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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Mark Warner 2001 v Mike Larson
Claim Number: FA0009000095746
PARTIES
The Complainant is Patrick Dillion Mark Warner 2001 , Alexanderia, VA, USA ("Complainant") represented by Norman St. Landau, Drinker Biddle & Reath LLP. The Respondent is Mike Larson, Virginia Beach, VA, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue are markwarner2001.com, and warner2001.com , registered with Registrars.com.
PANELIST
The undersigned panelist, Daniel B. Banks, Jr., certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on September 29, 2000; The Forum received a hard copy of the Complaint on October 2, 2000.
On October 4, 2000, Registrars.com confirmed by e-mail to The Forum that the domain name markwarner2001.com, and warner2001.com are registered with Registrars.com and that the Respondent is the current registrant of the name. Registrars.com has verified that Respondent is bound by the Registrars.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.
On October 9, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 29, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts, and to postmaster@markwarner2001.com, and postmaster@warner2001.com by e-mail.
On November 6, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Daniel B. Banks, Jr., as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.
PARTIESí CONTENTIONS
Mark Warner is a prominent private businessman and public figure residing in the Commonwealth of Virginia. He is involved in successful telecommunications and high-technology business ventures as well as being actively involved in numerous charitable and civic institutions. He is a former candidate for the United States Senate and presumptive candidate for Governor of Virginia in 2001. His candidacy has been widely publicized in local, state and national publications.
Complainant, Mark Warner 2001, is the campaign organization formed by Mark Warner and his supporters in contemplation of his possible gubernatorial campaign in Virginia in 2001.
Respondent registered the domain name "markwarner2001.com" on February 20, 2000 and registered the domain name "warner2001.com" on February 25, 2000. When accessed, both web sites purport to be "warner2001.com" and feature a banner announcement stating "Coming In The Fall of 2000Ö", an outline of the Commonwealth of Virginia, and an e-mail address. Additionally, these web sites state, "This site is not affiliated with any registered political party or candidate for public office." Neither web site provides any other information, commentary, or links.
Complainant states that these web sites are identical and/or confusingly similar to Complainant's name in which Complainant and Mark Warner have legitimate rights and interests and to which the Respondent has no legitimate rights or interests. No entity or person connected with the Respondent is named or identified by the domain names and neither Complainant nor Mark Warner has not authorized or licensed Respondent to use Mr. Warner's name.
Complainant states that Respondent registered the names in bad faith. First, Complainant contends that Respondent registered the domain names primarily for the purpose of selling the domain names for consideration that exceeds the Respondent's our-of-pocket expenses in as set out in UDRP 4(b)(i). Complainant says that this was demonstrated when Complainant contacted Respondent to inquire whether the domain name "warner2001.com" was available for purchase. In reply, Respondent stated that he was currently "considering offers for the purchase of 'warner2001.com'." Complainant contends that, based on this exchange, it is apparent that Respondent's sole purpose in registering the domain names was, and continues to be, to sell the domain names for a profit.
Complainant's also contends that Respondent's registration of the domain names in question actively prevents Complainant, who has rights and legitimate interests in the domain names, from using the domain names. Complainant states that Respondent's current use of the domain names makes it clear that the Respondent registered the domain names solely to prevent others from registering and using the domain names for legitimate purposes. This appears to be a claim under the language of UDRP 4(b)(ii).
Complainant's last contention regarding bad faith is that Respondent is attempting to attract Internet users to his web sites by using Complainant's name as set out in UDRP 4(b)(iv).
B. Respondent:
Respondent first asserts that Complainant has no trademark or service mark rights in the domain names and that ICANN dispute resolution procedures were established to protect rightful owners of trademarks and service marks. Respondent states that the domain names in question are not appurtenant to an established business, nor do they identify the source of any kind of goods or services.
Next, Respondent states that his registration of the domain names in question are not actionable given the political and non-commercial context of their use and that Complainant seeks to squelch the Respondent's right to engage in constitutionally protected free speech.
Respondent's last contention is that he has not engaged in conduct amounting to "bad faith". In this respect, Respondent says that he does not infringe on the trademark or service mark of Complainant; that he has not offered to sell the domain names in question; that there is no evidence that Respondent has engaged in a pattern of conduct that would warrant a finding of bad faith; and, that there is no evidence that respondent was motivated to attract users to his site for commercial gain.
FINDINGS
After consideration of the foregoing, the undersigned panelist finds as follows:
1 - the domain names in question are identical and/or confusingly similar to Complainant's name in which Complainant has rights.
2 - the Respondent has not demonstrated that he has any legitimate rights or interests in the domain names in question.
3 - the evidence does not support a finding that the domain names were registered in bad faith.
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The URDP does not cover every possible violation of trademark rights. See Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy is intended to resolve only a narrow class of cases of "abusive registrations" and does not extend to cases where a registered domain name is subject to a legitimate disputes, which are relegated to the courts).
Identical and/or Confusingly Similar
Complainantís claim is based on the registration of two domain names that incorporate Complainantís personal name. To satisfy the first UDRP element, the complainant must demonstrate that the domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights. Clearly, the domain names are confusingly similar, if not identical to Complainantís name. The question remains, does Complainant ëhave rightsí in his name?
The ICANN dispute resolution policy is "broad in scope" in that "the reference to a trademark or service mark ëin which the complainant has rightsí means that ownership of a registered mark is not required. Unregistered or common law trademark or service mark rights will suffice to support a domain name complaint under the policy. McCarthy on Trademarks and Unfair Competition, ß 25:74.2, Vol. 4 (2000) (emphasis in original).
Various panels have found that a Complainant can have common law rights in their name. For example, in Roberts v. Boyd, a panel found that the famous movie actress Julia Roberts, who has starred in over 20 Hollywood movies, had rights in her name. See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000).
Also, a panel found in Daniel C. Marino, Jr. v. Video Images Productions, that Dan Marino, who had spent 17 years as the quarterback for the Miami Dolphins, had been a sports commentator, had acted in movies and had been recognized for community service had acquired sufficient secondary meaning within the American sports, entertainment and public service communities to constitute a valid common law trademark. See Daniel C. Marino, Jr. v. Video Images Productions, D2000-0598 (WIPO Aug. 2, 2000).
Finally, in Anne McLellan v. Smartcanuk.com, a panel found that the Complainant, a Member of Parliament, who was also the Minister of Justice and Attorney General of Canada, had acquired sufficient common law rights in her name. See Anne McLellan v. Smartcanuk.com, AF 0303 (eResolution Sept 25, 2000).
Mr. Warner, who is not a movie star, an NFL quarterback, or a member of the Canadian Parliament, has, in the opinion of the undersigned, established sufficient common law rights in his name. Mr. Warner is a former candidate for the U.S. Senate and is the ëpresumptive candidate for Governor of the Commonwealth of Virginia in 2001.í
Rights or Legitimate Interests
The undersigned finds that Respondent has no rights or legitimate interests in the domain names in question. Respondent is not commonly known as markwarner2001.com or warner2001.com. Neither is Respondent licensed to use Complainantís name. See Compangnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark or never applied for a license or permission from the Complainant to use the trademarked name).
Also, Respondent has failed to use, or make demonstrable preparations to use, the domain names in connection with a bona fide offering of goods or services. See Chi-Chiís Inc. v. Restaurant Commentary, D2000-0321 (WIPO July 13, 2000) (finding that Respondent had no rights or legitimate interest in the domain name even though Respondent stated that it intended to use the domain name for "public comment" on the Internet). In fact, the web sites associated with the domain names are only ëbookmarkí web sites, which do not provide any substantive information, and therefore do not constitute fair use or noncommercial use. See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the Respondent had no rights or legitimate interests where he decided to develop the website for the sale of wall products after receiving the Complainantís "cease and desist" notice).
Registration and Use in Bad Faith
The Complainant's evidence in this case concerning alleged bad faith by Respondent is not compelling. With regard to the claim that Respondent registered the names primarily for the purpose of selling the domain names for consideration that exceeds Respondent's out-of-pocket expenses, Respondent only considered selling the domain names after being contacted by Complainant, who requested an offer from Respondent. In addition, simply considering to sell or even offering to sell a domain name is insufficient to amount to bad faith under the ICANN Policy, because the domain name must be registered primarily for the purpose selling it to the owner of trademark for an amount in excess of out-of-pocket expenses. See CBS Broadcasting Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) ("There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy).
Complainant's next claim is that Respondent registered the domain names in bad faith to prevent Complainant from reflecting the mark in a corresponding domain name. Although one may infer from the evidence in this case that the Respondent registered the domain names in question to prevent others from using those web sites, there is no evidence that the Respondent has engaged in a pattern of such conduct. And, that pattern of conduct is an essential element, See UDRP 4(b)(ii).
There is also no evidence that Respondent is or ever will attempt to attract internet users to its web site for commercial gain. See Maureen A. Healy v. Andreas Kuhlen, D2000-0698 (WIPO Aug. 24, 2000) (finding no bad faith where Respondent registered the domain name "dvdnews.com" in order to create a "web of DVD sites" or a DVD community despite the fact that Complainant had registered mark for DVD NEWS). While the use of a candidateís name or campaign as a domain name will attract internet users, the attraction is arguably for political, not commercial gain.
DECISION
Based on the foregoing, the undersigned finds that the Complainant's request that the domain names in question be transferred be denied.
Honorable Daniel Banks
Retired Circuit Judge
Arbitrator
Dated: November 15, 2000
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