In addition to its more widely known UFC and ULTIMATE FIGHTING CHAMPIONSHIP marks, Zuffa has also registered the mark THE ULTIMATE FIGHTER in connection with the following goods/services (the applications of which were all filed June 2004 on the basis of intent to use):
- laser video discs, digital video discs, digital versatile discs and CD-ROM discs, all featuring sports events and mixed martial arts (link here) – claimed date of first use November 2005;
- tee-shirts; team uniform reproductions, namely jerseys featuring reproductions of professional athletic team logos; hats; caps; and for entertainment in the nature of an on-going television program in the field of sports and mixed martial arts (link here) – claimed date of first use January 2005; and
- tank tops; shorts, headwear; workout and sports apparel, namely shorts and shirts (link here) – claimed date of first use January 2005.
Of course, the date when the mark became distinctive is relevant because it is only cybersquatting if the domain name was confusingly similar to a mark that was distinctive on the date of registration. The domain name in dispute was purportedly registered by Anton Resnick with the registrar eNom on January 22, 2004 (long before Zuffa’s aforementioned trademark applications). The domain name http://www.theultimatefighter.com/ currently is redirected to a Yahoo page dedicated to mixed martial arts.
Zuffa argues that Resnick’s registration of the domain name http://www.theultimatefighter.com/ was a bad faith intent to profit from Zuffa’s trademark rights in THE ULTIMATE FIGHTER (i.e., cybersquatting). It is puzzling, however, why Zuffa waited over six years to go after Resnick for this so-called bad faith cybersquatting for a domain name registered six months before Zuffa had even filed the aforementioned intent-to-use trademark applications. Also interesting is that Zuffa owns the domain name http://www.ultimatefighter.com/, but WHOIS records suggest it was created only recently in January 2010. [DotWeekly ran an article in late March about the domain name acquisition by Zuffa from Marchex -- a company known for buying and selling domain names].
As for why Zuffa chose to bring this in rem action in a jurisdiction where neither the domain name registrant, the domain name registrar, or the domain name registry is located, the following is the jurisdictional statement:
This Court has in rem jurisdiction over
pursuant to 15 U.S.C. § 1125(d) and 28 U.S.C. § 1655 and interpretive case law. Upon information and belief, this Court cannot exercise personal jurisdiction over the registrant of , as the registrant is located outside of the State of Nevada and/or website is not interactive. As a separate and independent basis for in rem jurisdiction, upon service of this Complaint upon the registrar of , the registrar will deposit domain name into the registry of the Court. In addition, the situs of domain name is, or will be, in this judicial district where the owner of the trademark contained in domain name is located.
Nonetheless, by searching the domain names at issue in that case, it appears that just filing the complaint was enough to get the domains at issue transferred. And more than likely, that is the strategy being pursued here by Zuffa.