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Generic Top Level Domain Name (gTLD) Decisions |
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ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
Policy
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1. Parties and Contested Domain Name The Complainant is Mario Lemieux of Pittsburgh, Pennsylvania, United States of America. The Respondent is Creato, of Umea, Sweden. Creato is the registrant of the domain name at issue. The domain name at issue is mariolemieux.com which is registered with Network Solutions, Inc., based in Virginia, U.S.A. (the ARegistrar@). 2. Procedural History The electronic version of the Complaint form was filed on-line through eResolution's Website on April 5, 2001. The hardcopy of the Complaint Form and annexes were received on April 5, 2001. Payment was received on April 5, 2001. Upon receiving all the required information, eResolution's clerk proceeded to: confirm the identity of the Registrar for the contested Domain Name; verify the Registrar's Whois Database and confirm all the essential contact information for Respondent; ver ify if the contested Domain Name resolved to an active Web page; and verify if the Complaint was administratively compliant. This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Network Solutions, Inc., the Whois database contains all the required contact information, the contested Domain Name resolves to an inactive Web page and the Complai nt is administratively compliant. An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on April 6, 2001. The requested information was received April 9, 2001. The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk's Office fulfilled all its responsibilities un der Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on April 9, 2001. This date is the official commencement date of the administrative proceeding. All the emails were delivered. All the faxes were successfully transmitted. The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, all were delivered. On April 23, 2001, the Respondent requested an extension of time to submit its response. The Respondent was accorded an extra five days to submit its response. On May 3, 2001, the Respondent submitted, via eResolution Internet site, its response. The signed version of the response was received on May 7, 2000. On May 7, 2001, the Clerk's Office contacted Henri Alvarez, and requested that he act as panelist in this case. On May 11, 2001, Henri Alvarez accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality. On May 11, 2001, the Clerk's Office forwarded a user name and a password to Henri Alvarez, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System. On May 11, 2001, the parties were notified that Henri Alvarez had been appointed and that a decision was to be, save exceptional circumstances, handed down on May 24, 2001. 3. Factual Background The Complainant is a professional hockey player, sports celebrity, and National Hockey League ("NHL") franchise owner. Mr. Lemieux began his NHL career with the Pittsburgh Penguins in 1984. He was selected as Rookie of the Year in 1984. Mr. Lemieux's athl etic accomplishments are renowned among sports fans around the world. Among the many public celebrations of Mr. Lemieux's personal and professional accomplishments, Mr. Lemieux was inducted into the NHL Hall of Fame in 1997. Mr. Lemieux is widely recognized for his charitable contributions and activities, including the Mario Lemieux Foundation and the Mario Lemieux Celebrity Invitational. The Mario Lemieux Foundation was founded in 1993 and its activities most recently includ ed a five million dollar donation to the University of Pittsburgh Medical Center to help establish the Mario Lemieux Centers for Patient Care and Research in three research disciplines: cancer, neonatal research, and artificial organ development. The Mari o Lemieux Foundation also supports the Leukaemia Society, the Lupus Foundation, and the Children's Hospital of Pittsburgh. The Mario Lemieux Celebrity Invitational is an annual charitable golf tournament to raise money for the Mario Lemieux Foundation's c haritable causes. The Complainant has authorized another party to purchase and administer the domain name mariolemieux.org to promote the activities of the Mario Lemieux Foundation. This domain name was registered May 21, 1998. The Respondent does not dispute any of the foregoing facts. The Respondent registered the domain name mariolemieux.com on November 3, 1997 (extract from the Registrar=s Whois database provided by the Clerk=s office of eResolution). There is no website corresponding to the domain name. The Domain Name Registration Agreement which applies to the registration of the domain name at issue provides that the registrant agrees, as a condition of registration, that the registrant shall be bound by Network Solutions, Inc.=s then current Dispute Policy. With respect to changes in the Dispute Policy, the Agreement provides as follows: Registrant agrees that NSI, in its sole discretion, may change or modify the Dispute Policy, incorporated by reference herein, at any time. Registrant agrees that Registrant=s maintaining the registration of a domain name after changes or modifications t o the Dispute Policy become effective constitutes Registrant=s continued acceptance of these changes or modifications. Registrant agrees that if Registrant considers any such changes or modifications to be unacceptable, Registrant may request that the do main name be deleted from the domain name database. (Network Solutions, Inc. B Domain Name Registration Agreement, paragraph D) Effective January 3, 2000, Network Solutions, Inc. adopted the ICANN Policy. There is no evidence that the Respondent requested that the domain name at issue in this case be deleted from the domain name database. Therefore, the Respondent is bound by th e provisions of the ICANN Policy and Rules. 4. Parties' Contentions (a) The Complainant The Complainant contends that the Respondent has registered a domain name which is identical or confusingly similar to the Complainant=s trademarks and service marks, that the Respondent has no rights or legitimate interests in respect of the domain name in question, and that the Respondent has registered and used the domain name in question in bad faith. The Complainant requests as remedy that the domain name at issue be transferred to it. In support of its position, the Complainant offered evidence and detailed argument which are examined below. (b) The Respondent The Respondent contends that the Complainant has not shown he has rights in a trademark or service mark. The Respondent also contends that some of the trademark or service mark rights cited to form the basis for the complaint were in fact acquired after t he date of registration of the domain name at issue. The Respondent further contends that none of the trademarks or service marks cited in support of the claim are identical or confusingly similar to the domain name mariolemieux.com. The Respondent claims to have a legitimate interest in respect of the domain name because it is an association with a main purpose of collecting domain names of famous hockey players and hockey clubs. Finally, the Respondent claims that it did not register and use the domain name in bad faith. The Respondent states that it has never marketed and has never had the intention to sell the domain name. In response to the Complainant's allegation that it ha s provided false and incomplete contact information in registering the domain name, the Respondent says that it provided correct contact information in the Whois database. Finally, the Respondent suggests that because Mr. Lemieux did not complain from Nov ember 1997, when the domain was registered, until the first contact between the parties in January 2001, Mr. Lemieux has accepted the Respondent's registration of the domain name. 5. Discussion and Findings The basis upon which a panel is to decide a Complaint under the Rules, is set out in paragraph 15(a) of those Rules: A panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the ICANN Policy requires that the Complainant, in order to succeed, must prove each of the following: 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 in issue; and 3. The domain name has been registered and used in bad faith. Identity or Confusing Similarity The Complainant contends that he has rights in the following trademarks or service marks: 1. Mario Lemieux - for entertainment services including performing in hockey games and personal appearances. 2. Mariolemieux.org - for charitable services and fundraising. 3. Mario Lemieux Foundation - for charitable services and fundraising. 4. Mario Lemieux Celebrity Invitational - entertainment services in the nature of golf tournaments. The Respondent does not dispute any of the evidence or submissions of the Complainant with respect to the fame of the "Mario Lemieux" name. Indeed, because the Respondent states that it collects domain names of famous hockey players, the Respondent admits by implication that the "Mario Lemieux" name is famous. Nevertheless, the Respondent contends that the Complainant cannot show that "Mario Lemieux" is a service mark or trademark. The Complainant has no registered trademark in "Mario Lemieux". However, the name "Mario Lemieux" is capable of acquiring a secondary meaning. This is supported by similar findings in previous panel decisions (see Daniel C. Marino, Jr. v. Video Images Productions, et al. Case No. D2000-0598 ("Dan Marino") and Julia Fiona Roberts v. Russell Boyd, Case No. D2000-0210 ("Julia Roberts"). The Panel finds that Mr. Lemieux's registration of his name as a registered trademark or service mark is not required by the Policy. As demonstrated by the uncontested facts recited in the Complaint, the Complainant's name has, for some time, achieved ver y broad recognition. The name "Mario Lemieux" has sufficient secondary association with the Complainant that common law trademark rights exist under general principles of trademark law, especially in the United States. The Respondent also contends that the Complainant's rights to each of the three remaining marks cited in support of the complaint arose after the registration of the domain name. In view of the Panel's finding in respect of the Complainant's common law t rademark rights in the name "Mario Lemieux, this argument need not be addressed. The domain name mariolemieux.com is identical or confusingly similar to the trademark "Mario Lemieux". This finding is supported by a long line of Panel decisions addressing this issue (see for example, Shirmax Retail Ltd. v. CES Marketing Group Inc., Case No.AF-0104). Therefore, the Panel finds that the Complainant has trademark rights in the trademark "Mario Lemieux" and that the domain name is identical with or confusingly similar to the "Mario Lemieux" trademark pursuant to the Policy paragraph 4(a)(i). Rights or Legitimate Interests The Respondent claims to have legitimate interests in respect of the domain name because it is an association which has as one of its main purposes collecting domain names of famous hockey players and hockey clubs. To this end, the Respondent provided evi dence regarding the formation and purposes of the association "Creato". The Complainant cites a number of previous panel decisions involving famous persons. In these cases, it was held that a Respondent will not be found to have legitimate interests in a domain name where it is virtually impossible to conceive of any use of the domain name which would not be illegitimate. For example, in Dan Marino the panel stated the following: In fact, in light of the uniqueness of the name danmario.com, which is virtually identical to the Complainant's personal name and common law trademark, it would be extremely difficult to foresee any justifiable use that the Respondent coul d claim. On the contrary, selecting this name gives rise to the impression of an association with the complainant, which is not based in fact. See Telstra Corporation Limited v. Nuclear Marshmallows Case No. D2000-0003 ("Telstra"). (emphasis in original) In this case, the Respondent does not state what it intends to do, if anything, with the domain name. This Panel cannot identify any apparent justifiable use that the Respondent could claim. Merely forming an association to collect domain names does not g ive rise to legitimate interests in any of the domains "collected". The Respondent is not authorized by the Complainant to use the name or persona of the Complainant. Further, there was no evidence that the Respondent has been commonly known by the domain name at issue, nor that the Respondent has been making a legitimate non-commercial or fair use of the domain name. As a result, the Panel finds that the Respondent has no rights or legitimate interests in the domain name and that the requirement of the Policy, paragraph 4(a)(ii) has been met. Bad Faith Paragraph 4(b) of the Policy provides a non-exhaustive list of factors which will provide evidence of bad faith registration and use of a domain name: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade-mark or servi ce mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trade-mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, af filiation, or endorsement of your web site or location or of a product or service on your web site or location. In the present case, the Respondent never established an active website at the domain name. The Complainant alleges that even non-use is sufficient to conclude bad faith registration and use in the circumstances of this case. Previous panels have found that non-use, or passive holding, of a domain name is sufficient to conclude bad faith registration and use. In Telstra, for example, the panel considered a number of factors which included the following: (i) the Complainant's trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries, (ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name, (iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name, (iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and (v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer pr otection legislation, or an infringement of the Complainant's rights under trademark law. Although these factors provide useful guidance, they are neither sufficient nor necessary for a finding of bad faith. Indeed, section 4(b) of the Policy allows for, and arguably requires, an examination of all relevant factors. The panel in the case of The Estate of Tupac Shakur v. Andronian Case No. AF0349 ("Tupac") considered the Telstra decision. In concluding that passive holding of a domain name amounted to bad faith registration and use, the panel in Tupac considered and relied on only factors (i), (ii) and (v) from the Telstra decision. The Complainant in this case provided considerable evidence and argument in support of its position that the Respondent took steps to conceal its identity and that it provided false or misleading contact information. The Respondent denies it did so and st ates that all of its contact information concerning the registration is up to date. On the basis of the evidence before it, the Panel is not persuaded that Respondent did provide false or misleading contact information. However, this factor is not necessa ry to arrive at a finding of bad faith. Similar to the Tupac case, in the present case the Panel finds that the following circumstances lead to a finding of bad faith: (i) Mr. Lemieux's name and trademark has a strong reputation and is widely known throughout the world, (ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name, and (iii) it is difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of Mr. Lemieux's rights under trademark law, or a vio lation of Article 4(b)(iv) of the ICANN Policy. These are sufficient for the panel to conclude that the Respondent registered and used the domain name at issue in bad faith. The Complainant also alleges that the Respondent registered the domain name in order to prevent Mr. Lemieux from reflecting his trademarks and service marks in a corresponding website. The Complainant alleges that this constitutes bad faith because the re gistration is part of a pattern of such conduct pursuant to paragraph 4(b)(ii) of the Policy. In support of its submission, the Complainant provided evidence of a number of other domain names of famous hockey players registered by the Respondent. Although the Complainant provided no evidence of an actual trademark registration (as was the case in the TV Azteca, S.A. de C.V. v. Allen Oretegaray, Case No. 92533 case cited by the Complainant), the Respondent did not dispute the Complainant's allegations and in fact admitted that it registers the domain names of famous ho ckey players. In the circumstances of this case, this is sufficient for the Panel to conclude that the Respondent has registered and used the domain name in bad faith pursuant to paragraph 4(b)(ii) of the Policy. The registration prevents the Complainant from using the domain name and the registration of domain names of other active hockey stars demonstrates a pattern. A similar result was reached in the Julia Roberts case where a number of domain names of famous movie stars and sports stars were registered. The Complainant suggests that the Respondent's registration of the domain name is in violation of section 2(a) of the United States Lanham Act, 15 U.S.C. Section 1052(a). Pursuant to paragraph 15(a) of the Rules, the Panel is permitted to consider any rul es and principles of law that it deems applicable. In the present case, the Panel considers it unnecessary to consider the Lanham Act as the Policy provides all that is necessary to decide the complaint. Finally, the Respondent raises an issue in its response which was not addressed by the Complainant: We have had the domain name mariolemieux.com since November 3, 1997… and Mr. Lemieux has not in any way shown any interests for the domain name during this time and therefore has accepted our registration of the domain name mariolemieux.com. The Policy does not set out a limitation period within which a Complainant must bring a complaint. In this case the Complainant did not contact the Respondent regarding the domain name for a period of just over three years. During much of this time, the P olicy was not in force. Moreover, the Respondent provided no evidence that the Complainant was aware in 1997 that the domain name had been registered. The Panel considers that the period between the registration of the domain name and the filing of the Complaint is not unreasonable. It certainly does not mean that the Complainant consented to the use of his name by the Respondent. Although a longer peri od of time in another case might produce a different result, in the circumstances of this case the Panel finds that the elapsed time does not amount to an acceptance of the registration. Previous panels have had no difficulty finding in favour of Complain ants where a comparable period of time had elapsed (see for example, Julia Roberts and SGS Société Générale de Surveillance S.A. v. Inspectorate, Case No. D2000-0025). The Panel finds that the Respondent has registered and is using the domain name at issue in bad faith and that the requirement of the Policy paragraph 4(a)(iii) has been met. 6. Conclusion On the basis of the statements and documents submitted and the reasons set out above, the Panel concludes that the domain name mariolemieux.com registered by the Respondent is identical or confusingly similar to the trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent=s domain name has been registered and is being used in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy and paragrap h 15 of the Rules, the Panel orders that the domain name mariolemieux.com be transferred to the Complainant. 7. Signature Dated May 24, 2001.
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URL: http://www.worldlii.org/int/other/GENDND/2001/1015.html