adoption of the UDRP, Congress stepped in amid all the calls for reform regarding cybersquatting and the use of trademarks on the Internet, and enacted the Anticybersquatting Consumer Protection Act (“ACPA”). (61) The ACPA amended the Lanham Act by providing that a person can be found liable as a cybersquatter “if that person has a bad faith intent to profit from another’s mark, or the personal name of another that is used as a mark, and registers or uses a domain name that is identical or confusingly similar to that mark.” (62) Therefore, to be liable under the UDRP or the ACPA, bad faith must be present. (63) The ACPA provides courts with a detailed list of factors to consider when looking for the presence of bad faith. (64) These factors include:
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(I) The trademark or other intellectual property rights of the person, if any, in the domain name
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(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person
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(III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services
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(IV) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name
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(V) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site
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(VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct
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(VII) the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct
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(VIII) the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties
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(IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous. (65)
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When determining whether a mark is distinctive and famous, courts consider the degree of the mark’s distinctiveness, the duration and extent of the mark’s private and public use by its owner, the mark’s degree of recognition, as well as other factors. (66)
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Under the ACPA, bad faith intent “shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.” (67) This provision is the ACPA’s safe harbor provision and courts can apply it when imposing liability upon the registrant seems unfair or unjust. Congress created the safe harbor to ensure that innocent domain holders would not be punished under the ACPA if bad faith were not present. (68)
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The ACPA does not require that a mark be famous to be protected from dilution
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The ACPA also simplified the process of obtaining jurisdiction for trademark holders, (72) conferring upon courts the power to transfer, forfeit, or cancel the registrant’s domain name, (73) and permitting trademark holders to receive statutory damages in connection with any domain name with which bad faith is associated. (74)
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IV. METSONLINE.NET AND BRONX-BOMBERS.COM
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In 1996, a fourteen-year-old New York Mets fan named Bryan Hoch created “www.MetsOnline.net,” a website that featured “original editorial and multimedia content devoted” entirely to the Mets. (75) Hoch actually created his Mets website before the Mets’ own official site even existed. (76) From 1996 to 2002, with the help of a group of unpaid writers, the coverage of the Mets on “www.MetsOnline.net” was more in-depth than that featured on the Mets’ official website, “www.Mets.com.” (77) Hoch’s Mets site featured articles, archives, analysis, fan discussion forums, as well as links to other related sites. (78) Hoch’s site averaged between 10,000 and 15,000 visitors per day, and was featured in The Wall Street Journal, New York Newsday, MSNBC, ESPN’s website and The New York Daily News, among other sources. (79) Hoch even wrote for the Mets’ official team website, “www.Mets.com,” before Major League Baseball took control of the official websites of all thirty teams. (80)
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Hoch’s site contained a small disclaimer indicating that the website had no affiliation with the New York Mets or with Major League Baseball. (81) While Hoch’s site sold merchandise at one point, Hoch maintains that such sales were minimal, totaling only sixteen dollars. (82) Notably, the source of twelve of the sixteen dollars garnered from merchandise sales was Hoch’s girlfriend. (83) According to Hoch, he earned no profits from his website. (84) However, he indicated that had he made any profits in 2002, he would have donated them to charities related to the tragic events of September 11, 2001. (85)
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On July 25, 2002, Hoch, who was then a college student at the State University of New York at Rockland, received an e-mail from MLBP. (86) The e-mail was a cease-and-desist order that directed Hoch to “deactivate MetsOnline.net and transfer its domain name, as well as all information regarding its operations, to MLBP effective 5 p.m. July 30.” (87) In its e-mail, MLBP explained that Hoch’s “registration of www.MetsOnline.net violate[d] the [ACPA],” because:
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* Hoch ha[d] “no trademark right in the Mets’ Marks
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* Hoch’s “intent in registering www.metsonline.net was to divert consumers from the online location of the Mets to [his] own
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* Hoch ha[d] “intentionally failed to maintain accurate contact information for www.metsonline.net
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* Given the “famous nature of the Mets’ Marks, it [was] clear that [Hoch] registered and used www.metsonline.net with a bad faith intent to profit.” (91)
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Consequently, MLBP concluded that Hoch’s “registration and use of www.metsonline.net establishe[d] a violation of the ACPA and other federal and state laws.” (92) MLBP demanded that Hoch:
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(1) Cease and desist from all use of the domain name www.metsonline.net and transfer that domain name to MLBP
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(2) Cease and desist from all unlawful use of the Mets’ Marks and any other indicia that creates the impression that there is an association between [his] company and the Mets and/or MLBP and confirm to MLBP, in a writing signed by an officer of [his] company, that it has done so
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(3) Cease and desist from the sale of unanthorized merchandise featuring the Mets’ Marks and fully disclose in writing the extent of [his] company’s sales of this infringing merchandise, including the number of goods sold and the prices at which they were sold, the remaining inventory of the infringing merchandise, as well as the names, addresses and telephone numbers of the supplier(s) of such merchandise. (93)
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MLBP also explained that it intended to collect “appropriate compensation for [Hoch’s] company’s unauthorized use of the Mets’ Marks.” (94)
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In 2000, Jim Frasch began operating his own fan website dedicated to the New York Yankees. (95) By 2002, Frasch’s site was receiving over one million visits per month. (96) While Frasch sold advertising on his site, “www.Bronx-Bombers.com,” he indicated that the advertising revenue he received usually was not even sufficient to cover the site’s operating costs. (97) Frasch also noted that he would donate any profits he earned to Yankees Pitcher Mike Mussina’s charity. (98)
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On August 5, 2002, MLBP contacted Frasch (99) and informed him that his use of MLBP’s “Bronx Bombers” mark in his site’s domain name was in violation of the ICANN UDRP (100) and the ACPA. (101) MLBP also stated that Frasch’s “www.BronxBombers.com” domain name was “virtually identical” to MLBP’s Bronx Bombers marks and that this similarity would likely cause someone visiting Frasch’s website “to believe that it [was] authorized or sponsored by MLBP or the [Yankees baseball] club.” (102) MLBP then noted that Frasch violated the club’s trademark rights through his use of the “Bronx Bombers” marks on his website, and explained that this use “suggest[ed] a false affiliation, association and/or sponsorship between the Club and [Frasch’s website]” that could mislead consumers. (103) MLBP also stated that Frasch’s “conduct deceiv[ed] the public and [was] in violation of both federal and state unfair competition laws.” (104) MLBP further asserted that the “name of [Frasch’s] company, Bronx Bombers Online LLC, violate[d] federal and state trademark law because the BRONX BOMBER term in that name infringe[d] and dilute[d] the … mark.” (105)
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After noting that it “value[d] [Frasch’s] First Amendment rights and appreciate[d] [his] support of the Club,” (106) MLBP demanded that Frasch:
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(1) [C]ease and desist all use of the domain name www.bronxbombers.com,
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(2) cease use of the BRONX BOMBERS mark in [his] corporate name,
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(3) transfer the domain name to the Club, the owner of the BRONX BOMBERS [m]arks,
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(4) cease all unlawful use and/or display of the BRONX BOMBERS [m]arks on the Site, and
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(5) provide an accounting of all revenue obtained in connection with the operation of the web site at www.bronxbombers, com. (107)
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In 2000, when the Mets and Yankees squared off in an all-New York World Series, ESPN the Magazine selected Hoch’s and Frasch’s sites as the best Mets and Yankees fan websites, respectively. (108) Yet less than two years later, MLBP asked these sites to change or cease to exist. (109)
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Hoch, who did not wish to surrender his perceived freedom of content, shut down his site, and was referred to as “the Patrick Henry of cyberspace fan sites.” (110) He maintained that his popular website would still exist were it not for the letter he received from MLBP, (111) and thanked the Mets organization for the “support” they had always given him. (112) It did not take Hoch long to find work covering the Mets on the Internet after he shut down his site
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Frasch also felt strongly that he had used his domain name for a “legitimate purpose.” (114) However, without spending thousands of dollars on legal fees to find out if he was correct, he could not challenge MLBP’s claims. Frasch and MLBP reached a “compromise,” (115) wherein Frasch had to surrender the “www.Bronx-Bombers.com” domain name to MLBP but was allowed to maintain his site at another domain name
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V. ANALYSIS OF MLBP’S CLAIMS
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In its letter to Frasch, MLBP cited to NCAA v. Halpern (118) as support for its contention that Frasch’s “use of the BRONX BOMBERS Marks in [his] domain name violate[d] the ICANN [UDRP].” (119) However, upon a reading of NCAA, it is clear that NCAA is not binding over the dispute between Frasch and MLBP. In NCAA, the Respondents used the NCAA’s marks in ten different domain names, which, when accessed, directed consumers to purely commercial websites that sold tickets to college basketball games. (120) The Respondents openly sought to make a profit from these websites using the NCAA’s marks. (121) In total, the Respondents owned approximately one thousand different domain names that directed consumers to their ticket-selling website. (122) These facts alone show bad faith.
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Hoch and Frasch have nothing in common with the Respondents in NCAA regarding the issue of bad faith. Hoch and Frasch each owned just one domain name at issue. More importantly, their websites were not commercial in nature, and neither Hoch nor Frasch profited from his website.
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In its letter to Frasch, MLBP also cited to Caterpillar Inc. v. Telescan Techs., L.L.C. (123) to show that Frasch had violated the ACPA. However, like NCAA, when one looks at the facts in Caterpillar, it is clear that this case does not control the dispute involving Frasch, Hoch, and MLBP.
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In Caterpillar, the Defendant TeleScan had “registered over [fifty] domain names that contain[ed] famous marks of various companies like John Deere, General Motors, Toyota, and Peterbilt.” (124) Six of these domain names contained the marks of Plaintiff Caterpillar, a heavy equipment company. (125) The court found that by using these disputed domain names, Defendant TeleScan had unfairly traded upon Caterpillar’s goodwill to promote its own services and divert Internet traffic and potential customers to its own commercial website. (126)
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The court found that Defendant TeleScan was guilty of bad faith under the ACPA. (127) Furthermore, as if the fact that TeleScan “had registered multiple domain names which contain[ed] famous marks” was not dispositive enough with respect to the issue of bad faith, the court also noted that at the time when the Caterpillar case was decided “at least one [other] court had already found [that] TeleScan’s registration of domain names containing famous marks violated [the] Lanham Act.” (128)
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It is quite obvious that Hoch and Frasch have nothing in common with the Defendant in Caterpillar. TeleScan was guilty of “warehousing” domain names that contained famous marks and used these domain names to direct consumers to its own commercial site, diverting these consumers from Caterpillar’s own site. (129) Hoch and Frasch each only operated one website at issue here and did not do so for the purpose of making profits. (130) Through their websites, they took no business away from MLBP or either club.
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Hoch and Frasch are simply baseball fans. A fan is defined as an “enthusiastic follower or admirer.” (131) A club is defined as “a group of persons associated for a common purpose” or “the meeting place of such a group.” (132) A fan club would therefore be considered to be a group of fans that associate together because of and in furtherance of their common enthusiasm for the object that they admire. The Internet is a logical locale for fans and fan clubs because it is a medium in which people who do not know each other or live near each other can interact based on the strong feelings that they share for something. In this case, the object of their interest is a particular baseball team.
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Hoch’s and Frasch’s websites should be categorized as fan or fan club websites because of the manner in which they are devoted to the Mets and Yankees. These websites were places where Mets and Yankees fans could go to get information about their favorite teams as well as interact with fellow fans. Because the websites at issue are analogous to fan club websites, cases dealing with fans and fan clubs websites should be controlling here.
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One WIPO case involving a fan club website is Estate of Shakur v. Barranco. (133) In Shakur, the Respondent owned the domain names “www.tupac.com” and “www.tupac.net” and used them as the location for a fan club website dedicated to the late hip-hop music artist Tupac Shakur. (134) According to the Respondent, the website was “a fan-based website” devoted to Shakur that “contain[ed] over 400 pages of information.” (135) The purpose of his website was to “provide news and information” regarding Shakur and his music. (136)
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Under the ICANN UDRP, the Complainant must prove that the Respondent has no rights or legitimate interests with respect to the domain name, and that the domain name has been registered in bad faith and is being used in bad faith. (137) In Shakur, the tribunal upheld the use of a domain name for fan club purposes because it found that the Respondent had a legitimate interest in the domain names and that bad faith was not present. (138) The fan website was free of charge for users, was not commercial in nature, did not misleadingly divert consumers, and did not tarnish the Claimant’s mark. (139) Furthermore, the tribunal noted that the Claimant’s position was totally incompatible with the premise of fan club websites:
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The position asserted by the Claimant, if accepted, would
effectively prohibit any fan club from being established on the
Internet if it mentioned in the site name an artist’s name, where
part or all of that name related to a registered mark or even
perhaps transgressed claims of common law rights in a name. (140)
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Another fan club website case, Nintendo of America Inc. v. Jones, (141) involved a fifteen-year-old boy named Alex Jones who had developed a non-commercial fan website dedicated to The Legend of Zelda video game. (142) Jones owned and used the domain name “www.legendofzelda.com” as the location for his website, explaining that he used “[t]he similar name” to “[maximize] the opportunity to contact other fans.” (143) The Panelist deciding the case categorized Jones’s use of the domain name as “noncommercial and good intentioned” (144) and opined that fan club websites create a “unique situation” for courts and adjudicators. (145) He noted that “[a] fan-club does not exist in a vacuum
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The Panelist in Nintendo based his decision that bad faith was nonexistent on several findings:
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* “The Respondent ha[d] made no effort to sell the subject domain name.” (148)
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* There [was] no evidence that the Respondent’s ownership of the domain name at issue prevented the Complainant from “reflecting [its] mark in a corresponding domain name.” (149)
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* “The evidence d[id] not support a finding that the Respondent [sought] to disrupt the business of the Complainant. In fact, the opposite appear[ed] to be true.” (150)
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* “The evidence [was] clear that the Respondent ha[d] not sought commercial gain.” (151)
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The decisions in Shakur and Nintendo clearly establish that bad faith does not exist in the context of fan-based, non-commercial websites under the ICANN UDRP. (152) If there is any doubt as to whether this proposition applies to Hoch’s and Frasch’s fan websites that are devoted to sports teams, one must look no further than JUVENTUS F. C. S.p.A. v. Claudio Sacco Interactive. (153) Juventus “is one of the greatest professional [soccer] teams in the world” and is “well known among [soccer] fans” worldwide. (154) Respondent Sacco, himself a Juventus fan, registered the domain name “www.juventus.net” for “the exclusive purposes of supporting the activity of Juventus fan clubs.” (155)
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Sacco stated that he never had any intention of selling the domain name for consideration and that he had not used his fan website commercially or to make a profit, (156) Furthermore, Sacco had not registered a large number of domain names with the purpose of preventing the owners of other marks from registering domain names that reflected these marks. (157) Moreover, Juventus already owned and operated its official website at “www.juventus.com.” (158)
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In JUVENTUS, the Panelist ruled that the Respondent was not guilty of bad faith. (159) Hoch’s and Frasch’s conduct regarding their fan websites is indistinguishable from that of the Respondent Sacco in JUVENTUS. Yet, in its cease and desist letters, MLBP accused Hoch (160) and Frasch (161) of acting in bad faith. However, after one looks at the WIPO decisions in Shakur, Nintendo, and JUVENTUS, it becomes clear that the opposite is true: Hoch and Frasch were not guilty of bad faith and would have prevailed had their cases gone before WIPO panels.
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According to the ICANN UDRP, bad faith can also exist if the respondent “ha[s] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.” (162) When consumers are trying to find the official websites for “particular companies or brand names,” (163) but do not know the correct domain name to enter into their web browser, they will usually “type in the company name or logo with the suffix .com.” (164) Therefore, “companies strongly prefer that their domain name be comprised of the company or brand trademark and the suffix .com.” (165)
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MLBP owns the domain names “www.Mets.com” and “www.Yankees.com,” which represent the web addresses for the Mets’ and Yankees’ respective official websites. (166) Such was also the case in JUVENTUS, where Juventus F.C. S.p.A. owned the desirable “.com” domain name and used it as the web address of its official website, (167) Because of this fact, Juventus F.C. S.p.A. was unable to convince the WIPO panelist that it was unable to reflect its mark in a corresponding domain name on account of the Respondent. (168) Thus, by virtue of its ownership of the “www.Mets.com” and “www.Yankees.com” domain names, MLBP cannot prove such interference.
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Moreover, the fact that the ACPA and the ICANN UDRP both have a safe harbor exception for what could be termed “good faith” is dispositive, as well. (169) Under paragraph 4(c)(iii) of the ICANN UDRP, a respondent can demonstrate “rights or legitimate interests to the domain name” if the respondent is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (170) According to the ACPA safe harbor exception, “[b]ad faith intent [under the ACPA] … shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was … otherwise lawful.” (171)
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Until they were contacted by MLBP, nothing indicates that Hoch and Frasch believed or had reason to believe that they were doing anything that ran afoul of the law. In fact, Frasch and Hoch have always believed and maintained that they fairly and legally used their domain names and websites by providing free online resources for Yankees and Mets fans. They also did so without trying to make a profit through the use of MLBP’s marks. Thus, Frasch and Hoch fit into the good faith exception of the ACPA, and the requisite bad faith is non-existent.
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In its letter to Frasch, MLBP also claimed that Frasch diluted its marks. (172) However, in a recent dilution case before the United States Supreme Court, the Court held that the FTDA requires proof of actual dilution. (173) This does not require plaintiffs to show “consequences of dilution,” such as lost profits, to bring a successful FTDA claim. (174) However, a plaintiff must in fact present evidence that the defendant has actually lessened the capacity of the plaintiff’s mark to identify and distinguish the plaintiff’s goods or services. (175) There is no evidence that Frasch’s website actually diluted MLBP’s New York Yankees marks, and any assertion to the contrary seems quite implausible.
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Justice Oliver Wendell Holmes stated that when a “mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth.” (176) For example, a baseball fan might refer to “the professional National League baseball team from New York,” but it is far simpler and more likely to be understood if the fan refers to the team as the New York Mets. (177) This descriptive and nominative use of a trademark is called a fair use. (178) The law permits fair use of a trademark because it neither implicates the source-identifying purpose of the mark nor implies sponsorship or endorsement of the product. (179) The ACPA makes clear that it does not trump a fair use defense, because under its provisions bad faith shall not be found where a registrant reasonably believed that her use of the domain name was a fair use. (180)
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Frasch and Hoch clearly used MLBP’s marks in a descriptive and nominative fashion. Their websites were fan club websites. As such, their domain names used MLBP’s marks only to identify which particular teams were the subjects of their sites. Thus, Frasch’s and Hoch’s uses of the marks were fair uses.
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The Internet is seemingly an ideal locale for fan club websites. However, fan websites will have a difficult time attracting like-minded visitors if these websites cannot identify themselves by using the very marks that fans hold so dear. These marks are the backbones of fan clubs, and they are vital to the existence of fan and fan club websites. While people could refer to the New York Mets fan website as the fan website for the professional National League baseball team from New York, it is simply contrary to human nature to do so. (181)
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Taking on non-profit, fan-based websites could have been a public relations nightmare for the League. However, while the move certainly received some criticism, such displeasure was greatly overshadowed by that which was directed at the seemingly inevitable players’ strike in the year 2002. (182) Yet, at the last possible second, the players and owners reached an agreement and the games continued. (183) The same cannot be said for Bryan Hoch’s popular Mets website. (184) Hoch, who was dead set against making any sort of compromise with MLBP, simply shut his site down. (185)
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Hoch’s and Frasch’s websites contained critical and informative speech dedicated to baseball While baseball speech might not be classic political discourse, it is certainly not obscene, (186) nor is it defamatory. (187) The speech at issue here is important to many baseball fans because it expresses unique and critical viewpoints related to their interest in baseball.
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In its letter to Frasch, MLBP explained that it valued his First Amendment rights
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Under the First Amendment, (189) the government cannot silence certain speakers because it disapproves of the ideas expressed. (190) A court order constitutes state action and is still subject to the constitutional limitations of the First Amendment, even if it is “issued at the request of a private party in a civil lawsuit.” (191) Furthermore, the First Amendment applies to speech on the Internet. (192) Thus, any court order issued against Frasch or Hoch at the request of MLBP might even have infringed their First Amendment rights.
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No court order was issued, however. In fact, despite a fair use of the marks and a lack of bad faith, Hoch’s and Frasch’s cases never even appeared before a court or a WIPO panel. This is due, in large part, to the great disparity in bargaining positions that existed between themselves and MLBP. Such a disparity is common in cases of this kind, where a single fan is pitted against an entire organization or corporation. In these situations, the fan knows that she cannot afford the pricey litigation required to challenge the large entity’s claims, and is very fearful of the damages that the large entity has allegedly suffered. Thus, the fan has little choice but to acquiesce to the demands of her opponent. This is where the essence of unequal bargaining comes into play, where one party has no choice but to accept the terms of the other party, even if the first party is right. (193)
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In JUVENTUS, the Respondent diligently conveyed to the Panelist the unequal bargaining positions between the litigants, and noted that the “[p]arties are certainly not competing in the same economic field, nor are they operating in similar sectors.” (194) Jim Frasch was in very a similar situation
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The Internet is here and it is here to stay. Baseball will also remain a prominent fixture in American society and culture. Yet, in the eyes of the general public, Major League Baseball remained unscathed from its attack on fan websites. However, online fans like Frasch, Hoch, and the thousands of people who visited their websites have not forgotten this episode. (197) It will be interesting to see what happens the next time Major League Baseball throws a curveball to its online fans, and whether it affects the symbiotic relationship between baseball and its fans. Clearly, corporations, including professional sports leagues and teams, should seriously consider whether threatening litigation against their fans, admirers, and customers warrants the risk of alienating the very individuals whose support and enthusiasm these entities surely need to thrive. As for the Internet, it has been referred to as possibly the “greatest innovation in speech since the invention of the printing press.” (198) In 1997, Justice Stevens stated that “through the use of chat rooms, any person [with Internet access] can become a town crier with a voice that resonates farther than it could from any soapbox. Through the use of Web pages … the same individual can become a pamphleteer.” (199)
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Unfortunately, the Internet may not achieve its lofty potential. One of the Internet’s greatest strengths is that it currently operates as a setting for “haves,” those with financial wherewithal, as well as “have-nots,” those lacking such wherewithal. (200) However, the potentially valuable voice of the individual that Justice Stevens touted will be muted if the “haves” continue to threaten the online existence of good faith “have-nots,” as was the case here. If these threats continue, the voices of the “have-nots” may well go unheard, to the detriment of a free, open, and robust exchange of ideas and opinions in a democratic arena, so emblematic of American ideals. Such a result would be very disappointing, but may well become a reality if this foul play continues.
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(1.) See, e.g., The Baseball Page, Tracing the Origins of Baseball, at http:// www. thebaseballpage. com/ features/ 2001/ origins/ origins.htm (last visited Jan. 20, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(2.) See, e.g., Virginia Anderson, The National Pastime Has Finally Struck Out, ATLANTA JOURNAL-CONSTITUTION (Dec. 2, 2002), available at http://web.archive.org/web/20030112142002/ http://www.accessatlanta.com/ajc/op inion/1202/02special_anderson.html (last visited Feb. 3, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(3.) See, e.g., Bruce Lowitt, Black Sox Scandal: Chicago Throws 1919 World Series, ST. PETERSBURG TIMES (Dec. 22, 1999), available at http://www. sptimes. com/ News/ 122299/ Sports/Black_Sox_scandal_Ch.shtml (last visited Jan. 20, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(4.) Yahoo!, How Many Times Have Baseball Players Gone on Strike?, at http://ask.yahoo.com/ask/20020809.html (last visited Jan. 20, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(5.) Eric Adelson, The Pulse: Subway Series Sites, ESPN.COM (Oct. 19, 2000), available at http://espn.go.com/espninc/ magazine/columns/1019subwaysites/826777.html (last visited Feb. 3, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(6.) See T.S. Kelly, Paid Audio Adds Pop to MLB’s Lineup, NEILSEN//NETRATINGS NETREPORTER (Aug. 2, 2002), at http:// web. archive. org/ web/ 20021002073318/ http:// www. nielsennetratings. com/ newsletter/ newdesign/ analyst/ nr_analyst.htm (last visited Feb. 3, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(7.) See Bryan Hoch, MetsOnline.net Ordered to Cease & Desist, at http:// web. archive. org/ web/ 20020802224433/ www. metsonline. net/ metsonlineceaseanddesist.html (last visited Feb. 2, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(8.) See E-mail from Rosemary S. Tarlton, Morrison & Foerster LLP, on behalf of Major League Baseball Properties, to James Frasch [hereinafter “MLBP E-mail”] (Aug. 5, 2002) (on file with the Rutgers Computer and Technology Law Journal).
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(9.) Press Release, Scarborough Sports Marketing, Cleveland, Atlanta, Boston Lead the Nation with Highest Percent of Internet-Savvy Baseball Fans According to New Scarborough Sports Marketing Study (Apr. 4, 2001), at http:// www. scarborough. com/ scarb2002 /press/ pr_mlb_internetsavvy.htm (last visited Jan. 20, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(10.) Even high school athletics have an extensive Interact presence. See Selena Roberts, Web Reshapes the Pressures of High School, N.Y. TIMES, Dec. 22, 2002, at SP11.
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(11.) Sreenath Sreenivasan, Baseball and the Internet Are in the Same Ballpark, N.Y. TIMES CYBERTIMES (Mar. 30, 1998), available at http://sree.net/ stories/baseball.html (last visited Jan. 20, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(13.) Press Release, Scarborough Sports Marketing, supra note 9.
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(14.) See Greg Spira, The Internet Baseball Awards, SPORTSJONES (Aug. 24, 2001), at http://web.archive.org/web/20030216181658/ http:// sportsjones. com/ sj/57.shtml (last visited Feb. 2, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(15.) NIELSEN//NETRATINGS, Nielsen Media Research Strengthens Sports Research with Sports Quest(Sept. 22, 1998), at http:// www. nielsenmedia. com/ newsreleases/ 1998/ sportsquest.html (last visited Jan. 24, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(16.) See Sreenivasan, supra note 11.
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(20.) See Joe Salkowski, Pitch for Revenue Has Baseball Executing Squeeze Play, 23 L.A. BUS. J. 20 (Apr. 16, 2001), available at http:// www. findarticles. com/ cf_dls/m5072/ 16_23/ 73694669/ pl/ article.jhtml (last visited Feb. 2, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(21.) Tom Lowry, Take Me Online to the Ball Game, Bus. WK. (Apr. 9, 2001), available at http://www.businessweek.com/ magazine/content/01_15/b3727107.htm (last visited Feb. 2, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(22.) Richard Sandomir, Baseball May Offer Stake in Web Business, N.Y. TIMES, Mar. 23, 2004, at D4.
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(23.) Lowry, supra note 21.
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(24.) Sandomir, supra note 22.
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(25.) Jim Caple, Baseball Goes Global, SEATTLE POST-INTELLIGENCER (Mar. 30, 2001), available at http:// seattlepi. nwsource. com/ baseball/ bbinternational.shtml (last visited Feb. 2, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(26.) Gil Asakawa, The Boys of Summer … From Across the Pacific, NIKKEI VIEW, available at http:// nikkeiview. com/ archives01 /050801.htm (last visited Feb. 2, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(29.) Id. The Japanese version of the Mariners’ website features “‘all the news in Japanese on Ichiro, Kaz Sasaki and the Seattle Mariners,’ in that order.” Id.
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(30.) Lori Enos, Amazon Opens Seattle Mariners Store in Japan, ECOMMERCETIMES (Aug. 8, 2001), at http:// www. ecommercetimes. com/ perl/ story/12627.html (last visited Feb. 2, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(31.) John Gartner, Baseball Makes Pitch to Net Fans, WIRED.COM (May 9, 2000), at http:// www. wired. com/ news/ culture/ 0,1284,36219,00.html (last visited Feb. 2, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(32.) MAJOR LEAGUE BASEBALL, ALL-STAR GAME 2002 ROSTERS, at http:// www. mlb. com/ NASApp/ mlb /mlb/ events/ allstar2002 /mlb_allstar_roster_al.j sp# (last visited Feb. 2, 2004) (on file with the Rutgers Computer and Technology Law Journal)
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(33.) Enos, supra note 30
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(34.) Kelly, supra note 6.
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(35.) Sandomir, supra note 22.
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(37.) See Inset Sys., Inc. v. Instruction Set, Inc., 937 F. Supp. 161, 163 (D. Conn. 1996).
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(38.) Matthew Edward Searing, Note, What’s in a Domain Name?, 40 WASHBURN L.J. 110, 113 (2000) (citing Watts v. Network Solutions, Inc., 1999 WL 778589, at *1 (S.D. Ind. 1999)).
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(40.) See Mets.com, at http://www.mets.com (last visited Feb. 11, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(41.) See Gayle Weiswasser, Domain Names, the Internet, and Trademarks: Infringement in Cyberspace, 13 SANTA CLARA COMPUTER & HIGH TECH. L.J. 137, 146 (1997).
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(42.) Searing, supra note 38, at 117.
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(43.) See Ira S. Natheson, Comment, Showdown at the Domain Name Corral: Property Rights and Personal Jurisdiction Over Squatters, Poachers, and Other Parasites, 58 U. PITT L. REV. 911, 926 (1997).
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(44.) Caterpillar Inc. v. Telescan Techs., L.L.C., No. 00-1111, 2002 U.S. Dist. LEXIS 3477, at *8-*9 (C.D. Ill. Feb. 13, 2002).
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(46.) See, e.g., Panavision Int’l, L.P. v. Toeppen, 945 F. Supp. 1296, 1303 (C.D. Cal. 1996).
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(47.) 15 U.S.C. [section] 1127 (2000).
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(48.) Id. [section] 1125(c) (2000).
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(49.) See Searing, supra note 38, at 116-18.
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(50.) See Edward C. Anderson & Timothy S. Cole, The UDRP-A Model for Dispute Resolution in E-Commerce?, 6 J. SMALL & EMERGING BUS. L. 235, 245 (2002).
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(51.) Searing, supra note 38, at 131.
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(56.) See Anderson & Cole, supra note 50, at 246.
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(57.) INTERNET CORP. FOR ASSIGNED NAMES AND NUMBERS, UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY (Oct. 24,1999), at http://www.icann.org/udrp/udrp-policy-24oct99.htm (last visited Mar. 7, 2003) (on file with the Rutgers Computer and Technology Law Journal).
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(58.) According to the United States Court of Appeals for the Third Circuit, the UDRP was not meant to replace litigation, and “UDRP proceedings do not fall under the limited judicial review of arbitrators of the Federal Arbitration Act” (“FAA”). Dluhos v. Strasberg, No. 01-3713, 2003 WL 360964, at *5-*8 (3d Cir. 2003). As a result, when challenged in court, WIPO decisions are not entitled to the very high level of deference afforded by courts to FAA decisions. See id. at *7. The Anticybersquatting Consumer Protection Act (“ACPA”) “provide[s] registrants … with an affirmative cause of action to recover domain names lost in UDRP proceedings.” Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14, 27 (1st Cir. 2001).
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(59.) INTERNET CORP. FOR ASSIGNED NAMES AND NUMBERS, supra note 57.
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(61.) Searing, supra note 38, at 119. According to the United States Court of Appeals for the Third Circuit, WIPO decisions can be judicially reviewed because the ACPA “gives the registrant an explicit cause of action through which to redress the loss of a domain name under the UDRP.” Dluhos, 2003 WL 360964, at *8.
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(62.) Anderson & Cole, supra note 50, at 245 (citing 15 U.S.C. [section] 1125(d)(1)(C) (2000)
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(63.) See 15 U.S.C. [section] 1125(d)(1)(A)(i)
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(64.) See 15 U.S.C. [section] 1125(d)(1)(A)(i).
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(65.) Id. [section] 1125(d)(1)(B)(i)(1)-(IX).
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(66.) See id. [section] 1125(c)(1)(A)-(H).
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(67.) See id. [section] 1125(d)(1)(B)(ii).
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(68.) See H.R. REP. NO. 106-412, at 11 (1999).
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(69.) See 15 U.S.C. [section] 1125(d)(1)(B)(i).
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(70.) See H.R. REP. NO. 106-412, at 13 (1999).
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(72.) See 15 U.S.C. [section] 1125(d)(2)(A).
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(73.) See id. [section] 1125(d)(1)(C).
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(74.) See id. [section] 1117(d).
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(75.) Hoch, MetsOnline.net Ordered to Cease & Desist, supra note 7.
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(78.) Steve Zipay, Baseball.” Fan’s Site Is Foul Play, N.Y. NEWSDAY, July 31, 2002, at A2.
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(79.) See Hoch, MetsOnline.net Ordered to Cease & Desist, supra note 7.
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(80.) See Zipay, supra note 78.
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(83.) See Larry McShane, Baseball Cracks Down on Web Sites, PORTSMOUTH HERALD BUS. NEWS (Sept. 2, 2002), available at http:// www. seacoastonline. com/ 2002news/ 09022002/ biz_nati/ 22246.htm (last visited on Feb. 26, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(84.) See Zipay, supra note 78.
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(86.) Hoch, MetsOnline.net Ordered to Cease & Desist, supra note 7.
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(95.) See McShane, Baseball Cracks Down on Web Sites, supra note 83.
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(96.) See Eyewitness News, Yankees Fan Called ‘Out’ For Building Web Site With Trademarked Name, WABC N.Y. (Aug. 27, 2002), at http:// abclocal. go. com/ wabc/ news/ WABC_7side_082702website.html (last visited Feb. 3, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(97.) See McShane, Baseball Cracks Down on Web Sites, supra note 83.
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(98.) See Eyewitness News, supra note 96.
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(99.) MLBP E-mail, supra note 8.
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(100.) MLBP cited to NCAA v. Halpern, Case No. D2000-0700 (WIPO Dec. 10, 2000) (Plant, Arb.), available at http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0700.html (last visited Feb. 10, 2003) (on file with the Rutgers Computer and Technology Law Journal) (holding that registration and use of www.ncaatickets.org and www.finalfourtickets.com violated the ICANN UDRP) to show that Frasch was guilty of violating the ICANN UDRP. MLBP E-mail, supra note 8. However, this note will show that NCAA is not applicable to Frasch.
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(101.) MLBP cited to Caterpillar, Inc. v. Telesean Techs., L.L.C. 2002 U.S. Dist. LEXIS 3477 (C.D. Ill. Feb. 13, 2002) (holding that registration and use of www.caterpillarequipment.com violated the ACPA) to show that Frasch violated the ACPA. MLBP E-mail, supra note 8. However, this note will show that Caterpillar is not applicable to Frasch.
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(108.) See Adelson, supra note 5.
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(109.) See MLBP E-mail, supra note 8
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(110.) McShane, Baseball Cracks Down on Web Sites, supra note 83.
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(111.) See Larry McShane, Baseball’s Crackdown on Fan Web Sites Annoys, Amuses, YAHOO! SPORTS (Sept. 1, 2002), available at http://ca.sports.yahoo.com/020901/6/ookm.html (last visited Feb. 26, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(112.) Zipay, supra note 78. Hoch published the following note on his website before shutting it down completely:
In accordance with an order from Major League Baseball Properties,
MetsOnline.net has elected to cease publishing baseball-related
content on this domain name effective Tuesday, July 30th, 2002 at
5:00 p.m. Eastern time.
After giving the issue serious thought for several days, I have
decided not to return to publishing content via the format
previously seen on this site. MetsOnline.net had an excellent
six-year run as a popular information source for the New York Mets
and I do not feel it would be appropriate to tarnish that standing
with fans by producing an inferior product.
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Bryan Hoch, Attn. Mets Fan, at http:// www. metsonline. net (last visited Sept. 2, 2002) (on file with the Rutgers Computer and Technology Law Journal).
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(113.) Fox Sports, Story Search Results for Bryan Hoch, at http://www. foxsports. com/ named/ Search?contentTypeCode=1&Go.x=0& Go.y-0 & searchString=bryan+hoch&Go=Go (last visited Feb. 3, 2004) (on file with the Rutgers Computer and Technology Law Journal) (as of publication, Hoch was still a contributing writer at Fox Sports’s website).
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(114.) E-mail from Jim Frasch to Joshua I. Sherman [hereinafter “Frasch Email”] (Sept. 26, 2002) (on file with the Rutgers Computer and Technology Law Journal).
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(117.) See NYYFans.com, at http://www.nyyfans.com (last visited Feb. 4, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(118.) NCAA v. Halpern, Case No. D2000-0700 (WIPO Dec. 10, 2000) (Plant, Arb.), available at http:// arbiter. wipo. int/ domains/ decisions/ html/ 2000/ d2000-0700.html (last visited Feb. 10, 2003) (on file with the Rutgers Computer and Technology Law Journal).
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(119.) MLBP E-mail, supra note 7.
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(120.) See NCAA, No. D2000-0700. In NCAA, the Respondents sold tickets to many other sporting events as well. See id. In fact, they sold all of their tickets at prices well above the tickets’ face values. See id.
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(123.) Caterpillar Inc. v. Telescan Techs., L.L.C., No. 00-1111, 2002 U.S. Dist. LEXIS 3477 (C.D. Ill. Feb. 13, 2002).
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(128.) Id. at *12 (citing Paccar v. TeleScan, 115 F. Supp. 2d 772 (E.D. Mich. 2000)).
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(129.) See id. at *10-*15.
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(130.) See generally, supra Pt. III.
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(131.) MERRIAM-WEBSTER DICTIONARY 274 (5th paperback ed. 1997).
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(133.) Estate of Tupac Shakur v. R.J. Barranco, Case Nos. AF-0348(a)-(b) (WIPO Oct. 23, 2000) (Faulkner, Arb.) available at http://www.disputes.org/eresolution/decisions/0348.htm (last visited Feb. 4, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(137.) See id. Under the ICANN UDRP, the Complainant must also prove that the domain names at issue are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. See id. However, this requirement is seldom at issue in these fan club website situations.
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(141.) Nintendo of America, Inc. v. Alex Jones, Case No. D2000-0998, (WIPO. Nov. 17, 2000) Chiasson, Arb.), available at http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0998.html (last visited Feb. 3, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(147.) See id. Though the Panelist ruled in favor of the Respondent, he found that Jones’s use of the domain name was not “legitimate” because “[t]he Complainant ha[d] the right to decide how its mark would be used in promotion of its product.” Id. While the Panelist’s finding that the use was not “legitimate” was seemingly inconsistent with the reasoning of the tribunal in Shakur upon which the Nintendo Panelist relied, the finding did not affect the outcome of the Nintendo case because the Panelist failed to find bad faith present. See id.
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(153.) Juventus F.C. S.p.A. v. Clandio Sacco Interactive, Case No. D2001-0260, (WIPO Apr. 21, 2001) (Barbero, Arb.), available at http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0260.html (last visited Feb. 3, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(160.) Hoch, MetsOnline.net Ordered to Cease & Desist, supra note 7.
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(161.) MLBP E-mail, supra note 8.
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(162.) INTERNET CORP. FOR ASSIGNED NAMES AND NUMBERS, supra note 57.
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(163.) Sporty’s Farm L.L.C. v. Sportsman’s Mkt., Inc., 202 F.3d 489, 493 (2d Cir. 2000).
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(165.) Id. (citing H.R. REP. No. 106-412, at 5 (1999)).
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(166.) See Mets.com, supra note 40.
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(167.) JUVENTUS F.C. S.p.A. v. Claudio Sacco Interactive, Case No. D2001-0260, (WIPO April 21, 2001) (Barbero, Arb.), available at http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0260.html (last visited Feb. 3, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(169.) See 15 U.S.C. [section] 1125(d)(1)(B)(ii)
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(171.) 15 U.S.C. [section] 1125(d)(1)(B)(ii). The Fourth Circuit Court of Appeals’ decision in Virtual Works, Inc. v. Volkswagen of Am., Inc., which limited the breadth of ACPA’s safe harbor exception, has no effect on Frasch and Hoch. 238 F.3d 264, 270 (4th Cir. 2001).
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(172.) See MLBP E-mail, supra note 8.
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(173.) See Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433-34 (2003).
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(176.) Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924).
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(177.) See New Kids on the Block v. News America Publ’g, Inc., 971 F.2d 302, 306 (9th Cir. 1992).
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(179.) See id. at 306-08.
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(180.) See 15 U.S.C. [section] 1125(d)(1)(B)(ii).
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(181.) See New Kids on the Block, 971 F.2d at 306.
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(182.) See CNN, Josie Karp & Keith Olbermann, Sources: Baseball Strike Averted, CNN.COM (Aug. 30, 2002), at http://www.cnn.com/2002/US/08/30/baseball.talks (last visited Mar. 9, 2003) (on file with the Rutgers Computer and Technology Law Journal).
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(184.) See McShane, Baseball Cracks Down on Web Sites, supra note 83.
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(185.) See id. Frasch, who agreed to surrender his domain name to MLBP, moved his website to “www.NYYFans.com.” See Frasch E-mail, supra note 114. It is quite possible that MLBP would have allowed Hoch to continue his site at a domain name like “www.NYMFans.com.” MLBP seemingly prefers that baseball fan sites have domain names such as “www.NYYFans.com” and “www.NYMFans.com” because they use acronyms instead of actual team names or marks. Also, they are clearly designated as fan sites, thus avoiding confusion with official team websites. In Nintendo, the Panelist acknowledged that under the ICANN UDRP, a respondent with a non-profit fan website, in addition to lacking bad faith, might even have a legitimate interest in the domain name “where the use of identical words is coupled with the identification of a fan club.” See Case No. D2000-0998. Thus, fan sites like those operated by Hoch and Frasch would probably possess an even greater likelihood of success in court or before a WIPO panel against the owner of a mark if their domain names contained the word “fan.” However, this Note has shown that such fan websites would be successful before a court or a WIPO panel without having the word “fan” in their domain names.
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(186.) See, e.g., Roth v. United States, 354 U.S. 476, 487 (1957) (defining obscenity as “material which deals with sex in a manner appealing to prurient interest”).
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(187.) See, e.g., Beauharnais v. Illinois, 343 U.S. 250, 256 (1952) (characterizing defamatory language as “those words by which their very utterance inflict injury or tend to incite … breach of the peace”).
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(188.) See MLBP E-mail, supra note 8.
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(189.) U.S. CONST. amend. I.
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(190.) See, e.g., Cantwell v. Connecticut, 310 U.S. 296, 309-11 (1940).
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(191.) Doe v. 2TheMart.com, Inc., 140 F. Supp. 2d 1088, 1091-92 (W.D. Wash. 2001) (citing New York Times Co. v. Sullivan, 376 U.S. 254, 265 (1964)
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(192.) 2TheMart.com, Inc., 140 F. Supp. 2d at 1092.
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(193.) See Allright, Inc. v. Elledge, 515 S.W.2d 266, 267-68 (Tex. 1974).
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(194.) See JUVENTUS F.C. S.p.A. v. Claudio Sacco Interactive, Case No. D2001-0260, (WIPO Apr. 21, 2001) (Barbero, Arb.) , available at http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0260.html (last visited Feb. 3, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(195.) See MLBP E-mail, supra note 8.
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(196.) See Frasch E-mail, supra note 114.
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(197.) To read some of the e-mails that fans of MetsOnline.net sent to Hoch in reaction to MLBP’s Cease and Desist Order, see FANS REACT TO MLBP’s CEASE AND DESIST ORDER (Bryan Hoch, ed.) at http://web.archive.org/web/20020802222214/ www.metsonline.net/metsonlineceaseanddesist-letters.html (last visited Feb. 3, 2004) (on file with the Rutgers Computer and Technology Law Journal).
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(198.) Raymond Shih Ray Ku, Open Internet Access and Freedom of Speech: A First Amendment Catch-22, 75 TUL. L. REV. 87, 88 (2000).
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(199.) Reno v. ACLU, 521 U.S. 844, 870 (1997).
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(200.) The “have” and “have-not” dichotomy on the Internet extends to all circles, including institutions of higher learning. See Alayne E. Manas, Note, Harvard as a Model in Trademark and Domain Name Protection, 29 RUTGERS COMPUTER & TECH. L.J. 475, 502 (2003).
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Joshua I. Sherman, J.D. Candidate, May 2004, Rutgers University School of Law–Newark
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