Complainant is Muhammad Ali Enterprises of New York, New York, United States of America (“United States”), internally represented.
Respondent is Domain Privacy Service FBO Registrant of Orem, Utah, United States / Michael Green of Austin, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2016. On June 23, 2016, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On June 23, 2016, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on June 27, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 28, 2016.
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 July 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2016. Respondent e-mailed the Center on July 2, 2016 asking who the dispute was with and what he needed to do, and stating he was confused by correspondence received from the Center. The Center responded on July 11, 2016. However, Respondent did not submit any formal response. Accordingly, the Center notified the Parties about the commencement of the panel appointment process on July 26, 2016.
The Center appointed Robert A. Badgley as the sole panelist in this matter on August 2, 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 owns the intellectual property rights of the late athlete Muhammad Ali, who died on June 3, 2016. Muhammad Ali was one of the most famous people in the world. He was probably the best-known boxer ever to don a pair of gloves, and held the title of Heavyweight Champion for a time. He was known not only for his boxing prowess, but also for his colorful character, including his common dictum “I am the greatest.”
Complainant owns various registered trademarks, including ALI (registered with the United States Patent and Trademark Office (“USPTO”) on September 27, 2011) and THE GREATEST (registered with the USPTO on December 28, 2010). These trademarks are associated with various physical and digital memorabilia regarding Muhammad Ali.
Respondent registered the Domain Name on June 4, 2016, one day after Muhammad Ali’s death. The Domain Name resolves to a website where various memorabilia regarding Muhammad Ali are offered for sale. According to Complainant, “some of the goods being offered for sale [at Respondent’s website] are counterfeit goods of the Complainant’s goods.” 5. Parties’ Contentions A. Complainant
Complainant contends that it has established all three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. No further communication was received from Respondent other than the July 2, 2016 e-mail mentioned above. 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
Complainant holds rights in the registered trademarks THE GREATEST and ALI. The Domain Name simply combines these marks. The Panel concludes that the Domain Name is confusingly similar to trademarks in which Complainant holds rights.
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.
Complainant contends that Respondent has no relationship with Complainant, and was never authorized to use Complainant’s marks in any manner, including as a domain name. Respondent does not dispute any of this, and, indeed, Respondent has not come forward to explain his bona fides with respect to the Domain Name.
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.
Complainant asserts that Respondent is selling goods, including counterfeit goods, at the website to which the Domain Name resolves. Respondent does not dispute this allegation.
The Panel concludes that it is obvious, from the composition of the Domain Name itself (which combines two different but related trademarks closely associated with Muhammad Ali), the timing of the Domain Name registration (one day after Ali’s death), and the items offered for sale at Respondent’s website (Muhammad Ali memorabilia) that Respondent had Complainant’s marks in mind when registering the Domain Name. It is equally obvious, from the undisputed and plausible record in this case, that Respondent is seeking to capitalize on the fame of Complainant’s marks to sell wares – including alleged counterfeit items – for profit. This conduct violates the above-quoted paragraph 4(b)(iv) of the Policy.
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: August 3, 2016
Full & Egal Universal Law Academy