USA Triathlon Wins '.com' Lawsuit - Triathlon Week

Robert G. · 12-15-2003, 08:47 PM

COLORADO SPRINGS, Colo. (December 12, 2003) - A panel of arbitrators has awarded USA Triathlon ownership of the Internet domain name "usatriathlon.com," following a lawsuit against the former owner.

On Aug. 28, 2003, USA Triathlon filed suit against Proto Web Co., a Hong Kong-based Internet company that had registered and was using a web site located at usatriathlon.com. The suit, filed before the National Arbitration Forum, alleged that Proto Web's registration of the domain name was done in bad faith and unlawfully infringed the USA Triathlon name and trademark, confusing members of the general public.

In a complete victory for USA Triathlon, the three-member arbitration panel held that the domain name usatriathlon.com was confusingly similar, if not legally identical, to USA Triathlon. The panel also noted that the "USA Triathlon" trademark, which has been in use since 1996, has acquired distinctiveness or "secondary meaning" in the marketplace, and that Proto Web had no rights or legitimate interests in usatriathlon.com.

The panel noted that its decision on secondary meaning was supported by the trademark registrations of other sports organizations such as USA Softball, USA Tennis and USA Swimming. Proto Web's use of the usatriathlon.com domain name was characterized by the panel as an attempt to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the USA Triathlon trademark. The panel ordered that the registrar transfer ownership of the usatriathlon.com domain name to USA Triathlon.

"We are just thrilled with the Panel's decision," said Steve Locke, executive director of USAT.

"Our members, sponsors, and multi-sport enthusiasts worldwide recognize the USA Triathlon name and logo and associate both with high quality competitions, goods, and services. There was a real concern that the public was being unfairly confused by the unauthorized web site, and we are extremely pleased to eliminate the misuse of USAT's name and trademark."

USA Triathlon was represented in the suit by its long time counsel, the national law firm Jorden Burt LLP. Diane Duhaime, co-chair of the firm's Intellectual Property and Technology practice team, and Markham Leventhal, co-chair of USAT's Legal Committee, led a team of litigators representing USAT.

"We were obviously very pleased with the victory, as well as the speed and detail of the panel's decision," Duhaime said. "The result puts an end to a web-based abuse of the USA Triathlon mark, and shows that USAT is serious about protecting itself from trademark infringers."