Yao Ming c/o BDA Sports Management v.
Evergreen Sports, Inc.
Claim
Number: FA0304000154140
Complainant is
Yao Ming c/o BDA Sports Management, Walnut Creek, CA (“Complainant”)
represented by Jerry D. Hall. Respondent is Evergreen Sports,
Inc., Cleveland, OH (“Respondent”).
The
domain name at issue is <yaoming.com>, registered with Enom,
Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 9, 2003; the Forum received a hard copy of the
Complaint on April 14, 2003.
On
April 16, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <yaoming.com> is registered with Enom, Inc. and that
Respondent is the current registrant of the name. Enom, Inc. has verified that
Respondent is bound by the Enom, 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
April 17, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 7, 2003, 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@yaoming.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
May 15, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents submitted
and in accordance with the ICANN Policy, ICANN Rules, the 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent,
<yaoming.com>, is identical to Complainant’s common law YAO MING
mark.
2. Respondent has no rights or legitimate
interests in the <yaoming.com> domain name.
3. Respondent registered and used the <yaoming.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
The Panel
assumes that Complainant is the well-known basketball player for the Houston,
Texas, Rockets Basketball team.
However, Complainant’s submission is fatally defective. Although the
Panel will presume that the Yao Ming may have common law rights in the name YAO
MING, Complainant submitted no evidence to support a finding of such rights
with the Complaint.
Complainant
further submitted no facts to enable the Panel to determine who Respondent is
or how Respondent has used the disputed domain name <yaoming.com>.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
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.
A person
may acquire common law trademark rights in his or her name. See Estate of Tupac Shakur v. Shakur Info Page,
AF-0346 (eResolution Sept. 28, 2000) (finding that 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”). Common law
trademark rights must be established with actual evidence of secondary meaning
for the name. See McCarthy on
Trademarks and Unfair Competetition, § 13:1 “Personal Names as Mark
Introduction” (4th ed. 2002) (stating that the basic rules
pertaining to the protection of personal names require actual proof of
secondary meaning for protection); see also Marino v. Video Images Productions, D2000-0598 (WIPO Aug.
2, 2000) (finding that evidence of Dan Marino’s NFL career, sports commentary,
and movie roles was sufficient to show that Dan Marino’s name had secondary
meaning and qualified as a common law trademark); see also Hooijdonk v. Tait,
D2000-1068 (WIPO Nov. 4, 2000) (finding that Complainant Van Hooijdonk had
established common law rights in his name through evidence of its use related
to sports clothing, games and his international recognition stemming from the
2000 European Championship).
In this
case, Complainant merely states that the Complaint is based on “the name Yao
Ming, which is the name of 7’ 5” tall
NBA star athlete Yao Ming. . . used in athletic entertainment and
endorsement.” Complainant failed to
submit any evidence of how the name is used in athletic entertainment and/or
endorsement or facts to support consumer knowledge. Bald assertions of consumer knowledge are not an adequate form of
evidence to establish secondary meaning in a name.
Accordingly,
the Panel finds that Complainant failed to establish requirements of Policy ¶
4(a)(i) because it has not provided adequate evidence of a common law trademark
in the name YAO MING.
Complainant has
not alleged any facts related to Respondent’s use of the disputed domain
name. The Complaint merely asserts a
legal conclusion. Thus, the Panel has no knowledge of Respondent’s use of the
domain name upon which to base a decision under Policy ¶ 4(a)(ii) and
(iii). See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan.
13, 2001) (finding that even when Respondent does not file a Response,
Complainant must allege facts, which if true, would establish that Respondent
does not have any rights or legitimate interests in the disputed domain name); 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 Respondent acted in bad faith).
This decision,
however, should not be construed as finding that Complainant could never
establish that it has common law rights in the YAO MING mark or that Respondent
is using the domain name in bad faith.
If Complainant were to file a complete Complaint, alleging facts, providing
actual evidence, and citing specific examples, a future Panel might have
sufficient evidence upon which to base a decision. As it stands, in the absence of any evidence on the record
relating to any paragraph of the Policy, the Panel holds that the current
dispute cannot be resolved in the context of this proceeding.
Having failed to
establish the requisite elements required under ICANN Policy, the Panel
concludes that relief shall be DENIED. Accordingly, it is Ordered that
the Complaint be DISMISSED.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 29, 2003.
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