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CMG Worldwide v. Lombardi [2000] GENDND 1658 (5 December 2000)


National Arbitration Forum

DECISION

CMG Worldwide, Inc. v. Lombardi

Claim Number: FA0011000095966

PARTIES

The Complainant is CMG Worldwide, Inc., Indianapolis, IN, USA ("Complainant"). The Respondent is Lombardi, Newport Beach, CA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <vincelombardi.com>, registered with Network Solutions.

PANELIST

The undersigned, Nelson A. Diaz, 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 November 10, 2000; The Forum received a hard copy of the Complaint on November 9, 2000.

On November 10, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name <vincelombardi.com> is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On November 16, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 6, 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@vincelombardi.com by e-mail.

On December 20, 2000, pursuant to Complainantís request to have the dispute decided by a one member panel, the Forum appointed Honorable Nelson A. Diaz as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIESí CONTENTIONS

    1. Complainant contends that the domain name <vincelombardi.com> is identical to Complainantís VINCE LOMBARDI mark.
    2. Complainant contends that Respondent has no rights or legitimate interest in the disputed domain name.
    3. Complainant contends that Respondent registered and is using the domain name in bad faith in violation of the Policy.
    4. Respondent contests these contentions.

FINDINGS

Complainant is exclusive world-wide agent for the Estate of Vince Lombardi. As such, Complainant contends that it possesses common law trademark rights in the mark, VINCE LOMBARDI.

Respondent registered the domain name, <vincelombardi.com> on April 4, 1996. Respondent claims it was entitled to register the domain name based on an oral understanding it reached with Vince Lombardi during the 1960s, prior to his death.

DISCUSSION

To obtain the requested relief, paragraph 4(a) of the Policy requires the Complainant to prove each of the following:
    1. That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
    2. That the Respondent has no rights or legitimate interest in the domain name; and
    3. That the domain name has been registered and used in bad faith.
  1. Similarity Between Registrantís Domain Name and Complainantís Trademark.

    2. Under paragraph 4(a) of the Policy, it is clear that the domain name registered by Respondent, <vincelombardi.com>, is essentially identical to Complainantís VINCE LOMBARDI mark. Moreover, contrary to the contentions of Respondent, the Panel finds that Plaintiff owns the common law rights to the VINCE LOMBARDI name and mark. See CMG Worldwide, Inc. v. Naughtya Page, FA 95641 (Nat. Arb. Forum Nov. 8, 2000) (finding that Princess Diana had common law rights in her name at her death and that those common law rights have since been transferred to the Complainant, the representative of Princess Dianaís estate); CMG Worldwide, Inc. v Steve Gregory, FA 95645 (Nat. Arb. Forum Nov. 7, 2000) (finding that the Complainant had common law rights in the mark DIANA SPENCER); CMG Worldwide v. James Dean Internet Club, FA 94187 (Nat. Arb. Forum Apr. 11, 2000) (finding that CMG has aptly demonstrated its rights to the use of the name JAMES DEAN).

    Moreover, the addition of the ".com" is not significant in determining similarity. The panel concludes that Complainant has met its burden of proof on the first prong and that the domain name is confusingly similar to Complainantís mark.

  2. Respondentís Rights or Legitimate Interest in the Domain Name.

Under paragraph 4(c) of the Policy, evidence of a registrantís rights or legitimate interest in the domain name includes:
    1. Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
    2. An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
    3. Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

Although Respondent arguably may possess certain rights with regard to the video series, "Vince Lombardi on Football", Respondent has not shown, and cannot show, that such rights, if any, entitle it to make any legitimate use of the disputed domain name which is confusingly similar to the VINCE LOMBARDI mark owned by Complainant. Complainant thus has met its burden of proof with regard to the second prong under paragraph 4(a).

  1. Respondentís Bad Faith Registration and Use of the Domain Name.

Under paragraph 4(b) of the Policy, evidence of Respondentís bad faith registration and use includes:
    1. Circumstances indicating the domain name was registered for the purpose of resale to the trademark owner or competitor for profit;
    2. A pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks;
    3. Registration of the domain name for the purpose of disrupting the business of competitor; or
    4. Using the domain name to attract, for commercial gain, Internet users to Respondentís web site by creating a likelihood of confusion with the trademark ownerís mark.

Complainant alleges that when Respondent offered to sell the domain name in question, for $50,000.00 and later $6,000.00. Respondent does not contest this allegation, but rather seeks to characterize it as a legitimate sale. The Panel is unpersuaded by Respondentís argument and finds these offers to be in direct violation of paragraph 4(b)(i) of the Policy.

Further, Complainant alleges that Respondent violated the principles set forth at 4(b)(iv) of the Policy by using the <vincelombardi.com> domain name to divert, for commercial gain, Internet users to Respondentís competing commercial web site. See Daniel C. Marino, Jr. v. Video Images Productions, D2000-0598 (WIPO Aug. 2, 2000) (finding bad faith where the Respondent linked the domain name <danmarino.com> to a site administered and operated by Respondent which provides a variety of sports, entertainment, trivia and other special programs and includes links to vendors of Dan Marino related products). Such unauthorized use of the domain name creates a likelihood of confusion with the VINCE LOMBARDI mark.

The Panel thus finds that Complainant has met its burden of showing that Respondent has registered and used the domain name in bad faith.

Accordingly, under the standards applicable to this proceeding, the Panel concludes that Complainant is entitled to relief on the record presented.

DECISION

The Panel concludes: (a) that the domain name <vincelombardi.com> is confusingly similar to Complainantís VINCE LOMBARDI mark; (b) that Respondent has no rights or legitimate interest in the domain name; and (c) that Respondent registered and used the domain name in bad faith. Therefore, pursuant to the Policy and the Rules, the Panel orders that the domain name <vincelombardi.com> be transferred to the Complainant.

Honorable Nelson A. Diaz

District Court Judge (Ret.)

Arbitrator

Date: January 12, 2001

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