WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Chuck Liddell v. Comdot Internet Services Private Limited Case No. D2008-1284 1. The Parties
The Complainant is Chuck Liddell, c/o Eisner & Frank, California, United States of America, represented by Eisenführ, Speiser & Partner, United States of America.
The amended Complaint names three Respondents, namely Domain Administration Limited c/o David Halstead, Auckland, New Zealand; PrivacyP, Netherlands; and Comdot Internet Services Private Limited, Mumbai, India. Which is the appropriate Respondent is discussed below. 2. The Domain Name and Registrar
The disputed domain name is registered with Lead Networks Domains Pvt. Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2008. It named Domain Administration Limited and Privacyp as Respondents. On August 22, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name at issue. On August 25, 2008, Lead Networks Domains Pvt. Ltd., transmitted by email to the Center its response, identifying Comdot Internet Services Private Limited as the registrant and providing the contact details. The Center sent an email communication to the Complainant on August 26, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 5, 2008. 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 all three named Respondents of the Complaint, and the proceedings commenced on September 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2008. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on October 15, 2008.
The Center appointed Alan L. Limbury as the sole panelist in this matter on October 20, 2008. 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. 4. Factual Background
In the absence of a Response, the Panel accepts the following facts, asserted in the Complaint or contained in the exhibit to the Complaint, as having been established, namely that the Complainant is one of the most famous athletes in the United States of America; that since 2000, he has been the preeminent athlete in, and the public face of, the Ultimate Fighting Championship (“UFC”), a “mixed martial arts” organization which features competitions combining boxing, wrestling and martial arts skills; that the popularity of UFC has soared since the Complainant became its preeminent athlete; that the Complainant has also appeared in movies and television programs and has forged successful business enterprises; that the disputed domain name was registered on July 27, 2004, by which time the Complainant was famous and had made a number of television and movie appearances; and that the disputed domain name resolves to a web site populated entirely by links to other web sites containing content uniquely associated with the Complainant. 5. Parties' Contentions A. Complainant
The Complainant contends that he has common-law trademark rights in his name, to which the disputed domain name is identical; that the Respondents have no permission from the Complainant to use his trademark and no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith; and that the use to which the domain name is put demonstrates that the Respondents are seeking to profit from the Complainant's trademark. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Procedural issue: who is the correct Respondent?
According to the Complaint, a Whois search conducted in February, 2008 revealed that the registrant was Domain Administration Limited c/o David Halstead, described by the Complainant as “perhaps the most notorious cybersquatter in the world”. A further search in May, 2008 revealed that the registrant was PrivacyP. Following the filing of the Complaint naming both of the abovementioned as Respondents, the Center informed the Complainant of the Registrar's response to the Center's verification request and invited the Complainant to amend the Complaint. Thus the Complaint names three Respondents.
During the course of the verification process, the Center received an “automated reply” email from PrivacyP saying it provides a privacy service for domain name owners and that it is not the registrant of the domain name.
From his May search the Complainant might reasonably have concluded that the privacy service was seeking to conceal the identity of Domain Administration Limited, with which the Complainant had attempted to communicate after his February search.
Given these events and the form of the Center's invitation to amend the Complaint, it is understandable that Complainant chose to name all three entities as Respondents. However, the latest information from the Registrar is that the registrant is Comdot Internet Services Private Limited. According to the definition of “Respondent” in the Rules, paragraph 1, the Respondent is the holder of a domain name against which a complaint is initiated. This reflects Note 3 of the Policy in treating “you” as referring to the domain name holder.
Accordingly the Panel finds that the sole Respondent in these proceedings is Comdot Internet Services Private Limited. Since there is no evidence before the Panel linking either Domain Administration Limited c/o David Halstead or PrivacyP with Comdot Internet Services Private Limited, the assertion that David Halstead is a notorious cybersquatter is of no relevance in this proceeding. Substantive issues
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.”
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:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman,WIPO Case No. D2000-1080 and Alta Vista Company v. Grandtotal Finances Limited et al.,WIPO Case No. D2000-0848. A. Identical or Confusingly Similar
To succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for the Complainant to prove that the mark is in fact a trademark. Thus, the Complainant must produce evidence proving that, prior to the filing of the Complaint, it has provided goods or services under the unregistered mark and had thereby acquired a reputation such that members of the public would associate those goods or services with the Complainant and not with others not authorized by the Complainant to use the mark. That is to say, the Complainant must prove that, prior to filing the Complaint, it had acquired a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent: British Heart Foundation .v. Harold A Meyer III, eResolution Case No. AF0957.
Here the Complainant relies not on evidence but on assertion, albeit uncontested. For a full discussion on the circumstances in which common law rights in personal names, including those of athletes, have been recognized, see Israel Harold Asper v. Communication X Inc.,WIPO Case No. D2001-0540.
Based on the Complainant's uncontested assertions, this Panel accepts that the Complainant's name has become associated in the public mind, at least in that sector which follows athleticism of this kind in the United States of America, with the services provided by UFC, such as to have acquired secondary meaning, and that the Complainant has accordingly established that he has common law rights in the trademark CHUCK LIDDELL.
The specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
The Panel therefore finds the disputed domain name to be identical to the Complainant's common law mark CHUCK LIDDELL.
The Complainant has established this element of his case. B. Rights or Legitimate Interests
The Respondent did not file a response in this proceeding. Therefore, the Complainant's assertions that the Respondent did not have permission to use the Complainant's mark in this way and therefore lacks rights or legitimate interests establish a prima facie case that is unrebutted.
The Complainant has established this element of its case. C. Registered and Used in Bad Faith
The Complaint exhibits a print of the home page of the Respondent's web site to which the disputed domain name resolves. There are displayed a picture of a pair of bare fists in a fighting pose, with links including one naming the Complainant and others naming various UFC activities. Goods and services are available for purchase from other “sponsored links”.
Although the disputed domain name was registered some four years ago, there is nothing to indicate that it has ever been used in a different way. The Panel concludes that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on its website or location. Under the Policy, such use is evidence of both bad faith registration and use.
The Complainant has established this element of his case. 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 the Complainant.
Alan L. Limbury
Sole Panelist
Dated: November 3, 2008
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