Anthony Kim v. Jang Lee
Claim Number: FA0801001126673
Complainant is Anthony Kim (“Complainant”), represented by G.
Henry Welles, of Best Best & Krieger, L.L.P., 74-760
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <anthonykim.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
David P. Miranda, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 8, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 8, 2008.
On January 8, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <anthonykim.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 January 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 4, 2008 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on January 23, 2008. An additional submission of Complainant was timely received on January 28, 2008, and was considered by the panel.
On January 30, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant Anthony Kim (“Complainant”) a professional golfer, seeks
transfer of the domain name <anthonykim.com> registered by
Respondent Jang Lee of
Respondent contends that his legal name on his Korean
passport is “Jang Joong Lee.” Respondent contends
that his family name on his mother’s side is “Kim.” He further contends that he is a legal
resident of the
C. Complainant submitted a supplemental statement contending that Complainant established its common law rights in the mark through use in connection with Complainant’s status as a famous professional golfer, and in connection with endorsements such as the endorsement with NIKE, as well as with the Professional Golf Association. Complainant further contends that Respondent admits that his legal name is not Anthony Kim, that he does not presently use the name Anthony Kim, and only has future plans to use the name Anthony Kim. Complainant further contends that Respondent did not begin use of the name Anthony Kim until after notice of the Complaint was provided.
Complainant has established that his personal name is entitled to protection as a mark, that Respondent has registered a domain name <anthonykim.com> that is identical, or confusingly similar to that personal name, that Respondent has no rights or legitimate interests in the disputed domain name, and the domain name was registered and used in bad faith. Thus, the disputed domain name shall be transferred to Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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;
(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.
Complainant contends that he is a famous, professional golfer and has trademark rights in his name Anthony Kim. Complainant contends he need not have registered its mark with a governmental authority in order to establish rights in it pursuant to Policy ¶ 4(a)(i). Complainant must show that it has continuously used the mark and established secondary meaning to establish common-law rights. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the complainant have rights in a registered trademark but that it is sufficient to show common law rights and holding that the complainant has common law rights to her name).
Complainant contends that he has used the mark, ANTHONY KIM, continuously in connection with entertainment services in the nature of competitions in the field of golf and personal appearances by a professional golfer since at least 2005. (Complainant was born in 1985). Complainant has sufficiently established common-law rights in the name ANTHONY KIM which satisfy the requirements of Policy ¶ 4(a)(i). See CMG Worldwide, Inc. v. Lombardi, FA 95966 (Nat. Arb. Forum Jan. 12, 2001) (finding that the complainant had established enforceable rights in the common-law VINCE LOMBARDI name and mark); see also Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (“A person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law …”); see also Garnett v. Trap Block Techs., FA 128073 (Nat. Arb. Forum Nov. 21, 2002) (holding that the complainant had accrued common law rights in the KEVIN GARNETT mark).
Complainant has submitted proof of the
famousness of his name, in relation to his activities as a golf professional,
and related commercial enterprises sufficient to establish common law trademark
rights, and sufficient to support a UDRP Complaint. See Garnett v. Trap Block Techs.,
Complainant contends that Respondent is not commonly known by the disputed domain name or the name “Anthony Kim.” Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000); DIMC, Inc. v. Phan, D2000-1519 (WIPO Feb. 20, 2001) (rejecting the claim that the respondent was commonly known by the “Krylon” nickname since there was no evidence indicating when the alleged nickname was adopted and how it was used).
Complainant also contends that Respondent does not offer any goods or services in conjunction with the disputed domain name. Complainant contends that Respondent utilizes the disputed domain name to redirect Internet users to a website <suprememastertv.com>, which is unrelated to the Complainant. Such commercial use is neither a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Respondent has failed to submit proof of any legitimate
interests in the name, and admits that although he has an intention of using
the name at such time that he becomes a
The domain name should be considered as having been registered and being used in bad faith. Complainant contends that Respondent did not register the <anthonykim.com> domain name until immediately after Complainant achieved certain specific amateur and professional golfing recognition. Respondent does not dispute the allegations of Complainant, except to contend that he has no intention of harming the Complainant. Furthermore, a blog of Respondent related to the <anthonykim.com> website, makes reference to a lack of association to the golfer Anthony Kim, indicating awareness on the part of the Respondent of the Complainant and his fame as a golfer.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <anthonykim.com> domain name be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: February 13, 2008
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