IMG Worldwide, Inc. v. T Buburuz
Claim Number: FA0510000576537
PARTIES
Complainant is IMG Worldwide,
Inc. (“Complainant”), 1360
East 9th Street, Cleveland, OH 44114-1782.
Respondent is T Buburuz (“Respondent”),
Box 24035, 2202 Broad Street, Regina, Saskatchewan S4P 4J8.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <imgworldwide.net>,
registered with Go Daddy Software, Inc..
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.
Richard B. Wickersham, Judge (Ret.), as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 13, 2005; the National Arbitration Forum received a
hard copy of the Complaint on October 17, 2005.
On October 13, 2005, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <imgworldwide.net>
domain name is registered with Go Daddy Software, Inc. and that the Respondent
is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, 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 October 19, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 8, 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@imgworldwide.net by e-mail.
A timely Response was received and determined to be complete on October
31, 2005.
On November 3, 2005, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Honorable Richard B. Wickersham, Judge (Ret.),
as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, IMG Worldwide, Inc. (dba “IMG” since its inception), is a widely known sports and lifestyle representation and marketing firm. Complainant has offices around the world and is based in Cleveland, Ohio. IMG was founded in 1960 by Mark Hume McCormack who is known around the world as a business pioneer and the founder of what is now known as the ‘sports marketing’ industry. McCormack and IMG revolutionized the world of sport by establishing athlete, club and team representation as a new and unique business discipline and by demonstrating the value of sports as a cost-effective corporate marketing tool. Mark McCormack was the CEO of IMG from 1960 until his sudden death in May 2003. Mr. McCormack’s death was reported by news outlets across the globe.
Complainant has evolved into an international corporation that represents not only athletes and sports figures but also musicians, performing artists, entertainers, personalities, celebrities, broadcasters, writers, models, events, governing bodies, and intellectual property, as well as providing services such as website design, corporate marketing, consulting, licensing, sponsorship sales, golf course design, event marketing, sport academies, and more.
Complainant's ever-expanding and diverse client list spans the globe and includes such persons and entities as: Itzhak Perlman (music), Ling Ling (music), Kiri Te Kewana (music), the Corrs (music), Lindsey Lohan (music/actress), Drew Barrymore (actress), US Olympic Committee, Vince Carter (basketball), Peyton Manning (football), Joe Montana (football–retired), Herman Edwards (coach), Derek Jeter (baseball), Sidney Crosby (hockey), Venus Williams (tennis), Maria Sharapova (tennis and model), John McEnroe (tennis and broadcasting), All England Tennis & Croquet Club (Wimbledon), Tiger Woods, R&A of St. Andrews (British Open), USGA, Arnold Palmer, Annika Sorenstam (golf), Nancy Lopez (golf-retired), Lauren Hutton (model), Gisele (model), Scott Hamilton (ice skater), Michael Schumacher (Formula 1), Jeff Gordon (NASCAR), John Madden (broadcasting), Jorge Ramos (Spanish language radio broadcasting), Naoko Takahashi (marathon), Shaun White (skate and snow board), Janet Evans (swim-retired), Sally Ride (astronaut-publishing), Jack Welch (publishing), the Nobel Foundation, the Latin Grammy Awards, Manchester United FC (soccer club), and the City of Miami’s Tourism Board.
Complainant’s television division, Trans World International, Inc. or “TWI”, is the world's largest independent producer of televised sports programming and is also the world's largest distributor of sports television rights.
Complainant owns, promotes, manages, and/or implements hundreds of music, sporting, modeling, cultural, and exposition events throughout the world. On any given day during the year, Complainant is commercially involved with an average of 11 events around the world.
Complainant owns the <imgworldwide.com> top-level domain name and operates its corporate website from that domain. Complainant legally changed its corporate name from International Management, Inc. to IMG Worldwide, Inc. on March 15, 2000 with the State of Ohio, the state of incorporation of Complainant.
Respondent first registered the <imgworldwide.net> domain name on March 23, 2003 through a registrar named GoDaddy.com without having any legitimate right to do so.
From the date Complainant learned of the <imgworldwide.net> domain name (August 1, 2005) through approximately mid-September 2005, when an internet user tried to visit what he/she reasonably believed would be a website about or concerning Complainant or its clients by executing a search using <imgworldwide.net>, the user instead saw a webpage that provided links to a confusingly similar commercial website that sought to represent musicians. Music is one of Complainant’s lines of business representation.
B. Respondent
I had no knowledge of IMG Worldwide, Inc. or of their websites and/or
business practices so I couldn’t possibly be making an illegitimate,
opportunistic, commercial and bad-faith use of the <imgworldwide.net> domain name for commercial gain with the
intent to mislead and divert potential consumers. At no time was IMG Worldwide, Inc. ever mentioned on the
<imgworldwide.net>
domain. I didn’t even know IMG
Worldwide, Inc. existed until this month.
When the <imgworldwide.net>
domain was in use as a music promotion resource site it was clearly label as
International Marketing Group. As I
stated above, after researching names I felt the <imgworldwide.net> domain would be best because it represented
the International Marketing Group, i.e. IMG, and the fact that it was on the
World Wide Web, i.e. World Wide.
I followed the www.icann.org rules and researched the domain and found
a links page similar to the one currently displayed on <imgworldwide.com>
that had absolutely no mention of IMG Worldwide, Inc. or any of it’s
affiliates. I had never even heard of
IMG Worldwide, Inc. until it was brought to my attention this month. I never had intentions of infringing upon
anyone’s rights.
The site is no longer in use and therefore it is my intent to firstly
sell the domain and transfer it to the buyer or let the domain expire. Or if it pleases the Complainant I am
willing to cancel the domain.
I would be happy to sell the <imgworldwide.net>
domain name to the Complainant at what I believe is a fair purchase price of
$45 US dollars. It is my opinion that
this is a fair purchase price because it will cover the $29 US dollar fee I was
charged as an “administration fee” by godaddy.com due to these proceedings and
the fee required to transfer the domain name to the Complainant. Another option is for me to simply cancel
the domain name.
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.
FINDINGS
Complainant alleges that it has
common-law rights in the IMG WORLDWIDE mark.
The Panel finds that Complainant has proffered evidence (including its
registration and use of <imgworldwide.com> and a state corporate
registration) establishing that the IMG WORLDWIDE mark has acquired secondary
meaning. See S.A. Bendheim Co., Inc.
v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that
the complainant established rights in the descriptive RESTORATION GLASS mark
through proof of secondary meaning associated with the mark); see also BroadcastAmerica.com, Inc. v. Quo,
DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law
rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify
the complainant as the source of broadcast services over the Internet, and
evidence that there is wide recognition with the BROADCASTAMERICA.COM mark
among Internet users as to the source of broadcast services).
The Panel finds that the <imgworldwide.net> domain name is identical to Complainant’s IMG
WORLDWIDE common law mark because eliminating the space between words and
adding the “.net” top level domain does not significantly distinguish the
domain name from the mark. See Wembley
Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding
that the domain name <wembleystadium.net> is identical to the WEMBLEY
STADIUM mark); see also Little Six, Inc. v. Domain For Sale, FA 96967
(Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly
identical to the complainant’s MYSTIC LAKE trademark and service mark).
The Panel construes Complainant’s
trademark registration in IMG to find that Complainant has rights pursuant to
Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The Panel finds that the <imgworldwide.net> domain name is confusingly similar to the IMG
mark because adding the word “worldwide” does not significantly distinguish the
domain name from the mark. See Am.
Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15,
2003) (finding that the addition of the term “assurance,” to the complainant’s
AIG mark failed to sufficiently differentiate the name from the mark under
Policy ¶ 4(a)(i) because the appended term related directly to the
complainant’s business); see also Westfield Corp. v. Hobbs, D2000-0227
(WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name
confusingly similar because the WESTFIELD mark was the dominant element).
Complainant states that Respondent
is not using the disputed domain name, and has not used it for three
years. The Panel finds that Respondent
has not asserted demonstrable preparations to use the disputed domain name,
and, therefore, is not using the domain name for a bona fide offering of a good or service. The Panel finds that Respondent’s lack of use does not establish
rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel
concludes that Respondent's passive holding of the domain name does not
establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); 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.”).
The Panel finds that there is nothing in the
record, including the WHOIS registration information, that indicates that
Respondent is commonly known by the <imgworldwide.net> domain
name pursuant to Policy ¶ 4(c)(ii). See
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also 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).
Complainant alleges that Respondent
is passively holding the disputed domain name.
The Panel finds that Respondent has demonstrated no preparations to use
the disputed domain name, which evidences bad faith pursuant to Policy ¶
4(a)(iii). See Open Sys. Computing AS v. degli Alessandri,
D2000-1393 (WIPO Dec. 11, 2000) (finding that the respondent did not establish
rights and legitimate interests in the domain name where the respondent
mentioned that it had a business plan for the domain name at the time of
registration but did not furnish any evidence in support of this claim); see
also AT&T Corp. v. Domains by
Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or
legitimate interests where the respondent did not provide any documentation on
the existence of its alleged company that might show what the company’s
business was, or how the company’s years of existence, if it ever existed,
might mesh with the complainant’s trademark claims).
The Panel finds that Respondent is
offering to sell the <imgworldwide.net>
domain name for an amount in excess of out-of-pocket costs, which evidences
bad faith pursuant to Policy ¶ 4(b)(i).
See Bank of Am. Corp. v. Nw. Free Cmty.
Access, FA 180704 (Nat. Arb. Forum Sept.
30, 2003) (“Respondent's general offer of the disputed domain name registration
for sale establishes that the domain name was registered in bad faith under
Policy ¶ 4(b)(i).”); 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).
Complainant also alleges that Respondent had constructive notice of Complainant’s rights in the IMG WORLDWIDE mark, finding that Respondent’s registration of the <imgworldwide.net> domain name is evidence of bad faith registration and use. Because constructive notice arises out of the registration of a trademark, the Panel’s first point of analysis is to determine whether Complainant’s trademark registration, offered only as proof under bad faith, and not offered as proof of a mark under ¶ 4(a)(i), can imply constructive notice. The Panel accepts Complainant’s registration of the IMG mark offered under bad faith (i.e. Policy ¶ 4(a)(iii)), and the Panel finds that Respondent had constructive notice of Complainant’s IMG WORLDWIDE mark. See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where the complainant’s BEANIE BABIES mark was famous and the respondent should have been aware of it); 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.”). Otherwise, Complainant is asserting that Respondent has constructive notice of Complainant’s common law mark, which is an argument without precedent.
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 <imgworldwide.net>
domain name be TRANSFERRED from Respondent to Complainant.
Richard B. Wickersham, Judge (Ret.), Panelist
Dated: November 16, 2005
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