The Complainant is David Pablo Nalbandian, of Argentina, represented by Barreiro, Romero, Victorica y Asociados, Argentina.
The Respondent is Yuri Babayan, of Colorado,United States of America.
2. The Domain Name and Registrar
The disputed domain name <davidnalbandian.com> is registered with Go
Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2006. On August 2, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On August 3, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 17, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2006.
The Center appointed the Honourable Sir Ian Barker, QC as the sole panelist in this matter on October 9, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Respondent did not file a Response, but engaged
in email communications with the Complainant and the Center culminating in an
email dated September 12, 2006. In this email, he stated that he intended to
transfer the disputed domain name to the Complainant. He was advised by the
Center to communicate directly with the Complainant’s advisers but no
settlement appears to have been made.
4. Factual Background
The Complainant is an internationally-known and successful professional tennis player who is currently ranked No. 3 in the world. His career began in 1998. His first major victory was in the Junior Doubles at Wimbledon in 1999. Since then, he has played in numerous well-known tournaments throughout the world with considerable success. He is currently part of the Argentinian Davis Cup Team.
The disputed domain name was first registered on July 5, 2002, at a time when the Complainant was in the public eye as playing in the Semi-Finals at Wimbledon. The name of David Nalbandian can be found at 1.8 million Internet pages according to the Google searcher and at 1.42 million pages according to the Yahoo searcher.
The Complainant’s name has been developed through the media and international companies.
On October 27, 2005, the Complainant applied in Argentina for registration of a trademark for the words “David Nalbandian”. The registration process has not been completed and no opposition has been filed.
In his communication with the Center, which was not
a formal Response, the Respondent stated that he had always admired the Complainant,
that he originally registered the disputed domain name because it pertained
to somebody else but that he was happy to transfer the domain name to the Complainant
but would like to have an autographed racket in return.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the domain name is identical to the Complainant’s name. The Complainant has a trademark in his name in the same way in which many sporting persons have achieved common-law trademark rights. The Complainant sited numerous WIPO UDRP cases.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name and was not given any by the Complainant.
The Complainant further contends that the disputed domain name must have been registered in bad faith because, on the very day it was registered, the Complainant was involved in a high-profile tennis match which attracted world interest.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions and did not file a Response. He sent various emails to the Center,
as indicated above.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainant’s name.
The question is whether the Complainant has satisfied the Panel that he has common law rights in his personal name. He cannot yet take advantage of any Argentinian trademark because there has been no registration granted.
The question of common law trademarks applying to personal names has been discussed
in many WIPO UDRP decisions. There is a useful summary in Israel HaroldAsper v. Communication X Inc., WIPO
Case No. D2001-0540 which was adopted by the majority of the Panel in R.
E. ‘Ted’ Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi,
WIPO Case No. D2002-0251. Such authorities
show that the name of the famous person has to be used in the marketing of goods
and services, as frequently happens with sporting personalities and pop stars.
Normally, extensive evidence is tendered to show that merchandise has been marketed
using the name of the person. In other words, the name has to have been a marketable
commodity and to have been used to denote either the Complainant’s own
or someone else’s goods and services.
The situation is different for well-known persons who do not market goods using
their own name. Both the Asper and Ted Turner cases concerned
a well-known philanthropist and was not given common-law trademark recognition
to his name because there was no evidence of marketing of goods and services
in association with the name to such a degree would attract a common-law mark.
Likewise, in The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary
Cohn, Prolife.net, and God.info, WIPO
Case No. D2002-0184, the complaint of the Rev. Jerry Falwell, a well-known
preacher in the United States, was not upheld. He had failed to show that his
name had been used in a trademark sense as a label for particular goods and
services. He had failed to provide any marketing brochures, trade advertisements
or other evidence of the use of his name as a mark.
In the present case, the Complaint is very light on detail as to activities of the Complainant as would give rise to the inference of a common law trademark. There is reference to media and international companies developing his image. A web-page exhibited on a Yahoo search annexed to the Complaint was a huge selection of sports cards and that David Nalbandian and other products were available for purchase.
In the absence of any contrary evidence or any defence, the statements in the Complaint as to the development of the image must be accepted. The Panel is prepared to infer from the meagre evidence supplied that the name of the Complainant is being used as a marketing tool.
Complainants should realise that, in order to establish a common-law trademark, there should normally be much more information on the common-law trademark aspect than was provided in this case.
In the circumstances, however, the Panel is prepared to infer that the Complainant has common-law rights in a trademark involving his name. Therefore the first limb of the Policy is proved.
B. Rights or Legitimate Interests
The Respondent has no rights in the disputed domain name. The Complainant gave him none. The Respondent has not endeavoured to bring himself within paragraph 4(c) of the Policy and the exceptions referred to there. Accordingly, the second criterion is proved.
C. Registered and Used in Bad Faith
The Panel is prepared to infer bad faith use and registration. Although the Complainant has taken 4 years in which to file his Complaint and there has been no reason given for the delay, there is no time limit under the Policy for filing a complaint, nor is there any operation of the equitable doctrine of laches. Often, delay in filing makes bad faith registration hard to prove.
At the time of the registration of the disputed domain name, the Complainant, although not as famous as he currently is, was nevertheless in the world sporting limelight. He was an up-and-coming player engaged in an important match in a world-famous tournament.
In the circumstances, the Panel is prepared to infer bad faith registration
and continued bad faith in the use of the name. The Respondent must have known
that the name referred to the Complainant and indeed has admitted as much in
his communications with the Center. Accordingly, the third limb of the Policy
is proved and the domain name must be transferred to the Complainant.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <davidnalbandian.com> be transferred to the Complainant.
Sir Ian Barker
Sole Panelist
Dated: October 23, 2006
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