The Complainant is Ndamukong Suh of Texas, United States of America (“USA” or “U.S.”), represented by Rembolt Ludtke LLP., USA.
The Respondent is Moniker Privacy Services Registrant 3515812 of Pompano Beach USA, and Tim Evans Registrant 3670858, Athlete Web Design of Palatine, USA, represented by Zarley Law Firm, P.L.C, USA. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2011. On August 12, 2011, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On August 15, 2011, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 18, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On August 23, 2011, as instructed by Complainant’s Authorized Representative the proceedings were suspended for ten days until September 2, 2011 to allow the parties to reach a settlement. On September 2, 2011 the Center extended the suspension until September 17, 2011 as requested by Complainant. The parties did not reach a settlement; therefore the Complainant filed an amended Complaint on September 19, 2011. On October 13, 2011, Respondent Tim Evans, represented by Zarley Law Firm PLC, USA, submitted a response to the amended Complaint. On November 10, 2011, Complainant submitted a Reply to the Response.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 September 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2011. The Response was filed with the Center on October 13, 2011.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on October 26, 2011. 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
Complainant is Ndamukong Suh, a professional football player with the National Football League’s Detroit Lions organization. Complainant was awarded numerous honors and accolades during his collegiate football days, and has continued to receive substantial media attention since he was drafted into the NFL. Since completing his college football career in January 2010, Complainant has promoted himself professionally and commercially. Since his birth, Complainant has always been known by the name Ndamukong Suh. Complainant is the owner of the following U.S. Trademark Registration and Application for his name:
Registration No. 77981946, registered June 28, 2011, for use in connection with services including endorsement services and entertainment services.
Application Serial No. 77914986, filed January 19, 2010, for use in connection with goods including printed matter, clothing and sporting goods.
Complainant also maintains an official website, Facebook Athlete page, YouTube page and an official Twitter account, which has more than 110,000 followers. Complainant has also endorsed numerous products.
Respondents are Tim Evans of Athlete Web Design who registered the disputed domain name with Moniker Privacy Services, LLC (hereinafter collectively referred to as “Respondent”). Respondent acquired the disputed domain name in January 2009, with knowledge that it incorporated Complainant’s name. After learning that Complainant had retained a web developer other than Respondent, Respondent offered to transfer the domain to Complainant’s web developer, stating “Maybe we can work something out that is fair for the name.” In subsequent communications, Respondent provided a list of memorabilia items signed by Complainant that he would accept for transferring the domain name. Alternatively, he offered to accept “a few” game tickets for transfer of the disputed domain name.
After the Complaint was filed, Mr. Evans offered to voluntarily transfer the disputed domain name to Complainant without the requirement of a trade of memorabilia items or game tickets. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name incorporates his name in its entirety, that Respondent has no legitimate right or interests in the domain name and that Respondent’s practice of registering the domain names of athletes and then trading those domain names for certain memorabilia or game tickets supports a finding of bad faith registration and use of the disputed domain name. B. Respondent
In his response to the Complaint, Respondent formally and voluntarily consents to transfer of the disputed domain name to Complainant, but seeks a decision that Complainant has failed to establish the elements of paragraph 4 of the Policy and, specifically, the elements of bad faith registration and use of the disputed domain name. 6. Discussion and Findings
The Panel accepts Respondent’s voluntary consent to transfer the disputed domain name.
However, in accepting Respondent’s voluntary consent to transfer the disputed domain name, the Panel does not agree that Respondent’s activities in knowingly registering domain names that incorporate athlete’s names/trademarks, and then trading those domain names for memorabilia, game tickets or other items, constitute bona fide registration and use of a domain name. A. Identical or Confusingly Similar
Complainant has established that he has acquired significant recognition and goodwill in his name. The disputed domain name incorporates Complainant’s name in its entirety. The “.com” suffix adds nothing of distinctiveness.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s name. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Respondent does not dispute this. The disputed domain name resolves to a “domain parking program” website. Such domain parking in this case is not considered a legitimate use of the disputed domain name in connection with a bona fide offering of goods or services.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the documented out of pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on line 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 of a product or service on the respondent’s website or location.
The evidence indicates that Respondent was aware that he was registering Complainant’s name as a domain name. Respondent does not dispute this. The disputed domain name resolves to a “parked page” on which several links appear, including to sporting goods and NFL merchandise. Respondent claims that he did not choose those links and received no “pay per click” revenue from the “parked page” located at the disputed domain name.
However, the record indicates, by Respondent’s own admissions, that his primary purpose in registering the disputed domain name was to sell the disputed domain name to the Complainant for valuable consideration, in the form of memorabilia or game tickets, in excess of the documented out of pocket costs directly related to the disputed domain name. That the consideration he requested was in the form of signed memorabilia or game tickets does not avoid a bad faith finding. Respondent admits that he has a practice of registering popular athletes’ names and demanding memorabilia or game tickets in return for trading the domain name. There is no requirement in paragraph 4 of the Policy that the value demanded be above a certain threshold, only that it be in excess of the out of pocket costs directly related to the domain name.
Accordingly, the Panel finds that Respondent has registered and used the disputed domain name in bad faith. 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.
Lynda J. Zadra-Symes
Sole Panelist
Dated: November 18, 2011
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