WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allen Stanford v. Krishna Mohunlal, individual
Case No. D2008-1188
1. The Parties
Complainant is Allen Stanford, Houston, Texas, United States of America, represented by the law firm Curtis, Mallet-Prevost, Colt & Mosle LLP, United States of America.
Respondent is Krishna Mohunlal, Suffern, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with R.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2008. On August 5, 2008, the Center transmitted by email to R a request for registrar verification in connection with the domain name at issue. On August 5, 2008, R transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details.
On August 12, 13, and 19, 2008, the Center notified Complainant of minor deficiencies in his filing. After these were corrected, the Center, on August 26, 2008, verified that the Complaint together with the amendments 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 Respondent of the Complaint, and the proceedings commenced on August 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2008. Respondent sent an informal communication to the Center on September 14, 2008, which was acknowledged as its Response by the Center on September 15, 2008.
The Center appointed Richard G. Lyon as the sole panelist in this matter on September 19, 2008. The Panel finds that it was properly constituted and has jurisdiction over 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.
4. Factual Background
Complainant is a world-renowned former cricketer who holds joint citizenship with the United States of America and Antigua and Barbuda. Though resident in Texas, United States of America, he has been named a Knight Commander of the Most Distinguished Order of the Nation by the latter country. Following his distinguished career on the cricket pitch, Complainant has become a successful financier and businessman and is currently the Chairman of Stanford Financial Group of Companies. He remains prominent as a sponsor and innovator in cricket and other sports and enjoys continued prominence and success in the business world. Complainant holds no registered trademarks in his name, Allen Stanford.
Respondent registered the disputed domain name in March 2008 and maintains a website at the domain name that collects news articles and other information about the sport of cricket worldwide and includes blogs on many subjects, some of them cricket-related. The site has a number of click-through links to other commercial sites. Some, but not all of these, appear to be Google-sponsored advertising hyperlinks common to many websites.
5. Parties' Contentions
A. Complainant
Complainant contends as follows:
Complainant has common law rights in his name by virtue of his fame as a cricketer and businessman; in support of this allegation, Complainant has attached many recent news articles about Complainant and his business and sporting endeavors. Common law rights are sufficient to invoke the Policy, and many cases under the Policy have applied that principle to the names of celebrities.
Complainant has never authorized Respondent to use his name, and Respondent has never been known by that name apart from the website maintained at the disputed domain name. Mere use of a domain prior to notice of the dispute is not sufficient to show bona fide use. Respondent could have selected any number of other names for its site but chose Complainant's name to take advantage of its renown in the cricket world. By using the disputed domain name for a cricket-centered site, Respondent perforce admits knowledge of Complainant prior to registration of the disputed domain name. Respondent's use is commercial, including many commercial activities unrelated to Complainant or to cricket.
Respondent's use of the website is not “fair use” under United States of America trademark law. To the contrary, Respondent has included prominent links to sensational news articles and has permitted users to post and comment on content that borders on pornography. In so doing, Respondent has tarnished Complainant's mark. Furthermore, Respondent has never included a disclaimer on its site, thus confusing Internet users regarding Complainant's possible endorsement of Respondent and its website.
B. Respondent
Respondent did not submit a formal response, but did submit an email communication in which he stated should be considered his response in this proceeding. That communication reads in its entirety as follows: “i would like to say i am the legal owner of the site claimed by the complainant. the site was a hobby and was not intended to make money. in fact it's a loss. 1,000 in hosting fees and 90 in google clicks. when i registered that name it was readily available on register .com. i legally registered the name from a layman's perspective that it is on r then its available. i feel the complainant is only making a claim because they did not take the time to legally register it like i did. i, the respondent registered that domain legally at r. in a generous off the name of the site was changed to yet still the complainant is making baseless claims.”
6. Discussion and Findings
Identical or Confusingly Similar
Complainant argues correctly that a person's name, even when not registered as a trademark with any governmental authority, suffices to invoke the Policy, and that this principle has often been applied in respect to celebrity names, e.g., Julia Fiona Roberts v. Russell Boyd,WIPO Case No. D2000-0210. Complainant has submitted ample evidence of his renown as a sporting figure, financier, investor, and sponsor, but very little evidence that he has used his name, standing alone, as an identifier for goods or services. A famous name, by itself, is not enough; Complainant must provide evidence of its use as a business identifier. That holds true especially as to men and women who have achieved fame in business or finance, as these individuals do not automatically use their names as service identifiers. See, e.g., Alan Bond v. Information360 Limited,WIPO Case No. D2007-1081; Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540.
With respect to individuals prominent in sport, use of one's name is almost always to some degree commercial (see, e.g., Freddy Adu v. Frank Fushille,WIPO Case No. D2004-0682). In most of the cases in which a sports figure was held to hold common law trademark rights, there was evidence of use of the name for sale of merchandise or other licensed goods, e.g., Mike Schmidt, c/o Dreams, Inc. v. RegisterF - Ref. #17067566,WIPO Case No. D2006-0603. Complainant in this proceeding does not allege such use. He does, however, provide evidence of his promotion, using his name, of the variant of the traditional game of cricket that he invented and made popular, 20/20 Cricket, including active promotion of a Stanford 20/20 Cricket Tournament, and other use of his name to promote commercial cricket interests. The Panel believes this adequately establishes rights in that name sufficient to invoke the Policy. Furthermore, as in most cases involving sporting figures, Respondent in all likelihood was well aware of Complainant's prominence at the time it registered the disputed domain name (see Bob Avila v. B&B Productions,WIPO Case No. D2004-0013).
As the dominant feature of the disputed domain name is Complainant's name, confusing similarity is not obviated by adding the word “cricket”; indeed this addition increases the likelihood of confusion. In accordance with this Policy precedent, Complainant has met his burden of proof under paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests.
Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name by contending, without contradiction, that he has never authorized Respondent to use his name and that Respondent has never been known as “Allen Stanford” individually or in his business, at least independently of his use of the disputed domain name. Respondent's use is undeniably commercial, and the email note quoted above indicates intentionally (if not successfully) so, taking it out of any possible free speech or “fan site” use. Paragraph 4(a)(ii) of the Policy has been satisfied.
Registered and Used in Bad Faith.
These same facts establish that Respondent's registration of the disputed domain name, made earlier this year with in all likelihood full knowledge of Complainant, was made in bad faith for purposes of paragraph 4(a)(iii) of the Policy. Respondent's use of it to attract cricket lovers and fans of Complainant for commercial gain is similarly in bad faith. Respondent does not contend otherwise; his only defense is that the disputed domain name was available for registration. That assertion fails as a matter of well-settled Policy precedent.
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 be transferred to Complainant.
Richard G. Lyon
Sole Panelist
Date: September 25, 2008
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