Infringement Be Damned, ASU Sues to Protect Name

A very interesting case emerged recently that had Arizona State University (ASU) seeing red. At the center of the controversy are three men and four corporations that were using the name ‘Sun Devil Angels’ in conjunction with selling hard core pornography videos and images. A lawsuit by the Arizona Board of Regents against the individuals and corporations is now being hashed out. Read the recap of the story here.

ASU (through the Arizona Board of Regents) alleges the operators of multiple porn sites, which all incorporate the name ‘Sun Devil’ in one form or another, will generate $1 million in revenue in the near future. Apparently, one o more of the defendants agreed to change the name of the site(s) if ASU paid $50,000. Sound familiar? It smacks of the same modus-operandi of “cyber squatters” who buy up domains incorporating a celebrity’s name to set up websites promoting their own product/service or by using it as a landing page to generate click through advertising revenue, and then offer to transfer the domain for an exorbitant sum of money to the person (or business) whose name or mark is being used. I recently prevailed on behalf of a client whose mark was incorporated into a domain being used as a landing page and who had received an unsolicited offer to purchase it. Click here to see the decision.

UDRP Arbitration versus Federal Anti-Cybersquatting Lawsuit

There are two primary ways to obtain a domain from a person or business short of paying their ransom. A federal lawsuit under the Anti-Cybersquatting Consumer Protection Act (15 U.S.C. § 1125(d) or arbitration through the Uniform Dispute Resolution Policy (UDRP) administered by Internet Corporation for Assigned Names and Numbers (ICANN) and incorporated by domain registrars (i.e. Go Daddy) into its terms of service and agreed to by the person registering the domain. ASU’s lawsuit highlights differences between an Anti-Cybersquatting lawsuit and UDRP Arbitration, and was a wise strategic decision.

Before shining the spotlight on the differences, ASU has gone the UDRP Arbitration route before. In 2011 it successfully pursued the transfer of the wwww.sundevils.com domain through UDRP Arbitration. Click here to see the decision. ( http://domains.adrforum.com/domains/decisions/1393853.htm).

UDRP Arbitration is more time efficient (resolution typically occurs within 2-3 months of filing the complaint) and most cost effective ($3,000 – $5,000 in fees and costs). There are no concerns of trying to serve or show personal jurisdiction over a person or business located in, for example, Europe or the Middle East. And it doesn’t have res judicata effect, so if you lose, the person seeking transfer can still pursue a federal lawsuit. However, remedies are limited to transfer of the domain. A person seeking transfer cannot recover damages against the person or recover attorneys’ fees or costs.

ASU’s argument in the above UDRP arbitration centered on the fact that the person was using the www.sundevils.com domain in a way causing confusion among those looking to connect with the ticket office for ASU athletics. ASU demonstrated that customers searching for ASU’s ticket office were redirected to the company that had been operating the domain. Likelihood of confusion is the test for standard trademark infringement. It’s whether a person is confused over the source of a good or product, or whether the trademark holder sponsors or endorses the person or business using the mark in connection with a good or service. That was an easy showing for ASU.

Difficulty in Showing Likelihood of Confusion

However, in relation to the “Sun Devils Angels” site, showing likelihood of confusion will be significantly more difficult, and most likely a losing argument. Customers who go looking for porn are looking for porn, and a person, of reasonable intelligence, who navigates onto the Sun Devils Angels site is not going to be confused whether ASU is running this site or nor, or whether ASU is endorsing the operator. Even though ASU co-eds may carry the “eye candy” reputation, ASU is not in the business of operating porn sites, and although ASU co-eds may be very attractive, ASU does not promote the sex appeal of its co-eds. Further, nearly anyone living in and around the greater Phoenix area recognizes the numerous businesses that incorporate the words ‘Sun Devil’ into their name, and are not part of or affiliated with ASU. Per the Arizona Corporation Commission website, there are nearly six pages of businesses that use the words “Sun Devil.” This argument will be a relatively easy position to defend against.

Sun Devils As a Famous Mark

Although ASU is asserting claims for standard trademark infringement and unfair competition claims, which are premised on the likelihood of confusion analysis, in the federal lawsuit, it also has claims for infringement of a “famous mark” and for transfer of the domains and statutory damages under the Anti-Cybersquatting statute. ASU’s “Sun Devil” mark is undeniably famous. It competes in a number of NCAA Division I sports programs as part of the Pac-12 conference. And ASU licenses th e use of “Sparky,” ASU logos and the Sun Devil name to athletic apparel companies. The list goes on and on.

Showing that a mark is famous is no easy task, but ASU’s case is a slam dunk. Why this is important is because infringement of a famous mark does not require a showing of likelihood of confusion. It requires a showing of dilution or tarnishment. And ASU will be able to seek transfer of the domain under the Anti-Cybersquatting statute by demonstrating dilution regardless of likelihood of confusion. This will be much easier to show, as ASU has desperately attempted to shake their “party school” rep, and a porn site entitled “Sun Devils Angels,” which arguably creates the impression that the female actresses are ASU students, dilutes and tarnishes the “Sun Devil” mark.

ASU will have to show that the group of defendants willfully infringed on its mark (that won’t be difficult to show through the Cease and Desist letters and the $50,000 ransom). ASU is also seeking actual damages (i.e. defendant’s ill gotten profits), statutory damages between $1,000 and $100,000 pursuant to the Anti-Cybersquatting Act, treble damages and attorneys’ fees (difficult to obtain). ASU has a good dilution argument and undeniably more resources then the defendants, who will, no doubt experience the wrath of Sparky in federal court.

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