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Generic Top Level Domain Name (gTLD) Decisions |
Mark
Philippoussis v. Alrite Oz Pty Ltd. c/o Peter Papas
Claim
Number: FA0202000104587
PARTIES
Complainant is Mark Philippoussis, New York, NY
(“Complainant”) represented by Jennifer
H. Pincus, of Nixon Peabody LLP. Respondent is Peter Papas Alrite Oz Pty Ltd., Melbourne, Victoria, AUSTRALIA
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at
issue is <markphilippoussis.com>,
registered with Network Solutions.
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 February
12, 2002; the Forum received
a hard copy of the Complaint on February 13, 2002.
On February 15, 2002, Network
Solutions confirmed by e-mail to the Forum that the domain name <markphilippoussis.com> is registered
with Network Solutions and that Respondent is the current registrant of the
name. Network Solutions has verified
that Respondent is bound by the Network Solutions 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 February 15, 2002,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”),
setting a deadline of March 7, 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@markphilippoussis.com by e-mail.
Having received no
Response from Respondent, using the same contact details and methods as were
used for the Commencement Notification,
the Forum transmitted to the parties a
Notification of Respondent Default.
On March 15, 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.
Having reviewed the
communications records, the Administrative Panel (the “Panel”) finds that the
Forum has discharged its responsibility
under Paragraph 2(a) of the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ
reasonably available
means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules,
the Forum’s Supplemental Rules and any rules and principles of law that
the Panel deems applicable, without the benefit of any Response
from
Respondent.
RELIEF
SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
Respondent’s <markphilippoussis.com> domain name is identical to Complainant’s
famous name, in which Complainant holds rights.
Respondent does not have rights or legitimate intersts in the disputed
domain name.
Respondent registered and used the disputed domain name in bad faith.
B. Respondent
No Response was
received.
FINDINGS
Complainant,
Mark Philippoussis, is an internationally known professional tennis
player. As a result, he has common law
rights in his commercially valuable name.
Respondent
registered the disputed domain name on October 14, 1999. On October 10, 2001 Respondent offered to
sell the disputed domain name to Complainant for $10,000. After Complainant’s counsel sent Respondent
a cease and desist letter, Respondent contacted Complainant’s counsel offering
an “amicable
agreement,” and then subsequently offered the domain name for
$10,000 to Complainant again.
DISCUSSION
Paragraph
15(a) of 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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
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; and
(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
has established common law rights in his famous name MARK PHILIPPOUSSIS due to
the substantial secondary meaning associated
with his name. See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark
registration was not necessary under Policy ¶ 4(a)(i) and that the name “Julia Roberts”
has sufficient secondary association with the Complainant that common law
trademark rights
exist).
Respondent does not
have rights or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii)
because its repeated offers to sell the
disputed domain name to Complainant indicate that it registered the disputed
domain name
primarily for the purpose of selling it. See Hewlett-Packard
Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31,
2000) (finding no rights or legitimate interests where the Respondent
registered the domain
name with the intention of selling the domain name); see
also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell domain name suggests it has no legitimate use).
Respondent, known as
Alrite Oz Pty. Ltd., does not have any rights or legitimate interests pursuant
to Policy ¶ 4(c)(ii) because it
is not commonly known as MARK PHILIPPOUSSIS or <markphilippoussis.com>. See
Gallup Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent
does not have rights in a domain name when Respondent is not known
by the
mark); see also Compagnie 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 and
never applied for a license or permission from Complainant to use the
trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(i) as evidenced by its offer to sell
the domain name for $10,000, an
amount far exceeding its out-of-pocket expenses. See Matmut v. Tweed,
D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy paragraph
4(b)(i) where Respondent stated in communication with
Complainant, “if you are
interested in buying this domain name, we would be ready to sell it for
$10,000”); see also World
Wrestling Fed’n Entmt., Inc. v. Bosman,
D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in
bad faith because he offered to sell the domain name
for valuable consideration
in excess of any out of pocket costs); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11,
2000) (finding that the attempted sale
of a domain name is evidence of bad faith).
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 <markphilippoussis.com>
be transferred from Respondent
to Complainant.
The
Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated:
March 21, 2002
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