K1 Promotions, LLC v. Jordan Fabel / Brandon Myers
Complainant is K1 Promotions, LLC (“Complainant”), represented by Y. Jae Kim of Kim IP Law Group PLLC, New Jersey, USA. Respondent is Jordan Fabel / Brandon Myers (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kylermurray.com> and <kylermurray.org>, registered with Google Llc and Godaddy Online Services Cayman Islands Ltd.,/ Uniregistrar Corp., respectively.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Adam Taylor, David H. Bernstein and Ho-Hyun Nahm as Panelists.
Complainant submitted a Complaint to the Forum electronically on June 18, 2020; the Forum received payment on June 18, 2020.
On June 19, 2020 Google Llc confirmed by e-mail to the Forum that the <kylermurray.com> domain name is registered with Google Llc ; on July 2, 2020 Godaddy Online Services Cayman Islands Ltd., Uniregistrar Corp, confirmed by e-mail to the Forum that the <kylermurray.org> domain name is registered with Godaddy Online Services Cayman Islands Ltd.,/ Uniregistrar Corp. Both registrars confirmed that Respondent is the current registrant of the domain names. Google Llc and Godaddy Online Services Cayman Islands Ltd., Uniregistrar Corp have verified that Respondent is bound by the respective registration agreements and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 2020, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kylermurray.com, postmaster@kylermurray.org. Also on July 9, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on August 17, 2020.
On August 25, 2020, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the Forum appointed Adam Taylor, David H. Bernstein and Ho-Hyun Nahm as Panelists.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
On September 3, 2020, Complainant submitted an unsolicited additional submission.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder”.
Complainant contends that the disputed domain names incorporate Complainant's mark in a similar manner and, by Respondents' own admission, the domain names are linked to a single person or entity.
The Panel finds that the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases and that the proceeding can go forward against both disputed domain names. For convenience, the Respondents will hereafter be referred to as “Respondent”.
PRELIMINARY ISSUE: ADDITIONAL SUBMISSION
Complainant has sought permission to make an additional submission beyond the initial Complaint.
Rule 10 of the Rules gives the Panel complete discretion on whether to accept any late-filed materials. Although the Panel has the right to request additional materials, the parties have no right to submit additional materials absent the Panel’s agreement. Rule 12; Forum Supplemental Rule 7.
In exercising this discretion, the Panel is mindful that one of the promises of the Policy is to ensure the rapid review and adjudication of domain name disputes. That promise would be undermined were parties encouraged to submit replies, which may themselves engender sur-replies.
Complainant has not identified any particular issues that it could not reasonably have addressed in the Complaint and that it considered of sufficient importance to justify the filing of an additional submission. Complainant has simply proceeded as if there is an automatic right of reply to the Response.
Furthermore, the submission was filed only five days before the due date for this decision.
Moreover, in this case, the Panel carefully has reviewed the record and has determined that the record already provides all the information necessary to render an informed decision.
For these reasons, Complainant’s request for leave to submit supplemental materials is denied.
A. Complainant
Complainant has common law rights in the KYLER MURRAY mark by virtue of the international recognition and use of the mark in connection with Complainant's success and achievements as a professional athlete including use of the mark in sponsorship deals. Respondent’s <kylermurray.com> and <kylermurray.org> domain names are identical or confusingly similar to Complainant’s mark as they incorporate the entirety of Complainant's mark and add the generic top-level domain ("gTLDs") ".com" and ".org."
Respondent has no rights or legitimate interests in the <kylermurray.com> and <kylermurray.org> domain names. Respondent was not commonly known by the disputed domain names at the time of registration. Complainant has not consented to or authorized the use of the mark by Respondent. Respondent fails to use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent uses the <kylermurray.com> domain name to divert Internet traffic away from Complainant's authorized websites to websites of Respondent's own operation and promote the products of others. The <kylermurray.org> domain name displays no active content. Respondent's use of the <kylermurray.com> domain name as a fan site does not demonstrate rights or legitimate interest in the domain name. Respondent offered to sell the <kylermurray.com> domain name for $750,000 when contacted via Uniregistry.com and for $1.7 million following a meeting with Complainant, both in excess of out-of-pocket registration costs.
Respondent registered and uses the <kylermurray.com> and <kylermurray.org> domain names in bad faith. Respondent knew of Complainant’s achievements and accolades when Respondent registered the domain names. Respondent offered to sell the disputed domain names for amounts in excess of registration costs on two separate occasions. Respondent uses the disputed domain names to solicit and advertise Respondent's own business ventures for Respondent's own commercial gain. Respondent's registration of the domain names suggests a false connection with Complainant indicative of bad faith. Respondent, by Respondent's own admission, registered the domain names with knowledge of Complainant rights in the mark. Respondent registered the domain names in opportunistic bad faith. Respondent's registration of the domain names with a privacy service also indicates bad faith.
B. Respondent
Complainant's name is not trademarked and Complainant's name or other variants such as "Kyle R. Murray" are subject to public domain and United States First Amendment protections of free speech. Complainant does not hold exclusive rights to his name and does not control all aspects of media and public domain.
While Complainant may have rights in the KYLER MURRAY mark, Complainant did not have rights in 2012 when the <kylermurray.com> domain name was registered. Complainant does not use KYLER MURRAY as a trademark, as evidenced by Complainant's corporate name, K1 Promotions, LLC.
Respondent registered the <kylermurray.com> domain name as a fan site and has openly labeled the website as such. Respondent's fan site is protected by the First Amendment.
At the time of registration of the <kylermurray.com> domain name in 2012, it would not have been possible to know of Complainant's rights in the mark and to register the domain name in bad faith as the rights did not yet exist. At that time, Complainant’s career was not “a sure thing”.
Respondent registered the <kylermurray.org> domain name after a meeting with Complainant's counsel following which Respondent expected to work with Complainant and sought to register the domain name to protect it on his behalf. This domain name was never part of Respondent’s plans for a fan site.
Respondent has not monetized the webpage at <kylermurray.com>. Respondent does not own any of the websites linked to from the webpage and merely uses the video and other content on the webpage as a part of the fan site to display positive information about the Complainant. Respondent has expended significant effort in writing articles for the webpage and developing it for search engine optimization. Respondent is an expert in this field.
Respondent's initial offer of $750,000 for the <kylermurray.com> domain name was not meant to be a serious offer and was intended to deter the potential, then-unidentified, buyer. Respondent receives many such inquiries and had no intention of selling the domain name at that time. Respondent's second offer was made following a request by Complainant’s attorney at the meeting and was an alternative to working with Respondent on the project based on a 50% buyout of what Respondent projected to be the potential earnings of the fully developed website using sophisticated techniques in which Respondent specializes, and calculated on the basis of other networks built by Respondent historically.
Respondent used a privacy service in accordance with the Respondent’s right to privacy and to prevent spam email.
Complainant is a professional football quarterback for the Arizona Cardinals of the National Football League.
Respondent registered the <kylermurray.com> domain name on December 18, 2012, after seeing Complainant playing in a high school football game.
Respondent has used the <kylermurray.com> domain name for a website headed “KYLER MURRAY .COM”, with information, photographs and video clips relating to Complainant’s activities and accomplishments.
On August 7, 2019, in response to an enquiry by Complainant’s attorney regarding an advertised sale of the <kylermurray.com> domain name, Uniregistry.com emailed the attorney stating that the Respondent had “determined a price of 750,000 for this domain.”
On September 5, 2019, Complainant’s attorney met with Respondent to discuss the <kylermurray.com> domain name. On the same date, following the meeting, Respondent registered the <kylermurray.org> domain name. This domain name has not been used for an active website.
On September 11, 2019, Respondent offered to sell the <kylermurray.com> domain name to the Complainant for $1.7 million or to transform it into a collaborative revenue-generating website for Complainant and Respondent.
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."
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.
Generally, a complainant must be the owner of the relevant mark or demonstrate that complainant is related to the entity that owns the mark to have standing to bring a complainant. See City Wide Franchise Company, Inc. v. Cheri Quillen / City Wide Janitorial Services, LLC, FA 1723195 (Forum Apr. 30, 2017) (finding that the complainant had no standing to bring a complaint involving a trademark registered to another entity when it did not provide a description of its relationship to that entity).
In this case, the body of the Complaint describes Kyler Murray as the complainant and asserts rights in “his personal name”, whereas the actual named Complainant is “K1 Promotions, LLC”. However, a declaration by Complainant’s attorney explains that Kyler Murray is “principal” of K1 Promotions, LLC, and the declarant further asserts that he is representative of both entities. See Amend. Compl. Annex F, Declaration of Cody L. Towns. Furthermore, Respondent acknowledges that K1 Promotions, LLC is Kyler Murray’s “operating corporation”.
In these circumstances, the Panel considers that Complainant has standing to bring this case based on its relationship with the owner of the claimed mark. For convenience, references to “Complainant” in this decision include Kyler Murray except where otherwise stated.
Complainant asserts common law rights in the KYLER MURRAY mark. It is not necessary for the Complainant to establish that the mark is “trademarked” (as Respondent puts it). Policy ¶ 4(a)(i) does not require a complainant to own a registered trademark if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark … if it can demonstrate established common law rights in the mark.”). To establish common law rights in a name, a complainant generally must show extensive and continuous use in commerce such that consumers have come to associate the mark with the complainant as the source of the goods. See Iacocca v. Tex. Int’l Prop. Assocs., FA 1088017 (Forum Nov. 29, 2007) (“In order to garner the benefit of common law trademark rights, Complainant must lay out, not only evidence of extensive and continuous use of the mark in commerce, but also evince some strong probability that as a result of such exposure, that consumers have come to associate the mark with Complainant, as to the source of the goods.”). Complainant provides articles covering Complainant's early sports career as a high school athlete as well as Complainant's subsequent highly successful career and sponsorship deals. See Compl. Exs. B and C and Amend. Compl. Ex. G. The Panel finds this evidence sufficient to establish extensive and continuous use of the mark as well as consumer recognition that Complainant is the source of the relevant goods or services, and finds that Complainant has common law rights in the KYLER MURRAY mark.
Complainant contends Respondent’s <kylermurray.com> and <kylermurray.org> domain names are identical or confusingly similar to Complainant’s mark as they incorporate the entirety of Complainant's mark and add the gTLDs ".com" and ".org." It is well established that the addition of a gTLD to a mark does not distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The Panel therefore finds the <kylermurray.com> and <kylermurray.org> domain names are identical or confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Accordingly, Complainant has sustained its burden under the first factor of the Policy.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
There is no evidence that Respondent was commonly known by the disputed domain names at the time of their registration and indeed Respondent has not so claimed. Furthermore, Complainant has not consented to or authorized the use of the mark by Respondent. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Respondent contends that Respondent registered the <kylermurray.com> domain name as a fan site and that Respondent has never monetized the webpage at this domain name.
However, the Panel notes the following:
First, the <kylermurray.com> domain name effectively impersonates Complainant in that it is identical to Complainant’s trademark. It therefore carries a high risk of implied affiliation with Complainant. There is no extra term in the domain name, such as “fansite”, that would convey to Internet users that the domain name is not officially connected with Complainant.
Second, the webpage at the <kylermurray.com> domain name in evidence before the Panel has the appearance of an official website of the Complainant with pictures, articles, and video clips pertaining to Complainant. There is no evidence that Respondent openly labeled the website as a fan site, as Respondent claims, at least in any prominent manner. The webpage does not contain a prominent disclaimer or otherwise clearly distinguish itself as unofficial fan site. See Smith v. Network Operations Ctr., FA 371622 (Forum Jan. 13, 2005) (finding that the respondent’s use of the <ambersmith.com> domain name “that contain[ed] material directly related to Complainant, including her name and photograph prominently displayed at the top of the page” did not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii) because it presented a false association with the complainant); see also Mayweather Promotions, LLC v. Muhammad Umar, FA 1658437 (Forum Mar. 7, 2016) (“[The disputed domain name] does not indicate anywhere that it is attempting to be an amateur fan site and has more of an air of an official news source… As such, the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.”).
Third, the concession by Respondent that, even in 2012, when the <kylermurray.com> domain name was registered, Respondent viewed Complainant as being on a par with (the famous quarterback) Michael Vick and the fact that the Respondent is in the business of commercializing websites, bely Respondent’s claim that the <kylermurray.com> domain name was genuinely registered and used as a fan site.
Respondent asserts that Complainant’s name is subject to public domain and United States First Amendment protections of free speech. However, the Panel does not believe that such rights enable Respondent to register and use Complainant’s trade mark in whatever manner that Respondent sees fit; for reasons explained above, the Panel is not satisfied that the <kylermurray.com> domain name has been used as a genuine fan site.
The Panel therefore finds Respondent does not use the <kylermurray.com> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Respondent does not use the <kylermurray.org> domain name to display active content and therefore this domain name does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays the error message “this site can’t be reached.” See Compl. Annex E. The Panel therefore finds Respondent does not use the <kylermurray.org> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Accordingly, Complainant has sustained its burden under the second factor of the Policy.
Respondent acknowledges that Respondent registered the <kylermurray.com> domain name in 2012 after watching Complainant play in a high school football game but contends that Respondent could not have registered the domain name in bad faith to take advantage of Complainant’s rights because, in 2012, Complainant’s career was not yet “a sure thing” and Complainant’s rights did not yet exist.
The Panel agrees that Complainant may not have acquired trademark rights in 2012, albeit that he had already achieved a degree of renown for his high school achievements.
However, registration of a domain name in anticipation of events pertaining to a complainant can show opportunistic bad faith registration. See Atlantic Automotive Corp. v. michelle popp, FA 1787763 (Forum June 26, 2018) (finding bad faith where the respondent registered the <heritagehondabelair.com> and <heritagehondaofbelair.com> domain names in anticipation of the pending acquisition and rebranding of a car dealership, holding: “The Panel is of the view that the registration of a domain name in temporal proximity to a merger or acquisition involving Complainant and its associated marks supports a finding of bad faith.”).
See also Kylie Jenner, Kylie Jenner, Inc. and Whalerock Celebrity Subscription LLC v. Thevan Thirumalla, TVM Names and Kendall Jenner, Kendall Jenner, Inc. and Whalerock Celebrity Subscription LLC v. Jorly James, Cooknames, WIPO Case Nos. D2015-1189 and D2015-1190 consolidated (finding bad faith where respondent registered <kyliejenner.com> and <kendalljenner.com> reflecting the names of the youngest members of the Kardashian-Jenner clan, a family of celebrities with a significant reputation and goodwill in the world of sport, entertainment and fashion, holding “The Panel is of the view that the Respondents selected the names of the Complainants for the Domain Names in anticipation of the reputation and goodwill (i.e. trade mark rights) that those names were likely to attract and have in fact attracted. The unfair commercial advantage to the Respondents is obvious.”)
In this case, Respondent concedes that, in 2012, Respondent considered that Complainant’s “amazing talents” were akin to those of Michael Vick, a famous football player. In these circumstances, and given the lack of evidence of use for a genuine fan site, as explained above in connection with the second factor of the Policy, the Panel concludes that Respondent’s most likely motive for registration of the <kylermurray.com> domain name was in anticipation, and to take advantage of, the reputation and trade mark rights that this name was likely to (or at least might) attract – and has indeed attracted.
Respondent registered the <kylermurray.org> domain name following a meeting with Complainant's counsel regarding the <kylermurray.com> domain name in 2019, and therefore at a time when Respondent can have been in no doubt as to the nature and extent of Complainant’s rights in its mark. Respondent says that it registered this domain name in anticipation of working with Complainant and to protect the domain name on Complainant’s behalf but there is no evidence that Complainant authorized Respondent to take this step. In the circumstances, the Panel considers that the most likely explanation for Respondent’s registration of the <kylermurray.org> domain name was to increase its leverage vis-ŕ-vis Complainant and to take further advantage of Complainant’s mark.
The Panel therefore finds Respondent registered both domain names as opportunistic bad faith registrations per Policy ¶ 4(a)(iii).
Accordingly, Complainant has sustained its burden under the third factor of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kylermurray.com> and <kylermurray.org> domain names be TRANSFERRED from Respondent to Complainant.
Adam Taylor, Chair, David H. Bernstein and Ho-Hyun Nahm, Panelists
Dated: September 7, 2020
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