Business Transactions, Corporate and Real Estate

MLB Strikes Out in Acquiring

October—the month of seasonal changes, crunching leaves, artificial pumpkin flavoring, and, for sports fans, the October Classic. As survivors of the never-ending major league baseball regular season battle for World Series contention, many fans purchase tickets, merchandise, and check scores through their team’s web page. For the most part, professional sports domain names are intuitive. For example, to access the Washington Nationals website, all a fan must do is type “” or “” and the team website will appear. In creating easy access for consumers, Major League Baseball (“MLB”) has attempted to purchase any relevant domain names for its thirty teams. One MLB team, the Minnesota Twins, has faced surprising issues in acquiring these rights as is one of the last domain names corresponding to a team name that MLB has yet to purchase. Ironically, the only obstacles standing between the Minnesota Twins and the domain name are actual twins.

On March 10, 1995, twin brothers Durland and Darvin Miller acquired the domain name. The domain name was initially operated for D&D Telecommunications (thereafter changed to D&D Miller), which is advertised as a “one-stop shop for all your telecommunications and facilities needs.” Since 1999, the domain name has led to a website advertising “D&D Miller” and the brothers’ names.

In a recent interview with Grantland (an ESPN website focusing on sports and pop culture), Durvin and Darland indicated that after securing the domain name for free, they intended to build a news group that offered information for twins or parents with twins.[1] Despite their early intentions, the site eventually began functioning as D&D Miller’s web page, where both of the brothers are employed. Most astonishingly, the Millers reported that throughout the years they declined offers up to $750,000 for the domain name. When asked why they would turn down such a financial windfall, Durland replied “To lose the thing for us would be a life change. We’ve identified with it for decades.” Major League Baseball has expressed interest in the domain name as well. However, they will likely have to get in line with the other suitors as the Miller twins appear to have a strong legal claim to the domain name.

While a trademark owner has various avenues to secure a domain name infringing on its mark, in this case two of the most commonly used options—the Anticybersquatting Consumer Protection Act (“ACPA”) and the Uniform Domain Name Dispute Resolution Act (“UDRP”)—are likely moot because the Millers do not appear to be using in “bad faith.” In order to succeed under the UDRP, MLB must prove three elements: (1) the registrant’s domain name must be identical or confusingly similar to the complainant’s trademark or service mark; (2) the registrant must have no rights or legitimate interest in respect to the domain name; and (3) the domain name must be registered and used in “bad faith.” Examples of bad faith may include when the domain name is acquired to: (1) sell, rent, or transfer to the complainant; (2) to prevent owner of the trademark or service mark from using mark in domain name (normally a pattern of conduct must be shown to prove this); (3) to disrupt a competitor’s business; or, (4) with intent to attract internet users through likelihood of confusion. In its defense, the registrant may demonstrate a legitimate interest in the domain name by showing use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name with the offering of goods and services; by showing that the owner is commonly known by the domain name, even if no trademark service mark rights have been acquired in it; or, by making legitimate noncommercial fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Similarly, the ACPA also requires a showing of “bad faith” by the registrant. Section 1125(d)(1)(b)(i)(I)-(IX) provides a non-exhaustive list of factors courts may consider when making a finding on the requisite intent. These include: (1) the trademark or other intellectual property rights of the registrant in the domain name; (2) the domain name consists of the legal name of the person or a name that is commonly used to identify that person; (3) the registrant’s prior use of the domain name in connection with the bona fide offering of goods or services; (4) the registrant’s bona fide noncommercial or fair use of the mark; (5) the registrant’s intent to divert consumers from the mark owner’s online location to the domain name , which could harm the goodwill represented by the mark through tarnishment, confusion, or disparagement; (6) the registrant’s offer to transfer or sell the domain name for financial gain without having used, or having intent to use, the domain name; (7) the registrant’s provision of material and misleading false contact information when applying for the registration of the domain name; (8) the registrant’s registration or acquisition of multiple domain names which the registrant knows are identical, confusingly similar, or dilutive to marks of others and; (9) the extent to which the mark incorporated in the registrant’s domain name registration is or is not distinctive and famous within the meaning of subsection (c).

Unfortunately for MLB, the Millers have a strong defense against any claim of bad faith under either the UDRP or ACPA. First, the brothers, who are employed by D&D Miller, currently use the domain name as a business page, which, on the surface, demonstrates the use of the domain for the offering of goods and services. Moreover, the Millers are publicly known as “the twins” in their community which further strengthens their argument to rebut a claim of bad faith under either the UDRP or ACPA. Indeed, individuals with names or nicknames identical to a company’s mark have a legitimate claim on a domain name containing that mark under the ACPA. See, e.g., Nissan Motor Co. v. Nissan Computer Corp., 61 U.S.P.Q.2d 1839 (C.D. Cal. 2002) (the founder of Nissan Computer, Uzi Nissan, was found not have violated the ACPA by registering Additionally, the Millers’ stated purpose in acquiring the domain name does not demonstrate any intent for commercial gain, to divert consumers, or tarnish the trademark. The Millers, despite being fans of the Minnesota Twins, initially acquired the domain name to offer advice to twins and parents of twins before it evolved into their business site. If anything, the Miller twins, reluctance to sell the domain name indicates a contrary intent. Consequently, it appears that the Millers would have a strong defense against any UDRP or ACPA claim presented by MLB.

The dilemma presented between the Minnesota Twins and the Miller twins serves as an excellent example of the legal balancing act when securing domain name rights between parties. Despite the Miller’s failure to update their website in decades, they still possess a legal right to the domain name, which enables them to effectively block a larger corporation with a well-known brand from acquiring the domain corresponding to their arguably famous trademark. This situation serves as a reminder of the importance in acquiring domain name rights early on and the difficulties that may arise when a trademark owner fails to register or maintain the registration of the domain name corresponding to their trademark. Fortunately for MLB, they likely have one more option—the Millers are Minnesota Twins fans and purport to be interested in selling the domain name . . . but no doubt only for the right price.

[1] Ben Lindbergh, The Website MLB Couldn’t Buy, Grantland (Aug. 27, 2015)

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