Want to stay current on e–commerce law? Sign up for Email Newsletter.
Zuffa Taps Out Bad Faith Registrant - ultimatefightingchampionships.ca
Zuffa, LLC (“Zuffa”), the parent company behind the mixed martial arts phenomenon “Ultimate Fighting Championship”, or more commonly referred to as the “UFC”, was successful in a recent domain name dispute against a Canadian registrant (Zuffa, LLC v. David Bruce) for the domain name ultimatefightingchampionships.ca.
Zuffa registered the trade-mark ULTIMATE FIGHTING CHAMPIONSHIP in Canada in 2005 with corresponding use in association with its services dating back as early as 1993. On the other hand, the registrant, David Bruce registered the subject domain name in February 2008 but his website remained “under construction” throughout the relevant time periods.
Before filing its complaint, Zuffa corresponded with the individual Bruce, proposing a settlement of $2,500 for the subject domain in addition to tickets to an upcoming UFC event. In his response, Bruce stated that his expenses were $2,600 and he had hoped to make a profit. In addition, he stated that he had registered seven other domains using the root ULTIMATE FIGHTING CHAMPIONSHIP mark and was hoping for a “bulk offer” for all of the domains.
Since Zuffa met the Canadian presence requirements in addition to clearly establishing rights in the subject mark before the registration of the domain name, the Canadian Internet Registration Authority panellist readily reached a determination of confusion as between the marks. Moving on to the other grounds, the panellist was directed to the exhibited parties’ correspondence and surmised that the registrant’s admission that the registration was made in order to make a profit was in fact “bad faith”.
Lastly, the panellist concluded that that the registrant did not demonstrate a “legitimate interest” to the mark, as he was aware of Zuffa and its interest and did not display any content on the corresponding website.
As a result of the foregoing, Zuffa’s complaint was successful and the domain name was ordered transferred to Zuffa.
For additional information, visit:
http://tinyurl.com/UFC-url
For a copy of the decision, visit:
http://www.cira.ca/assets/Documents/Legal/Dispute/2011/00163-ultimatefightingchampionships.ca.pdf