Nenê f/k/a Maybyner Rodney Hilario v. Master, Host
Claim Number: FA0702000924563
Complainant is Nenê f/k/a Maybyner Rodney Hilario (“Complainant”), represented by Susan
J. Brushaber, of Schuchat, Herzog & Brenman, LLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nene31.com>, registered with Network Solutions, LLC.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On March 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 26, 2007 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@nene31.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <nene31.com> domain name is identical to Complainant’s NENÊ 31 mark.
2. Respondent does not have any rights or legitimate interests in the <nene31.com> domain name.
3. Respondent registered and used the <nene31.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nenê f/k/a
Maybyner Rodney Hilario, is a professional basketball player who changed
his name to Nenê in 2003. A veteran of the Denver Nuggets, Complainant
consistently wears a jersey identifying him under the NENÊ 31 mark. Complainant
has achieved significant notoriety as a professional baskeball player and in
conjunction with his considerable charitable work. Although Complainant has not registered the NENÊ 31 mark with any federal agency, Complainant still
asserts common law rights in the mark.
Respondent registered the
disputed domain name on
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.
Although Complainant has not asserted rights in the NENÊ 31
mark through registration with a federal agency, the Panel holds that a federal
trademark registration is not a necessary prerequisite to the establishment of
rights in the mark pursuant to Policy ¶ 4(a)(i). 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
Complainant asserts common law rights in the NENÊ 31 mark through public notoriety and ongoing use of the mark. The Panel finds that Complainant has established secondary meaning in the NENÊ 31 mark, thereby establishing common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Respondent’s <nene31.com>
domain name contains all of Complainant’s common law mark, removes the
circumflex accent and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the removal of a
circumflex accent and the addition of a gTLD to an otherwise identical mark
fails to sufficiently distinguish the domain name from the mark pursuant to
Policy ¶ 4(a)(i). See Entrepreneur Media, Inc.
v. Smith, 279 F.3d 1135, 1146 (9th Cir. 2002) (“Internet users searching
for a company’s Web site often assume, as a rule of thumb, that the domain name
of a particular company will be the company name or trademark followed by
‘.com.’”); see also Florentine
Caffe, Inc. v. Pfeffer, FA 465152 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
If Complainant makes a prima
facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to
bring forth evidence that it does possess rights or legitimate interests in the
disputed domain name. See
Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO
Respondent’s disputed domain name has never resolved nor currently resolves to a website that contains content. The Panel finds that the absence of content associated with Respondent’s disputed domain name registration evinces a lack of rights or legitimate interests in the disputed domain name in accordance with Policy ¶ 4(a)(ii). See LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (recognizing that in certain instances excusable delays will inevitably arise, but noting that those delays must be quantifiable and limited; they cannot extend indefinitely); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where “Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names” and “no commercial use is being made of the names”).
Respondent has not alleged that it is commonly known by the
disputed domain name, nor has it proffered evidence indicating that it
possesses rights to use Complainant’s mark to register domain names. After reviewing Respondent’s WHOIS information,
it is apparent that the registrant of the disputed domain name is “Master,
Host.” The Panel, after considering the
lack of evidence set forth by Respondent and the WHOIS information concerning
Respondent’s registration of the disputed domain name, finds that Respondent is
not commonly known by the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Since Respondent’s disputed domain name resolves to no content, the Panel finds that Respondent’s non-use evinces registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See 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); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
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 <nene31.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 10, 2007
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