Bernard Tomic v. This Domain Maybe For Sale Or Lease .com
Claim Number: FA0808001220743
Complainant is Bernard
Tomic (“Complainant”), represented by Julie
Lewis-Sroka, of IMG Worldwide, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bernardtomic.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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 18, 2008.
On August 18, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bernardtomic.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 August 22, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 11, 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@bernardtomic.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 23, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
On September 23, 2008, a submission was received by The Forum and forwarded to the Panel. The panel reviewed this submission prior to making a decision.
On September 26, 2008, a submission was received by The Forum and forwarded to the Panel. The panel reviewed this submission prior to making a decision.
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 <bernardtomic.com> domain name is identical to Complainant’s BERNARD TOMIC mark.
2. Respondent does not have any rights or legitimate interests in the <bernardtomic.com> domain name.
3. Respondent registered and used the <bernardtomic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bernard Tomic, is a 15-year-old junior tennis player. In 2004, 2006 and 2007, Complainant won the Orange Bowl, the most prestigious and competitive event on the International Tennis Federation’s (ITF) World Junior Championships tour. Complainant is currently ranked second in the world on the 2008 World ITF Junior Rankings. Complainant is well-known and admired around the world for his athletic achievements and currently receives various endorsements and licensing deals with a variety of commercial organizations including Head Sport, AG and Nike USA, Inc.
Respondent’s <bernardtomic.com> domain name was registered on April 19, 2006 shortly after Complainant began to receive extensive press coverage of his athletic accomplishments. The disputed domain name currently resolves to a website displaying a range of links to third-parties offering goods and services wholly unrelated to Complainant. Before initiation of this dispute, Complainant contacted Respondent about Respondent’s infringing use. Respondent replied in an e-mail stating: “You are quite welcome to put forward your best offer for the domain, however I would be very surprised if it came close to what I will be able to get for it in 3-5 years time.”
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.
Complainant need not have registered its mark with a
governmental trademark authority in order to establish rights in its mark under
Policy ¶ 4(a)(i). 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 and that it is sufficient
to show common law rights in holding that the complainant has common law rights
to her name). Complainant can establish common law
rights in its name if it can demonstrate that it is well-known and provides
either goods or services under its name or reputation. See
Complainant is a world famous tennis player holding licensing deals with at least two major corporate sponsors: Nike USA, Inc. and Head Sport, AG. The Panel finds that Complainant’s athletic success, publicity and commercial sponsorship demonstrate that Complainant has sufficient common law rights for the purposes of Policy ¶ 4(a)(i) in the name BERNARD TOMIC. See 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); see also Vandergriff & Vandergriff Motorsports, Ltd. v. Sklute & Racers Edge Photography, FA 959691 (Nat. Arb. Forum May 29, 2007) (finding common law rights in the name of a drag race car driver who marketed merchandise under his own name).
The <bernardtomic.com> domain name is identical
to the BERNARD TOMIC name but for the omission of a space and inclusion of the
generic top-level domain (“gTLD”) “.com.”
It is well-established that the omission of spaces and inclusion of a
gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. Accordingly, the Panel finds that the <bernardtomic.com>
domain name is identical to Complainant’s BERNARD TOMIC mark pursuant to Policy
¶ 4(a)(i). See
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Before the Panel may proceed with its analysis under Policy ¶ 4(a)(ii), it must determine whether or not Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. See Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, “the Panel may decline to transfer the disputed domain name”). The Panel finds that Complainant has met this threshold thus shifting the burden to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. See F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”).
Respondent has failed to reply to the Complaint. Accordingly, the Panel may presume that Respondent lacks all rights and legitimate interests in the disputed domain name. Nonetheless, the Panel will continue to examine the record in consideration of the elements listed under Policy ¶ 4(c). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
The disputed domain name’s WHOIS information lists Respondent under the alias “This Domain Maybe For Sale Or Lease.Com.” Without any additional information in the record, the Panel concludes that there is no support in the record to even allow for the inference that Respondent is or ever was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <bernardtomic.com> domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name).
The <bernardtomic.com> domain name resolves to
a website offering various goods and services wholly unrelated to
Complainant. The Panel finds that this
does not constitute either a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Vance Int’l, Inc. v. Abend, FA
970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a
pay-per-click website at a confusingly similar domain name does not represent a
bona fide offering of goods or
services or a legitimate noncommercial or fair use, regardless of whether or
not the links resolve to competing or unrelated websites or if the respondent
is itself commercially profiting from the click-through fees); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25,
2007) (finding that where a respondent has failed to offer any goods or
services on its website other than links to a variety of third-party websites,
it was not using a domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii)).
Additionally, before the filing of this Complaint,
Complainant contacted Respondent about its infringing use of the disputed
domain name. Complainant contends that
Respondent offered to sell the disputed domain name to Complainant. The Panel finds that this willingness to
dispose of the disputed domain name to be additional evidence that Respondent lacks rights and legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun
Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under
the circumstances, the respondent’s apparent willingness to dispose of its
rights in the disputed domain name suggested that it lacked rights or
legitimate interests in the domain name); see
also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)
(finding the respondent’s conduct purporting to sell the domain name suggests
it has no legitimate use).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s
administrative contact information lists Respondent’s alias as “This Domain
Maybe for Sale Or Lease.com.”
Additionally, after Respondent was initially contacted by Complainant,
Respondent wrote an e-mail to Complainant stating that “You are quite welcome
to put forward your best offer for the domain, however I would be very
surprised if it came close to what I will be able to get for it in 3-5 years
time.” The Panel finds that Respondent’s
alias in conjunction with this admission demonstrates that Respondent
registered and is using the disputed domain name in bad faith pursuant to
Policy ¶ 4(b)(i) for the sole purpose of selling it to Complainant or another
for considerable financial compensation.
See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
general offer of the disputed domain name registration for sale establishes
that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding bad faith where the respondent’s WHOIS registration information
contained the words, “This is [sic] domain name is for sale”); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc.,
FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell
a domain [name] bad faith is some accompanying evidence that the domain name
was registered because of its value that is in some way dependent on the
trademark of another, and then an offer to sell it to the trademark owner or a
competitor of the trademark owner").
The <bernardtomic.com>
domain name resolves to a website displaying a variety of links to
third-parties offering goods and services unrelated to Complainant. The Panel presumes that these links provide
commercial benefit to Respondent through some version of a referral fee. Accordingly, the Panel finds this to be
additional evidence of Respondent’s bad faith registration and use of the
disputed domain name pursuant to Policy ¶ 4(b)(iv). See Carey Int’l, Inc. v. Kogan, FA
486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is
capitalizing on the confusing similarity of its domain names to benefit from
the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent
registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”); see also Constellation Wines U.S., Inc. v.
Additionally, Complainant contends that Respondent’s registration is an example of opportunistic bad faith. The disputed domain name is identical to Complainant’s name and was registered just after Complainant started to receive considerable press coverage for its athletic accomplishments. The Panel agrees and considers Respondent’s timing in registering an identical domain name is evidence of Respondent’s opportunistic bad faith in registering and using the <bernardtomic.com> domain name under Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (finding that “…Respondent’s disputed domain names must cause Internet users mistakenly to believe that the disputed domain names are affiliated with Complainant. The user confusion that the domain names must cause is evidence that Respondent registered and used the domain names in bad faith.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bernardtomic.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: October 7, 2008
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