James Taft “Jimmer” Fredette v. JimmerOnline.com c/o Michael Ralbovsky
Claim Number: FA1202001428744
Complainant is James Taft “Jimmer” Fredette (“Complainant”), represented by R. Parrish Freeman of Workman Nydegger, Utah, USA. Respondent is JimmerOnline.com c/o Michael Ralbovsky (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jimmerfredette.com>, <jimmer-fredette.com>, <jimmeronline.com>, and <jimmerlive.com>, registered with Wild West Domains, LLC.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 8, 2012; the National Arbitration Forum received payment on February 8, 2012.
On February 23, 2012, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <jimmerfredette.com>, <jimmer-fredette.com>, <jimmeronline.com>, and <jimmerlive.com> domain names are registered with Wild West Domains, LLC and that Respondent is the current registrant of the names. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2012 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 postmaster@jimmerfredette.com, postmaster@jimmer-fredette.com, postmaster@jimmeronline.com, and postmaster@jimmerlive.com. Also on February 24, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, James Taft “Jimmer” Fredette, is currently a professional basketball player playing in the United States National Basketball Association.
2. Complainant was given the nickname JIMMER as a young child and has been known as JIMMER or JIMMER FREDETTE ever since that time.
3. Complainant is the only known professional basketball player to ever be known by the name JIMMER or JIMMER FREDETTE.
4. Respondent, JimmerOnline.com c/o Michael Ralbovsky, registered the <jimmerfredette.com>, <jimmer-fredette.com>, <jimmeronline.com>, and <jimmerlive.com> domain names on July 25, 2007, January 28, 2011, January 29, 2011, and January 29, 2011, respectively.
5. Respondent’s disputed domain names are confusingly similar to the JIMMER and JIMMER FREDETTE marks.
6. Respondent previously used the domain names to redirect Internet users to the <dreamsleepmattress.com> domain name for commercial profit.
7. Respondent currently redirects the domain names to Complainant’s brother’s website at <tjfredette.com>.
8. Until July of 2011, Respondent had listed “Springs Technical Publications, Inc.” as the registrant name with “Michael (or Mike) Ralbovsky” as the technical and administrative contact while only recently adding the fictitious entity, “JimmerOnline.com,” as the registrant.
9. Respondent registered the domain names during Complainant’s senior seasons in both high school and college as Complainant’s national fame grew.
10. Respondent registered and used the domain names in bad faith to commercially profit from its redirection scheme.
B. Respondent did not submit a Response to these proceedings.
For the reasons set forth below, the panel finds Complainant is entitled to the transfer of the domain names.
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."
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.
(4) 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.”).
Complainant does not argue that he owns a trademark registration for his JIMMER or JIMMER FREDETTE marks, but does argue that he has common law rights in both of those marks. The UDRP Policy does not distinguish between registered and unregistered marks under Policy ¶ 4(a)(i). 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 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). Therefore, the Panel finds that the registration of a trademark is unnecessary under Policy ¶ 4(a)(i) so long as Complainant can establish that he has common law rights in his marks.
Complainant claims rights in the JIMMER and JIMMER FREDETTE marks under Policy ¶ 4(a)(i). Complainant claims to have been given the nickname JIMMER at an early age and that he has used that name openly and extensively since that time. Complainant notes that he grew up in Glens Falls, New York, and began to receive fame and notoriety for his basketball acumen around 2006 as a high school athlete. Complainant asserts that he was named the 2006 “Player of the Year” by two central New York state newspapers, as well as the 2007 “Player of the Year” by local television news stations. Complainant argues that this fame grew after he entered the Brigham Young University in 2007 resulting in his becoming a “pop culture phenomenon” by 2011. Complainant notes that his college basketball career was highlighted with the 2011 national scoring title and the National Consensus Player of the Year awards. Complainant further notes that he was featured on the cover of Sports Illustrated on March 19, 2011 and March 28, 2011. Finally, Complainant asserts that he was selected the 10th overall pick in the National Basketball Association draft in June of 2011 and is currently playing for the Sacramento Kings franchise. Complainant goes on to note that he is the only known National Basketball Association player by the name of JIMMER or JIMMER FREDETTE and that his name has gained notoriety and fame throughout his years of usage as a basketball player.
The Panel finds that Complainant has supplied sufficient evidence that he has common law rights in the JIMMER and JIMMER FREDETTE marks under Policy ¶ 4(a)(i). See Garnett v. Trap Block Techs., FA 128073 (Nat. Arb. Forum Nov. 21, 2002) (“Complainant's use of his unique name and the widespread fame associated with Complainant's use of the name long preceded Respondent's registration of the domain name, which suggests only that Respondent registered the domain name because of Complainant's fame and not because of some right or interest of its own.”); 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 notes that the <jimmerfredette.com> and <jimmer-fredette.com> domain names contain his entire JIMMER FREDETTE mark with the mere addition of the generic top-level domain (“gTLD”) “.com” and absent the space between the terms or with the addition of a hyphen. The Panel finds that the disputed domain names are identical to Complainant’s JIMMER FREDETTE mark under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").
Further, Complainant notes that the <jimmeronline.com> and <jimmerlive.com> domain names contain the entire JIMMER mark while adding the generic term “online” or “live” and the gTLD “.com.” The Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s JIMMER mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Complainant has proven this element.
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 argues that Respondent “could not possible contend that he is commonly known by or identified with the Domain Names.” Complainant further argues that Respondent’s name is “Michael Ralbovsky” and that it only recently changed the registrant information to include “JimmerOnline.com” as the registrant of the domain names. Complainant contends that there is no company registered in the state of New York entitled “JimmerOnline.com.” Complainant argues that Respondent cannot be commonly known by the disputed domain names, despite the WHOIS registrant information. The Panel finds that, without any evidence from Respondent of its being commonly known by the disputed domain names, Respondent is not known by the domain names under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Complainant first contends that Respondent previously redirected all of the disputed domain names to a third-party website at <dreamsleepmattress.com> for commercial gain. Complainant notes that Respondent admitted to such use and payment through a lease program in an e-mail communication with Complainant’s counsel. The Panel finds that such use of the disputed domain names is 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 Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or legitimate interest where the respondent used the disputed domain name to redirect Internet users to an online casino); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Further, Complainant argues that Respondent recently redirected the domain names to Complainant’s brother’s website at <tjfredette.com>. Complainant alleges and the Panel finds that this use also fails to show 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 Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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 Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant has proven this element.
Complainant asserts that Respondent’s registration and subsequent use of four domain names containing his name and marks is evidence of bad faith under Policy ¶ 4(b)(ii). Complainant argues that he is being prevented from registering such domain names for his own use and exploitation. The Panel agrees with Complainant and finds bad faith registration and use under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”).
Complainant also asserts that Respondent registered the disputed domain names with the intention of profiting from the goodwill and notoriety of Complainant’s JIMMER and JIMMER FREDETTE name and marks. Complainant argues that Respondent’s previous use, as admitted to by Respondent, was to lease the domain name to redirect to a mattress company’s website while also selling “ad-space.” The Panel finds that Respondent did register and use the domain names in order to attract, for commercial gain, Internet users to the domain names and the resolving website by creating confusion as to Complainant’s affiliation or sponsorship with the domain names. Registration and use of the disputed domain names for such a purpose is evidence of bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the JIMMER and JIMMER FREDETTE marks. Complainant argues that Respondent lived only twenty miles away from where Complainant attended high school and was regionally well known when Respondent registered the first domain name containing his mark. Further, Complainant notes that the subsequent domain names were registered during Complainant’s senior season of college basketball when Complainant won several national awards for basketball. Complainant believes that Respondent knew of him and his rights in his marks prior to registering the domain names at issue. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <jimmerfredette.com>, <jimmer-fredette.com>, <jimmeronline.com>, and <jimmerlive.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 29, 2012
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