ETW Corp. and Eldrick
'Tiger' Woods, for itself, Tiger Woods and his minor child, Charlie Axel Woods
v. Josh Whitford
Claim Number: FA0905001263352
PARTIES
Complainant is ETW Corp. and Eldrick
'Tiger' Woods, for itself, Tiger Woods and his minor child, Charlie Axel Woods (“Complainant”), represented by Julie
Lewis-Sroka, of IMG Worldwide, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <charlieaxelwoods.com>, registered
with Godaddy.com,
Inc.
PANEL
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.
Jeffrey M. Samuels as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 15, 2009; the
National Arbitration Forum received a hard copy of the Complaint on May 18, 2009.
On May 18, 2009, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <charlieaxelwoods.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 May 19, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 8, 2009 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@charlieaxelwoods.com by e-mail.
A timely Response was received and determined to be complete on June 5, 2009.
On June 11, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Jeffrey M. Samuels as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Eldrick `Tiger’ Woods (Tiger Woods) is one of the world’s
best known sports personalities, “via the titanic amount of global exposure he
receives in television broadcasts and Internet coverage of golf tournaments,
exhibitions and charity events….”
TIGER WOODS is the subject of U.S. Trademark Registration 2,442,618,
which issued on April 10, 2001, and covers use of the TIGER WOODS mark in
connection with entertainment in the nature of competitions in the field of
golf and various entertainment services.
The registration is owned by Complainant ETW Corp., which is Tiger
Woods’s personal services corporation. See Complaint, Exhibit D.
Charlie Axel Woods is the second child of Tiger Woods and his wife Elin
Nordgren. Charlie Axel Woods was born on
February 8, 2009, which event was announced and widely reported around the
world in all forms of media. See
Complaint, Exhibit C-1 and C-2. The
disputed domain name, <charlieaxelwoods.com>,
was registered on February 9, 2009, the day after
Charlie Axel Woods was born.
Complainant asserts that the disputed domain name is confusingly
similar to the registered and common law trademarks in which Complainant has
rights. Complainant asserts that TIGER
WOODS “has acquired distinctiveness and such a high degree of secondary
association with Complainant in the mind of the public that even if the name
were not trademarked, common law trademark rights would certainly exist….”
Complainant further alleges that the disputed domain name, less the
“.com” extension, is identical to Complainant’s minor child’s name and common
law trademark, CHARLIE AXEL WOODS.
Complainant contends that Respondent has no rights or legitimate
interests in the subject domain name.
Complainant maintains that: (1) there is no relationship between
Respondent and Charlie Axel Woods or Complainant; (2) <charlieaxelwoods.com> does not correspond to Respondent’s
given name, Josh Whitford; (3) at no time has Complainant assigned, granted,
licensed, sold, authorized or otherwise agreed to Respondent’s use of the mark
CHARLIE AXEL WOODS; and (4) Respondent is not using the domain name in
connection with any bona fide use or making any legitimate noncommercial or
fair use of the domain name.
With respect to the issue of “bad faith” registration and use,
Complainant highlights the fact that the domain name was registered the day
after Charlie Axel Woods was born. Complainant further asserts that Respondent
registered and is holding the domain name primarily, if not exclusively, for
the purpose of selling or otherwise transferring the domain name to Complainant,
or to a third party, for consideration in excess of Respondent’s out-of-pocket
costs directly related to the registration of the subject domain name. To support this allegation, Complainant notes
that Respondent offered the <charlieaxelwoods.com>
domain name registration for sale on eBay on February 18, 2009 (nine days after
the birth of Charlie Axel Woods). The
listing description states, in part, as follows: “This is your chance to own the domain to a
future golf legend or use it in some way to extord (sic) the current golf
legend for some extra cash (not highly recomended (sic) seeing he has lots of
money and lawyers.) I personally feel
someone much more into golf would appreciate the address much more than
myself. I am not really sure why I
bought the domain, but since I am loosing (sic) my job on the 1st of
April anything sounded like a good idea.”
See Complaint, Exhibit C-3.
According to Complainant, the WHOIS record for the disputed domain name directs
users to the eBay listing. See Complaint, Exhibit B-2.
Complainants also refer to a February 18, 2009 email sent by Respondent
to members of the Tiger Woods Community, an official online Internet club,
indicating that Respondent had advised Tiger Woods to register his son’s name
before announcing the name to the public.
“Now that domain name will be worth Millions in the future,” Respondent
predicted. See Complaint, Exhibit C-4.
According to Complainants, “Respondent’s use of the
charlieaxelwoods.com domain name inherently has the potential to confuse
Internet users who encounter that name, and when an Internet user tries to
visit what he or she reasonably believes will be a legitimate web site about or
concerning Complainant and/or CHARLIE AXEL WOODS instead finds that there is no
web site for that domain name and instead are sent to Respondent’s personal
commercial web site at www.joshwhitford.com.”
As depicted in Exhibit E of the Complaint, Respondent’s website consists
of a blog dedicated to unconventional marketing techniques.
In sum, Complainant declares, Respondent “is apparently making an
opportunistic, commercial and bad-faith use of the charlieaxelwoods.com domain
name for Respondent’s personal gain and such use as well as the use of
Complainant’s trademarks leads third parties to believe that [there exists] an
association between Respondent and Complainant.” Complainant points out that a search on the
“Google” search engine for the disputed domain name yields no web site
associated with the domain name.
Instead, the first result is for Respondent’s commercial web site at <joshwhitford.com>,
which uses the name “Unconventional Marketing blog – Learn About
Marketing Ideas.” See Complaint, Exhibit E.
B. Respondent
Respondent asserts that the disputed domain name is not confusingly
similar to any registered or common law trademarks in which Complainant has
rights. While conceding that TIGER WOODS
is a registered mark, Respondent contends that Tiger Woods has no inherent
right to the <charlieaxelwoods.com>
domain name. “A birth does not create a
trademark or entitlement to a domain name.”
Further, Respondent adds, Complainant ETW Corp. seems to have no vested
interest in the subject domain name. Respondent
claims that there is no common law trademark to Charlie Axel Woods.
Respondent also contends that he is using the domain name in a bona fide legitimate noncommercial
manner as a fan page and did not register the domain name for the purpose of
selling or transferring it to Complainant.
He states that his eBay listing for the domain name was satire. Respondent further argues that Complainant has
failed to show any damaging, impairing or blemishing effects due to Respondent’s
registration of the <charlieaxelwoods.com>
domain name.
FINDINGS
The Panel finds that the disputed domain name is not identical or
confusingly similar to a trademark or service mark in which Complainant has
rights. As a result of this finding, the
Panel declines to address the elements of rights or legitimate interests and
bad faith registration and use. See Creative Curb v. Edgetec Int’l Pty. Ltd.,
FA 116765 (Nat. Arb. Forum
Sept. 20, 2002) (finding that because the complainant must prove all three
elements under the Policy, the complainant’s failure to prove one of the
elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard
Protected, FA 836538 (Nat. Arb.
Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or
legitimate interests or its registration and use in bad faith where the
complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
DISCUSSION
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.
The evidence supports a determination that Complainant ETW Corp. owns a registered mark for TIGER WOODS and that Complainant Tiger Woods possesses common law rights in TIGER WOODS. However, in the opinion of the Panel, the alphanumeric string constituting the <charlieaxelwoods.com> domain name is not sufficiently similar to the TIGER WOODS mark.
On the other hand, there is no question but that the <charlieaxelwoods.com> domain name is, for all intents and purposes, identical to the term “Charlie Axel Woods.” The key issue to be decided, however, is whether the personal name “Charlie Axel Woods” is protectable as a common law trademark or service mark. The Panel concludes that it is not.
In reaching this decision, the Panel relies, in part, on the Report of the Second WIPO Internet Domain Name Process, The Recognition of Rights and the Use of Names in the Internet Name System. WIPO, Report of the Second WIPO Internet Domain Name Process, The Recognition of Rights and the Use of Names in the Internet Name System (2001). As noted by the panel in Planned Parenthood Federation of America, Inc. and Gloria Feldt v. Chris Hoffman, D2002-1073 (WIPO March 6, 2003):
In seeking to determine whether the protection of
personal names under the UDRP should be expanded to include right of
personality, WIPO examined the way that personal names were treated in
different legal systems around the world. Second WIPO Report, ¶ 171. It found
that the law rarely protects personal names as such.
The Second WIPO Report noted that Panel decisions had
elected to protect personal names in cases where the laws recognized the
registration of personal names as trademarks or service marks or where
countries recognized the common law acquisition of trademarks or service marks
through use and the acquisition of secondary meaning as the source of goods or
services.
The most cogent of the arguments against modification of
the UDRP is, we believe, the lack of an international norm protecting personal
names and the consequent diversity of legal approaches deployed to protect
personal names at the national level. We consider that this diversity would
place parties and Panelists in an international procedure in an untenable
position and would jeopardize the credibility and efficiency of the UDRP.
In recommending against modification of the current
treatment of personal names under the UDRP, WIPO noted that "[p]ersons who
have gained eminence and respect, but who have not profited from their
reputation in commerce, may not avail themselves of the UDRP to protect their
personal names against parasitic registrations. The UDRP is thus perceived by
some as implementing an excessively materialistic conception of contribution to
society."
In reviewing the UDRP cases in light of the Second WIPO
Report, perhaps no matter has been so thorough and
well-reasoned as the decision of the Panel in Israel Harold Asper v.
Communication X Inc., WIPO Case No. D 2001—540 (analyzing cases existing at
that time in light of the Interim Second WIPO Report). The Panelist divided the
personal name cases into six categories. The category that includes the most
cases is that involving persons from the entertainment industry. The second
most numerous category was that of professional athletes. The four other
categories, with few cases in each (some overlapping) were authors, business
people, royalty and politicians. The Panel found that the cases
effectively required that for a personal name to be eligible for trademark or
service mark status it needed to be used "for the purpose of merchandising
or other commercial promotion of goods or services."
Later cases have held that in order for a personal name
to acquire trademark or service mark status in a jurisdiction that recognizes
common law marks, the personal name must be used in connection with the
commercial offering of goods or services and must have acquired secondary
meaning as the source of such goods or services. Dr. Michael Crichton v.
Alberta Hot Rods, WIPO Case No. D2002-0872, at page 3 ("In light of
the Second WIPO Domain Name Process, it is clear that the Policy is not
intended to apply to personal names that have not been used commercially and
acquired secondary meaning as the source of goods and or services, i.e., common
law trademark rights."). See, also, The Reverend Dr. Jerry Falwell and
The
Complainants baldly assert that “Charlie Axel Woods” is a common law trademark but have presented no evidence that "Charlie Axel Woods” has been used in connection with the commercial offering of goods or services or that the personal name in question has acquired secondary meaning as the source of such goods or services. Accordingly, the Panel finds that Complainant does not have trademark or service mark rights in the name “Charlie Axel Woods.”
In view of the Panel’s determination on the
issue of the existence of trademark or service mark rights in “Charlie Axel
Woods,” there is no need to consider this element of the Policy.
In view of the Panel’s determination on the
issue of the existence of trademark or service mark rights in “Charlie Axel
Woods,” there is no need to consider this element of the Policy.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that Complainants’ requested relief shall be DENIED.[1]
Jeffrey M. Samuels, Panelist
Dated: June 24, 2009
[1] The Panel’s decision in this matter does not preclude Complainants from seeking relief through other legal means.
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