Complainant is Will Shipley, United States of America (“United States”), represented by Mgc Sports, United States.
Respondent is Mike Speer, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2021. On October 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 12, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 October 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 8, 2021.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 17, 2021. 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 BackgroundComplainant Will Shipley is an American football player, specifically a freshman running back on the Clemson University football team. Clemson has been one of the most successful National Collegiate Athletic Association (“NCAA”) football programs in the United States over the past decade.
Complainant attended Weddington High School in Charlotte, North Carolina, where he was named the best all-purpose high school running back in the country in 2019 by multiple ranking agencies. He was also named the 2019 Gatorade North Carolina Player of the Year. When Complainant announced his intention in 2019 to attend Clemson, the news received national attention from major sports media outlets, such as ESPN and Sports Illustrated.
A recent (June 21, 2021) United States Supreme Court decision in NCAA v. Alston has opened the door for student-athletes at NCAA schools to use their name for commercial purposes.
The Domain Name was registered on November 2, 2019. The Domain Name resolves to a parking page.
On September 28, 2021, Complainant’s representative sent a text message to Respondent, asking whether he was the owner of the Domain Name. On October 3, 2021, Respondent replied with the following text message: “Yes, that is me. Thanks for reaching out. I have 3 standing offers for when I decide to sell. Please submit your offer here and I will let you know.”
5. Parties’ Contentions A. ComplainantComplainant contends that it has proven all three elements required under the Policy for a transfer of the Domain Name.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsParagraph 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.
The Panel concludes that Complainant has common law rights in the name “Will Shipley”. Under section 1.5.2 of the WIPOOverview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is being used as a distinctive identifier of the complainant’s goods or services.”
Here, Complainant states that his name has acquired recognition as identifying him as a star collegiate football player, and that he is actively working to market that name for commercial purposes.
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
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. See also Dylan Larkin v. Jarrett Johnson,WIPO Case No. D2016-1115 (transferring
The Panel also concludes that the Domain Name is identical to that mark.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate InterestsPursuant 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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to explain his bona fides, if any, vis-à-vis the Domain Name. All we know from the undisputed record is that Respondent registered the Domain Name at a time when Complainant was acquiring national fame as a star football player, and that Respondent is seeking to sell the Domain Name, apparently to the highest bidder.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad FaithParagraph 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 online 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.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel incorporates its discussion above in the “rights or legitimate interests” section.
The Panel concludes that Respondent very likely had Complainant Will Shipley in mind when registering the Domain Name, which is identical to Complainant’s name and common law mark. Complainant’s fame as a rising football star was coming into view in 2019, when the Domain Name was registered. Even if Complainant had not actually monetized his name in commerce as of November 2019, it was apparent that his name would soon become widely associated with his football acumen and, in the ordinary course of American sports these days, would become a name with considerable marketing potential. On the record here, the Panel finds that Respondent registered the Domain Name precisely because Will Shipley’s name would soon become commercially valuable. It is recognized in paragraph 3.8.2 of the WIPO Overview 3.0 that there can be bad faith registration of a domain name prior to the complainant’s actual acquisition of trademark rights, in circumstances such as a respondent registers a domain name “further to significant media attention (e.g., in connection with a product launch or prominent event).” That is very likely what occurred here. Complainant’s growing fame as a future star football player was noted in various major sports media outlets, and his status as a top high school recruit bound for a major NCAA football program was well known at the time the Domain Name was registered.
With respect to bad faith use, the Panel concludes that this case falls easily under the above-quoted Policy paragraph 4(b)(iv). The undisputed record establishes rather well that Respondent was fielding bids for the Domain Name, which leads smoothly to the conclusion that Respondent was seeking to turn a profit from his registration and eventual sale of the Domain Name.
Complainant has established Policy paragraph 4(a)(iii).
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Robert A. Badgley
Sole Panelist
Date: November 22, 2021