DECISION

Tony Kanaan v. na a/k/a John Fortham

Claim Number:  FA0408000311335

PARTIES

Complainant is Tony Kanaan (“Complainant”), represented by Gillian Lee Rifkin, of Alan R. Miller, P.C., 370 East Maple Road, 4th Floor, Birmingham, MI 48009.  Respondent is na a/k/a John Fortham (“Respondent”), 8835 North 33 Street, Phoenix AZ, 85029.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tonykanaan.com>, registered with Tucows 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.

            Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 12, 2004; the Forum received a hard copy of the Complaint on August 16, 2004.

On August 12, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <tonykanaan.com> is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 August 23, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 13, 2004 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@tonykanaan.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 September 16, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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. Respondent’s <tonykanaan.com> domain name is identical to Complainant’s TONY KANAAN mark.

2. Respondent does not have any rights or legitimate interests in the <tonykanaan.com> domain name.

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

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

FINDINGS

Complainant, Tony Kanaan, is a professional automobile driver in the Indy Racing League.  Complainant began his racing success in Sao Paolo, Brazil, winning the Junior Karting Championship in 1986, 1987, and 1988.  His career includes many automobile racing accomplishments, spanning 18 years, including placing sixth in the Brazilian Formula Ford Championship in 1991, fifth in the Brazilian Formula Chevrolet Championship in 1992, first in CART Michigan in 1999, eighth in CART Nazareth, Road America and Australia, as well as winning the Italian Formula Alfa-Boxer Championship in 1994 and the Daytona Indy Lights championship in 1997.  Complainant’s mark is famous because of Complainant’s success in the sport of automobile racing, and the publicity related to this success (i.e. interviews in RACER Magazine and on CNN as well as sponsorship by 7-Eleven, Reebock, Doritos, Gatorade, Pepsi, Honda, and Motorola).

Complainant registered the TONY KANAAN mark with the Federated Republic of Brazil on March 13, 2001 (Reg. No. 820.670.723) for International Class 25—clothing, footwear, and headware. 

Respondent, na a/k/a John Fortham, registered the <tonykanaan.com> domain name on November 4, 2001.  Respondent is using the disputed domain name to redirect Internet users to a pornography site called “911 Ass: The Home of the Most Spectacular and Unusual Sex on the Net!”  This pornography site also advertises pornography services and sexual goods for sale.

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 draw such inferences it 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 and/or Confusingly Similar

Complainant has established that it has rights in the TONY KANAAN mark as established by its trademark registration in Brazil.  The Panel finds that the Brazilian registration demonstrates Complainant’s rights in its TONY KANAAN mark pursuant to Policy ¶ 4(a)(i).  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates, Complainant can demonstrate a mark in some other jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether Complainant’s mark is registered in a country other than that of Respondent’s place of business).

The Panel finds that Respondent’s <tonykanaan.com> domain name is identical to Complainant’s TONY KANAAN mark.  The only difference is the elimination of the space between the words in the domain name, which does not significantly distinguish the domain name from the mark.  See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also Croatia Airlines v. Kijong, AF-0302 (eResolution Sept. 25, 2000)  (finding that the domain name <croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES trademark).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not responded to the Complaint.  In the absence of a Response, the Panel may accept all of Complainant’s reasonable assertions as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

In the Complaint, Complainant demonstrates that Respondent is appropriating Complainant’s mark to redirect Internet traffic to a pornography website.  Appropriating Complainant’s TONY KANAAN mark to offer pornography and links to pornographic services and related merchandise is not a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶ 4(c)(iii).  See McClatchy Mgmt. Serv., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features pornographic material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use); see also Nat’l Football League Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that Respondent had no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where Respondent linked these domain names to its pornographic website).

Because Complainant’s mark is also Complainant’s name, Complainant’s mark is famous, and the content of Respondent’s website is unrelated to Complainant’s mark or the goods or services associated thereof, the Panel infers that Respondent is profiting from the diversionary use of Complainant’s mark.  The Panel accepts Complainant’s implication that Respondent is attempting to usurp Complainant’s goodwill for profit.  Appropriating another’s mark for commercial gain is not a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶ 4(c)(iii).  See FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum April 25, 2003) (finding that Respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to an Internet directory website that featured numerous pop-up advertisements for commercial goods and sexually explicit websites).

There is nothing in the record, including the WHOIS registration information, that demonstrates that Respondent is commonly known by the <tonykanaan.com> domain name, pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Because Complainant’s mark is famous, and there is nothing regarding Respondent’s <tonykanaan.com> that would justify Respondent’s use of Complainant’s mark, the Panel finds that Respondent is attempting to create confusion regarding the source of the <tonykanaan.com> domain name.  The Panel also infers that Complainant is making a profit from the advertising on the website.  The Panel finds that Respondent has registered and used the <tonykanaan.com> domain name to create confusion for commercial gain pursuant to Policy ¶ 4(b)(iv).  See CMG Worldwide, Inc. v. Lombardi, FA 95966 (Nat. Arb. Forum Jan. 12, 2001) (finding that Respondent’s use of the VINCE LOMBARDI mark to divert Internet users to its commercial website constituted bad faith use and registration of the disputed domain name); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

Respondent is appropriating Complainant’s TONY KANAAN mark to peddle pornography.  Using someone else’s mark to promote pornography is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO March 4, 2003) (stating that “whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”).

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

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

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

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  September 29, 2004

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