Jason Giambi and Jeremy Giambi v. Tom Meagher
Claim Number: FA0206000114745
Complainants are Jason Giambi and Jeremy Giambi, Claremont, CA (“Complainant”) represented by Richard Scarola, of Scarola, Scarola Reavis & Parent. Respondent is Tom Meagher AccSys, Piedmont, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <giambi.com>, registered with Register.com.
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.
R. Glen Ayers served as Panelist.
Complainants submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 28, 2002; the Forum received a hard copy of the Complaint on July 1, 2002.
On June 28, 2002, Register.com confirmed by e-mail to the Forum that the domain name <giambi.com> is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 July 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 23, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on July 23, 2002.
Complainants’ Additional Submission was timely received on July 29, 2002. Respondent’s Additional Submission does not comply with Supplemental Rule 7, and will not be considered.
On August 7, 2002, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed R. Glen Ayers as Panelist.
Complainants request that the domain name be transferred from Respondent to Complainants.
The Complainants are two professional baseball players, Jason Giambi and Jeremy Giambi. Each plays major league baseball; Jason Giambi plays for the Oakland Athletics and is currently a “star player for the New York Yankees.” Jeremy Giambi has played for the Kansas Royals, Oakland Athletics, and the Philadelphia Phillies where he “is currently a star player for that team.” The Complainants allege that they have developed common-law trademarks and “the right of publicity” in connection with their famous name, Giambi. Complainants alleges that Respondent registered the domain name <giambi.com> in August of 1999. They allege that domain name is confusingly similar to their famous common-law mark, Giambi. The allegations go on to include allegations that Respondent has no association with or rights or legitimate interest in the name and that the registration was in bad faith because it misleads Internet users seeking information about the Complainants or creates a likelihood of confusion. Complainants allege they have requested that the Respondent transfer the domain name and have offered $500.00 but that the Respondent has sought $12,000.00 to relinquish the name.
Respondent states that any common-law mark held by the Complainants would relate only to a common-law mark that was a combination of their given names and their surnames. Further, Respondent notes that neither player was particularly well known in 1999, when he registered the name. Respondent goes on to point out that surnames are not ordinarily common-law marks, pursuant to 15 U.S.C. §1052(e).
Respondent admits that he has never used the domain name.
However, Respondent asserts that it has never held out the domain name for sale and was initially contacted by Complainants. Respondent asserts that it has registered only 2 domain names, one of which has lapsed. Respondent has never registered domain names for the purpose of resale. Further, Respondent denies that any action it has taken can constitute bad faith.
C. Additional Submission (Complainants)
Complainants have filed an Additional Submission which was timely filed and which will certainly be considered by the Panel. In the Additional Submission, Complainants again assert their rights to common-law marks, and cite Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000), and other cases. This Panelist decided the “Mick Jagger” case. Complainants continue to assert that the domain is identical to the alleged common-law mark.
Complainants assert that the surname alone in this case is sufficiently famous to constitute a common-law mark. In the alternative, Complainants now assert that the domain name would be confusingly similar to the common-law mark “Jason Giambi” and “Jeremy Giambi.”
Complainants again assert that Respondent has no legitimate rights in the name. Finally, Complainants against assert that the Respondent has blatantly attempted “to extort money from Complainants.”
D. Additional Submission (Respondent)
Respondent also filed an Additional Submission which was received after the deadline for submission and will not be considered.
The findings in this case are simple. There is no evidence to support the existence of common-law trademarks held by the Complainants. Complainants have not shown that any offering of goods and services has been made under the names of the Complainants so that the Complainants’ surname has acquired a secondary meaning in the market, all as required to demonstrate the existence of a common-law mark. See Jagger v. Hammerton, cited above.
Certainly, Respondent has no rights in the name. Respondent’s allegations concerning the reason for the selection of the domain name simply does not reflect any credible evidence of any rights in the name.
However, where bad faith is concerned, Complainants again have failed to their burden of proof. Complainants contacted Respondent. Respondent had been the first to file the domain name. Therefore, Respondent owned the domain name. Respondent could sell the domain name for any price that Respondent chose. There is no evidence that Respondent is in the business of registering and reselling domain names. There is simply no evidence of bad faith in this case. Other elements of bad faith, including confusion, etc., are clearly not present here.
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 Complainants 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 Complainants have 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.
Identical and/or Confusingly Similar
The domain name and alleged common law marks are identical. However, Complainants have offered no evidence of the existence of common law mark. The surname of the Complainants must have some secondary meaning, identifying goods and services before it becomes a mark. No evidence has been offered to support the existence of a common law mark.
Further, the domain name was registered before the Complainants became very well known. In other words, the domain name pre-dated any alleged mark.
Rights or Legitimate Interests
Respondent offered no credible evidence of interests in or rights in the name. It has made no use of the name.
Registration and Use in Bad Faith
Complainants offered no persuasive evidence of bad faith. They solicited Respondent, who is not in the business of selling names.
The domain name shall not be transferred. The Complaint is dismissed.
R. Glen Ayers, Panelist
Dated: August 20, 2002
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