Floyd Mayweather, Jr. v. Raymond Padilla
Claim Number: FA0806001202836
Complainant is Floyd Mayweather (“Complainant”), represented by Ronald
D. Green, of Greenberg Traurig, LLP,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <moneymayweather.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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 6, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 9, 2008.
On June 9, 2008, Godaddy.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <moneymayweather.com> domain name is registered with Godaddy.Com, Inc. and that 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 June
12, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 2, 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 postmaster@moneymayweather.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
A. Complainant makes the following assertions:
1. Respondent’s <moneymayweather.com> domain name is confusingly similar to Complainant’s FLOYD MAYWEATHER mark.
2. Respondent does not have any rights or legitimate interests in the <moneymayweather.com> domain name.
3. Respondent registered and used the <moneymayweather.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Floyd Mayweather, is a professional boxer who is considered by many to be one of the greatest boxers of all time. He holds a professional record of 39-0, and is the current WBC welterweight champion. Complainant has been featured in many different publications, including The Ring Magazine, which named him “Fighter of the Year” in 1998 and 2007. Complainant also competed in the Olympics, and earned a bronze medal in the 1996 games. In addition to his boxing accomplishments, Complainant has also appeared on the television show Dancing with the Stars, and competed in the pro wrestling Wrestlemania XXIV event.
Complainant primarily promotes himself through his name, FLOYD MAYWEATHER. Complainant also uses the nicknames “Money Mayweather” and “Pretty Boy Floyd.”
Respondent, Raymond Padilla, registered the <moneymayweather.com> domain name on December 7, 2007 and uses it to host a pay-per-click site unrelated to Complainant.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); 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.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
A long line of cases demonstrates that Complainant need not own a trademark registration in order to establish rights in a mark as required by the Policy. See, e.g., Hiatt v. Pers. Fan & Official Site Builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“Registration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant does not provide evidence of any registered trademarks, but does allege rights to both FLOYD MAYWEATHER and MONEY MAYWEATHER. While Complainant may indeed be known by the MONEY MAYWEATHER nickname and mark, there is insufficient evidence in the record demonstrating the use or fame of this mark to confer common law rights under the Policy. This is immaterial, however, since Complainant has clearly established common law rights in his name, FLOYD MAYWEATHER. Complainant is an accomplished and well-known boxer, and has demonstrated his wide array of talents through other ventures as well, such as competing on Dancing with the Stars. Panels have noted that celebrities can establish rights in their names based upon their use in commerce – especially sports stars. The panel in Garnett v. Trap Block Techs., FA 128073 (Nat. Arb. Forum Nov. 21, 2002) recognized that the complainant, Kevin Garnett, had acquired sufficient common law rights in his name by virtue of his tremendous sports accomplishments. The Panel finds that Complainant has established similar common law rights in FLOYD MAYWEATHER pursuant to Policy ¶ 4(a)(i) through his athletic achievements. 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 …”).
Complainant must prove rights that predate Respondent’s registration of the disputed domain name. While an exact date as to when Complainant’s name achieved its fame cannot be pinpointed, the Panel is more than satisfied that Complainant’s rights predate the registration of the <moneymayweather.com> domain name considering Complainant earned an Olympic bronze medal in 1996 and was named “Fighter of the Year” in a magazine in 1998. The Panel need not say more on this point.
The <moneymayweather.com> domain name contains Complainant’s last name, MAYWEATHER, and adds the term “money,” which the Panel has noted is one of Complainant’s nicknames. FLOYD MAYWEATHER is also a distinctive name, so MAYWEATHER is the dominant element of the disputed domain name. The term “money” is certainly associated with Complainant as well, whose career has brought him much financial success. The only other addition in the disputed domain name is the “.com,” which is irrelevant to a Policy ¶ 4(a)(i) analysis. Therefore, the Panel concludes that Respondent’s <moneymayweather.com> domain name is confusingly similar to Complainant’s FLOYD MAYWEATHER mark pursuant to Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that the elements of Policy ¶ 4(a)(i) have been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <moneymayweather.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant contends that Respondent, identified in the
WHOIS records as “Raymond Padilla,” is not commonly known by the <moneymayweather.com>
domain name. There is no other evidence in
the record indicating that Respondent may be commonly known by the disputed
domain name. The Panel therefore
concludes that Respondent lacks rights and legitimate interests pursuant to
Policy ¶ 4(c)(ii).
See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding
that the respondent was not commonly known by the <cigaraficionada.com>
domain name under Policy ¶ 4(c)(ii) based on the WHOIS
information and other evidence in the record); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding
that the respondent was not commonly known by the <shoredurometer.com>
and <shoredurometers.com> domain names because the WHOIS information
listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the
registrant of the disputed domain name and there was no other evidence in the
record to suggest that the respondent was commonly known by the domain names in
dispute).
Respondent is using the <moneymayweather.com>
domain name for a pay-per-click site. Respondent likely profits from each Internet user who clicks on one
of the advertised links. The fact
that these links are unrelated to Complainant is immaterial; Respondent is
attempting to profit off Complainant’s goodwill. Such use does not constitute 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). See Constellation Wines
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been proven.
Respondent’s use of the confusingly similar <moneymayweather.com> domain name may cause confusion among Internet users as to the source, sponsorship, affiliation, or endorsement of the resolving website. As mentioned above, Respondent is attempting to profit off the goodwill associated with Complainant and his likeness, which is clear evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
While bad faith has already been proven, the Panel also notes that Complainant is a public figure with a distinctive name. This combined with the fact that “Money Mayweather” is Complainant’s nickname leads the Panel to believe that Respondent had actual knowledge of Complainant’s rights in his name and nickname. The Panel therefore finds bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith).
In light of the above findings, the Panel concludes 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 GRANTED.
Accordingly, it is Ordered that the <moneymayweather.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: July 10, 2008
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