Garry Kasparov v. Mark Andreev
Claim
Number: FA0505000471047
Complainant is Garry Kasparov (“Complainant”), represented
by Max J. Sprecher, of Liner Yankelevitz Sunshine & Regenstreif LLP, 11000 Glendon Ave, 14th Floor, Los
Angeles, CA 90024. Respondent is Mark Andreev (“Respondent”), 11,
Gvardieskaya, Kara-Balta, 123841, KG.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <kasparov.org>, registered with Enom.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
2, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 4, 2005.
On
May 3, 2005, Enom confirmed by e-mail to the National Arbitration Forum that
the domain name <kasparov.org> is registered with Enom and that
Respondent is the current registrant of the name. Enom has verified that Respondent is bound by the Enom 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
May 6, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 26, 2005 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@kasparov.org by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
June 3, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin 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." 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <kasparov.org>
domain name is identical to Complainant’s KASPAROV mark.
2. Respondent does not have any rights or
legitimate interests in the <kasparov.org> domain name.
3. Respondent registered and used the <kasparov.org>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Garry Kasparov, is a former International Grandmaster chess competition
champion. Complainant was the number
one rated chess player in the world from 1985 through 2004. In addition to his achievements in
international chess play, Complainant participated in the well-publicized chess
matches against IBM’s Deep Blue computer in 1996 and 1997, which generated
approximately $1,000,000,000 in publicity for IBM and 72 million hits on IBM’s
website related to the competition.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office for the KASPAROV mark (Reg. No. 1,653,781 issued August 13, 1991)
relating to electronic and computerized games, including chess games.
Respondent
registered the <kasparov.org> domain name on August 8, 2001. Respondent is using the disputed domain name
to redirect Internet users to a website featuring links to third-party products
and services, including chess-related links in competition with Complainant’s
registered mark.
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.
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.
Complainant has
asserted in this proceeding that it has rights in the KASPAROV mark through
registration with the United States Patent and Trademark Office. The Panel finds that registration of
Complainant’s mark is prima facie evidence that Complainant has rights
in the mark pursuant to Policy ¶ 4(a)(i).
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb.
Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently distinctive and have acquired secondary
meaning.”); see also Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that
panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).
The <kasparov.org>
domain name registered by Respondent is identical to Complainant’s KASPAROV
mark because the domain name incorporates Complainant’s mark in its entirety
and merely adds the generic top-level domain “.org.” The addition of a generic top-level domain to Complainant’s mark
does not negate the identical aspects of Respondent’s domain name pursuant to
Policy ¶ 4(a)(i). See 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); see also Microsoft Corp. v. Mehrotra, D2000-0053
(WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> was
identical to the complainant’s mark); see also Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8,
2001) (finding that the domain name <philips.org> was identical to the
complainant’s PHILIPS mark); see also BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding that
there was “no doubt” that the domain name <bmw.org> was identical to the
complainant’s well-known and registered BMW trademarks).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the <kasparov.org>
domain name, containing Complainant’s KASPAROV mark in its entirety. Once Complainant makes a prima facie
case in support of its allegations, the burden shifts to Respondent to show
that it does have rights to or legitimate interests in the domain name. Due to Respondent’s failure to respond to
the Complaint, the Panel assumes that Respondent does not have rights or
legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat.
Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that
the respondent has no rights or legitimate interests with respect to the domain
name, it is incumbent on the respondent to come forward with concrete evidence
rebutting this assertion because this information is “uniquely within the
knowledge and control of the respondent”); see also Do The Hustle,
LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the
complainant asserts that the respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to the respondent to provide
credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the respondents’ failure to respond can be
construed as an admission that they do not have rights or legitimate interests
in the domain names).
The Panel finds
that Complainant has made the prima facie showing. Since Respondent has not responded to the
Complaint, the Panel is entitled to accept all reasonable allegations and
inferences in the Complaint as true. See
Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb.
Forum June 17, 2002) (finding that, in the absence of a response, the panel is
free to make inferences from the very failure to respond and assign greater
weight to certain circumstances than it might otherwise do); see also 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).
Respondent is
using the <kasparov.org> domain name to redirect Internet users to
a commercial website featuring links to goods and services which are in
competition with Complainant. The Panel
infers that Respondent earns pay-per-click fees for linking users to the
featured websites. Respondent’s use of
a domain name that is identical to Complainant’s KASPAROV mark to redirect
Internet users interested in Complainant’s goods and services to a commercial
website that offers links to competitor’s goods and services is not in
connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii). See
eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that
the "use of Complainant’s entire mark in infringing domain names makes it
difficult to infer a legitimate use"); see also Disney Enters.,
Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that
the respondent’s diversionary use of the complainant’s mark to attract Internet
users to its own website, which contained a series of hyperlinks to unrelated
websites, was neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the disputed domain names); see also
Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb.
Forum June 24, 2002) (holding that the respondent’s use of the disputed domain
name to redirect Internet users to commercial websites, unrelated to the
complainant and presumably with the purpose of earning a commission or
pay-per-click referral fee did not evidence rights or legitimate interests in
the domain name).
Respondent has
offered no evidence and nothing in the record suggests that Respondent is
commonly known by the <kasparov.org> domain name. Complainant has never authorized or licensed
Respondent to use its KASPAROV mark in any way. Thus, Respondent has not established rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that the respondent does not have rights in a domain name
when the respondent is not known by the mark); see also 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 Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where the respondent was not commonly known by the mark
and never applied for a license or permission from the complainant to use the
trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <kasparov.org> domain name, which is identical to Complainant’s
KASPAROV mark, to redirect Internet users to a commercial website featuring
links to goods and services which are in competition with Complainant’s
business. Such use constitutes
disruption and is evidence of registration and use in bad faith pursuant to
Policy ¶ 4(b)(iii). See Six
Continents Hotels, Inc. v. Asia Ventures,
D2003-0659 (WIPO Oct. 14, 2003) (finding that the respondent registered a
domain name primarily to disrupt the business of its competitor because it
directed “its web site to travel-related services in
competition with the complainant and is deriving a financial benefit from such
direction and redirection of users to such sites, particularly, through banner
advertisements, pop-up windows and its affiliate relationships”); see also S.
Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent acted in
bad faith by attracting Internet users to a website that competes with the
complainant’s business).
Additionally,
the Panel infers that Respondent receives click-through fees for diverting
Internet users to third-party websites featuring competitor’s goods and
services. Since Respondent is using a
domain name that is identical to Complainant’s mark, consumers searching for
Complainant online who access Respondent’s domain name may become confused as
to Complainant’s affiliation with the resulting website. Thus, the Panel finds that Respondent’s
commercial use of the <kasparov.org> constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if the respondent profits from its diversionary use of the
complainant's mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)); see also eBay, Inc v.
Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001)
(finding bad faith where the respondent is taking advantage of the recognition
that eBay has created for its mark and therefore profiting by diverting users
seeking the eBay website to the respondent’s site).
Furthermore,
Respondent registered the <kasparov.org> domain name with actual
or constructive knowledge of Complainant’s rights in the KASPAROV mark due to
Complainant’s registration of the mark with the United States Patent and
Trademark Office. Moreover, the Panel
finds that Respondent registered the disputed domain name with actual knowledge
of Complainant’s rights in the mark because of the obvious link between
Complainant and the content advertised on Respondent’s website. Thus, Respondent registered and used the <kasparov.org>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between the complainant’s mark and the content advertised on the
respondent’s website was obvious, the respondent “must have known about the
Complainant’s mark when it registered the subject domain name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <kasparov.org> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice Supreme Court, NY (Ret.)
Dated:
June 16, 2005
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