File Photo: Stephen Albanese/Tailstar.com
Zuffa, LLC, the parent company of the UFC and WEC, went to court last week for the purpose of booting what it has characterized as a cybersquatter from a domain name that Zuffa says should be registered as its own. In a lawsuit filed in Nevada federal court, Zuffa asked the judge for an order requiring the registrar for the TheUltimateFighter.com domain name to transfer its registration over to Zuffa.
In the complaint, Zuffa alleges that it began using a number of “The Ultimate Fighter” trademarks as early as 2003. Records of the United States Patent and Trademark Office show that Zuffa filed to register trademarks in “The Ultimate Fighter” in June 2004. Zuffa’s complaint also alleges that in January 2004, an individual named Anton Resnick registered the domain name at issue with the domain registration company, eNom, Inc. Zuffa claims Resnick never used the domain name in connection with a legitimate commercial fair use, and so should therefore be deemed a “cybersquatter” under the provisions of the Anticybersquatting Consumer Protection Act (United States Code, Title 15, section 1125(d)). Zuffa cited this Act in asking the court to restrain and enjoin eNom from transferring the domain name to any other party. Zuffa’s prayer for relief includes a request for a permanent injunction requiring eNom to transfer the registration to Zuffa.
Resnick notified Sherdog.com on Wednesday that he will not oppose the litigation.
"The issue has been resolved,” Resnick wrote in an e-mail. “The .com will be transferred by the court with no-contest and the .net will be transferred to Zuffa as well."
Resnick also said he does not have any formal negotiated settlement and that there is no agreement of any sort to exchange compensation.
This suit comes just one month after the UFC and Spike TV announced the launch of a Web site sharing a similarly named domain. UltimateFighter.com is an ad-supported Web site that includes every fight and every fighter from each of the past seasons of "The Ultimate Fighter" reality series, which first premiered on Spike in January 2005. Historically, until January 2010, the UFC's UltimateFighter.com domain was owned by MDNH Inc., a company that reportedly owns a large portfolio of domain names.
Frustrating the UFC’s recent launch of the Web site in conjunction with “The Ultimate Fighter 11” season premiere in March, anyone that typed in the domain name TheUltimateFighter.com has been automatically transported to Yahoo Sport's MMA news page.
Dana White has made it no secret over the past several months that the UFC intends to use “The Ultimate Fighter” series and online distribution to fuel the growth of the UFC’s brand around the globe.
“We're trying to get these television deals in all these countries, major TV deals exposing the fans to it, then you bring a live event to those places,” White said at a recent news conference. “Then the virus spreads and people start training at it, trying to make a living at it, eventually becoming professional athletes. That's what we're going to do over the next 10 years."
The recent acquisition of UltimateFighter.com and the legal efforts to obtain TheUltimateFighter.com appear to be part of the UFC's plan for international growth.
Resnick said he acquired the domain name in 2004, prior to any knowledge of a reality show called “The Ultimate Fighter.” At the time, Resnick said he planned to use the site in conjunction with a MMA-related T-shirt company he was going to develop with his brother. The T-shirt company, however, never came to fruition. At some point, Resnick conceded that he redirected the domain to Yahoo’s Web page and claims he hasn’t generated any revenue from doing so. (At the time this article was published, only an error message appears when visiting the domain name.)
When asked whether he had engaged in any talks with Zuffa regarding transfer of the domain name prior to the suit, Resnick stated that he made at least one inquiry regarding the sale of the domain to Zuffa in 2008. He said Zuffa’s Vice President of Digital Media, Ed Muncey, was interested in setting up a call to discuss the issue, but Resnick could not recall how or why those discussions fizzled out. He said he was never told Zuffa intended to file a suit in federal court. Zuffa’s legal counsel, John Krieger, said that Zuffa “attempted to contact (Resnick) a couple of times,” before filing the suit and never heard back from him.
“I registered a domain a long, long time ago, prior to (Zuffa) having any (trade)marks that this domain could be linked to,” said Resnick. “If anybody had contacted me and made me an offer or spoke to me about the domain name, there’s a possibility I would have released it to them.”
“J.R.” Riddell, an attorney at the global law firm Orrick, Herrington & Sutcliffe, is experienced in various matters related to the business of MMA. A more detailed background regarding his experience is available through his lawyer profile at www.orrick.com. This article does not provide legal advice, and any opinions expressed in this article are solely those of the author and do not reflect the views of his law firm. Riddell can be reached at [email protected] Tracey Lesetar ([email protected]) contributed to this article.