Barry Zito v. Stan Andruszkiewicz
Claim Number: FA0207000114773
Complainant is Barry Zito, Pasadena, CA (“Complainant”) represented by Gary J. Nelson, of Christie, Parker & Hale LLP. Respondent is Stan Andruszkiewicz, Sharon, MA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <barryzito.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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 3, 2002; the Forum received a hard copy of the Complaint on July 8, 2002.
On July 8, 2002, Register.com confirmed by e-mail to the Forum that the domain name <barryzito.com> is registered with Register.com and that 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 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 29, 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.
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 August 6, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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.
1. Respondent’s <barryzito.com> domain name is identical to Complainant’s BARRY ZITO name and common law mark.
2. Respondent does not have any rights or legitimate interests in the <barryzito.com> domain name.
3. Respondent registered and used the <barryzito.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a professional baseball player and pitcher for the Oakland Athletics, a Major League Baseball team. Complainant’s achievements include: being named as a pitcher to the 2002 All-Star game, becoming Oakland’s top draft pick in 1999, completing his first full season with Oakland in 2001 finishing third in the American League in both opponents batting average and strikeouts per nine innings while tying for sixth in wins, and finishing the 2001 season with 205 strikeouts.
Complainant is regularly featured on national broadcasting syndicates, making appearances on <espn.com>, <cbs.sportsline.com> and CNN Sports Illustrated. Complainant was also named the American League’s Pitcher of the month in both August and September of 2001.
Respondent registered the <barryzito.com> domain name on March 27, 2001. Complainant’s investigation reveals that Respondent’s domain name is connected to a single page website that contains a banner advertisement and provides links to other commercial sites.
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.
Complainant asserts common law rights in the BARRY ZITO mark as it reflects his name and represents the possibility of significant value in endorsements flowing from Complainant’s Major League Baseball fame. Complainant’s Submission provides evidence supporting Complainant’s national fame with regards to baseball, and includes Complainant conducting various national interviews on the Internet and television. Complainant’s name has been prominent in the realm of Major League Baseball at the very least since 1999, when he was Oakland’s top draft pick. Complainant is a well-known Major League Baseball player and has acquired common law trademark rights in his name, BARRY ZITO.
The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the Complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy. See McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Respondent’s <barryzito.com> domain name is identical to Complainant’s BARRY ZITO common law mark. Respondent’s contested domain name reflects Complainant’s mark in its entirety, being identical in pronunciation, appearance, connotation and commercial impression. Respondent’s domain name deviates from Complainant’s mark only with the inconsequential addition of the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD fails to make Respondent’s domain name separate and distinct because it is required in a domain name; thus, Respondent’s domain name is rendered identical. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Accordingly, the Panel determines that Policy ¶ 4(a)(i) has been satisfied.
Although the burden of proof is on Complainant, Paragraph 4(c) of the Policy advises Respondent how to demonstrate rights and legitimate interests in the domain name. Because Respondent has failed to submit a Response in this proceeding, and Complainant’s allegations have gone unopposed, the Panel is permitted to make all reasonable inferences in favor of Complainant. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
Additionally, when Respondent fails to submit a Response and its rights and interests are not apparent to the Panel, it may be presumed that Respondent lacks rights and legitimate interests in the <barryzito.com> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Respondent’s primary use of the subject domain name is in conjunction with the operation of a single page website. Respondent undoubtedly collects advertising revenue from the advertising banner that borders the top of the website. Complainant’s Submission also provides unrefuted evidence that Respondent also links its website to other commercial sites. When Internet users click on Respondent’s “Abuzz Media” link, they are taken to Abuzz Media, a commercial website. Respondent’s opportunistic attempt to commercially benefit from the fame associated with Complainant’s BARRY ZITO mark by diverting interested Internet users to its website is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); 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 Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).
Furthermore, there is no evidence suggesting Respondent is known by the BARRY ZITO mark, or its <barryzito.com> domain name pursuant to Policy ¶ 4(c)(ii). Circumstances indicate that Respondent is an enthusiast of Complainant and is known as Stan Andruszkiewicz. See Marino v. Video Images Prod., D2000-0598 (WIPO Aug. 2, 2000) (“in light of the uniqueness of the name <danmarino.com>, which is virtually identical to the Complainant’s personal name and common law trade mark, it would be extremely difficult to foresee any justifiable use that the Respondent could claim. On the contrary, selecting this name gives rise to the impression of an association with the Complainant which is not based in fact”); see also 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).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has provided uncontested evidence that Respondent’s website contains advertisements and links to third-party websites. From the aforementioned websites, Respondent is assuredly collecting advertising revenue, as is the general purpose and practice behind placing advertisements on websites. Respondent is able to attract Internet users interested in Complainant by creating a likelihood of confusion between the <barryzito.com> domain name and Complainant’s mark. Respondent commercially benefits from the confusion its website generates; thus, Respondent registered and uses the subject domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its own website for commercial gain).
The criteria specified in Policy Paragraph 4(b) do not represent an exhaustive listing of bad faith evidence. The Panel may take into consideration the totality of circumstances in determining whether Respondent registered or used the <barryzito.com> domain name in bad faith. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
The registration and use of a domain name that incorporates Complainant’s likeness by someone with no connection to Complainant suggests bad faith. Respondent opportunistically registered the subject domain name despite knowledge that Complainant held preexisting rights in the name. Even though Complainant did not enjoy national recognition until at least 1999, the date of that achievement still predates Respondent’s registration of the domain name. Such disregard for the existing rights Complainant holds in the BARRY ZITO mark evidences bad faith registration and use under Policy ¶ 4(a)(iii). See Experience Hendrix, L.L.C. v. Hammerton D2000-0364 (WIPO Aug. 15, 2000) (finding bad faith because “registration and use of the domain name <jimihendrix.com> by the Respondent do not predate the Complainant’s use and rights in the name and mark but rather appears to be an attempt to usurp the Complainant’s rights therein”); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding bad faith where Respondent used the domain name <anneofgreengables.com> to link users to a web site that contains information about the Anne of Green Gables literary works, motion pictures and the author, L. M. Montgomery, where a visitor to the web site may believe that the owner of the mark ANNE OF GREEN GABLES is affiliated with or has sponsored or endorsed Respondent's web site); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").
Accordingly, the Panel determines that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <barryzito.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 20, 2002
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