DECISION

Kevin Garnett v. Trap Block Technologies

Claim Number: FA0210000128073

PARTIES

Complainant is Kevin Garnett, San Francisco, CA (“Complainant”) represented by Scott Sullivan, of Fredrikson & Byron, P.A.  Respondent is Trap Block Technologies, New York, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <kevingarnett.com>, registered with VeriSign, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 11, 2002; the Forum received a hard copy of the Complaint on October 16, 2002.

On October 15, 2002, VeriSign, Inc. confirmed by e-mail to the Forum that the domain name <kevingarnett.com> is registered with VeriSign, Inc. and that the Respondent is the current registrant of the name.  VeriSign, Inc. has verified that Respondent is bound by the VeriSign, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On October 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 5, 2002 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 Respondent’s registration as technical, administrative and billing contacts, and to postmaster@kevingarnett.com by e-mail.

A timely Response was received and determined to be complete on November 5, 2002.

Complainant filed a timely Additional Submission on November 5, 2002.  Respondent filed a timely Additional Submission on November 11, 2002.

On November 14, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The  <kevingarnett.com> domain name is identical to Complainant's famous common law mark, KEVIN GARNETT.  Respondent has no rights or legitimate interests in the disputed domain name.  Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent contends that it has legitimate interests in the <kevingarnett.com> domain name since its intent is to use the domain name as a fan forum website.  Respondent contends that it did not register or use the domain name in bad faith.

C. Additional Submissions

Complainant contends that Respondent’s mere expectation to create a website does not create a right or legitimate interest in the domain name <kevingarnett.com>.  The parties argue over whether Respondent offered to sell the domain name to Complainant for an amount in excess of out-of-pocket costs of registration. 

FINDINGS

Complainant, Kevin Garnett, is a world-famous professional basketball player who currently plays with the National Basketball Association’s (NBA) Minnesota Timberwolves.  Complainant’s trademark rights in the name KEVIN GARNETT can be traced back to at least as early as 1994 when he was named South Carolina’s high-school “Mr. Basketball”.  In 1995, Complainant was named “Mr. Basketball” in Illinois, and was named National High School Player of the Year by USA Today, a Parade Magazine first-team All-American, and the Most Outstanding Player at the McDonald’s All-America Game.  By June of 1995, Complainant was on the cover of Sports Illustrated prior to ever playing an NBA game. 

In 1995, Complainant generated even more consumer recognition and media coverage by becoming the first high-school player to be drafted by the NBA in over 20 years when he was selected in the first round (fifth pick overall) of the NBA draft by the Minnesota Timberwolves.  Shortly thereafter in 1995, he signed a multi-million dollar contract with the Timberwolves.  By November of his rookie season, Complainant appeared on the cover of Beckett’s Basketball Monthly.  In 1997, Complainant signed a $126 million contract with the Timberwolves, the richest in NBA history, that made him the highest-paid player in the NBA, and, briefly, the highest paid professional athlete in any sport.

In his first NBA season (1995-96), Complainant was named to the NBA All-Rookie second team.  Since his second season, (1996-97), he has been selected to the All-NBA First Team twice and to the All-NBA Second Team once.  He has been selected to the NBA All-Star Game five of his seven seasons and became the first All-Star starter in Timberwolves franchise history.  He has been selected to the NBA’s All-Defensive Team three times.  He has even been named to the NBA’s All-Interview Team.  Prior to ever appearing in an NBA game, the widespread, worldwide media coverage resulting from Complainant’s accomplishments had made KEVIN GARNETT a household name.

Complainant was listed as one of the 100 most influential people of the decade in Newsweek Magazine (April 21, 1997).  He portrayed Wilt Chamberlain in the movie Rebound.  He has appeared on television on the Jamie Foxx Show and on Celebrity Wheel of Fortune.  He has been featured in the American Dairy Association’s “got milk?” campaign and in a public service announcement for gun control.  In late 1995, he performed for the Taco Bell One-on-One Championships pay-per-view television special and began endorsing athletic apparel for Nike when the name KEVIN GARNETT was used in a television commercial for basketball shoes.  In August of 1996, he appeared in a television commercial for Edge Shaving Gel.  He currently endorses athletic apparel for And1, products from General Mills, and sits on the sports advisory board for Bold Outdoor Media.  He has endorsed the financial services of American Express.  Complainant’s past and present endorsements also include EA Sports, the Minnesota Lottery, Upper Deck, JOMO (a Japanese Energy Company), Hallmark, Wilson’s Leather, Dave ‘N’ Buster’s restaurants, and others.  He even has formed his own corporation, Garnett Enterprises, Inc., a Minnesota corporation.  Complainant’s use of the name KEVIN GARNETT is so ubiquitous it became Complainant’s famous trademark long before Respondent registered the domain name <kevingarnett.com>.

In addition, in 1997-98, Complainant used the KEVIN GARNETT mark as the name of the retail store ONE ON ONE WITH KEVIN GARNETT, located at the Mall of America in Bloomington, Minnesota, the largest mall in the U.S. and one of the largest malls in the world.  The ONE ON ONE WITH KEVIN GARNETT store sold items bearing the KEVIN GARNETT mark such as autographed photos, National Basketball Association All Star Game and playoff game programs, basketballs, jerseys, trading cards, pennants, caps, and other basketball-related merchandise.

Respondent, Trap Block Technologies, admits that it registered and used the <kevingarnett.com> domain name solely because of Complainant’s fame.  Respondent claims that its intent when it registered the domain name in 1996 was to support a fan forum website on the Internet; however, the considerable cost of developing, deploying, and supporting such a website prevented Respondent from following through on its plans.  Respondent has not set up a website and has made no preparations to do so. 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the 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.

Identical and/or Confusingly Similar

Complainant is the owner of common law trademark rights in and to the mark KEVIN GARNETT in connection with professional basketball performance services, basketball-related products, apparel, and memorabilia, and other products and services. 

A. Complainant owns common law trademark rights in the name KEVIN GARNETT.

Complainant is a world-famous professional basketball player who currently plays with the National Basketball Association’s (NBA) Minnesota Timberwolves.  He is the owner of common law trademark rights in the mark KEVIN GARNETT.  A trademark registration is not necessary for a complainant to have trademark rights under the UDRP.  See Mick Jagger v. Denny Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000); Daniel C. Marino, Jr. v. Video Images Prods., et al., D2000-0598 (WIPO Aug. 2, 2000); Julia Fiona Roberts v. Russell Boyd, D2000-0210 (WIPO May 29, 2000). 

The overwhelming majority of UDRP decisions have held that athletes and other celebrities can acquire common law trademark rights in their personal names.  For example, in Allan Houston v. Kaliweb, Inc., FA 98060 (Nat. Arb. Forum Sept. 4, 2001) the panel held that a “famous professional basketball player” had common law trademark rights in the mark ALLAN HOUSTON for performing basketball services.

In addition, in Daniel C. Marino, Jr. v. Video Images Prods., et al., D2000-0598 (WIPO Aug. 2, 2000), the panel held that the name DAN MARINO had acquired secondary meaning within American sports, entertainment, and public service communities so as to constitute a common law trademark.  See also Mario Lemieux v. Creato, AF-0791 (eResolution May 24, 2001) (holding professional hockey player had common law trademark rights in MARIO LEMIEUX); Ward Burton v. Athlete Direct, FA 100652 (Nat. Arb. Forum Dec. 7, 2001) (holding Complainant’s “extensive renown and fame for his achievements in the arena of stock car racing in the United States” sufficient to establish common law trademark rights in the marks WARD BURTON); Barry Zito v. Stan Andruszkiewicz, FA 114773 (Nat. Arb. Forum Aug. 20, 2002) (holding professional baseball player had common law trademark rights in BARRY ZITO); Jeanette Lee v. Domain Research and Sales, FA105214 (Nat. Arb. Forum April 1, 2002) (holding a professional pool player had common law trademark rights in the JEANETTE LEE mark, “based on the popularity she has achieved through her success as a professional athlete”) citing Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (finding that a “person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law”). 

In addition to athletes, UDRP decisions have held that celebrities have common law trademark rights in their personal names that are sufficient to support a UDRP complaint.  See, e.g., Kevin Spacey v. Alberta Hot Rods, FA 114437 (Nat. Arb. Forum Aug. 1, 2002) (actor); Judy Larson v. Judy Larson Club, FA 96488 (Nat. Arb. Forum March 13, 2001) (artist); Julia Fiona Roberts v. Russell Boyd, D2000-0210 (WIPO May 29, 2000) (actress); Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, D2000-1415 (WIPO Jan. 23, 2001) (actress); Helen Folsade Adu known as Sade v. Quantum Computer Servs. Inc., D2000-0794 (WIPO Sept. 26, 2000) (singer); David Gilmour et al. v. Ermanno Cenicolla, D2000-1459 (WIPO Dec. 15, 2000) (musician); Julie Brown v. Julie Brown Club, D2000-1628 (WIPO Feb. 13, 2001) (performer, video producer, author); Mick Jagger v. Denny Hammerton, FA95261 (Nat. Arb. Forum Sept. 11, 2000) (singer and performer); Rita Rudner v. Internetco Corp., D2000-0581 (WIPO Aug. 3, 2000) (comedienne, author, actress); Jeanette Winterson v. Mark Hogarth, D2000-0235 (WIPO May 22, 2000) (author and screenwriter).

The foregoing decisions demonstrate that professional athletes and other celebrities have common law trademark rights in their personal names sufficient to satisfy the UDRP.  This is due to the widespread recognition of their names as indicators of the single source of the specific quality of the services they publicly perform.  “Stated simply, a celebrity’s name can serve as a trademark when used to identify the celebrity’s performance services.”  Kevin Spacey v. Alberta Hot Rods, FA 114437 (Nat. Arb. Forum Aug. 1, 2002) (holding “We agree with Complainant that the public associates his name with his acting services” (emphasis in original)).

In this case, like the many cases discussed above, Complainant has acquired common law trademark rights in his personal name KEVIN GARNETT.  Like the complainant in the Allan Houston case, supra, Complainant is a famous National Basketball Association (NBA) superstar.  See also the Dan Marino, Ward Burton, Barry Zito, Mario Lemieux, and Jeanette Lee cases, supra (all holding professional athletes had acquired common law trademark rights in their personal names).  In addition to his American NBA fame, Complainant has gained worldwide renown as an Olympic gold medallist, playing for the United States’ gold-medal winning “Dream Team” in the 2000 Summer Olympics in Sydney, Australia.  The name KEVIN GARNETT is famous worldwide.

Complainant is a world-famous professional athlete and celebrity who has used the KEVIN GARNETT name as a trademark for basketball-related services and other products and services well prior to and ever since Respondent’s registration of <kevingarnett.com>.  Since 1994, Complainant’s particular style of play made consumers associate a certain type and quality of basketball performance skills with the name KEVIN GARNETT.  Since 1995, he has used the name KEVIN GARNETT to endorse various products and services.  Since high school, Complainant’s name has been thrust into the world media.  Complainant’s name has appeared in media including Advertising Age, Sports Illustrated, Newsweek, The New York Times, CBS’s Sunday Morning Show with Charles Osgood, and ABC’s World News Saturday as well as many television commercials and print ads.  Based on Complainant’s widespread usage of the KEVIN GARNETT mark as a trademark, and the widespread consumer recognition of that name as identifying only Complainant, the mark has acquired secondary meaning sufficient to support this UDRP Complaint.

B. The domain name <kevingarnett.com> is identical to Complainant’s trademark KEVIN GARNETT.

Respondent is the registrant of the domain name <kevingarnett.com>.  The domain name <kevingarnett.com> is “self-evidently” identical to Complainant’s trademark KEVIN GARNETT.  See, e.g., Helen Folsade Adu known as SADE v. Quantum Computer Servs. Inc., D2000-0794 (WIPO Sept. 26, 2000) (sade.com “self evidently identical” to SADE); see also Julia Fiona Roberts v. Russell Boyd, D2000-0210 (WIPO May 29, 2000) (“The second level domain in <juliaroberts.com> is identical to the Complainant’s name.  Therefore, the Panel finds that the requirement of the Policy paragraph 4(a)(i) is satisfied”).

It is well settled that “[t]he omission of spaces between the words of the trademark and the addition of the gTLD ‘.com’ is not significant in determining whether the domain name is identical or confusingly similar to Complainant’s mark.”  Judy Larson v. Judy Larson Club, FA 96488 (Nat. Arb. Forum March 13, 2001) (domain name <judylarson.com> identical and/or confusingly similar to trademark JUDY LARSON);  David Gilmour et al. v. Ermanno Cenicolla, D2000-1459 (WIPO Dec. 15, 2000) (“The suffix “.com” and the absence of spacing between the words are inconsequential[;]” <davidgilmour.com> “virtually identical and confusingly similar to the trademark ‘David Gilmour’”).

Here, as in the foregoing cases, the lack of a space between the terms “KEVIN” and “GARNETT” and the presence of the generic top-level domain “.com” are inconsequential in distinguishing  <kevingarnett.com> from the trademark KEVIN GARNETT.  See also, e.g., Kevin Spacey v. Alberta Hot Rods, FA 114437 (Nat. Arb. Forum Aug. 1, 2002) (<kevinspacey.com> identical to KEVIN SPACEY).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has no right or legitimate interest in the domain name <kevingarnett.com> or the mark KEVIN GARNETT.  Complainant has long established prior rights to the mark KEVIN GARNETT.  Respondent has never been known as or referred to as KEVIN GARNETT.  Given the fame associated with Complainant’s use of the name KEVIN GARNETT, it would be highly unlikely that Respondent was or would ever be referred to as KEVIN GARNETT.

A complainant’s allegation that respondent has no rights or legitimate interests in the domain name at issue shifts the burden to respondent to show by “concrete evidence” that respondent has rights or legitimate interests in respect of the domain name.  See Kate Spade, LLC v. Darmstadter Designs, D2001-1384 (WIPO Jan. 3, 2002) citing UDRP Policy ¶ 4(c).  “Concrete evidence” requires more than personal assertions; it requires documents or third party declarations in support of such assertions.  Id.  A failure to produce such concrete evidence entitles a panel to conclude that the respondent has no such rights or legitimate interests.

Respondent has no authorization, permission, license, or approval from Complainant to use the mark KEVIN GARNETT in a domain name or in any other way.  Respondent has no relationship, affiliation, connection, endorsement, or association with Complainant.  Moreover, Respondent has no legitimate, good faith explanation of its registration of Complainant’s name as a domain name.  Therefore, Respondent has no right or legitimate interest in the name. 

A.        Respondent has not used or demonstrably prepared to use the domain name in connection with a bona fide offering of goods or services.

Complainant first gave Respondent notice of Complainant’s objection to Respondent’s registration and use of the domain name on March 19, 2002.  Prior to and after that time, Respondent has never used or prepared to use the domain name <kevingarnett.com> or the mark KEVIN GARNETT in connection with a bona fide offering of goods or services.  The domain name has never and currently does not resolve to any website.  The name is simply “parked.”  See Beverages and More, Inc. v. Glenn Sobel Mgt., No. AF-0092 (eResolution March 9, 2000) (recognizing that a respondent who never used a domain name as an active website address had no right or legitimate interest to the name).  Thus, Respondent has no right or legitimate interest in the name <kevingarnett.com> or the mark KEVIN GARNETT. 

B.         Respondent has never been commonly known by the domain name <kevingarnett.com> or the mark KEVIN GARNETT and has never acquired trademark rights in the name or mark.

Respondent holds itself out as “Trap Block Technologies”.  Respondent’s representative’s name is Navjot S. Johar.  Respondent has never been known by the domain name <kevingarnett.com> and has never acquired trademark rights in the mark KEVIN GARNETT.  Considering the fame associated with Complainant’s unique name prior to Respondent’s registration of <kevingarnett.com>, it is virtually impossible to conceive that Respondent would have been known by, or acquired rights to, <kevingarnett.com>.

Prior to Respondent’s registration of the domain name on October 28, 1996, Complainant had already generated trademark rights in the name KEVIN GARNETT due to the widespread use and public recognition of his name starting in 1994.  Complainant has been a celebrated national sports and entertainment phenomenon prior to and ever since Respondent’s registration of <kevingarnett.com>.

Complainant’s use of his unique name and the widespread fame associated with Complainant’s use of the name long preceded Respondent’s registration of the domain name, which suggests only that Respondent registered the domain name because of Complainant’s fame and not because of some right or interest of its own.  See, e.g., Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, D2000-1415 (WIPO Jan. 23, 2001).  As the panel in Daniel C. Marino, Jr. v. Video Images Prods., et al., D2000-0598 (WIPO Aug. 2, 2000) stated:

[I]n light of the uniqueness of the name DanMarino.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 could claim.  On the contrary, selecting this name gives rise to the impression of an association with the Complainant, which is not based in fact.

Id.; see also Mario Lemieux v. Creato, No. AF-0791 (eResolution, May 24, 2001) (approving the Dan Marino reasoning and stating “[t]his Panel cannot identify any apparent justifiable use that the Respondent could claim”); Jeanette Lee v. Domain Research and Sales, FA 105214 (Nat. Arb. Forum April 1, 2002) (“it is difficult to imagine anyone other than Complainant to be known as <jeanettelee.com>”). 

In this case, Complainant’s unique personal name and common law trademark is KEVIN GARNETT.  Given the uniqueness of the KEVIN GARNETT name and mark, the only conclusion here is that Respondent’s selection of the identical domain name <kevingarnett.com> was because of Complainant’s fame and the goodwill Complainant has built up in the mark, not because of some right of Respondent. 

C.        Respondent is not making a legitimate noncommercial or fair use of the domain name.

Respondent is not using the domain name <kevingarnett.com> in any way.  Respondent has never associated the domain name with a website of any kind, including a fan site, and is not otherwise using the name in connection with any product or service.  Because Respondent has never used the <kevingarnett.com> domain name, it cannot claim that it is using it in a noncommercial or fair manner.

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The domain name should be considered as having been registered and being used in bad faith.

A.        Respondent’s registration and use of the identical domain name <kevingarnett.com> with full knowledge of Complainant’s rights to the name and mark KEVIN GARNETT is bad faith.

Respondent’s bad faith is illustrated by its unjustified registration of the identical <kevingarnett.com> domain name when it knew of Complainant’s exclusive rights to the name KEVIN GARNETT.  Respondent can point to no good faith use or preparations to use the name to justify its registration and use of the name.

Respondent purposefully registered the name to capitalize on Complainant’s fame.  In Barry Zito v. Stan Andruszkiewicz, FA 114773 (Nat. Arb. Forum Aug. 20, 2002) the panel stated:

The registration and use of a domain name that incorporates Complainant’s likeness by someone with no connection to Complainant suggests bad faith.  Respondent opportunistically registered the subject domain name despite knowledge that Complainant held preexisting rights in the name.  Even though Complainant did not enjoy national recognition until at least 1999, the date of that achievement still predates Respondent’s registration of the domain name.  Such disregard for the existing rights Complainant holds in the BARRY ZITO mark evidences bad faith registration and use under Policy ¶ 4(a)(iii).

Id. citing Experience Hendrix, L.L.C. v. Hammerton, D2000-0364 (WIPO Aug. 15, 2000) (finding bad faith because registration and use of the domain name jimihendrix.com by Respondent do not predate Complainant’s use and rights in the mark but rather appears to be an attempt to usurp Complainant’s rights therein”); Unitas Mgmt. Corp. v. Noreserve Inc., FA 96671 (Nat. Arb. Forum March 22, 2001) (desire to use domain name because of secondary meaning of JOHN UNITAS violated common law rights amounting to bad faith). 

While here Respondent had actual knowledge of Complainant’s rights to the KEVIN GARNETT mark, even constructive knowledge is sufficient.  A registrant who knew or should have known of a complainant’s trademark rights and, without justification, registered a corresponding domain name acts in bad faith.  See, e.g., David Gilmour et al. v. Ermanno Cenicolla, D2000-1459 (WIPO Dec. 15, 2000) (holding that where respondent knew of former Pink Floyd guitarist’s name and reputation when it registered guitarist’s name as “.com” domain name was bad faith); Jaap Stam v. Oliver Cohen, D2000-1061 (WIPO Nov. 4, 2000) (respondent’s registration of <jaapstam.com> domain name when he “would have been aware of Complainant and his reputation as an international football player at the time when Respondent registered the said domain name” was bad faith).  Considering the widespread media and commercial attention of Complainant’s prior use of KEVIN GARNETT as a trademark, Respondent was fully aware of Complainant’s rights in the name. 

In this case, Respondent has not used or prepared to use the <kevingarnett.com> name for any good faith purpose.  Respondent knew of Complainant’s famous name and Complainant’s rights therein, yet thereafter still registered the identical domain name <kevingarnett.com>.  In light of Respondent’s knowledge of Complainant’s rights in the name KEVIN GARNETT, registering the identical domain name <kevingarnett.com> is bad faith. 

B.         Respondent’s Failure to Post a Website in connection with the Domain Name is Bad Faith.

In addition to registering <kevingarnett.com> despite having knowledge of Complainant’s rights, Respondent has not associated the <kevingarnett.com> domain name with an active website or used the name in any way since registering the domain name on October 28, 1996.  Such long-term inaction represents bad faith.

Inaction by a respondent satisfies the “use” requirement under UDRP ¶ 4(a)(iii).  See David Gilmour et al. v. Ermanno Cenicolla, D2000-1459 (WIPO Dec. 15, 2000).  Moreover, a respondent’s unexplained inaction can constitute bad faith registration and use under paragraph 4(b).  See Kate Spade, LLC v. Darmstadter Designs, D2001-1384 (WIPO Jan. 3, 2002) (almost three years of unexplained non-use was bad faith); Jaap Stam v. Oliver Cohen, D2000-1061 (WIPO Nov. 4, 2000) (respondent’s registration and non-use of the domain name <jaapstam.com> “for a substantial period of seven months, without any explanation or any evidence of plans or preparations . . . to establish a substantive www site” was bad faith); Chernow Communications, supra (respondent’s knowledge of complainant’s rights in the mark CCOM and non-use of domain name <c-com.com> for almost three years was bad faith); Telstra Corp. Lmtd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (registration and non-use of <telstra.org> was bad faith where respondent knew or should have known of complainant’s rights to TELSTRA mark).

In Mario Lemieux v. Creato, AF-0791 (eResolution May 24, 2001), the respondent registered <mariolemieux.com> but never associated it with a website.  The panel found bad faith based on: (i) the strength of the MARIO LEMIEUX trademark, (ii) the failure of respondent to provide evidence of any actual or contemplated good faith use of the <mariolemieux.com> domain name, and (iii) the difficulty of conceiving of any plausible actual or contemplated active use of the domain name that would not be illegitimate, such as by being a passing off, an infringement of Lemieux’s rights under trademark law, or a violation of Policy ¶ 4(b)(iv). 

Here, Complainant, like most professional athletes and celebrities, is the owner of a famous, strong common law trademark that is known throughout the world.  Moreover, Respondent has had almost six years to post or to demonstrably prepare to post a website in connection with the <kevingarnett.com> domain name.  If Respondent in fact intended to post a fan site, some content related to the fan site would have been posted by now.  But Respondent has done nothing and has not prepared to do anything.  Simply parking the domain name <kevingarnett.com> for almost six years without explanation demonstrates bad faith. 

Finally, as in Mario Lemieux, given the strength and fame of the KEVIN GARNETT trademark, it is difficult to conceive of any plausible active use of the domain name that would not be illegitimate.  Any use by Respondent of the domain name <kevingarnett.com>, which is identical to Complainant’s name, would at least create “initial interest confusion” as to the sponsorship, affiliation or endorsement by Complainant of Respondent’s website.  See Coors Brewing Co. v. Dave Zike, FA 104202 (Nat. Arb. Forum March 15, 2002).

The Dan Marino, Mario Lemieux, and Jeanette Lee cases, discussed supra, recognized the same principle as the Coors case.  Any use by a registrant of a domain name identical to a famous athlete or celebrity’s name would be in bad faith because it would create a false association with or false endorsement by the athlete or celebrity.  Even if Respondent here intended to create a fan site, its right to express its views about Complainant does not give it the right to use Complainant’s famous and distinctive name in an identical domain name.  See Coors, supra (“the right to express one’s views is not the same as the right to use another’s name to identify one’s self as the source of those views”).  Due to the fame and distinctiveness of the name KEVIN GARNETT, registering and using <kevingarnett.com> falsely identifies Respondent as Complainant in the minds of consumers.  To avoid this, “[a] domain name for the purpose of criticism or commentary must on its face indicate that any site to which it leads is not that of the trademark holder but is instead a site for the criticism of or commentary on the trademark holder.”  Coors, supra.  If Respondent actually intends to create a fan site, any domain name associated with it should so indicate to avoid initial interest confusion. 

C.        Respondent has registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name, and Respondent has engaged in a pattern of such conduct.

Respondent’s registration of <kevingarnett.com> prevents Complainant from registering his trademark KEVIN GARNETT in a corresponding domain name, and Respondent has engaged in a pattern of such conduct.  Respondent registered <kevingarnett.com> 11 days after registering <berniewilliams.com>, a domain name that corresponds with another celebrity athlete, Bernie Williams, a Major League Baseball All-Star outfielder for the New York Yankees. 

Thus, Respondent’s registration of <kevingarnett.com> and <berniewilliams.com> establishes a pattern of conduct, and <kevingarnett.com> is a domain name corresponding to Complainant’s identical KEVIN GARNETT trademark.  Consequently, Respondent’s registration of <kevingarnett.com> is bad faith. 

In summary, Complainant has strong common law trademark rights in the name KEVIN GARNETT, rights well known to Respondent prior to its registration of the identical <kevingarnett.com> domain name.  Without explanation, Respondent registered and has passively held the identical domain name <kevingarnett.com> for almost six years.  Such behavior demonstrates bad faith and justifies an order transferring the name to Complainant. 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby GRANTED.

Accordingly, it is Ordered that the domain name <kevingarnett.com> be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 21, 2002

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