In a decision highlighting the subtleties of trademark law and claimed “parody” websites, Will Applebee, a lawyer-turned-sports writer, has successfully defended his sports humor website, NOTSportsCenter.com, against ESPN’s recent efforts to seize its domain name to protect its flagship brand.
ESPN’s SportsCenter is a popular daily sports news television program that offers breaking news, highlights, and in-depth analysis and commentary on all things sports. It has also been known to employ elements of humor, especially in its advertisements.
NOTSportsCenter.com is a website that offers humorous sports news content. The website’s self-described mission is to report on sports news and make people laugh at the same time by mocking it, “the way SportsCenter used to.” Although the website is somewhat outdated, with articles such as “Top 10 funniest sports screw-ups from 2014” featured at the very top of the main page, Applebee posts frequently on his various NOTSportsCenter social media accounts, including the @NOTSportsCenter Twitter account that has grown to nearly 500,000 followers since he launched it in 2011.
ESPN initially demanded, in April 2016, that Applebee withdraw a trademark application for NotSportsCenter. Despite Applebee’s compliance in December 2016, in June of this year ESPN filed a complaint under the Uniform Domain Name Dispute Resolution Policy (“UDRP”), requesting an arbitration tribunal to transfer of the NOTSportsCenter.com domain name to ESPN based on the alleged existence of each of the three elements set forth in Paragraph 4(a) of the UDRP, which are: (1) the domain name is identical or confusingly similar to a trademark in which the complainant has rights; (2) the registrant of the domain name has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.
The three-arbitrator panel was not persuaded. It decided, in a terse written opinion, that ownership of the disputed domain name should remain in Applebee’s hands – a result that likely came as a surprise to ESPN given the frequency with which domain names that fully incorporate federally registered trademarks are transferred to a mark’s rightful owner.
The panel’s discussion (available in full here) focused exclusively on the third element of the UDRP – namely, whether Applebee’s registration and use of NOTSportsCenter.com was done in bad faith. The panel concluded that it was not. Although Applebee was undeniably aware of the SportsCenter mark prior to adopting the name NOTSportsCenter, the panel found no other indicators of bad faith. For instance, there was no evidence that Applebee registered the domain name in order to sell it or to prevent ESPN from using it in a corresponding domain name, or that Applebee had engaged in a pattern of similar conduct in connection with other domain names.
Moreover, in the panel’s view, Applebee’s use of the SportsCenter mark could not be considered a bad-faith attempt to disrupt ESPN’s business because, according to the panel, the website “offers parody material regarding sports” and “displays satirical sports news content.” In general, use of a trademark may be permissible if the use is purely for parodic purposes. As the Fourth Circuit Court of Appeals has noted, to warrant the special treatment accorded to parodies, the challenged use must “convey two simultaneous – and contradictory – messages: that it is the original, but also that it is not the original and is instead a parody.” In the context of domain name disputes, the domain name itself, without reference to the content of the website, must convey both of these separate messages.
Contrary to this standard, the panel emphasized the purportedly parodic nature of the material displayed on the website, but did not even mention that the domain name itself adds the word “NOT,” which Applebee claimed to have intentionally selected to clearly indicate the parody. Moreover, the website’s content seems to be poking fun at sports news in general, as opposed to ESPN or SportsCenter specifically, which ordinarily is considered general satire and defeats a defense of parody, which is target-specific. Also atypical was the panel’s analysis of the supposed parody under the “bad faith” element as opposed to the second prong of the UDRP – a registrant’s legitimate interest in registering and using the domain name.
This case is a reminder that UDRP arbitral panels – just like judges – can be unpredictable, and that a brand owner is not always entitled to a domain name containing a trademark. In particular, while the use of a federally registered trademark in full (even alongside generic words) in a domain name is ordinarily sufficient to establish confusing similarity, and is often considered indicative of bad faith, it is not dispositive on either element and does not represent an automatic win for a trademark owner in a UDRP proceeding. This case is also a reminder of how important it is to give due consideration to the second element of Paragraph 4(a) of the UDRP, especially when commentary, criticism, parody, or even fan sites are involved. Sometimes in light of these various considerations, it may make sense not to pursue legal or administrative action even if it seems at first blush like the case is a slam dunk, or, if pursuing a claim where there’s a possible defense, spend time on a game plan that will lead to a winning shot.