IssaquahFC.com engaged two soccer teams; one wins with a RDNH finding

Two soccer teams in Issaquah, Washington, engaged in a bitter fight over the domain name IssaquahFC.com.

One of them filed a UDRP to get the domain from the other, but their formation and claim to the ISSAQUAH FC mark took place 10 months after the domain’s registration.

The UDRP was decided by a sole panelist at the Forum (NAF) that not only denied the transfer, but found the Complainant guilty of Reverse Domain Name Hijacking:

“Overall, it appears to the Panel that the Complainant has simply embarked on a course to obtain the Disputed Domain Name, if not by negotiation, then by launching this Complaint, but knowing that there was no real prospect of being able to demonstrate registration and use in bad faith.”

Issaquah FC v. Paul Dolan / Dolan Enterprises

Claim Number: FA2204001994474

PARTIES

Complainant is Issaquah FC (“Complainant”), represented by Kelly Galloway, Washington, USA. Respondent is Paul Dolan / Dolan Enterprises (“Respondent”), represented by Christian Marcelo of Perkins Coie LLP, Washington, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is , registered with FastDomain Inc..

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Alan L. Limbury, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 29, 2022. The Forum received payment on April 29, 2022.

On May 2, 2022, FastDomain Inc. confirmed by e-mail to the Forum that the domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 May 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 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@issaquahfc.com. Also on May 3, 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.

On June 6, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.

PRELIMINARY ISSUE: DEFICIENT RESPONSE

On May 23, 2022, the same day as the Response deadline, Respondent submitted via email a request pursuant to ICANN Rule 5(b) for a 4-day extension. This was received after the operating business hours of the Forum and was accordingly deficient and not in compliance with ICANN Rule 5(a) as it was received after the deadline to file a Response. Respondent’s request for a 4-day extension would have made the new Response deadline May 27, 2022. The Forum nevertheless responded to the request and, in granting an extension and notifying the parties thereof, mistakenly identified the incorrect deadline as June 3, 2022 in the confirmation email. Respondent submitted a Response on June 3, 2022.

Pursuant to ICANN Rule 10(b) and (c), in the interests of fairness to the parties, the Panel, of its own motion, has chosen to take the Response into account. See Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the Response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).

PRELIMINARY ISSUE: IDENTITY OF RESPONDENT

Respondent Paul Dolan has declared under penalty of perjury that when he registered the domain name, he was the Secretary for Issaquah Soccer Club (“Issaquah SC”); that he did so on its behalf; and that while he is the listed registrant for the domain name, it belongs to Issaquah SC.

The Panel accepts this evidence and regards Issaquah Soccer Club as Respondent for the purposes of these proceedings. See Honest History Co. v. Registration Private, Domains By Proxy, LLC / Barron Douglas, Mercury Case, No. D2021-3028 (accepting response on behalf of Mercury One, Inc. where registrant of domain registered the domain while employed by the company and on behalf of the company).

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is a non-profit, youth football (soccer) club named “Issaquah FC”. Its naming convention follows the worldwide standard for football (soccer) club naming, using , with FC being an acronym for “football club”. Complainant asserts common law rights in the ISSAQUAH FC trademark as early as February 1, 2016, based upon incorporation under that name in the state of Washington and registration with the Internal Revenue Service (“IRS”), as well as public-facing presentation using the mark.

Respondent’s domain name is identical or confusingly similar to Complainant’s ISSAQUAH FC mark because it merely appends the “.com” generic top-level domain (“gTLD”) to the mark to form the disputed domain name.

Respondent does not have rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name. Additionally, Respondent uses the domain name to redirect users to the website of a competing football club in order to direct traffic away from the Complainant’s business.

Respondent registered and uses the domain name in bad faith to redirect users to a competing website.

The Complainant says it would like to use the domain name for its business, if the Respondent were not squatting on it as a 301 redirect to another local organization’s business website in which the Respondent was formerly a member and President of their governing board.

Respondent was formerly a member and President of an organization located in the same town as Complainant, called ISC Gunners. Respondent is no longer a member of the ISC Gunners Board of Directors, but while a board member, chose to register, configure, and use the domain in dispute (issaquahfc.org) [scil ] for the purposes of implementing a 301 redirect to the ISC Gunners organization website in order to direct traffic away from Complainant’s business. It is believed that Respondent has continued renewing it on behalf of the ISC Gunners organization during his time as a board member, as well as just as a supportive volunteer of the organization. Notably, the ISC Gunners organization hosts their own business website at “www.iscgunners.org”, which follows the name they publicly call their own business (although it is legally called Issaquah Soccer Club). At no time does ISC Gunners publicly call themselves Issaquah FC, as it is not their business name.

The ISC Gunners’ own business’ website is sitting on the root domain: and the root domain of Complainant’s legal business’ name (issaquahfc.com) is providing a 301 permanent redirect, so that ISC Gunners can optimize their own SEO and direct traffic away from Complainant’s business and towards their own.

For context as to the motive behind this transaction and configuration: Both businesses operate in the same small town (Issaquah, Washington, USA; Area: ~13mi2) as youth soccer clubs and compete for the same market of youth athletes. If the domain name in dispute were a name with which ISC Gunners truly desired to be affiliated, they could have hosted their business website on the domain, versus just directing traffic to it. However, they did not directly host on the domain name or promote themselves as such because that is not their legal (state or federal) business name and would likely be in violation of other related state and federal laws if they did so.

In June 2019, the Complainant’s Executive Director, Kelly Galloway, reached out to the Respondent’s Executive Director at the time, Mark Timko, with the ask to release the domain name to Complainant’s business. Kelly and Mark talked twice in-person about releasing the domain name and Mark verbally seemed to be ok with doing this, but responded that he needed to ask the ISC Gunners Board of Directors for permission to release the domain name. Kelly Galloway and Issaquah FC did not hear back.

On July 26, 2019, Kelly Galloway contacted Mark Timko again via email, to check if Mark had been able to release the domain name. Mark responded that day with the following – which includes information that the ISC Gunners staff (presumably Board of Directors, of which Respondent was a member) have negativity towards Complainant (Issaquah FC) and as such will not release the domain name:

“Hey Kelly-

I broached the subject of IssaquahFC.com to the staff, and there is still a lot of negativity from a few staff towards IFC and how things went down a few years back. No bad blood on my part at all- I have no history. It’s going to take a bit of time for me to steer the ship away from the volatility/anger that some still have towards IFC before I can get the .com released. If I did it now, I’d have a mutiny.”

At a high-level, the issue between the two businesses is primarily the fact that the two clubs operate and compete in the same small market and ISC Gunners has a history of bad faith operations directed at and regarding the Complainant and its affiliate organizations, as can be seen in this Q&A provided on an affiliates’ website:

“… Q: So what was the start of the “disharmony” between ISC Gunners and EYSA?

About five years ago, the ISC Gunners club took the unprecedented step of unilaterally ignoring the terms of their Washington Youth Soccer and EYSA charter. The choice to start their own “Premier” club, and actively compete with EYSA’s Premier/RCL club (Eastside FC), was the start of a pattern of independent actions, which continued up to the April 1 ISC Gunner withdrawal from EYSA. Over the course of these 5+ years the ISC Gunners leadership unilaterally made decisions without consulting the other EYSA clubs and without any concern for how it might affect the other member clubs of EYSA. Beyond the confusion and the tension it created with all EYSA clubs (and especially Eastside FC), the choices also adversely impacted the competitive leagues in which the other EYSA clubs played.”

It is because Complainant has attempted in good faith multiple times to get the domain name back with no luck, and believe Respondent and the ISC Gunners organization for whom the Respondent is leveraging this domain name, are operating in bad faith, that Complainant is now submitting this formal complaint, in order to operate its business with the legitimate Internet assets that it needs to do so successfully.

B. Respondent

The domain name is highly similar to Respondent’s own business name and mark, Issaquah Soccer Club, Issaquah SC and ISC. The “SC” in Respondent’s business stands for “Soccer Club,” “FC” is a commonly used acronym for “Football Club,” which uses the British term for soccer, “football.” Given these similarities, registering the domain name prevented other parties from potentially using it in a way that could cause confusion with Respondent’s services.

Complainant also offers services related to soccer clubs in Issaquah and, according to Complainant’s evidence, was incorporated on February 1, 2016 – ten months after Respondent registered the domain name. Complainant provides no evidence of use of the ISSAQUAH FC mark prior to Respondent’s registration of the domain name on April 3, 2015, and provides no evidence that it acquired rights to the mark prior to its registration and prior to Issaquah SC’s long-standing rights. Complainant’s claim as to ownership of the ISSAQUAH FC mark amounts to an assertion that it formed a company called Issaquah FC and displayed its business name on social media and online. Prior panels have held that such evidence is insufficient to demonstrate secondary meaning.

Because Complainant does not own common law rights to the ISSAQUAH FC mark, and has presented no evidence that the mark acquired secondary meaning (or that Complainant even used the mark at all) prior to Respondents’ registration of the domain name, it has failed to establish the first element of its UDRP claim.

As to legitimacy, Complainant has not made a prima facie case. Complainant does not allege the Respondent’s use is not for a bona fide offering of goods or services or fair use. Thus, Complainant failed to establish the second element. The domain name is exactly the type of domain name Issaquah SC has a right to register and use for its legitimate business. It is highly similar to Issaquah SC’s brand and highly related to Issaquah SC’s business. The domain name consists of a “Issaquah”—the city in Washington in which Respondent operates its business—and “FC”, a common term for “football club” which is the sector of business in which Respondent’s non-profit operates to provide a bona fide offering of services. Thus, Respondent has established that it has rights to or a legitimate interest in the domain name.

As to bad faith, Respondent registered the domain name prior to Complainant’s use of the term “Issaquah FC” and certainly prior to Complainant acquiring any common law rights to the mark (which it has not demonstrated it has acquired at all). Respondent registered the domain name on April 3, 2015. Complainant’s business was formed nearly a year later on February 1, 2016.

Respondent is using the domain name for a legitimate business purpose, and not in bad faith. The domain name, which is highly similar to Respondent’s business name (Issaquah SC), redirects to Respondent’s website where Respondent offers legitimate services. The website to which the domain name resolves does not reference Complainant and, despite its conclusory allegations, Complainant offers no evidence that Respondent is attempting to divert business from Complainant. Complainant’s conclusory allegations regarding the purpose of Respondent’s use of the domain name are insufficient to establish bad faith use.

The only evidence Complainant provides in support of its bad faith allegations is a single email between the parties’ employees. Complainant, however, fails to provide any support as to how the attached email demonstrates bad faith, because it does not. Instead, the email notes that at some point, years ago, there was a dispute between the parties and Respondent was unwilling to transfer the domain name. A mere refusal to transfer a domain name which Respondent properly acquired and was using for a legitimate business purpose is not bad faith. Respondent, of course, has no obligation to transfer the domain name simply because Complainant requested it do so.

Because Respondent is using the domain name for a legitimate business related to the domain name and because Respondent has rights to a mark highly similar to the domain name, Respondent’s use cannot be considered bad faith.

FINDINGS

Complainant has failed to establish all the elements entitling it to relief.

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.

Rights in a mark

As stated in the WIPO Jurisprudential Overview 3.0, section 1.1.3:

“While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.

The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element.

Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith.”

And in section 1.3:

“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.

Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

…Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.

…Even where a panel finds that a complainant has UDRP standing based on unregistered or common law trademark rights, the strength of the complainant’s mark may be considered relevant in evaluating the second and third elements.”

Complainant has shown that its “Issaquah FC” name appears in Complainant’s Washington State Business License issued on January 7, 2022; Washington State Articles of Incorporation dated February 1, 2016; United States of America Internal Revenue Service 501(c)3 approval dated June 8, 2016; United States of America Internal Revenue Service Employer Identification Number notification dated 02-11-2016; and Club bylaws (copyright 2016). Complainant says its name also appears everywhere Complainant does business and publicly markets itself, examples being screenshots dated April 25, 2022 of the logo, business website at “www.issaquahfc.org”, Facebook page, Instagram account, and uniform and fan wear.

Despite the paucity of evidence provided by Complainant, the Panel is prepared to accept that, by the time it filed its Complaint on April 29, 2022, it had established common law rights in the ISSAQUAH FC mark.

Identical and/or Confusingly Similar

The Panel finds the domain name to be identical to Complainant’s ISSAQUAH FC mark, since it comprises the mark in its entirety, merely omitting the space and adding the inconsequential gTLD “.com”, which may be ignored.

Complainant has established this element.

Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to Respondent of the dispute, the use by Respondent 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 (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has 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 customers or to tarnish the trademark or service mark at issue.

The domain name was registered on April 3, 2015, some 10 months prior to the incorporation of Complainant on February 1, 2016. On the evidence provided by Complainant, that was the earliest possible date of first use of the ISSAQUAH FC mark. The domain name resolves to a website at “www.iscgunners.org”, displaying an “ISC Gunners” logo and name. The “About Us” page says: “The Issaquah Soccer Club (ISC), located in the foothills of the Cascade Mountains, was founded in 1980 and is one of the largest youth soccer clubs in the Pacific Northwest.” The Panel considers that “Soccer Club”, “SC”, “Football Club” and “FC” have the same meaning and are interchangeable.

These circumstances demonstrate that, before any notice to Respondent of the dispute, Respondent has used a name, Issaquah Soccer Club, corresponding to the domain name in connection with a bona fide offering of services.

Accordingly, the Panel finds that Complainant has failed to establish this element.

Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) 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 Respondent has engaged in a pattern of such conduct;

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.

As stated in the WIPO Jurisprudential Overview 3.0, section 3.8.1:

“Subject to scenarios described in 3.8.2 below, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent…

3.8.2 …

As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.

Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.”

It is clear that Complainant first acquired its rights in the ISSAQUAH FC mark no earlier than February 1, 2016, some 10 months after Respondent registered the domain name on April 3, 2015. There is no evidence of the kind mentioned in section 3.8.2 of the WIPO Overview from which it may be inferred that Respondent had Complainant in mind when registering the domain name, nor that Respondent’s intent in registering the domain name was to unfairly capitalize on any nascent trademark rights of Complainant.

The Response indicates that the domain name was registered (at a time when Complainant had not yet been incorporated) to prevent other parties from potentially using it in a way that could cause confusion with Respondent’s services. The similar meanings of “FA” and “SC” support this. Accordingly, the Panel finds that Complainant has failed to show that the domain name was registered in bad faith.

The Panel accepts that the domain name is being used to resolve to the website of a competitor of Complainant and that Internet users searching for Complainant may find themselves at Respondent’s website. Given the similarity between the Issaquah SC and Issaquah FC names and the fact that the domain name was registered prior to the earliest use by Complainant of its ISSAQUAH FC mark, the Panel is not persuaded that the possibility of any such confusion establishes bad faith use on the part of Respondent. Indeed, the communications between the representatives of the parties in 2019 made no mention of protecting Complainant’s trademark nor of confusion arising from the Respondent’s use of the domain name. Nor did those communications make any allegation of bad faith registration or use by Respondent.

Taking all the circumstances of this case into account, the Panel finds that Complainant has failed to establish this element.

Reverse Domain Name Hijacking

Respondent requests that the Panel consider whether the Complaint amounts to Reverse Domain Name Hijacking under UDRP Rule 15(e), which provides that if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Reverse Domain Name Hijacking (RDNH) is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

The mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking; rather, as stated in the WIPO Jurisprudential Overview 3.0, paragraph 4.16:

“Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights…”

The Complainant says it has brought this complaint because it would like to use the domain name in order to operate its business with the legitimate Internet assets that it needs to do so successfully and has attempted multiple times to get the domain name back with no luck, saying it believes Respondent is operating in bad faith.

Despite that asserted belief, the Panel finds that Complainant knew its complaint was doomed to failure, as in Dextra Asia Co., Ltd. v. Lakeside Enterprises Limited, WIPO Case No. D2012-0403 (April 19, 2012):

“Overall, it appears to the Panel that the Complainant has simply embarked on a course to obtain the Disputed Domain Name, if not by negotiation, then by launching this Complaint, but knowing that there was no real prospect of being able to demonstrate registration and use in bad faith.”

DECISION

Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED and declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.

Alan L. Limbury, Panelist

Dated: June 13, 2022

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Comments

One Response to “IssaquahFC.com engaged two soccer teams; one wins with a RDNH finding”
  1. BullS says:

    This is in my backyard.
    Let them fight,they are rich snobbish arrogant neighbors.
    Rich cry babies.

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