Barry Zito v. Stan Andruszkiewicz
Claim Number: FA0207000114773
PARTIES
Complainant
is Barry Zito, Pasadena, CA (“Complainant”) represented by Gary J. Nelson, of Christie,
Parker & Hale LLP. Respondent
is Stan Andruszkiewicz, Sharon, MA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <barryzito.com>,
registered with Register.com.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 3, 2002; the Forum received a hard copy of the Complaint
on July 8, 2002.
On
July 8, 2002, Register.com confirmed by e-mail to the Forum that the domain
name <barryzito.com> is
registered with Register.com and that Respondent is the current registrant of
the name. Register.com has verified
that Respondent is bound by the Register.com 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
July 8, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 29,
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@barryzito.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
August 6, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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
1. Respondent’s <barryzito.com> domain
name is identical to Complainant’s BARRY ZITO name and common law mark.
2. Respondent does not have any rights or
legitimate interests in the <barryzito.com> domain name.
3. Respondent registered and used the <barryzito.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant is a professional baseball
player and pitcher for the Oakland Athletics, a Major League Baseball team.
Complainant’s achievements include: being named as a pitcher to the 2002
All-Star game, becoming Oakland’s top draft pick in 1999, completing his first
full season with Oakland in 2001 finishing third in the American League in both
opponents batting average and strikeouts per nine innings while tying for sixth
in wins, and finishing the 2001 season with 205 strikeouts.
Complainant is regularly featured on
national broadcasting syndicates, making appearances on <espn.com>,
<cbs.sportsline.com> and CNN Sports Illustrated. Complainant was also
named the American League’s Pitcher of the month in both August and September
of 2001.
Respondent registered the <barryzito.com>
domain name on March 27, 2001. Complainant’s investigation reveals that
Respondent’s domain name is connected to a single page website that contains a
banner advertisement and provides links to other commercial sites.
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.
Complainant asserts common law rights in
the BARRY ZITO mark as it reflects his name and represents the possibility of
significant value in endorsements flowing from Complainant’s Major League
Baseball fame. Complainant’s Submission provides evidence supporting
Complainant’s national fame with regards to baseball, and includes Complainant
conducting various national interviews on the Internet and television.
Complainant’s name has been prominent in the realm of Major League Baseball at
the very least since 1999, when he was Oakland’s top draft pick. Complainant is
a well-known Major League Baseball player and has acquired common law trademark
rights in his name, BARRY ZITO.
The ICANN dispute resolution policy is
“broad in scope” in that “the reference to a trademark or service mark ‘in
which the Complainant has rights’ means that ownership of a registered mark is
not required–unregistered or common law trademark or service mark rights will
suffice” to support a domain name Complaint under the Policy. See McCarthy on Trademarks and Unfair
Competition, § 25:74.2, Vol. 4 (2000); see also British Broad. Corp. v.
Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not
distinguish between registered and unregistered trademarks and service marks in
the context of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”).
Respondent’s <barryzito.com> domain
name is identical to Complainant’s BARRY ZITO common law mark. Respondent’s
contested domain name reflects Complainant’s mark in its entirety, being
identical in pronunciation, appearance, connotation and commercial impression.
Respondent’s domain name deviates from Complainant’s mark only with the
inconsequential addition of the generic top-level domain (“gTLD”) “.com.” The
addition of a gTLD fails to make Respondent’s domain name separate and distinct
because it is required in a domain name; thus, Respondent’s domain name is
rendered identical. See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic top-level
domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar).
Accordingly, the Panel determines that
Policy ¶ 4(a)(i) has been satisfied.
Although the burden of proof is on
Complainant, Paragraph 4(c) of the Policy advises Respondent how to demonstrate
rights and legitimate interests in the domain name. Because Respondent has
failed to submit a Response in this proceeding, and Complainant’s allegations
have gone unopposed, the Panel is permitted to make all reasonable inferences
in favor of Complainant. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests in respect of the domain, the
burden shifts to Respondent to provide credible evidence that substantiates its
claim of rights and legitimate interests in the domain name); see also Talk City, Inc.
v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”).
Additionally, when Respondent fails to
submit a Response and its rights and interests are not apparent to the Panel,
it may be presumed that Respondent lacks rights and legitimate interests in the
<barryzito.com> domain name. See 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); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, the
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name).
Respondent’s primary use of the subject
domain name is in conjunction with the operation of a single page website.
Respondent undoubtedly collects advertising revenue from the advertising banner
that borders the top of the website. Complainant’s Submission also provides
unrefuted evidence that Respondent also links its website to other commercial
sites. When Internet users click on Respondent’s “Abuzz Media” link, they are
taken to Abuzz Media, a commercial website. Respondent’s opportunistic attempt
to commercially benefit from the fame associated with Complainant’s BARRY ZITO
mark by diverting interested Internet users to its website is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See
Vapor Blast Mfg. Co. v. R & S
Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that
Respondent’s commercial use of the domain name to confuse and divert Internet
traffic is not a legitimate use of the domain name); see also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to profit using the
Complainant’s mark by redirecting Internet traffic to its own website); see
also State Farm Mut. Auto. Ins. Co.
v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that
“unauthorized providing of information and services under a mark owned by a
third party cannot be said to be the bona fide offering of goods or services”).
Furthermore, there is no evidence
suggesting Respondent is known by the BARRY ZITO mark, or its <barryzito.com>
domain name pursuant to Policy ¶ 4(c)(ii). Circumstances indicate that
Respondent is an enthusiast of Complainant and is known as Stan Andruszkiewicz.
See Marino v. Video Images Prod., D2000-0598 (WIPO Aug. 2, 2000) (“in
light of the uniqueness of the name <danmarino.com>, which is virtually
identical to the Complainant’s personal name and common law trade mark, it
would be extremely difficult to foresee any justifiable use that the Respondent
could claim. On the contrary, selecting
this name gives rise to the impression of an association with the Complainant
which is not based in fact”); 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).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
Complainant has provided uncontested
evidence that Respondent’s website contains advertisements and links to
third-party websites. From the aforementioned websites, Respondent is assuredly
collecting advertising revenue, as is the general purpose and practice behind
placing advertisements on websites. Respondent is able to attract Internet
users interested in Complainant by creating a likelihood of confusion between
the <barryzito.com> domain name and Complainant’s mark. Respondent
commercially benefits from the confusion its website generates; thus,
Respondent registered and uses the subject domain name in bad faith pursuant to
Policy ¶ 4(b)(iv). See Am. Online,
Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding bad faith where Respondent registered and used an infringing domain
name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
Respondent directed Internet users seeking the Complainant’s site to its own
website for commercial gain).
The criteria specified in Policy
Paragraph 4(b) do not represent an exhaustive listing of bad faith evidence.
The Panel may take into consideration the totality of circumstances in
determining whether Respondent registered or used the <barryzito.com> domain
name in bad faith. See Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are
intended to be illustrative, rather than exclusive); see also Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”).
The registration and use of a domain name
that incorporates Complainant’s likeness by someone with no connection to
Complainant suggests bad faith. Respondent opportunistically registered the
subject domain name despite knowledge that Complainant held preexisting rights
in the name. Even though Complainant did not enjoy national recognition until
at least 1999, the date of that achievement still predates Respondent’s
registration of the domain name. Such disregard for the existing rights
Complainant holds in the BARRY ZITO mark evidences bad faith registration and
use under Policy ¶ 4(a)(iii). See Experience
Hendrix, L.L.C. v. Hammerton D2000-0364 (WIPO Aug. 15, 2000) (finding bad
faith because “registration and use of the domain name <jimihendrix.com>
by the Respondent do not predate the Complainant’s use and rights in the name
and mark but rather appears to be an attempt to usurp the Complainant’s rights
therein”); see also Anne of Green
Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12,
2000) (finding bad faith where Respondent used the domain name
<anneofgreengables.com> to link users to a web site that contains
information about the Anne of Green Gables literary works, motion pictures and
the author, L. M. Montgomery, where a visitor to the web site may believe that
the owner of the mark ANNE OF GREEN GABLES is affiliated with or has sponsored
or endorsed Respondent's web site); see also Entrepreneur Media, Inc. v.
Smith, 279
F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an
alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse").
Accordingly, the Panel determines that
Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be
hereby GRANTED.
Accordingly, it is Ordered that the <barryzito.com>
domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 20, 2002
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