Slam Dunk On Domain Name Transfer

Complainant is the business entity of Kareem Abdul-Jabbar, one of the most famous of all professional basketball players.  In addition to a 20 year career as a professional player, Abdul-Jabbar has coached professional basketball teams, acted in first-run movies and appeared in many commercial product endorsements.  Complainant or Abdul-Jabbar own two trademarks for "Kareem Abdul-Jabbar", with a first use date of 1991 for one of those marks.

In 1999, the Respondent registered the disputed domain name, "kareemabduljabbar.com".  In response to the Complaint, Respondent relied upon a fan site defense.  That defense, however, was an "air ball".

Respondent made no use of the disputed domain until 2001, at which point it resolved to a typical "under construction" site with hyperlinks to unrelated commercial websites.  In July 2002, the content changed to a one page summary of Abdul-Jabbar's basketball career.  At some point, the site included either hyperlinks or the Internet address for a commercial website operated by Respondent at www.vegasgamblers.com.  The information about Abdul-Jabbar on the website never changed and the site was disabled in 2007, at which time it read "this account has been suspended".

The Panel held that Respondent's site did not meet predicate requirements for a fan site. The site was never "active" for more than five years and its content never changed from its perfunctory recital of Abdul-Jabbar's resume and accomplishments.  Panels that have deemed fan sites legitimate dealt with sites that served as alternatives to sites authorized by the celebrity or team that owned the name, and provided current information and often the opportunity for fans to learn about and discuss various topics related to their subject.  They typically include non-commercial activities, not a static information sheet like Respondent's site.  As such, these legitimate fan sites have functioned similarly to a non-commercial business, often with activities that were independent of the website. Respondent's website, in contrast, was not entirely "noncommercial". For eight months the site contained no reference to Abdul-Jabbar and contained numerous links to assorted commercial businesses, none of which had any apparent relationship to Abdul-Jabbar or even to basketball.  Then, after posting the information sheet about Abdul-Jabbar, the web page included the reference to Respondent's commercial site, www.vegasgamblers.com -- unrelated to Abdul-Jabbar in any way.  Faced with these facts, the Panel determined that Respondent did not establish a fan site in any reasonable sense of the term and ordered transfer of the disputed domain. A slam dunk for Abdul-Jabbar!  Ain-Jeem, Inc. v. Barto Enterprises, Inc., Philip Barto, WIPO Case No. D2007-1841

Domain Name Knockout In The Ring

The Respondent manufactures and sells jewelry products, including engagement rings, wedding and anniversary rings and other types of rings.  Respondent registered the disputed domain name "thering.com" in September 1995. During the period 1998-2001, Respondent used the disputed domain name to direct Internet users to its website displaying and providing information about its rings.  Thereafter, Respondent discontinued this use in favor of "ajaffe.com", which reflects the Respondent's brand, but continued to use the disputed domain name as a corporate email address for its employees.

Complainaint owns various trademark rights for the mark "The Ring" for use with the boxing publication "The Ring Magazine", the earliest of which rights date back to January 1977.  Seeking transfer of the disputed domain name, Complainant contends that the disputed domain name, "thering.com", is identical to and confusingly similar to its trademark and contends that Respondent has never used the disputed domain name for any purpose, thus constituting bad faith under the Policy.

The Panel denied Complainant's complaint.  In so doing, the Panel found that even though Complainant had trademark rights in "The Ring" and that the disputed domain name was identical and confusingly similar to Complainant's mark, Complainant had failed to satisfy its burden of showing bad faith registration and use of the disputed domain name by Respondent.  Instead, Respondent appears to have used the disputed domain name in a descriptive sense and it was noted that a number of panels have held that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive word provided the domain name was not registered with the Complainant's mark in mind, even where it is confusingly similar to the registered mark of a complainant.  Sports and Entertainment Publications LLC v. Sandberg & Sikorski, WIPO Case No. D2007-1693

Par for the Domain Name Course

Complainant is a wholly-owned subsidiary of Yamaha Motor Co., Ltd and owns several trademark registrations for the mark "YAMAHA".  The first of such registrations expressly includes "golf carts and structural parts therefore" in the specification of goods.  Complainant also owns the domain names "yamaha-motor.com" and "yamahagolfcar.com".

Respondent, a well-known cybersquatter, was the registrant of the disputed domain name "yamahagolfcars".  Prior to initiating WIPO proceedings against Respondent, Complainant sent a letter to the registrant of the disputed domain, asserting its rights and demanding transfer.  The disputed domain name was subsequently transferred to another registrant. Complainant sent a second, similar letter to the second registrant, with the same results. Four registrants later, Complainant initiated WIPO proceedings against the current Respondent.

Respondent failed to respond to the complaint.  The Panel recognized that the trademark YAMAHA is a widely known trademark and that a domain name is to be considered confusingly similar to the registered trademark when a respondent merely adds generic or descriptive terms to an otherwise distinctive and famous trademark.  In addition thereto, the Panel found a lack of rights or legitimate interest of the Respondent in the disputed domain since Respondent's website only showed a "link farm" which hosts a list of sponsored links and does not present any business run by Respondent.  Taking into consideration all of these factors, as well as the fact that the Respondent is a habitual cybersquatter and clearly intended to earn profit from the confusion created in Internet users having an interest in Complainant's activities, the Panel ordered transfer of the disputed domain name to Complainant.  Yamaha Motor Corporation, USA v. Gioacchino Zerbo, WIPO Case No. D2007-1879.