Lamar Odom v. Sha-Keith Mills
Claim Number: FA0506000493915
PARTIES
Complainant
is Lamar Odom (“Complainant”),
represented by Thomas A. Canova, of Baker & Hostetler LLP,
666 Fifth Avenue, New York, NY 10103.
Respondent is Sha-Keith Mills
(“Respondent”), 1045 St. Johns Pl., Apt. # D9, Brooklyn, NY 11213.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <lamarodom.com> and < lamarodom.net>, registered with Register.com.
PANEL
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.
James
A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
9, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 13, 2005.
On
June 10, 2005, Register.com confirmed by e-mail to the National Arbitration
Forum that the domain names <lamarodom.com> and < lamarodom.net> are registered with Register.com and that
the Respondent is the current registrant of the names. Register.com has verified that Respondent is
bound by the Register.com 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
June 16, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 6,
2004 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@lamarodom.com and postmaster@lamarodom.net by
e-mail.
A
timely electronic copy of the Response was received on July 6, 2005. However, a hard copy of the Response was not
received until July 15 and was therefor not timely. Thus, the National
Arbitration Forum does not consider the Response to be in compliance with ICANN
Rule #5(a). The panelist may or may not
choose to take the Response into consideration in his Decision.
On July 4, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed James A. Carmody, Esq., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1.
Respondent’s <lamarodom.com>
and <lamarodom.net> domain
names are confusingly similar to Complainant’s common law trademark in his own
name.
2.
Respondent does not have any rights or legitimate interests in the
domain names at issue.
3.
Respondent has registered and used the domain names at issue in bad
faith.
B.
Respondent
The panelist has elected to take the
Response into consideration.
1.
The Respondent claims that the Complainant has not proven the existence
of a “trademark or service mark number” which is identical or confusingly
similar to a trademark or service mark in which Complainant has rights.
2.
The Respondent claims he planned to build a fan site around the domain
names at issue and invited the Complainant to participate.
3.
Finally, the Respondent claims that the domain names at issue were not
registered or used in bad faith because of his intent to use them as fan sites
and because the Complainant has shown no harm done due to the registration.
FINDINGS
Complainant
Lamar Odom is among the world’s finest basketball players. After only two years at the University of
Rhode Island, where he was Honorable All America and Atlantic 10 Rookie of the
Year, Lamar Odom was the fourth overall pick in the 1999 NBA draft. While with the Miami Heat, he was selected
to the 1999-2000 NBA All-Rookie First Team, and in his last season in Miami he
averaged over 17 points, almost 10 rebounds, and over 4 assists in 80
games. He was also a starting forward
with the 2004 U.S. Men’s Olympic Team competing in Athens last summer. In a highly publicized trade last year, the
Los Angeles Lakers acquired Lamar Odom from the Miami Heat. In his five NBA seasons, Lamar Odom has
played more than 300 games, averaging over 16 points, 8 rebounds, and over 4
assists.
Over
the past five years, Lamar Odom has developed a well-deserved reputation for
his outstanding athletic skills, and is well-known throughout the league, the
country, and indeed the world. In addition to his status as a top player in
the NBA, Lamar Odom also has successfully commercialized his name and image
through licensing for a variety of products, including clothing, trading cards,
and basketball memorabilia. Through
substantial national and international advertising and promotion over the
years, consumers of such products have come to recognize Lamar Odom’s name as
identifying his authorized affiliation with these products.
Respondent
is the registrant of the domain names at issue, <lamarodom.com> and <lamarodom.net>, whereon he has
posted a website which falsely identifies itself as the “Official Website of
Lamar Odom,” prominently depicts Complainant’s name, uniform number, and an
image from a game photo.
Respondent
offered to sell the domain names at issue to Complainant for $15,000 and $500/month to maintain the site for as
long as the site operates. Complainant
refused the offer and the two associated web pages resolve to a white blank
screen and are now unused for any purpose.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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 established common law rights in the
LAMAR ODOM mark. Under Policy ¶
4(a)(i), a complainant need not hold a registered trademark to establish rights
in a mark. Complainant has not registered or filed
an application to register the LAMAR
ODOM mark but asserts that he has common law rights in the mark, because
the mark has acquired secondary meaning as a source indicator for one of the
world’s finest basketball players, as well as a variety of products licensed by
Complainant, including clothing, trading cards, and basketball memorabilia. Complainant has demonstrated secondary
meaning associated with the mark, and therefore, Complainant’s common law
rights are sufficient to satisfy Policy ¶ 4(a)(i). See McCarthy on Trademarks & Unfair Competition, § 25:74.2 (4th ed. 2002)
(stating that the ICANN dispute resolution policy is “broad in scope” in that
“the reference to a trademark or service mark ‘in which the complainant has
rights’ means that ownership of a registered mark is not required–unregistered
or common law trademark or service mark rights will suffice” to support a
domain name complaint under the Policy); 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”); see also Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said
name [<keppelbank.com>] in connection with its banking business, it has
acquired rights under the common law); see also Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that
trademark registration was not necessary and that the name “Julia Roberts” has
sufficient secondary association with the complainant that common law trademark
rights exist).
The
<lamarodom.com> and <lamarodom.net> domain
names at issue are identical to Complainant’s LAMAR ODOM mark because the only
difference is the addition of the generic top-level domains “.com” and “.net,”
which are irrelevant under the Policy. See
Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); 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); see
also Busy Body, Inc. v. Fitness
Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[T]he addition of the
generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance
since use of a gTLD is required of domain name registrants.”).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Respondent is not commonly known by the <lamarodom.com> or <lamarodom.net> domain
names at issue, and Respondent has not been licensed or otherwise authorized by
Complainant to use the LAMAR ODOM mark.
Therefore, Respondent has not established
rights or legitimate interests in the domain names at issue
pursuant to 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 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).
Since Complainant has made a prima
facie case for Policy ¶ 4(a)(ii), the burden shifts to Respondent to
establish 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 does not have 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 does not have
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).
The Respondent has failed to satisfy his
burden to show rights or legitimate interests in the domain names at
issue. The disputed domain names have never offered access to futher webpages,
and the domain names have never actually offered any goods, services, or
information. This is not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept.
18, 2000) (finding that prior to any notice of the dispute, the respondent had
not used the domain names in connection with any type of bona fide
offering of goods or services); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there is no
proof that a respondent made preparations to use the domain name in connection
with a bona fide offering of goods and services before notice of the
domain name dispute, the domain name did not resolve to a website, and the
respondent is not commonly known by the domain name); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000)
(finding that failure to provide a product or service or develop the site
demonstrates that the respondents have not
established any rights or legitimate interests in the domain name); see also
Marino v. Video Images Prod., D2000-0598
(WIPO Aug. 2, 2000) (“[I]n light of the uniqueness of the name
<danmarino.com>…it would be extremely difficult to foresee any
justifiable use that the respondent could claim. On the contrary, selecting
this name gives rise to the impression of
an association with Complainant which is not based in fact.”).
The Panel finds that Policy ¶ 4(a)(ii) has
been satisfied.
Respondent
has not made any use of the domain
names at issue since they were registered
in February of 2000 (<lamarodom.net>) and June of 2002 (<lamarodom.com>).
Respondent’s failure to make use of the domain names within four years
constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18,
2000) (“[I]t is possible, in certain circumstances, for inactivity by the
Respondent to amount to the domain name
being used in bad faith.”); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that merely holding an infringing domain name without active use
can constitute use in bad faith).
Further,
Respondent has offered to sell the <lamarodom.com> and <lamarodom.net> domain
names to Complainant for $15,000 and
another $500 per month indefinitely.
The Respondent’s offer to sell the domain names at issue for such an excessive amount evidences bad faith registration and use
pursuant to Policy ¶ 4(b)(i). See Banca Popolare Friuladria S.p.A. v. Zago,
D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the disputed domain
names for sale); see also Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where the respondent offered domain names for sale); see also Little Six,
Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding
the respondent's offer to sell the
domain name at issue to the complainant was evidence of bad faith).
Respondent’s
use of the domain names at issue to operate unauthorized fan websites
constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Apple Corps Ltd. v. LOVEARTH.net,
FA 98812 (Nat. Arb. Forum Sept. 25, 2001) (finding bad faith registration and
use of domain names because the respondent registered the names “to attract
Beatles fans to his website and has intentionally led them to think they are
actually visiting a site of the Beatles, and does this so that he can expose
them to his environmental views”); see also Gilmour v. Cenicolla,
D2000-1459 (WIPO Dec. 15, 2000)
(finding bad faith registration of the <davidgilmour.com> domain name
where the respondent knew of the
complainant’s fame long before the registration of the domain name and
registered the name in order to “trade off that reputation by creating a false
association between that domain name and the Complainant’s trademark”); see
also Spacey v. Alberta Hot Rods, FA 114437 (Nat. Arb. Forum Aug. 1, 2002) (finding bad
faith registration and use of the <kevinspacey.com> domain name because
the respondent lacked rights and authorization to use the complainant's name,
“Kevin Spacey,” and where the respondent pointed the name to an unauthorized
fan website).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
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 <lamarodom.com>
and < lamarodom.net> domain names be TRANSFERRED from
Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 27, 2005
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