Mark Philippoussis v. Alrite Oz Pty Ltd. c/o Peter Papas
Claim Number: FA0202000104587
Complainant is Mark Philippoussis, New York, NY (“Complainant”) represented by Jennifer H. Pincus, of Nixon Peabody LLP. Respondent is Peter Papas Alrite Oz Pty Ltd., Melbourne, Victoria, AUSTRALIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <markphilippoussis.com>, registered with Network Solutions.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 12, 2002; the Forum received a hard copy of the Complaint on February 13, 2002.
On February 15, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <markphilippoussis.com> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 7, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On March 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Respondent’s <markphilippoussis.com> domain name is identical to Complainant’s famous name, in which Complainant holds rights.
Respondent does not have rights or legitimate intersts in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
No Response was received.
Complainant, Mark Philippoussis, is an internationally known professional tennis player. As a result, he has common law rights in his commercially valuable name.
Respondent registered the disputed domain name on October 14, 1999. On October 10, 2001 Respondent offered to sell the disputed domain name to Complainant for $10,000. After Complainant’s counsel sent Respondent a cease and desist letter, Respondent contacted Complainant’s counsel offering an “amicable agreement,” and then subsequently offered the domain name for $10,000 to Complainant again.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has established common law rights in his famous name MARK PHILIPPOUSSIS due to the substantial secondary meaning associated with his name. See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary under Policy ¶ 4(a)(i) and that the name “Julia Roberts” has sufficient secondary association with the Complainant that common law trademark rights exist).
Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) because its repeated offers to sell the disputed domain name to Complainant indicate that it registered the disputed domain name primarily for the purpose of selling it. See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell domain name suggests it has no legitimate use).
Respondent, known as Alrite Oz Pty. Ltd., does not have any rights or legitimate interests pursuant to Policy ¶ 4(c)(ii) because it is not commonly known as MARK PHILIPPOUSSIS or <markphilippoussis.com>. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i) as evidenced by its offer to sell the domain name for $10,000, an amount far exceeding its out-of-pocket expenses. See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy paragraph 4(b)(i) where Respondent stated in communication with Complainant, “if you are interested in buying this domain name, we would be ready to sell it for $10,000”); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <markphilippoussis.com> be transferred from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 21, 2002
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