Brayden T. Quinn a/k/a Brady
Quinn v. Randy Darr
Claim Number: FA0906001267051
PARTIES
Complainant is Brayden T. Quinn a/k/a Brady
Quinn (“Complainant”), represented by
Shannon McCue, of Hahn Loeser &
Parks,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bradyquinn.com>, registered with Godaddy.com,
Inc.
PANEL
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.
Flip Petillion as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 8, 2009; the
National Arbitration Forum received a hard copy of the Complaint on June 9, 2009.
On June 8, 2009, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <bradyquinn.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 June 10, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 30, 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@bradyquinn.com by e-mail.
A timely Response was received and determined to be complete on June 30, 2009.
On July 6, 2009, the National Arbitration Forum received an Additional
Submission of the Complainant.
On July 9, 2009, the National Arbitration Forum received an Additional
Submission of the Respondent.
On July 6, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Flip Petillion as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Brady Quinn, is a professional American football player
and has been a quarterback for the Cleveland Browns professional football team
since 2007. Brady Quinn’s skills and accomplishments as a football player were
commented as from 2001 in national media.
Complainant argues that the commercial value of Brady Quinn’s name has
grown since that time.
As from December 5, 2007 Complainant started to use his name for
product endorsements. On April 22, 2009 Complainant has filed a
Complainant argues that Respondent registered
the domain name <bradyquinn.com>
with an intent to sell, rent, or otherwise profit from
Complainant’s name. Complainant also argues that the domain name is being used
to prevent Complainant from reflecting his name and trademark in a
corresponding domain name and that the domain name is parked by Godaddy.com for
the Respondent and contains a number of sponsored links.
Complainant contends that Respondent's domain
name is confusingly similar to Complainant’s registered mark and operating
name. Complainant further contends that Respondent has no rights or legitimate
interests in the domain name. Complainant contends that Respondent
registered and is using the domain name in bad faith.
B. Respondent
Respondent contends i) that the disputed domain name is not identical
or confusingly similar to a trademark or service mark in which the Complainant
has rights, and ii) that the domain name was not registered or used in bad
faith.
C. Additional Submissions
Complainant
In its additional submission, Complainant argues to have sufficient rights to invoke the Policy at the time of filing the Complaint. Complainant argues that the better time for determining rights is at the time the complaint is filed, since Complainant considers that the registrant has merely parked the disputed domain name and lacks any legitimate interest.
Complainant argues that it has common law rights in the trademark Brady Quinn predating Respondent’s registration of the disputed domain name.
Nevertheless, Complainant recognizes that he did not commercially exploited his own name prior to Respondent’s registration of the disputed domain name.
Complainant further argues that Respondent has shown no legitimate rights in the domain name and that the only plausible explanation for Respondent’s registration is that Brady Quinn’s notoriety attracted his attention, and he registered the disputed domain name for the purpose of profiting from Complainant’s name.
The fact that Respondent uses the disputed domain name for a parking page and has offered to sell the domain name, make Complainant conclude that the domain name has been registered and used in bad faith.
Respondent
Respondent responds to Complainant’s additional submission by arguing that Complainant must have acquired rights in a mark prior to the domain registration date.
Respondent also argues that all of the articles submitted prior to the domain registration date are from publications which are local in nature, most of which are from the general vicinity of where the Complainant resided, and thus arguing that the Complainant’s name had not acquired secondary meaning in the marketplace.
Furthermore, Respondent contends that there can be no finding of bad
faith registration in this case because the Complainant did not have rights in
the name at the time of registration.
Respondent also contends that the passive holding of the website alone
cannot show bad faith use. Respondent claims that he
is not receiving any revenue from the links on the site and thus claims not to
make bad faith use of the domain name.
Finally, Respondent requests the Panel to rule in favor of the Respondent
and to issue a ruling of Reverse Domain Name Hijacking. Respondent considers this appropriate, since
in its opinion Complainant falsely alleged that the passive holding of the domain
name generated revenue for Respondent.
FINDINGS
1.
Complainant has filed a request on April 22, 2009 for a
service mark registration under number 77,719,317 at the USPTO for the service
mark BRADY QUINN.
2.
The service mark was first used on December 5, 2007.
Complainant has since used his fame to endorse commercial products.
3.
Respondent registered the domain name <bradyquinn.com>
on November 15, 2002. At that time, the sportive accomplishments of Complainant
had been commented in various newspapers.
4.
Respondent uses the domain name as a parking page with pay
per click advertisements.
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.
Complainant is a professional American football player
with the Cleveland Browns American professional football organization. Complainant contends that he has been
featured in national media since at least as early as August 2002, when the
Chicago Tribune reported that he had committed to playing football for the
University of Notre Dame.
On April 22, 2009 Complainant filed a request for a
service mark registration under number 77,719,317 at the USPTO for the service
mark BRADY QUINN. The service mark was first used on December 5, 2007.
Complainant has since used his fame to endorse commercial products. Complainant contends that this media
attention gave the BRADY QUINN mark commercial value and secondary
meaning.
The Panel is of the opinion that in the period before Complainant filed a request for a service mark registration, its personal name was not specifically protected by the UDRP. Nevertheless, in situations where an unregistered personal name is being used for trade or commerce, the Complainant can establish common law trademark rights in the name.
In order to meet this requirement,
the name in question should be actually used in trade or commerce to establish
unregistered trademark rights. Merely having a famous name (such as a
sportsman, businessman, or religious leader) is not necessarily sufficient to
show unregistered trademark rights. See
From the USPTO service mark filing, it appears that the
first date use of goods and services was December 5, 2007. Although, the
request was only filed on April 22, 2009, it is not inconceivable that the
service mark already had acquired secondary meaning shortly after the first use
of the service mark, as a result of the media attention and fame of
Complainant. However the Panel finds
that Complainant fails to adduce sufficient proof that it has established
common law rights before its USPTO service mark filing for the BRADY QUINN
mark.
Complainant contends that Respondent’s <bradyquinn.com> domain name is identical to its BRADY QUINN mark. The <bradyquinn.com> domain name differs from Complainant’s mark only in that the space has been removed from the mark, and the generic top-level domain (“gTLD”) “.com” has been added to the end of the mark. The Panel finds that neither the removal of a space, nor the addition of a gTLD, sufficiently distinguish a domain name from the mark it incorporates, because spaces cannot be included in domain names, and every domain name must include a top-level domain. See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"). Therefore, the Panel finds that these alterations of the BRADY QUINN mark do not sufficiently distinguish the disputed name, and thus find that Respondent’s <bradyquinn.com> domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Respondent rightfully argues that
its registration of the <bradyquinn.com>
domain name predates Complainant’s
rights in the mark. However, the Panel is of the opinion that such a
determination is not necessary under Policy ¶ 4(a)(i)
as this portion of the Policy considers only whether Complainant has rights in
the mark(s) and whether the disputed domain name is identical or confusingly
similar to Complainant’s mark. See AB
Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the
UDRP does not require a complainant to have registered its trademark prior to
the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶
4(a)(iii)); see also Clear!Blue Holdings,
L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007)
(“Although the domain name in dispute was first registered in 1996, four years
before Complainant’s alleged first use of the mark, the Panel finds that
Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶
4(a)(i).”)
The Panel is of the opinion that
Complainant must first make a prima facie case that Respondent lacks
rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it
does have rights or legitimate interests.
See 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 UDRP ¶
4(a)(ii) before the burden shifts to the respondent to
show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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
interests in the subject domain names.”).
Complainant contends
that Respondent is not commonly known by the <bradyquinn.com>
domain name nor has it ever been the owner or licensee of the BRADY QUINN mark. The WHOIS record for the disputed domain name
lists Respondent as “Randy
Darr.” What’s more, Respondent
does not make any claim ever to have been commonly by the BRADY QUINN
mark. Therefore the Panel finds that
Respondent is not commonly known by the <bradyquinn.com> domain name pursuant to Policy ¶ 4(c)(ii). See
Am. Online, Inc. v. World Photo Video &
Imaging Corp., FA 109031 (Nat. Arb.
Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com>
or <aolcameras.com> because the respondent
was doing business as “Sunset Camera” and “World Photo Video &
Imaging Corp.”);
see also MRA Holding, LLC
v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the
disputed domain name does not even correctly spell a cognizable phrase” in
finding that the respondent was not “commonly known by” the name “girls gon
wild” or <girlsgonwild.com>).
Respondent is using the <bradyquinn.com> domain name to redirect Internet visitors to a parking site with links advertising products related to Complainant. The Panel finds that Respondent’s use of the <bradyquinn.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Complainant also contends that Respondent has offered to sell the <bradyquinn.com> domain name for $2000 to Complainant. The Panel is of the opinion that this is evidence that Respondent has foregone any claim to rights or legitimate interests in the <bradyquinn.com> domain name pursuant to Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also 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).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
As Respondent’s registration of the disputed domain name predates Complainant’s common law rights, the Panel finds that there is no possibility that Respondent could have registered, the <bradyquinn.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant's company did not exist at the time of registration); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
The fact that Complainant’s accomplishments as a sportsman have been featured in national media before the registration of the disputed domain name does not evidence bad faith registration, since Complainant does not adduce conclusive evidence that its unregistered personal name was being used for trade or commerce at the date of the registration of the disputed domain name, let aside that the Complainant established common law trademark rights in the name predating the registration of the disputed domain name.
Since it is established that the disputed
domain name was not registered in bad faith, the question whether or not this
domain name is used in bad faith has become irrelevant.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
Flip Petillion, Panelist
Dated: July 20, 2009
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