Ain-Jeem, Inc. v. Barto Enterprises, Inc., Philip Barto
Case No. D2007-1841
1. The Parties
Complainant is Ain-Jeem, Inc., Long Beach, California, United States of America, represented by Ivan Hoffman, Attorney at Law, United States of America.
Respondent is Barto Enterprises, Inc., Philip Barto, Columbia, Maryland, United States of America. Mr. Barto has submitted a Response.
2. The Domain Name and Registrar
The disputed domain name <kareemabduljabbar.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2007. On December 12, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On December 14, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 17, 2007. 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 December 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2008. The Response was filed with the Center on January 10, 2008.
The Center appointed Richard G. Lyon as the sole panelist in this matter on January 17, 2008. The Panel finds that it was properly constituted and has jurisdiction to decide this proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On January 13, 2008, Complainant filed a “Request to Disregard the Response” and, in the alternative should the Panel consider the Response, a proposed rebuttal. By email to the Center dated January 15, 2008, Respondent opposed Complainant’s applications. The Center referred these applications to the Panel. By procedural order dated January 18, 2008, the Panel denied the Request to Disregard and leave to submit a rebuttal.
4. Factual Background
Complainant is the business entity of Kareem Abdul-Jabbar, one of the most famous of all professional basketball players. In addition to a stellar twenty-year career as a professional player, Mr. Abdul-Jabbar has coached professional basketball teams, acted in first-run movies, and appeared in many commercial product endorsements. Complainant or Mr. Abdul-Jabbar owns two trademarks for KAREEM ABDUL-JABBAR registered with the United States Patent and Trademark Office. One of these claims a first use in commerce of 1991.
Respondent registered the disputed domain name in 1999. According to evidence provided by Complainant and the Panel’s accessing the archives at <www.archive.org> Respondent made no use of the disputed domain name until 2001, at which point it resolved to a typical “Under Construction” site with several hyperlinks to unrelated commercial websites. Beginning in July 2002 the content changed to a one-page summary of Mr. Abdul-Jabbar’s basketball career. At some point the site included, as either a hyperlink or Internet address, the following: “www.vegasgamblers.info”. Respondent owns and operates a commercial website at <www.vegasgamblers.info>. This site currently contains hyperlinks to gambling.
The information about Mr. Abdul-Jabbar on the website never changed. The site was disabled in late 2007 and now reads “This Account Has Been Suspended.” After installation of the information sheet this site never included any interactive activities such as a forum, chat room, or hyperlink except for the possible link described above. At some (but not all) times the words “unofficial site” appeared under Mr. Abdul-Jabbar’s name at the top of the page.
Mr. Abdul-Jabbar’s business manager contacted Respondent by telephone in 2004. The parties dispute the specifics of this conversation but agree that Complainant’s representative objected to Respondent’s ownership of the disputed domain name.
5. Parties’ Contentions
Each party includes in its pleading numerous factual assertions for which no evidence is provided. In accordance with his customary practice the Panel will give these assertions no weight.1
A. Complainant
Complainant contends as follows:
It is well-established that under the Policy a celebrity’s name may serve as a trademark if used commercially, as Mr. Abdul-Jabbar has done. Complainant has enforceable trademark rights in Mr. Abdul-Jabbar’s name by reason of its federally-registered trademarks and continuous use of them for commercial activities for many years.
Neither Complainant nor Mr. Abdul-Jabbar ever licensed Respondent to use Mr. Abdul-Jabbar’s name. Respondent has never been known as Kareem Abdul-Jabbar as a business or individually and there is no business relationship between Respondent and Mr. Abdul-Jabbar. The use to which Respondent has put the website is not legitimate or bona fide under the Policy, as it includes a connection to gambling, an activity not only unrelated to Mr. Abdul-Jabbar but also anathema to his Muslim faith. As such Respondent’s use of the disputed domain name has tarnished Complainant’s trademarks.
These same facts establish Respondent’s bad faith in registering and using the disputed domain name. Respondent cannot credibly deny Mr. Abdul-Jabbar’s trademark rights or its knowledge of them, particularly as he has posted information about his basketball career on the website. Respondent’s taking down the content of the webpage is further indication of his bad faith, as an admission that the prior use was inappropriate. Complainant describes the telephone conversation between its representative and Respondent as including a forthright offer by Respondent to sell the disputed domain name to Complainant for an amount between USD 6,000 and USD 10,000, an amount in excess of its cost of registration.
Anticipating Respondent’s defense of asserting that his use of the disputed domain name was a fan site and therefore a legitimate non-commercial use of the domain name under paragraph 4(b)(iii) of the Policy, Complainant notes that the site has never had any of the customary trappings of a fan site. It mentions no fan club; there is no contact information on how to join a fan club; and the inclusion of the web address of Respondent’s “www.vegasgamblers.info” site renders the so-called fan site commercial and not entitled to the protection of paragraph (4(b)(iii). Complainant characterizes the information statement as “passive use” and therefore within the warehousing doctrine of Telstra v. Nuclear Marshmallows, WIPO Case No. 2000-0004. Under that doctrine extended non-use can in certain circumstances be deemed use in bad faith under the Policy, and can be used to infer registration in bad faith.
B. Respondent
Respondent contends as follows:
Respondent agrees that the disputed domain name is identical to Complainant’s mark, and does not appear to contest the validity of the mark or Complainant’s right to use a celebrity’s name as a trademark.
Respondent seeks refuge under paragraph 4(b)(iii) of the Policy by stating that the prior content on the website is “an informational fan site dedicated solely to Kareem Abdul-Jabbar in good faith.” And “Respondent is a strong proponent of fan sites and it’s [sic] right under the Constitution of the United States.” This reference to the Constitution presumably is to a citizen’s First Amendment right to free speech.2 None of Respondent’s actions in respect to the disputed domain name, or any of its other activities, has been undertaken in bad faith. Respondent has never been adjudged a cybersquatter and hence there can be no pattern of activity under paragraph 4(c)(ii) of the Policy.
The website at the disputed domain name never contained any advertisements, links, portals, searches, banners, subscriptions, offers of donation, offer of a domain for sale, offer of goods or services or even a contact email. Its use of the disputed domain name has at all times been entirely non-commercial.
For the reasons stated in the two preceding paragraphs, Respondent’s registration and use of the disputed domain name has not been in bad faith. Respondent disputes Complainant’s account of the 2004 telephone conversation, asserting that Complainant solicited a purchase of the disputed domain name rather than Respondent’s offering to sell it.
6. Discussion and Findings
A. Identical or Confusingly Similar.
Paragraph 4(a)(i) of the Policy has been satisfied. Complainant has two federally-registered United States trademarks for KAREEM ABDUL-JABBAR. Respondent has conceded the obvious, that the disputed domain name is identical to these marks.
B. Rights or Legitimate Interests.
Complainant has made out a prima facie case that Respondent lacks rights or a legitimate interest in the disputed domain name: neither Complainant nor Mr. Abdul-Jabbar has authorized Respondent to use the mark; there is no business relationship between the parties; and Respondent has never been known by the disputed domain name. Respondent questions none of these assertions. The determinative issue under paragraph 4(a)(ii) is thus the vitality of Respondent’s fan site defense.
Paragraph 4(b)(iii) of the Policy provides the following as a means for a Respondent to show a right or legitimate interest:
“you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Panels under the Policy have not reached a consensus or even a prevailing view as to whether a “clearly active and non-commercial” fan site is a “legitimate noncommercial or fair use of the domain name” under paragraph 4(b)(iii); the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.5, lists “View 1” and “View 2.” The Panel need not choose between the alternative lines of decision, however, because the content of Respondent’s site does not meet predicate requirements for a fan site including a necessary criterion of the operative Policy paragraph.
This site was never “active” for more than five years its content never changed from its perfunctory recital of Mr. Abdul-Jabbar’s resume and accomplishments. The panels that have deemed fan sites legitimate dealt with sites that served as alternatives to sites authorized by the celebrity or team that owned the name, and provided current information and often the opportunity for fans to learn about and discuss various topics related to their subject. They typically included non-commercial activities, not a static information sheet. As such these fan sites functioned similarly to a non-commercial business, often with activities that were independent of the website. See, e.g., Joseph Brandstetter v. Attn: Fenderrhodes.Com / James Garfield, WIPO Case No. D2007-0628; Chivas USA Enterprises, LLC, et al. v. Cesar Carbajal, WIPO Case No. D2006-0551; 2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO Case No. D2004-0001. While the “active” language comes from the Overview, not the Policy itself, the Panel considers it a useful guideline in addressing whether a fan site is actually being used for a legitimate purpose as opposed simply to keeping the domain name from the mark owner.
Far more importantly, Respondent’s use was not entirely “noncommercial.” For eight months the site contained no reference to Mr. Abdul-Jabbar and contained numerous links to assorted commercial businesses, none of which had any apparent relationship to Mr. Abdul-Jabbar or to basketball. At some point after posting the information sheet the web page included the reference to “www.vegasgamblers.info”, a commercial site also apparently unrelated in any way to Mr. Adbul-Jabbar. When incidental commercial activity has been held not to destroy the fan site defense where that activity bore some relationship to the site’s subject, see Chivas USA Enterprises, supra (occasional sale of tickets and team-related merchandise); White Castle Way, supra (link to purchase recordings by the site’s subject). Whether or not the reference to Respondent’s active website was an active hyperlink (as Complainant apparently alleges) or simply an address listed on the site (as Respondent apparently alleges),3 including this address to a concededly commercial website concededly owned by Respondent cannot reasonably be said to be related to the subject of the claimed fan site.
In summary, Respondent did not establish a fan site in any reasonable sense of the term. Rather his use was a simple form of parking the disputed domain name using an information sheet with facts available from any number of public sources. Years of such use (or perhaps more accurately, non-use) is not legitimate under paragraph 4(a)(ii) of the Policy.4
The only case that Respondent cites in support of his fan site defense is Bruce Springsteen v. Jeff Burger and Bruce Springsteen Club, WIPO Case No. D2000-1532. That case apparently dealt with an active commercial fan site. The majority panelists in that case, decided in the Policy’s infancy, denied the complaint noting in part that “no evidence has been given of the name ‘Bruce Springsteen’ having acquired a secondary meaning” and in any event “it is by no means clear from the UDRP that it was intended to protect proper names of this nature.”5 While the former statement presumably turned on the majority panel’s view of the evidence provided in that particular case, the latter rationale has since been clarified by subsequent panels to the point that the WIPO Overview (paragraph 1.6) now indicates that while the UDRP does not specifically protect personal names as such, a complainant may nevertheless be able to establish common law trademark rights in a name provided it is being used in trade or commerce. Many panels have sustained Policy complaints based upon such reasoning.
This issue is irrelevant in the present dispute, as Mr. Abdul-Jabbar has acquired registered trademark rights in a name. With respect, the Panel considers the majority Bruce Springsteen decision an anomaly and – under today’s Policy precedent at least – wrongly decided.
C. Registered and Used in Bad Faith
The commercial connection that topples Respondent’s claim of legitimate interest also supports Complainant’s charge that Respondent registered and has used the disputed domain name in bad faith. If Respondent’s use of the information page was a pretext for parking, as the Panel has found, the site’s use has been limited to unrelated click-through revenues for eight months and non-use for another seven years. The former activity, which even Respondent does not defend, illustrates use in bad faith. Lengthy non-use has many times been held to constitute use in bad faith under the Telstra line of cases. With no connection to the mark or Complainant, under Telstra the Panel is also permitted to infer that Respondent registered the disputed domain name in bad faith, at some point to take commercial advantage of the basketball player’s renown, as Respondent here has done. Paragraph 4(a)(iii) of the Policy has been satisfied regardless of whether Respondent ever offered to sell the disputed domain name to 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, <kareemabduljabbar.com> be transferred to the Complainant.
Richard G. Lyon
Sole Panelist
Dated: January 31, 2008
1 See, e.g., Texans For Lawsuit Reform, Inc. v. Kelly Fero, WIPO Case No. D2004-0778; Robert Chestnutt v. Jennifer Tumminelli, WIPO Case No. D2000-1758.
2 “Congress shall make no law . . . abridging the freedom of speech.” (Constitution, Amendment 1).
3 Of course an Internet address on a web page can easily be copied and pasted into the user’s browser almost as quickly and easily as accessing the address through a hyperlink.
4 Respondent’s invocation of his First Amendment right to free speech merits only a footnote. This decision infringes that right not at all. Respondent remains free to say whatever he cares to say about Mr. Abdul-Jabbar, subject only to laws governing defamation and false statements. He simply may not use his subject’s trademark as his soapbox. See Justice for Children v. R neetso / Robert W. O’Steen, WIPO Case No. D2004-0175.
5 The majority panelists in that case also noted that as it was possible to decide the case on other grounds, it would proceed on the assumption that the name Bruce Springsteen is protected under the Policy.
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