George Foreman Ventures LLC v. zinnia c/o Zinnia Gonzalez
Claim Number: FA0511000599036
Complainant is George Foreman Ventures LLC (“Complainant”), represented by Jeanine L. Gibbs of Wargo & French LLP, 1170 Peachtree St. NE, Suite 2020, Atlanta, GA 30309. Respondent is zinnia c/o Zinnia Gonzalez (“Respondent”), PO Box 19283, San Juan, Puerto Rico 00910, PR.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <georgeforemanenterprises.com>, registered with Tucows Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 17, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 18, 2005.
On November 21, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <georgeforemanenterprises.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 November 23, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 13, 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@georgeforemanenterprises.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 19, 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.
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 <georgeforemanenterprises.com> domain name is confusingly similar to Complainant’s GEORGE FOREMAN mark.
2. Respondent does not have any rights or legitimate interests in the <georgeforemanenterprises.com> domain name.
3. Respondent registered and used the <georgeforemanenterprises.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, George Foreman Ventures LLC, owns all rights to
the GEORGE FOREMAN mark due to an Assignment Agreement dated August 15, 2005
through which George Foreman assigned his rights. George Foreman is a world-famous heavyweight boxing champion,
celebrity and Olympic gold medalist. In
the 1968 Olympic Games, George Foreman won a gold medal in heaveyweight boxing,
and he was inducted into the U.S. Olympic Hall of Fame in 1990. In 2003, he was inducted into the
International Boxing Hall of Fame.
George Foreman also routinely appears on television shows worldwide
endorsing many products associated with his name and likeness.
In addition, George Foreman has filed several trademark registrations with the United States Patent and Trademark Office for the GEORGE FOREMAN mark (Ser. No. 78/370,744 filed February 19, 2004; Ser. No. 78/422,472 filed May 20, 2004; and 78/370,741 filed February 19, 2004). These pending registrations have also been assigned to Complainant.
Respondent registered the <georgeforemanenterprises.com> domain name on August 18, 2005. The disputed domain name resolves to an “under construction” web page. Complainant has provided correspondence in which Respondent offered to sell the domain name registration to Complainant.
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. 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 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 asserts that the GEORGE FOREMAN mark has
acquired sufficient secondary meaning to establish common law rights based on
George Foreman’s reputation as a heavyweight boxing champion, celebrity and
Olympic gold medalist. The Panel determines
that Complainant’s has proved that the GEORGE FOREMAN mark has become sufficiently connected to
George Foreman’s boxing career and various products endorsed under his name and
likeness. See 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); see also Estate of 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 …”); see also Nat’l
Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21,
2003) (finding that the complainant had provided evidence that it had valuable
goodwill in the <minorleaguebaseball.com> domain name, establishing
common law rights in the MINOR LEAGUE BASEBALL mark).
The <georgeforemanenterprises.com> domain name incorporates Complainant’s GEORGE FOREMAN mark in its entirety and adds the common term “enterprises.” In its totality, the domain name refers to Complainant’s parent company, George Foreman Enterprises, Inc., of which George Foreman is the co-chairman. Simply adding a common term to Complainant’s mark is not enough to create a domain name that is distinct from Complainant’s mark. Therefore, the Panel finds that the domain name is confusingly similar to Complainant’s GEORGE FOREMAN mark pursuant to Policy ¶ 4(a)(i). See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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 “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <georgeforemanenterprises.com> domain name and has not been licensed or authorized to use Complainant’s GEORGE FOREMAN mark. Furthermore, nothing in the record indicates that Respondent is commonly known by the disputed domain name, and Respondent has not come forward with any evidence to rebut Complainant’s assertions. Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); 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").
Additionally, Complainant contends that the <georgeforemanenterprises.com> domain name leads to an “under construction” placeholder website and that this does not establish rights or legitimate interests in the domain name. Respondent has not come forward with any demonstrable preparations to use the domain name for a purpose not in competition with Complainant. In fact, Complainant asserts that Respondent has offered to sell the disputed domain name registration to Complainant. Thus, the Panel does not find 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 Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); 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 the respondent made preparations to use the domain name or one like it 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 Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”); see also 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).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent has not used the <georgeforemanenterprises.com> domain name since registering it on June 25, 2005, except to post an “under construction” page. Respondent has not presented any demonstrable preparations to use the domain name, which is confusingly similar to Complainant’s GEORGE FOREMAN mark. The Panel, therefore, concludes that Complainant has presented evidence that establishes bad faith registration and use under Policy ¶ 4(a)(iii). See Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (“Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that Respondent registered and uses the domain name in bad faith.”); see also 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 DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Cruzeiro Licenciamentos Ltda. v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (“Mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale.”).
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <georgeforemanenterprises.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 30, 2005
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