Maria Sharapova v. Whois Privacy Protection Service, Inc. c/o Whois Agent
Claim Number: FA0601000621125
Complainant is Maria Sharapova (“Complainant”), represented by Julie Lewis Sroka, of IMG Worldwide, Inc., IMG Center Suite 100, 1360 East 9th Street, Cleveland, OH 44114-1782. Respondent is Whois Privacy Protection Service, Inc. c/o Whois Agent (“Respondent”), PMB 368, 14150 NE 20th St - F1, c/o mariasharapova.com, Bellevue, WA 98007.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mariasharapova.com>, registered with Enom, 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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 9, 2006.
On January 6, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <mariasharapova.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 January 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 31, 2006 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@mariasharapova.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), 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 <mariasharapova.com> domain name is identical to Complainant’s MARIA SHARAPOVA mark.
2. Respondent does not have any rights or legitimate interests in the <mariasharapova.com> domain name.
3. Respondent registered and used the <mariasharapova.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Maria Sharapova, is an enormously popular professional tennis player on the Sony Ericsson Women’s Tennis Association (“WTA”) Tour, as well as a professional model. Complainant’s professional tennis career began in 2001. Complainant was ranked Number Four on the 2005 Sony Ericsson WTA Tour rankings, and on August 22, 2005, Complainant held the coveted Number One WTA Tour ranking, making her the first Russian woman to earn the top ranking.
Complainant is an enormously popular tennis professional because of, among other things, her outstanding results that include four career WTA Tour singles titles, with the highlight being her Ladies Singles Title at the 2004 Wimbledon Championships. Complainant won the 2004 Tour Player of the Year Award along with the WTA Tour’s Most Improved Player of the Year honors.
Complainant appeared on the cover of Sports Illustrated in July 2004 after her Wimbledon win, and also in July 2005 in a special double issue that was on newsstands for two weeks. Complainant has also become well known and admired around the world via the global exposure she receives in television and Internet broadcasts and other media coverage of WTA Tour tournaments and other tennis events and exhibitions.
In addition, Complainant has received significant exposure from her modeling work and appearances on popular news and interview shows such as NBC’s Today Show and Tonight Show, ESPN’s Sportscenter, MTV’s TRL, Entertainment Tonight, and many others.
Respondent registered the <mariasharapova.com> domain name on April 7, 2002. Respondent is using the disputed domain name to redirect Internet users to a website that features commercial content unrelated 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 MARIA SHARAPOVA mark has acquired sufficient secondary meaning to establish common law rights based on Complainant’s fame and reputation associated with her professional tennis and modeling careers. Complainant’s professional tennis career began in 2001, prior to the registration of the <mariasharapova.com> domain name. The Panel concludes that Complainant has proved that the MARIA SHARAPOVA mark has become sufficiently connected to Complainant to justify a finding of common law rights in the mark. 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 CMG Worldwide, Inc. v. Page, FA 95641 (Nat. Arb. Forum Nov. 8, 2000) (finding that Princess Diana had common law rights in her name at her death and that those common law rights have since been transferred to the complainant, the representative of Princess Diana’s estate).
Respondent’s <mariasharapova.com> domain name is
identical to Complainant’s MARIA SHARAPOVA mark because the domain name
features Complainant’s mark in its entirety, omits the space between the terms
“maria” and “sharapova,” and adds the generic top-level domain “.com” to the
mark. The Panel finds that such minor
alterations to Complainant’s mark are insufficient to negate the identical
aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain
names”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330
(Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle
that generic top-level domains are irrelevant when conducting a Policy ¶
4(a)(i) analysis”); see also Nev. State Bank v. Modern Ltd. – Cayman Web
Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established
that the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <mariasharapova.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have 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 respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Additionally, the <mariasharapova.com> domain name is identical to Complainant’s MARIA SHARAPOVA mark and is used to redirect Internet users to a website that features commercial content unrelated to Complainant. The Panel finds that Respondent’s use of a domain name that is identical to Complainant’s mark to divert Internet users to a website that links to commercial content unrelated to Complainant, and for which Respondent presumably receives click-through fees, 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 Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Moreover, Respondent has offered no evidence and there is no evidence in the record suggesting that Respondent is commonly known by the <mariasharapova.com> domain name. Thus, Respondent has not established rights or legitimate interests in the <mariasharapova.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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); 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); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent was not commonly known by the disputed domain name nor was the respondent using the domain name in connection with a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The <mariasharapova.com> domain name resolves to a website that features commercial content unrelated to Complainant. The Panel presumes that Respondent receives commissions for diverting Internet users to Respondent’s website. Additionally, Respondent’s use of Complainant’s MARIA SHARAPOVA mark in the domain name creates a likelihood of confusion and suggests an attempt to attract Internet users to Respondent’s website for Respondent’s commercial gain. The Panel finds that this is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
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 <mariasharapova.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: February 17, 2006
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