national arbitration forum

 

DECISION

 

Matteo Manassero v. Christian Ladimir

Claim Number: FA1204001437545

 

PARTIES

Complainant is Matteo Manassero (“Complainant”), represented by Julie Lewis-Sroka of IMG Legal Department, Ohio, USA.  Respondent is Christian Ladimir (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <matteomanassero.com>, registered with GoDaddy.com, LLC.

 

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 2, 2012; the National Arbitration Forum received payment on April 3, 2012.

 

On April 2, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <matteomanassero.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 April 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 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@matteomanassero.com.  Also on April 10, 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 May 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <matteomanassero.com> domain name is confusingly similar to Complainant’s MATTEO MANASSERO mark.

 

2.    Respondent does not have any rights or legitimate interests in the <matteomanassero.com> domain name.

 

3.    Respondent registered and used the <matteomanassero.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is a professional golfer on the European PGA Tour and he owns common law rights in his name, MATTEO MANASSERO.

 

Respondent uses the <matteomanassero.com> domain name to host a website stating “THIS DOMAIN IS FOR SALE” and containing GoDaddy.com ads and hyperlinks.

 

 

DISCUSSION

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant alleges rights in his MATTEO MANASSERO mark, but does not hold any trademark registrations with a national trademark authority.  The Panel notes that a trademark registration is not required under Policy ¶ 4(a)(i) if Complainant can demonstrate common law rights in the mark.  See 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); see also British Broad.  Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

 

Complainant states that he is a professional golfer on the European PGA Tour, who won the Amateur Championship in June 2009.  Complainant further states that he was the youngest player ever to make the cut at the Masters Tournament, and was ranked number among amateur golfers before turning professional in 2010.  Complainant argues that his name, MATTEO MANASSERO, has acquired secondary meaning based on his acclaim as a golfer.  The Panel finds that, based on Complainant’s uncontroverted statements and supporting evidence, Complainant holds rights in the MATTEO MANASSERO mark under Policy ¶ 4(a)(i).  See Sade v. Quantum Computer Servs., Inc., D2000-0794 (WIPO Sept. 26, 2000) (finding that although the complainant did not register the word “SADE” either as a trademark or as a service mark the complainant adapted the word “SADE” as the complainant’s stage-name and as a trademark and service mark and therefore the complainant established that it had common law rights in the mark); 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 . . .”).

 

Respondent’s <matteomanassero.com> domain name is identical to Complainant’s MATTERO MANASSERO mark, as it merely removes the space and adds the generic top-level domain (“gTLD”) “.com,” failing to distinguish the disputed domain name.  The Panel finds that Respondent’s <matteomanassero.com> domain name is identical to Complainant’s MATTEO MANASSERO mark for the purposes of Policy ¶ 4(a)(i).  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000)  (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).

 

Respondent did not present any evidence that it is commonly known by the disputed domain name.  Complainant argues that Respondent is not associated with Complainant and did not authorize or license Respondent to use Complainant’s MATTEO MANASSERO mark.  The WHOIS information identifies “Christian Ladimir” as the registrant of the <matteomanassero.com> domain name.  Therefore, the Panel finds that Respondent is not commonly known by the <matteomanassero.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).

 

Complainant argues that Respondent’s <matteomanassero.com> domain name resolves to a website that lists the disputed domain name for sale at the top of the page along with pictures of Complainant, not a legitimate use of the <matteomanassero.com> domain name.  The Panel finds that Respondent’s offer to sell the disputed domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <matteomanassero.com> domain name.  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 Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s offer to sell the <matteomanassero.com> domain name on the resolving website is evidence of Respondent’s bad faith registration and use of the <matteomanassero.com> domain name under Policy ¶ 4(b)(i).  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)  (finding that the attempted sale of a domain name is evidence of bad faith); see also 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).”).

 

Respondent is also attempting to commercially benefit by creating a likelihood of confusion among Internet users looking for Complainant’s website.  Respondent hosts GoDaddy hyperlinks and advertisements at the bottom of the resolving website, and no doubt commercially benefit from these hyperlinks. Therefore, the Panel finds that Respondent registered and uses the <matteomanassero.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).

 

Complainant states that Respondent registered the <matteomanassero.com> domain name during or immediately after the 2009 Amateurs Championship that Complainant won, evidence of opportunistic bad faith.  The Panel agrees and finds bad faith under Policy ¶ 4(a)(iii).  See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change.  This is also evidence of bad faith.”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <matteomanassero.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  May 10, 2012

 

 

 

 

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