Manny Ramirez v. Robert Reilly
Claim Number: FA1004001320920
Complainant is Manny Ramirez, represented by Joseph
Englander, of Shutts & Bowen LLP, (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mannyramirez.com>, registered with Deutchdomains, LLC.
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.
Anne M. Wallace, Q.C. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On April 26, 2010, Deutchdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <mannyramirez.com> domain name is registered with Deutchdomains, LLC., and that the Respondent is the current registrant of the name. Deutchdomains, LLC., has verified that Respondent is bound by the Deutchdomains, LLC, 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 April 29, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of May 19, 2010 by which Respondent could file a
Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s
registration as technical, administrative, and billing contacts, and to
e-mail. Also on
A timely Response was received and determined to be complete on
Complainant’s Additional Submission was received on
Respondent’s Additional Submission was received on
Complainant requests that the domain name be transferred from Respondent to Complainant.
· Complainant owns recognized rights in the MANNY RAMIREZ mark because it is well established that celebrities have adequate rights in their names to satisfy the initial thresholds of ICANN Policy 4(a)(i). See Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (finding “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).
· As a Major League baseball player, Complainant has used the common law trademark and service mark MANNY RAMIREZ at least since his major league debut in 1993. A nine-time Silver Slugger, and one of only twenty-five people to have hit over 500 career home runs, he is well recognized for his strong offensive abilities. He has the most career grand slams of any active player and the second most of any player after Lou Gehrig. He has led the American League in three key batting measures: batting average, home runs and runs batted in. For the past eleven years, Ramirez has been a twelve-time All-Star and a fixture in the All-Star game. In 2004, he was named the Most Valuable Player of the World Series after helping the Boston Red Sox win their first World Series championship in over 86 years.
· Therefore, Complainant says Complainant’s MANNY RAMIREZ mark has established secondary meaning, as a means of marketing Complainant’s celebrity and merchandise featuring the mark, sufficient to satisfy ICANN Policy 4(a)(i).
registered the Disputed Domain Name on
· The Disputed Domain Name comprises Complainant’s MANNY RAMIREZ mark in its entirety so the public will automatically associate the Disputed Domain Name with Complainant.
· Respondent lacks rights and legitimate interests in the Disputed Domain Name under Policy 4(a)(ii). Complainant has never authorized Respondent to use the MANNY RAMIREZ mark or any mark relating to the MANNY RAMIREZ mark.
· Respondent has never commonly been known by the Disputed Domain Name or the MANNY RAMIREZ mark and has never acquired trademark rights in the name or mark. Respondent is identified as “Robert Reilly”. Respondent’s name is not MANNY RAMIREZ and he has no business operating under the MANNY RAMIREX mark and has no relationship to Complainant.
has not used or demonstrably prepared to use the Disputed Domain Name in connection
with a bona fide offering of goods or
services. According to Internet Archive Wayback Machine, Respondent has made no
use of the website other than parking it, since the name was registered on
· Complainant, like most professional athletes and celebrities, is the owner of a famous, strong trademark that is well-known internationally. Respondent has had ample time to post a legitimate website. Respondent has done nothing and has not prepared to do anything legitimate with the website. The only appropriate conclusion is that Respondent chose the Disputed Domain name because of Complainant’s fame and the goodwill associated with Complainant’s mark. In light of the uniqueness of the Disputed Domain Name, which is identical to Complainant’s personal name and common law trademark, it would be extremely difficult to foresee any justifiable use the Respondent could claim.
· By including the term “baseball” on the parking page, Respondent shows bad faith in two ways. First, Respondent acknowledges the fame of Complainant as a professional athlete. Secondly, the term increases the likelihood that a search of Complainant’s name together with the term “baseball” would list the website high on the results list. Thus, the website might be perceived as valuable to a third party purchaser.
· Respondent is not using the Disputed Domain Name in connection with any legitimate product or service. Furthermore, because Respondent has never properly used the Disputed Domain Name, Respondent cannot claim that he is using it in a non-commercial or fair manner.
· Respondent can point to no good faith use or preparations to use the Disputed Domain Name to justify his registration and use of the name. The Disputed Domain Name incorporates Complainant’s mark by someone with no connection to Complainant. This suggests bad faith. Respondent opportunistically registered the Disputed Domain Name despite knowledge that Complainant had pre-existing rights in the name. Complainant has enjoyed international recognition since at least 1993. The date of that achievement long predates Respondent’s registration of the Disputed Domain Name. Such disregard for Complainant’s existing rights evidences bad faith registration and use.
· Respondent has simply parked the Disputed Domain Name for over a year. The Disputed Domain Name is not and has not been actively used. Failure to make active use of the Disputed Domain Name is evidence the Respondent registered and is using the Disputed Domain Name in bad faith.
· Respondent’s registration of the Disputed Domain Name without any bona fide basis for such registration is an attempt to unfairly capitalize on the goodwill of Complainant’s well-known MANNY RAMIREZ mark. This violates the Registration Agreement in which Respondent warranted that, to the best of his knowledge and belief, the registration of the Disputed Domain Name would not infringe the legal rights of a third party.
· Prior panels have held that bad faith exists if it is unlikely the Registrant would have selected the domain name without knowing of the reputation of the trademark in question. Such a finding a particularly apt where Complainant’s mark is well-known, as is the case with the mark of a long-time and well-known athlete like Manny Ramirez.
· Complainant has not established that he has a trademark or service mark. Complainant is not using MANNY RAMIREZ as a trademark.
· Respondent intends to make fair use of the Disputed Domain Name as soon as this conflict is over. Complainant by his warning and threats is interfering with Respondent’s right to use the domain name which Respondent rightfully registered.
Respondent purchased an expired domain
registration and did it for the express purpose of setting up his own business.
Shortly after purchasing the domain Respondent had to relocate from
· Respondent purchased the Disputed Domain Name after Complainant let it expire on March 27, 2009.
· The domain name has been registered in Respondent’s name and he intends to use in good faith without interference from Complainant.
· Respondent says he did not acquire the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, but he would consider possible settlement.
· Respondent says Complainant doesn’t have a trademark. Complainant has no business and he let the Disputed Domain Name expire. Complainant is not using MANNY RAMIREZ as a trademark.
· Complainant has not achieved celebrity status. He has not used his name in such a way as to achieve even common law trademark rights. To show it has a trademark status it requires that the name be used in connection with the sale of product or services and he has established neither one. The clothing articles that he refers to only show use of the phrase “manny” on the t-shirt or variation thereof but not the name in dispute. In any case they are no longer on the market. This is further reinforced by the fact that Complainant’s attorney applied for registration in February of this year based on intent to use only and was clearly an effort to block my continuing use of the name. Also, Complainant let his domain name expire and did not renew it even though the domain registration fee is $10.69 per year.
· Respondent has never used Complainant’s likeness.
C. Additional Submissions
· Respondent’s response does not state any legitimate basis for Respondent to retain registration and use of the Disputed Domain Name. Respondent’s arguments are without merit and have been repeatedly denied in other cases. Complainant sells merchandise using his mark at mannyramirez99.com. The remainder of Complainant’s Additional Submission is mainly a repetition of its arguments in its initial Submission.
· Complainant has failed to establish common law rights in the MANNY RAMIREZ mark because he has failed to show that he has actually used the mark by affixing it to goods.
· Complainant has failed to establish that he has celebrity status because the only evidence of such status is the biography of Manny Ramirez which appears in Wikipedia.
· To prove Complainant has rights in the MANNY RAMIREZ mark, he must establish that the mark is in actual use in connection with a specific product. It is necessary to show the name has acquired secondary meaning in addition to showing that it is used as a trademark. This means continuous and exclusive use over a sufficient period of time to become distinctive.
this dispute is resolved, the website will be used as a blog for current
events. Respondent monitors trends on Google and is able to see what key
phrases are searched the most. This is a great way to drive many visitors to
Respondent purchased the Disputed Domain Name to promote his new blog. Before he purchased it, he checked to see if there was a trademark registration for MANNY RAMIREZ. There was none.
· Respondent says his willingness to settle does not in any manner evidence intent to extract consideration and should be stricken from the records as it would be in a legal dispute.
1. Complainant has common law rights in the MANNY RAMIREZ mark. Other than the .com extension, the Disputed Domain Name is identical to Complainant’s mark.
2. Respondent has no rights or legitimate in the Disputed Domain Name.
3. Respondent has registered and is using the Disputed Domain Name in bad faith.
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 does not own a registered trademark for his MANNY RAMIREZ mark. Previous panels have determined that governmental trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Further, previous panels have decided that a federal trademark registration is not required if Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant argues he has common law rights in the MANNY RAMIREZ mark through significant notoriety and public use of his mark. Complainant contends that as a Major League baseball player he has been using the MANNY RAMIREZ mark since his Major League debut in 1993. Since that time Complainant has been a nine-time “Silver Slugger” and one of twenty-five people to hit over 500 home runs. Complainant has been a twelve time all-star in Major League baseball while establishing his well-known image worldwide. Complainant further contends that his notoriety in winning a Major League championship and leading the American League in batting average, home runs and runs-batted-in while becoming the Most Valuable Player of the 2004 World Series has elevated his mark to having secondary meaning. Complainant also operates a website at <mannyramirez99.com>. This site includes information and products.
Based on the foregoing and the material in evidence,
this Panel is satisfied that Complainant has established sufficient common law
rights under Policy ¶ 4(a)(i) through Complainant’s continuous use, marketing,
and publication of his mark since 1993. See Roberts v. Boyd, D2000-0210 (WIPO
Respondent’s <mannyramirez.com> domain name is identical to his MANNY RAMIREZ mark.
Merely eliminating the space between the words of his mark and adding the
generic top-level domain (“gTLD”) is not enough to render the Disputed Domain Name
distinct from Complainant’s mark. The
Disputed Domain Name merely contains Complainant’s entire mark absent the space
between the terms of the mark and the addition of the gTLD “.com.” See
Therefore, the Disputed Domain Name is confusingly similar to Complainant’s common law mark.
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
The material before the Panel
establishes that Respondent does not have authorization to use Complainant’s
mark and that Respondent is not commonly known by the disputed domain
name. The WHOIS information for the
Disputed Domain Name identifies “Robert
Reilly” as the registrant of the disputed domain name. This shows Respondent is not commonly known
by the disputed domain name. See 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 names and there
was no other evidence in the record to suggest that the respondent was commonly
known by the domain names in dispute); see
also Educ. Broad. Corp. v.
DomainWorks Inc., FA 882172 (Nat. Arb. Forum
rights and legitimate interests in the disputed domain name because Respondent
has not connected the disputed domain name with an active website since
Initially, Respondent said he wanted to use the Disputed Domain Name for the express purpose of setting up his own business. No further information was presented. Respondent now says he wants to use the website for a blog about current events. Respondent has emphasized that he chose the MANNY RAMIREZ name because he knows that as a “key phrase” on the Google search engine, it will attract lots of hits. He says it is a great way to attract many visitors to your website. This shows that he intends to benefit from the use of Complainant’s mark.
The onus having shifted to Respondent, he has been unable to satisfy the Panel that he has any rights or legitimate interests in the Disputed Domain Name. Respondent admits that he cannot establish any of the elements set out in Policy 4(c). Neither has he shown in any other way that he has any right or legitimate interest in the Disputed Domain Name.
Complainant argues that Respondent could not have registered the disputed domain name for any reason other than attempting to sell it to Complainant. Complainant says Respondent continues to deny that he wants to sell the Dispute Domain Name, but continues to refer to a “possible settlement.” Complainant contends that this Response itself is evidence that Respondent registered the disputed domain name for the purpose of extracting consideration from Complainant. The circumstances of the case might raise some suspicion that one possible reason Respondent registered the Disputed Domain Name was to sell, rent or otherwise transfer the domain to Complainant. The evidence before the Panel does not establish, however, that this was the primary reason Respondent registered the Disputed Domain Name. Therefore, Complainant fails in its assertion of bad faith registration and use under Policy 4(b)(i).
This, however, does not end the matter. Based on the evidence before me, the clear inference is that Respondent knew the celebrity status of Manny Ramirez as a professional athlete. The Panel makes two important observations in this regard. First, Respondent mentions “baseball” on the website. Secondly, Respondent made the point more than once in his submissions that he acquired the Disputed Domain Name because of its value as a search term on the Internet. He says he wants to use the Disputed Domain Name to attract visitors to a blog he plans to create. When deciding which domain name to register, Respondent says he determined that MANNY RAMIREZ would be a good way to attract those visitors. Respondent says he monitors trends on Google and is able to see what key phrases are searched the most. He says this is a great way to drive many visitors to your website. He says he purchased the Disputed Domain Name to promote his new blog because of this value. It is difficult to understand how, on the one hand, Respondent says Complainant has not established any rights in the MANNY RAMIREZ mark, while on the other hand Respondent says MANNY RAMIREZ is a key search phrase.
This evidence demonstrates a clear intention on the part of Respondent to use the MANNY RAMIREZ mark for commercial gain. The Panel is satisfied that Respondent would not have registered the Disputed Domain Name had it not been for the value of Complainant’s mark. The Panel finds that this evidence established bad faith within Policy 4(b).
Complainant also argues that
Respondent has not made active use of the disputed domain name and that this
failure to make active use is evidence of registration and use of the disputed
domain name in bad faith. Respondent did not submit any substantive evidence of
his preparations or plans for the disputed domain name. Respondent’s failure to
make active use of the Disputed Domain Name is evidence of bad faith
registration and use under Policy ¶ 4(a)(iii).
See Am. Broad. Cos., Inc.
v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding
that the respondent’s failure to make active use of its domain name in the
three months after its registration indicated that the respondent registered
the disputed domain name in bad faith); see also Pirelli &
C. S.p.A. v.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mannyramirez.com> domain name be TRANSFERRED from Respondent to Complainant.
Anne M. Wallace, Q.C., Panelist
Dated: June 9, 2010
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