Complainant is Dylan Larkin, United States of America (“United States”), represented by Augustine Law Firm, LLC, United States.
Respondent is Jarrett Johnson of Las Vegas, Nevada, United States, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2016. On June 3, 2016, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center requested clarification from Complainant by e-mail on June 17, 2016, regarding references in the Complaint to the Domain Name. On the same day, Complainant filed an amended Complaint with corrected references to the Domain Name.
On June 17, 2016, the Center received an e-mail communication from Respondent. On June 20, 2016, the Center acknowledged receipt and informed Respondent regarding the proceeding.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2016. An informal Response was filed as two e-mails with the Center on June 20, 2016 and June 23, 2016.
The Center appointed Robert A. Badgley as the sole panelist in this matter on July 12, 2016. 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 a 19 year-old center on the Detroit Red Wings, a team in the National Hockey League (“NHL”) in North America. Complainant finished his rookie season with the Red Wings in 2016, netting 23 goals and 22 assists in 80 games and earning the accolade of Red Wings Rookie of the Year. Complainant wears number 71 on his Red Wings sweater.
Complainant had been drafted by the Red Wings in the first round of the NHL draft in 2014, but he elected to play a year of hockey with the University of Michigan. He also served as assistant captain on Team USA’s gold-medal-winning team.
Respondent registered the Domain Name on April 21, 2016. The Domain Name resolves to a parking page set up by the Registrar.
On May 4, 2016, Respondent e-mailed Complainant’s agent, stating in part as follows: “I have received multiple offers from people wanting to buy [the Domain Name] and being a Detroit Red Wings fan and a huge fan of Dylan Larkin, I wanted to first give you the opportunity to do so before I put it up for sale.”
On May 19, 2016, Complainant’s agent responded to Respondent by e-mail, offering to buy the Domain Name for USD 100.
On May 20, 2016, Respondent e-mailed Complainant’s agent, asking for two autographed jerseys, an autographed hockey stick, and a pair of tickets to a Red Wings game of Respondent’s choice. (A pair of tickets to a Red Wings game would cost between USD 100 and USD 480. A pair of non-autographed Red Wings jerseys would cost USD 398.)
Later that day, Complainant’s agent e-mailed Respondent, stating that tickets are sold through the Red Wings team and hence Complainant could not provide the tickets. Complainant’s agent did indicate, though, that some arrangement was possible.
On May 27, 2016, Respondent sent an e-mail to Complainant’s agent, stating that he was going to pursue other options because he had received “much better” offers from others.
According to the Complaint, there was “no further communication” between the parties. However, in his informal Response, Respondent discloses a May 31, 2016 e-mail from Complainant’s agent to Respondent. In that e-mail, Complainant’s agent stated that Complainant was still interested in purchasing the Domain Name, in exchange for cash and/or other consideration, and asked Respondent to make an offer that was fair and within the capabilities of Complainant. 5. Parties’ Contentions A. Complainant
Complainant asserts that he has satisfied all three elements required under the Policy for a transfer of the Domain Name. Complainant avers that, “by virtue of the fact that [he] is a professional hockey player in the most exclusive and prestigious hockey league in the world, he is deemed a public figure and a celebrity.” Complainant cites to several prior decisions under the Policy in which domain names have been transferred to celebrities (Halle Berry, Pam Anderson, Pierce Brosnan) who were found to have established common law (unregistered) trademark rights. Complainant states: “In line with the aforementioned ‘Celebrity’ domain name cases, and by virtue of the fact that Complainant Dylan Larkin is a celebrity, he owns and controls common law trademark rights in his famous name.”
Complainant also asserts that Respondent has no rights or legitimate interests in respect of the Domain Name, and that he has registered and is using the Domain Name in bad faith by trying to “extort” from Complainant a price far in excess of Respondent’s out-of-pocket costs to acquire the Domain Name. B. Respondent
Respondent submitted a couple of e-mails summarized in the Factual Background section of this Decision in which he did not dispute any of the substantive allegations of the Complaint. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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. Identical or Confusingly Similar
The Policy protects trademarks, both registered and unregistered. The Policy does not protect personal names as such. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states as follows in connection with Question 1.6 (“Can a complainant show UDRP-relevant rights in a personal name?”):
Personal names that have been registered as trademarks are generally protected under the UDRP. While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person's name as a distinctive identifier of goods or services offered under that name would normally be required [see also paragraph 1.7 below]. A trademark-equivalent basis has been found in the common law action of passing-off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP. (…)
The name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier for the business engaged in, or a religious leader), or making broad unsupported assertions regarding use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights.
As such, someone who claims to be a “celebrity” must establish that he has actually used his name as a trademark, i.e., as a source identifier for goods or services he is offering in commerce. The Panel concludes, based on the record here and on a fairly closely analogous precedent from another case decided under the Policy, that Complainant has established that he has common law trademarks in his name, DYLAN LARKIN. In Jelani Jenkins v. Amy Lewis,WIPO Case No. D2014-0695, the complainant was Jelani Jenkins, a professional American football player in the National Football League (“NFL”) who played for the Miami Dolphins team. In its decision to transfer the domain name , the panel in that case concluded that the complainant, by virtue of the accumulating success of complainant as an emerging football player entering the professional football market, had acquired common law trademark rights in his name. The Jenkins panel observed:
Under the facts of record, the Panel considers that the Complainant clearly accrued common law trademark rights – which the Respondent does not dispute – in his personal name commencing in 2007 in connection with being a football player, with those rights continuing to the present while the Complainant advanced his career from high school to collegiate to ultimately professional football. Specifically, during that time, the Complainant received increasing national notoriety and thus his name gained sufficient distinctiveness and secondary meaning throughout the national [United States] football industry to attain legal status as a common law mark in that industry.
The facts of the Jenkins case appear to track closely with the facts here, and hence this Panel sees no reason to depart from the conclusion of the Jenkins panel. Accordingly, the Panel concludes that Complainant has common law rights in the mark DYLAN LARKIN.
The Domain Name incorporates Complainant’s mark in its entirety, and adds the number “71.” The Panel finds that the additional number does not meaningfully distinguish the Domain Name from the mark. Indeed, the fact that Complainant wears number 71 on his sweater indicates that confusing similarity may be exacerbated by the “71.”
The Panel concludes that Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] 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.
Respondent has not come forward to explain his bona fides with respect to the Domain Name. There is no evidence in the record that Respondent intended to do anything with the Domain Name other than to leverage it for money or other valuable consideration.
The Panel concludes that Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Again, the only conclusion to be drawn from the evidence of record is that Respondent, with full knowledge of Complainant and his renown as a hockey player, registered the Domain Name with the intent of selling it a profit or exchanging it for sports tickets and memorabilia well in excess of the cost of registering the Domain Name. Such conduct constitutes bad faith within the meaning of the above-quoted Policy paragraph 4(b)(i).
The Panel concludes that Complainant has established Policy paragraph 4(a)(iii). 7. Decision
For 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.
Robert A. Badgley
Sole Panelist
Date: July 20, 2016
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