It looks like the Chicago Blackhawks may be getting a domain name upgrade following its successful UDRP. The NHL team won the UDRP it filed against the Blackhawks.com domain name at the World Intellectual Property Organization (WIPO). Like other NHL teams, the Blackhawks use a NHL.com url for its website, and it promotes ChicagoBlackhawks.com on social media and in other marketing efforts.
From my reading of the decision, it seems like the panelist felt that the term in the domain name was not generic. It looks like the panelist believes Black Hawk and Blackhawks are well known trademarks because of the NHL team and because of Sikorsky helicopter. Here’s an excerpt from the decision discussing this aspect:
“The links on Respondent’s website do not lead to information about Complainant’s famous team or to ice hockey or sports sites. Instead they lead to aviation and helicopter sites, in an apparent effort to exploit the similarity to the BLACK HAWK helicopter trademark. This is not a bona fide use of Complainant’s BLACKHAWKS mark, which is plural. Apparently Respondent wants us to believe he is making a bona fide use of a different mark – the famous Sikorsky BLACK HAWK helicopter trademark. But this sleight of hand only deepens the conviction that Respondent is conniving. Because the links lead to competitors of the famous Sikorsky helicopters, they would not likely be considered a bona fide use of the BLACK HAWK (note singular) mark, but, in any event, these aviation links are not a bona fide use of Complainant’s BLACKHAWKS mark.”
One thing of note in the decision is that the “Respondent did not reply to Complainant’s contentions.” The panelist noted that the domain registrant told the complainant the domain name is worth six figures, but in not responding to the UDRP, the domain registrant did not explain why it was worth that amount. It appears like the panelist felt that a domain registrant should be willing to respond to a UDRP on a six figure domain name. From the decision:
“In assessing bad faith registration and use, the key fact is Respondent’s assertion that “It’s a six figure name” when he responded to Complainant’s inquiries about buying the disputed domain name.
A domain name seller may demand a high price for a domain name, but the value must not be based exclusively on the value of a complainant’s trademark. If the complainant proves that the owner demands an exorbitantly high price for a domain name that may not have any obvious non-trademark value, it is incumbent on the domain name owner to offer a benign explanation for why the domain name has value unrelated to the complainant’s trademark. Respondent never offered any such explanation and did not answer the Complaint. This is especially odd given Respondent’s assertion that this is a “six figure name”. What is the explanation for Respondent’s failure to defend his rights to the purported six-figure domain name?
A respondent’s failure to answer a complaint under the Policy does not normally constitute an admission of the allegations, and it is left to the Panel’s discretion to assign and weigh adverse inferences. In this case, the Panel exercises its discretion to draw the adverse inference that Respondent has no plausible good faith explanation for its “six figure” demand. Accordingly, the Panel accepts as true Complainant’s unrebutted allegation that the demand was based only on the value of Complainant’s (or possibly Sikorski’s) trademark. This alone is sufficient to justify a finding of bad faith registration and use under Policy, paragraph 4b(i), but there is more.
There are reasons for why a domain registrant might not respond to a UDRP proceeding, but I can’t speculate about what happened with this particular UDRP. Whatever the reason for not responding, it seems like the panelist used this as a reason to find in favor of the complainant.
With all that stated, here’s what I think the decision really boiled down to in the end:
“Complainant’s mark was well known in 1995 when the disputed domain name was registered. It is distinctive and has no obvious non-trademark value. There is no evidence that Respondent made any use of the disputed domain name other than as a parked page, a fact which undermines any claim of reliance or prejudice based on the passage of time. The evidence rather suggests that Respondent registered the disputed domain name in order to profit from its sale to a trademark owner, be it Complainant, or the owner of the BLACK HAWK mark (for aviation products). Respondent ignored Complainant’s demand letters. “
If the domain registrant wants to try and keep the domain name, it will need to file a lawsuit. If the registrant does not choose to litigate, the Chicago Blackhawks will get to upgrade its domain name at a minimal cost.
Couple of thoughts:
1. Agree somewhat with judge on point about current site of helicopters. In the past think you could get away with this argument, and it should still hold some water. A three member panel mightve decided differently.
2. Blackhawk was an American Indian leader, that is where the NHL got the name from, most famous from Black Hawk War. The “Blackhawks” are not an Indian tribe, as Black Hawk was a Sauk Indian.
3. Can’t believe owner didn’t even respond, because NHL’s mark is based on a famous person, they didn’t make up the term Blackhawk. It could be argued they made up the plural version but that’s a stretch, still based upon person’s name.
To somewhat of a lesser degree, there is also a Black Hawk bird: https://www.audubon.org/field-guide/bird/common-black-hawk
Didn’t know that, and it’s a good point. If registrant would’ve put up pics of the bird which is a creature of nature, instead of a trademarked helicopter, might’ve had a different judgement even with no response.
That decision was a personal favor by a single member panel and nothing else.
Looks like the Blackhawks have control of the Blackhawks.com domain name.