Brees Company, Inc. v. Brees Company,
Inc.
Claim
Number: FA0506000493869
Complainant, Brees Company, Inc. (“Complainant”), is
represented by John Palguta of International Merchandising Corporation, IMG Center, Ste. 100, 1360 East 9th Street, Cleveland, OH,
44114-1782. Respondent is Brees Company, Inc. (“Respondent”),
1360 E. 9th Street, IMG Center, Ste. 100, Cleveland, OH, 44114-1782.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <drewbrees.net>, registered with Melbourne
It, Ltd. d/b/a Internet Names Worldwide.
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 electronically June 9,
2005; the National Arbitration Forum received a hard copy of the Complaint June
17, 2005.
On
June 14, 2005, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by
e-mail to the National Arbitration Forum that the domain name <drewbrees.net>
is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that
Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide verified that
Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide registration
agreement and thereby has agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On
June 21, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 11,
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@drewbrees.net 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
July 15, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the National Arbitration Forum 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.
The
Panel interprets Complainant’s request to be the transfer of the domain name to
Complainant’s control.
A. Complainant makes the following assertions:
1. The domain name that Respondent
registered, <drewbrees.net>, is identical to Complainant’s DREW
BREES mark.
2. The Controlling Party has no rights to or
legitimate interests in the <drewbrees.net> domain name.
3. The Controlling Party registered and used
the <drewbrees.net> domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Mr. Drew Brees
is a quarterback for the San Diego Chargers.
Mr. Brees attained “franchise player” status due to his current success
and is one of the top-paid quarterbacks in the NFL. Complainant, Brees Company, Inc., of unclear relation to Mr.
Brees, claims that Complainant, and Mr. Brees individually, have long
established rights in the DREW BREES mark.
Mr. Brees was a
quarterback in a Texas high school. In
1997, Mr. Brees began his college career at Purdue University, where he
generated consumer recognition and media coverage as a football player. Mr. Brees left Purdue in 2001 having earned
several awards for his performance as a football player. In the 2001 NFL draft, Mr. Brees was the San
Diego Chargers’ second pick. In 2002,
Mr. Brees was named the Chargers’ starting quarterback and received increased
national media exposure and heightened consumer recognition.
The registrant
(“Controlling Party”) in this case registered the <drewbrees.net>
domain name December 29, 1998, one year after Mr. Brees began playing football
at Purdue. Complainant filed its
original Complaint against the Controlling Party June 9, 2005. The Panel infers that shortly after the
Complaint was submitted, the Controlling Party changed the WHOIS information
for the disputed domain name to reflect that of Complainant, but retained
actual control over the disputed domain name.
Thus, the Respondent is actually is the same party as Complainant; but
Complainant continues to lack control over the disputed domain name.
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. 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.”).
Paragraph 4(a)
of the Policy requires Complainant to 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 order to meet
the requirements of Policy ¶ 4(a)(i), Complainant must demonstrate that it had
rights in the mark prior to the Controlling Party’s registration of the
disputed domain name in 1998. See B&V Assocs., Inc. v. Internet Waterway, Inc., FA 147531 (Nat. Arb. Forum Apr. 15, 2003) (“[T]he Policy . . . was intended to protect against infringement
of existing trademark rights by identical or confusingly similar domain name
registrations. Therefore, the Panel concludes that Policy ¶ 4(a)(i) assumes
that Complainant's rights must predate Respondent's domain name registration .
. .”); see also Intermark Media, Inc. v. Wang Logic Corp.,
FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable
interest that the complainant may have in its common law mark did not predate
the respondent’s domain name registration, therefore finding that Policy ¶
4(a)(i) had not been satisfied).
Complainant does
not hold a registration for the DREW BREES mark with the United States Patent
and Trademark Office (“USPTO”).
However, for purposes of a Policy ¶ 4(a)(i) analysis, registration with
the USPTO is not mandatory for a complainant to establish rights in a
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
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 has
neither asserted nor provided this Panel with evidence of common law rights in
the DREW BREES mark prior to December 29, 1998, the date that the Controlling
Party registered the disputed domain name.
Complainant’s assertions of rights in the mark are based on the media
attention that Mr. Brees received throughout his football career, beginning in
high school and until his present successful classification as a “franchise
player.” However, Complainant does not
make an argument that either it or Mr. Brees had rights in the mark prior to
1998. Moreover, in order for
Complainant to establish rights in the DREW BREES mark prior to 1998,
Complainant must provide the Panel with evidence of such rights. See Molecular
Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the
complainant failed to establish common law rights in its mark because mere
assertions of such rights are insufficient without accompanying evidence to
demonstrate that the public identifies the complainant’s mark exclusively or
primarily with the complainant’s products); see also Ming v. Evergreen
Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) (“Bald assertions of
consumer knowledge are not an adequate form of evidence to establish secondary
meaning in a name.”). However,
Complainant does not present any evidence to indicate that either Complainant
or Mr. Brees had rights in the mark before the Controlling Party’s
registration. The Complaint states that
by 1998, Mr. Brees had merely finished high school and had played football at
Purdue for one year. The Complaint
further indicates that Mr. Brees had not received any awards until after 1999,
was not drafted for the NFL until 2001, and had received very little media
attention prior to those events. Such
statements are insufficient to demonstrate that the public identified the DREW
BREES mark exclusively with Mr. Brees’ football player persona at the time that
the Controlling Party registered the disputed domain name. Without a clear
argument or evidence establishing that Complainant had rights in the mark prior
to 1998, the Panel finds that Complainant has not met the requirements
of Policy ¶ 4(a)(i).
Since
Complainant failed to establish rights in the mark pursuant to Policy ¶
4(a)(i), it is unnecessary to address ¶¶ 4(a)(ii) and (iii) of the Policy. See Creative Curb v. Edgetec Int’l Pty.
Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because
Complainant must prove all three elements under the Policy, Complainant’s
failure to prove one of the elements makes further inquiry into the remaining
elements unnecessary); see also Ricom, Inc. v. Ricom, FA 348011 (Nat.
Arb. Forum Dec. 16, 2004) (finding that failure to establish one element of the
Policy deems it unnecessary for the Panel to address any other element).
The Panel’s
Decision does not prevent Complainant from asserting such rights with
appropriate proof in another proceeding.
Having failed to
establish all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
Hon. Carolyn Marks Johnson, Panelist
Dated:
July 28, 2005
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