DECISION

Yao Ming c/o BDA Sports Management v. Evergreen Sports, Inc.

Claim Number:  FA0304000154140

PARTIES

Complainant is Yao Ming c/o BDA Sports Management, Walnut Creek, CA (“Complainant”) represented by Jerry D. Hall. Respondent is Evergreen Sports, Inc., Cleveland, OH (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <yaoming.com>, registered with Enom, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 9, 2003; the Forum received a hard copy of the Complaint on April 14, 2003.

On April 16, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <yaoming.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 April 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 7, 2003, 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@yaoming.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 May 15, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 makes the following assertions:

1. The domain name registered by Respondent, <yaoming.com>, is identical to Complainant’s common law YAO MING mark.

2. Respondent has no rights or legitimate interests in the <yaoming.com> domain name.

3. Respondent registered and used the <yaoming.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

The Panel assumes that Complainant is the well-known basketball player for the Houston, Texas, Rockets Basketball team.  However, Complainant’s submission is fatally defective. Although the Panel will presume that the Yao Ming may have common law rights in the name YAO MING, Complainant submitted no evidence to support a finding of such rights with the Complaint.

Complainant further submitted no facts to enable the Panel to determine who Respondent is or how Respondent has used the disputed domain name <yaoming.com>.

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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 to and/or Confusingly Similar

A person may acquire common law trademark rights in his or her name. See 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”).  Common law trademark rights must be established with actual evidence of secondary meaning for the name.  See McCarthy on Trademarks and Unfair Competetition, § 13:1 “Personal Names as Mark Introduction” (4^th ed. 2002) (stating that the basic rules pertaining to the protection of personal names require actual proof of secondary meaning for protection); see also  Marino v. Video Images Productions, D2000-0598 (WIPO Aug. 2, 2000) (finding that evidence of Dan Marino’s NFL career, sports commentary, and movie roles was sufficient to show that Dan Marino’s name had secondary meaning and qualified as a common law trademark); see also Hooijdonk v. Tait, D2000-1068 (WIPO Nov. 4, 2000) (finding that Complainant Van Hooijdonk had established common law rights in his name through evidence of its use related to sports clothing, games and his international recognition stemming from the 2000 European Championship). 

In this case, Complainant merely states that the Complaint is based on “the name Yao Ming, which is the name of  7’ 5” tall NBA star athlete Yao Ming. . . used in athletic entertainment and endorsement.”  Complainant failed to submit any evidence of how the name is used in athletic entertainment and/or endorsement or facts to support consumer knowledge.  Bald assertions of consumer knowledge are not an adequate form of evidence to establish secondary meaning in a name. 

 

Accordingly, the Panel finds that Complainant failed to establish requirements of Policy ¶ 4(a)(i) because it has not provided adequate evidence of a common law trademark in the name YAO MING.

Rights to or Legitimate Interests and Bad Faith

Complainant has not alleged any facts related to Respondent’s use of the disputed domain name.  The Complaint merely asserts a legal conclusion. Thus, the Panel has no knowledge of Respondent’s use of the domain name upon which to base a decision under Policy ¶ 4(a)(ii) and (iii).   See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when Respondent does not file a Response, Complainant must allege facts, which if true, would establish that Respondent does not have any rights or legitimate interests in the disputed domain name); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the Panel may conclude that Respondent acted in bad faith).

This decision, however, should not be construed as finding that Complainant could never establish that it has common law rights in the YAO MING mark or that Respondent is using the domain name in bad faith.  If Complainant were to file a complete Complaint, alleging facts, providing actual evidence, and citing specific examples, a future Panel might have sufficient evidence upon which to base a decision.  As it stands, in the absence of any evidence on the record relating to any paragraph of the Policy, the Panel holds that the current dispute cannot be resolved in the context of this proceeding.

DECISION

Having failed to establish the requisite elements required under ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the Complaint be DISMISSED.

Hon. Carolyn Marks Johnson, Panelist

Dated: May 29, 2003.

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