GoBlue.com: UDRP against Mark Cuban’s company won by Complainant

The University of Michigan filed a UDRP against Mark Cuban‘s domain name, GoBlue.com, which was registered in 1996.

Mark Cuban acquired the domain in October 2022, aiming to pull a prank on the day of the relevant football game between Indiana’s and Michigan’s football teams. Mark Cuban is an alumnus of Indiana University and a fan of its sports programs.

The domain forwards to the Indiana merchandise store at indiana.nil.store.

In the UDRP the Complainant argued that the domain infringes on their marks “M GO BLUE” and the sign “GO BLUE” which have common law rights to dating back 60 years.

The three member panel at the Forum (NAF) delivered a decision favoring the Complainant:

“The Disputed Domain Name, targeting Complainant’s trademarks, is still registered by Respondent and still resolves to a website featuring competing goods. The joke therefore has a tendency to disrupt Complainant’s business and prevent the latter from reflecting its trademark in the Disputed Domain Name.”

Final decision: Go Blue! This must have been an expensive prank by Mark Cuban.

The Regents of The University of Michigan v. Jason Ferrantello

Claim Number: FA2211002019913

PARTIES

Complainant is The Regents of The University of Michigan (“Complainant”), represented by Paul R. Fransway of DICKINSON WRIGHT PLLC, Michigan, USA. Respondent is Jason Ferrantello (“Respondent”), represented by Darin M. Klemchuk of Klemchuk LLP, Texas, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is goblue.com, (“Disputed Domain Name”) registered with GoDaddy.com, LLC.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Mrs. Nathalie Dreyfus, Mr. Clive Elliott, Mr. Nicholas Smith, Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 11, 2022; Forum received payment on November 11, 2022.

On November 14, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the goblue.com domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On November 18, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@goblue.com. Also on November 18, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on December 8, 2022.

On December 13, 2022, Complainant submitted supplemental observations further to Respondent’s observations, to which Respondent replied on December 22, 2022.

On December 15, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, Forum appointed Mrs. Nathalie Dreyfus, Mr. Clive Elliott, Mr. Nicholas Smith as Panelists.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the Disputed Domain Name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant argues that the Disputed Domain Name is identical and/or confusingly similar to its registered US trademark “M GO BLUE” and to the sign “GO BLUE”, for which Complainant claims Common Law rights. Complainant notably contends that it has been using said trademarks for more than 60 years.

Complainant claims that the Disputed Domain Name was acquired only recently, in 2022, by Respondent, an employee of Mr. Mark Cuban who acquired the Disputed Domain Name in parallel of a football game opposing football teams from the colleges of Michigan and Indiana. Such acquisition was advertised by the latter on a video published on Twitter, before the game was played, which shows Respondent obviously targeted Complainant when he registered the Disputed Domain Name.

Complainant claims that Respondent has no right nor legitimate interest in respect to the Disputed Domain Name as it was not authorized by Complainant to register nor use said domain name. Besides, both parties (the ‘Parties”) are not affiliated.

Complainant argues that the Disputed Domain Name resolves to the website www.indiana.nil.store (also referred to as “the NIL store”) which offers for sale Indiana University’s promotional goods; whereas Internet users would expect to land on Complainant’s store, with goods promoting its university. Complainant adds that the Indiana store is operated with Campus Ink, one of Mr. Cuban’s companies. Therefore, Complainant states that Respondent does not use the Disputed Domain Name for a bona fide offering of goods and services.

Complainant finally contends that Respondent registered the Disputed Domain Name to disrupt its business and attract Internet users to its website, for commercial gain. Complainant alleges that Respondent acknowledged he was aware of Complainant’s trademarks at the time of registration of the Disputed Domain Name and claims that the latter tried to take advantage of the goodwill associated with said trademarks by configuring a competing website selling the university of Indiana University’s athletic apparel for sale on or by reference to the Disputed Domain Name.

B. Respondent

Respondent claims that Mr. Mark Cuban is an alumnus of Indiana University and a fan of its sports programs.

On October 8, 2022 – the day of the relevant football game between Indiana’s and Michigan’s football teams – he announced on Twitter that he had purchased the Disputed Domain Name, in a video that shows that such purchase corresponds to a joke.

Respondent submits that the redirection of the Disputed Domain Name to the online NIL Store is a “friendly trolling”, referring to the rivalry between both teams. Mr. Cuban says in the video that:

“You guys know I am a huge IU fan; an IU grad. Go IU. Beat Michigan. But I’m also a business guy. And I got the chance to buy this website GoBlue.Com. And I just had to do things for Michigan fans that I didn’t think I’d ever do, but to all you Michigan fans – and even you IU fans – check out GoBlue.Com. I think you’re going to love what you see”.

Respondent acknowledges that he registered the Disputed Domain Name precisely because of Complainant’s trademarks but that such registration and use are made in fair use, protected under free speech by the First Amendment of the United States Constitution, as he intended to create a parody.

Respondent notably relies on the WIPO’s Arbitration and Mediation Center case Qwest Communications International, Inc. v. DefaultData.com a/k/a Brian Wick (Case No. D2003-0002, March 2, 2003), in which the expert stated that “the threshold question when fair use is raised in defense of parody is whether a parodic character may reasonably be perceived” quoting the US Supreme Court decision in Campbell v. Acuff-Rose 6 Music, Inc., 510 U.S. 569, 582-583 (1994).

Here Respondent argues that “the domain name is the trademark” and that the whole joke relies on this element. Respondent also underlines that Complainant does not own a trademark registration for “GO BLUE” and that there are over 18 registered trademarks and 3 applications that incorporate the words “GO” and “BLUE” before the USPTO.

Respondent claims that humor is considered a form of art protected by the First Amendment of the US Constitution. The latter relies on the case Hustler Magazine v. Falwell 485 U.S. 46 (1988) where the depiction, through a cartoon, of a Reverend as a drunken, incestuous son was considered free speech. Similarly, Respondent indicates that his joke should be considered free speech and therefore, should be considered fair use under the Policy. Respondent further indicates that the Disputed Domain Name’s website does not create confusion. Respondent mentions that his joke constitutes “appropriation” art because he appropriated Complainant’s property to put it into his artwork.

Respondent argues that Mr. Cuban is known for practical jokes and that no Michigan fan would ever be confused into believing that Complainant is the source of, sponsor, or endorser of Indiana University gear.

Finally, Respondent argues that this administrative proceeding constitutes reverse domain name hijacking and underlines that Complainant did not address the fact that Respondent intended to joke when registering and using the Disputed Domain Name. Respondent also indicates that Complainant should bring an action before a US court as it is a matter pertaining to First Amendment rights.

B. Additional Submissions

Complainant

On December 13, 2022, Complainant filed additional submissions.

Complainant claims that Respondent’s use of the Disputed Domain Name cannot be considered a parody as a parody should convey two contradictory messages: that it is the original and that it is not the original but a parody (Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 4th Cir. 2001).

Complainant claims that Respondent only uses Complainant’s prior trademarks to redirect Internet users to a commercial website that contains no mention of Complainant nor its trademarks (whether criticism, praise or commentary, not even a disclaimer). Therefore, despite the Twitter video of Mr. Cuban, such use cannot be considered a parody.

Complainant comments the abovementioned Qwest case raised by Respondent and notes that in that decision, it was ordered that the domain names be transferred to the complainant notably because their use did not credibly focus on the complainant.

Complainant deems that Mr. Cuban’s comments in the Twitter video are “ambiguous at best” and that some people may not perceive the joke, especially considering that his commentary is not posted on the litigious website. Complainant mentions that people from all over the world are likely to access the website, for reasons unrelated to football and are all the more likely to be confused.

Complainant also mentions Baylor University v. JS, Claim No. FA0801001141911 (Forum, March 14, 2008) in which the respondent registered domain names reproducing a university’s name and notably claimed he had them redirect jokingly to a competing website. The transfer of the domain names was ordered.

Respondent

On December 22, 2022, Respondent filed an additional submission in response to Complainant’s.

Respondent, commenting on the Quest and Baylor University cases, indicates that Mr. Cuban’s parody “involved substantial publicity on television and social media”. As regards the fact that a parody must convey two simultaneous contradictory messages, Respondent states that besides the above publicity, there is a clear contrast between Complainant’s colors and Indiana University’s colors, therefore allowing to dispel any confusion, especially considering that the litigious website does not sell any Michigan related products.

Respondent claims that, contrary to the Baylor University case, there is no evidence that he intended to harass or disrupt Complainant’s business. It was just “friendly trolling”. Respondent further argues he is not a competitor of Complainant. In the Baylor University case, the respondent had registered numerous domain names which is not the case here.

Respondent contends that Complainant operates its business through the domain name mgoblue.com and therefore, the registration of the Disputed Domain Name did not prevent Complainant from reflecting its registered trademarks in a .COM domain name.

Respondent also relies on the case ESPN Inc. v. Will Applebee (Claim No. FA1706001734753, Forum, April 5, 2004) relating to the domain name notsportscenter.com imitating ESPN’s trademark “SPORTSCENTER”. The domain name was used for sports commentary and the complaint was rejected.

FINDINGS

Complainant represents the interests of Michigan State University, founded in 1817. The distinctive colors used by Complainant are maize and blue. Since around 1975, Complainant has been using the slogan “GO BLUE” for its goods and services, notably for entertainment and athletic apparel.

Furthermore, Complainant owns trademark rights in the “M GO BLUE” sign in the United States, resulting from the following trademarks:

– US “M GO BLUE” trademark No. 2781716 dated December 13, 2002, duly renewed and covering services in class 41, in relation to collegiate athletic games.

– US “M GO BLUE” trademark No. 1307632 dated September 28, 1982, duly renewed for goods in classes 6, 16 and 24.

Besides, Complainant owns the domain name mgoblue.com registered on December 28, 1996; used to promote Complainant’s football team activity and to offer goods such as athletic apparel for sale.

Respondent is an employee of Mr. Mark Cuban. Mr. Cuban is portrayed, in the Response filed by Respondent, as “a proud alumnus of Indiana University” and “an avid fan of its sports programs”.

The Disputed Domain Name was registered on June 30, 1996 but was later purchased by Respondent on or around October 8, 2022, before a football game between Complainant’s team (Michigan) and Indiana University’s team. Before the game occurred, Fox College Football’s Twitter uploaded a video of Mr. Cuban discussing the purchase of the Disputed Domain Name, the latter inviting all Michigan and Indiana fans to take a look at it. The Disputed Domain Name resolves to the website http://indiana.nil.store featuring apparel of the university of Indiana, offered for sale.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent 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.

Preliminary Issue: Supplemental Filing

As noted above, on December 13, 2022, Complainant submitted supplemental observations further to Respondent’s observations. Respondent filed a reply to said observations on December 22, 2022.

Point 12 of the UDRP Policy Rules state that: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”.

In the present case, the Panel considers that all relevant elements of the case were known by both Parties before the introduction of the complaint (except for the underlying registrant as revealed by the registrar and reflected in the updated complaint).

However, due to the particularities of the case, the Panel accepts both Parties’ supplemental filings for the purpose of rendering a fair decision, with complete knowledge of the Parties’ contentions.

Identical and/or Confusingly Similar

Complainant owns valid trademark rights on the “M GO BLUE” sign in the United States, resulting from the following trademarks:

– US “M GO BLUE” trademark No. 2781716 dated December 13, 2002, duly renewed and covering services in class 41, in relation to collegiate athletic games.

– US “M GO BLUE” trademark No. 1307632 dated September 28, 1982, duly renewed for goods in classes 6, 16 and 24.

Complainant has also provided evidence in order to demonstrate the extensive use, both in nature and duration, of the “GO BLUE” sign in relation to goods and services linked to its football team, in reference to the maize and blue colors of the Michigan University. In respect to the present case, it is not necessary to assess whether or not Complainant has proven Common Law rights for the “GO BLUE” sign. Indeed, the Disputed Domain Name is virtually identical to Complainant’s abovementioned “M GO BLUE” trademarks as it only lacks the letter “M”.

Besides, it is well established that a gTLD, such as .com is generally irrelevant in the assessment of the likelihood of confusion (See for instance Snap Inc. v. Soloman Korban, Claim Number: FA2211002020962, Forum, December 22, 2022).

Respondent’s argument that there are over 18 registered trademarks and 3 applications that incorporate the words “GO” and “BLUE” before the USPTO is irrelevant as it does not prevent a finding of confusing similarity between the prior trademarks and the Disputed Domain Name: the test under the first condition is that of a strict comparison between the signs. Furthermore, the Respondent has clearly admitted that the Disputed Domain Name was aimed at targeting Complainant’s trademarks.

As a result, the Panel considers that the Disputed Domain Name is confusingly similar to Complainant’s trademarks and that Complainant has satisfied Policy 4(a)(i).

Rights or Legitimate Interests

According to the Policy, in order to prove rights or legitimate interest in a domain name, Respondent can seek to rely on one of the following elements:

(i) before any notice of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent has been commonly known by the domain name, even if they have acquired no trademark or service mark rights; or

(iii) 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.

From the facts provided and submissions made to the Panel, it seems that on or around October 8, 2022, Respondent acquired the Disputed Domain Name. The Respondent is an employee of business entrepreneur Mark Cuban. Mr. Cuban stated in a Twitter video, that he purchased the Disputed Domain Name before a game between Michigan and Indiana colleges. It appears that he also advertised his purchase on TV.

Respondent claims that the Disputed Domain Name was acquired as a joke to tease Complainant and its team’s supporters. The Panel accepts that the Disputed Domain Name may have been purchased as a joke at Complainant’s expense. However, the record shows that Respondent did not intend to solely make an inoffensive joke on a game night. Indeed, for two months since, the Disputed Domain Name has been resolving to the website https://indiana.nil.store/ which offers for sale a competing university’s goods. Although Respondent himself, the registrant, may not be a competitor of Complainant, Indiana University is a competitor, as it offers similar education services to Complainant and has a football team that competes against Complainant’s. Moreover, Complainant alleges that Mr. Cuban has economic interests in the NIL store, which Respondent does not refute.

Respondent argues that Internet users will obviously understand that such redirection is a joke. The Panel acknowledges that certain people familiar with college sports in the United States, who have seen Mr. Cuban’s advertising of the purchase, may understand that this is a joke. However, other Internet users are likely to be confused as to the relationships between Complainant and Respondent and may believe that the goods offered for sale on the Disputed Domain Name are endorsed by Complainant. The Panel infers that Respondent knows or ought to know that there is per se no frontier on the Internet and that anyone can access the website configured on the Disputed Domain Name. Such commercial use is not legitimate under the Policy (See for instance Regents of the University of Michigan v. Prince Peter / vibranturre, Claim Number: FA1204001440244, Forum, May 21, 2012).

The Panel disagrees with Respondent that the redirection to the NIL Store constitutes “appropriation art” considering that there is no artwork but only a redirection to a commercial website.

The explanation for the alleged joke was not available as a warning on the Disputed Domain Name’s website nor was there any disclaimer. The Panel is of the view that if it was solely a joke, Respondent would have proposed to transfer the Disputed Domain Name to Complainant and/or at least would have removed the contentious content on the website that resolves to the Disputed Domain Name.

The Panel considers that Respondent’s comparison with the case Hustler Magazine v. Falwell 485 U.S. 46 (1988) is not applicable here. Respondent has not made any comment on Complainant nor its team, nor has he created any work of art. He merely set up a redirection on the Disputed Domain Name to a competitor’s website. This type of use is usually not considered fair. (See for instance the Monsieur le Président de la République française, Emmanuel Macron contre Samy Thellier, Case No. D2022-0036, WIPO Arbitration and Mediation Center, May 18, 2022 where the domain name at stake resolved to an adversary’s website).

Therefore, the Panel finds that Complainant has satisfied Policy 4(a)(ii).

Registration and Use in Bad Faith

Complainant owns valid trademark rights for “M GO BLUE”, that predate the registration and purchase of the Disputed Domain Name by Respondent. Respondent was aware of Complainant’s trademark rights when he registered the Disputed Domain Name and admits he was targeting such trademarks when registering the Disputed Domain Name.

He argues, however, that the registration of the Disputed Domain Name was solely a joke, protected as free speech under the First Amendment of the United States Constitution.

Yet, for the reasons set out above, it seems clear that Respondent did not intend to make an inoffensive joke. The following circumstances are relevant here: Respondent still owns the Disputed Domain Name, more than two months after the football game in issue and the Disputed Domain Name disrupts or may disrupt Complainant’s business.

Respondent registered the Disputed Domain Name precisely because it was connected to Complainant’s trademarks and in order to configure a redirection to the online store of a competitor. Besides, Respondent argues that the Disputed Domain Name is costly. Therefore, it seems strange that the latter has chosen such domain name for a simple joke.

Therefore, the Panel considers that the Disputed Domain Name was registered in bad faith.

Respondent claims that the redirection to the NIL store was solely a joke, related to a friendly rivalry between the Parties. Yet, Respondent states that Mr. Cuban is a wealthy business entrepreneur. As such, he was certainly aware that Internet users are constituted by a myriad of different people, not all familiar with US college sports. Hence, at least part of Internet users looking for Complainant’s products and landing on the Disputed Domain Name could be confused as to the origin of the goods on the Disputed Domain Name. Indeed, foreign Internet users looking to purchase college sports products, without supporting a specific team, could believe there is a connection between Complainant and the website in question.

Such use is usually not considered good faith use (See Baylor University v. JS, Claim Number FA0801001141911, Forum, March 14, 2008: “Respondent’s playful joke of redirecting visitors to each of the five sites to the website of Texas A&M shows that Respondent is contemptuous of these proceedings, and views them merely as an opportunity to harass Baylor University for his own amusement”).

Besides, the Panel disagrees with Respondent that the registration and use of the Disputed Domain Name in this manner correspond to free speech, protected by the First Amendment of the United States. No commentary is made on the website resolving to the Disputed Domain Name as regards Complainant, no artwork has been created (contrary to Respondent’s arguments). The Twitter video, essential to understanding the alleged joke, is separated from the content presented on the Disputed Domain Name.

The Disputed Domain Name, targeting Complainant’s trademarks, is still registered by Respondent and still resolves to a website featuring competing goods. The joke therefore has a tendency to disrupt Complainant’s business and prevent the latter from reflecting its trademark in the Disputed Domain Name.

Respondent’s comparison with the ESPN Inc. v. Will Applebee case (Claim No. FA1706001734753, Forum, April 5, 2004) is not relevant here as in that case the domain name at stake featured the word “not” before ESPN’s trademark (notsportscenter.com). The respondent had more than 700 000 followers on social media, the complainant apparently acknowledged several times the legitimate use of the domain name and most of all, the site displayed original parody content.

Consequently, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

Reverse Domain Name Hijacking

Respondent claims that the complaint constitutes Reverse Domain Name Hijacking notably in view of the expensive price paid for the Disputed Domain Name. It is not said whether Complainant was approached or approached the last owner of the Disputed Domain Name to purchase it nor how much Respondent actually paid to secure the Disputed Domain Name. However, the fact that it might be costly is a further element showing that Respondent certainly did not intend to simply make a joke on game night.

Besides, the fact that Complainant waited until 2022 to initiate these proceedings whereas the Disputed Domain Name was registered in 1996 is not surprising. The proceedings were initiated because of the purchase of the Disputed Domain Name by Respondent, or on around October 8, 2022 and because of the redirection set up on the Disputed Domain Name.

Finally, considering that Complainant is successful in these proceedings, there is per se no possible Reverse Domain Name Hijacking action involved.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is ordered that the goblue.com domain name be TRANSFERRED from Respondent to Complainant.

Nathalie Dreyfus,

Chair Panelist

Nicholas Smith

Panelist

Clive Elliott

Panelist

Dated: December 29, 2022

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