national arbitration forum

 

DECISION

 

Garry Kasparov v. Sevan Muradian

Claim Number: FA1306001503225

PARTIES

Complainant is Garry Kasparov (“Complainant”), represented by Halle B. Markus of Arent Fox, LLP, Los Angeles, California, United States of America.  Respondent is Sevan Muradian (“Respondent”), Chicago, Illinois, United States of America.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <kasparov2014.com>, <kasparov2014.net>, <kasparov2014.info>, and <kasparov2014.org>, registered with GoDaddy.com, LLC.

 

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.

 

Fernando Triana, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 4, 2013; the National Arbitration Forum received payment on June 4, 2013.

 

On June 6, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the disputed domain names <kasparov2014.com>, <kasparov2014.net>, <kasparov2014.info> and <kasparov2014.org> are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement 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 June 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 2013 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@kasparov2014.com, postmaster@kasparov2014.net, postmaster@kasparov2014.info, postmaster@kasparov2014.org.  Also on June 11, 2013, 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 July 1, 2013.

 

Complainant submitted Additional Submissions that were received in a timely manner on July 8, 2013.  Complainant submitted his documents in accordance with the National Arbitration Forum Supplemental Rules according to The Forum’s Supplemental Rule #7.

 

On July 8, 2013, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq. as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration 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.

 

RELIEF SOUGHT

Complainant requests that the disputed domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.   Complainant

a.    Complainant is Garry Kimovich Kasparov, a former International Grandmaster chess player who has been considered the greatest chess player that ever lived.

b.    Complainant has won many tournaments and has made out of his name a trademark widely recognized by the public, the KASPAROV trademark. With his trademark Complainant has competed in sponsored events, written books and starred in television talk shows.

c.    Complainant owns several registrations in the United States of America and around the world for the trademark KASPAROV and GK KASPAROV, which he has licensed to various organizations to use in the sale of goods and services.

d.    Complainant is also the owner of the domain names <kasparov.com> and <kasparovagent.com>, which redirect to Complainant’s official website. The websites represent main marketing channels for Complainant.

e.    Long after both Complainant’s trademarks and domain names were registered, on June 14, 2012, Respondent acquired the disputed domain names <kasparov2014.com>, <kasparov2014.net>, <kasparov2014.info> and <kasparov2014.org>. 

f.      Respondent’s disputed domain names resolve to a parked website featuring advertisements, a commercial search engine and sponsored links to third party websites, some of which promote competitive goods.

g.    The disputed domain names are confusingly similar to Complainant’s trademarks; Respondent incorporates Complainant’s trademarks and merely adds the year “2014” and a generic top-level domain (“gTLD”).

h.    Respondent has no rights or legitimate interests regarding the disputed domain names.

i.      Respondent is not a licensee or authorized user of Complainant’s trademarks. Respondent is not commonly known by the trademark or the disputed domain names.

j.      Respondent uses all of the domain names to operate hyperlink directories from which Respondent receives commercial revenue each time an Internet user visiting the website clicks on a hyperlink.

k.    Respondent registered and is using the disputed domain names in bad faith.

l.      Respondent registered the disputed domain names many years after Complainant’s trademarks reached world fame to redirect Internet users to parking pages offering links to third-party websites without authorization from Complainant.

m.   Complainant plans to run for President of the Federation Internationale des Echecs (“FIDE”)—a chess organization—in the 2014 elections.

n.    Respondent is recognized by FIDE as an International Arbiter and an International Organizer and is the founder of the North American Chess Association, hence, Respondent should have known Garry Kasparov by the time Respondent registered the disputed domain names.

o.    Respondent’s decision to register these disputed domain names in the midst of Complainant’s 2014 bid to lead the FIDE illustrates a bad faith attempt to disrupt Complainant’s business of providing chess services.

p.    Respondent is appropriating the KASPAROV trademarks in the disputed domain names to confuse Internet users into visiting the disputed domain names’ websites and click on hyperlink advertisements. Respondent profits through this confusion through advertising referral revenue.

q.    Respondent’s links to the global chess community make it very likely that Respondent was well aware of Complainant’s rights in his trademarks when registering the disputed domain names.

 

B.   Respondent

a.    Respondent does not inure any commercial benefit from the disputed domain name.

b.    Responded registered the disputed domain names for anti-political/political satire website against an election campaign by Complainant for a position within the Federation Internationale des Echecs (FIDE).

c.    Responding is planning to use the disputed domain names and it has been preparing them since July 13, 2012.

d.    Complainant provides no evidence that Respondent has acquired the disputed domain names primarily for the purpose of selling, renting or transferring them to Complainant.

e.    Complainant provides no evidence that Respondent has engaged in any pattern of bad faith registration.

f.      Complainant provides no evidence that Respondent has acquired the disputed domain names for the purpose of disrupting Complainant’s business.

g.    Respondent is not a direct competitor with Complainant in the marketplace. Simply because both players are members of the chess community does not create a competitor relationship. FIDE is a non-profit Swiss organization that does not inure personal commercial benefits to its members. There cannot be a commercial competition.

 

C.   Complainant’s Additional Submissions

a.    Since Respondent did not rebut the claim that the disputed domain names are identical to Complainant’s trademarks, Respondent has admitted their confusing similarity.

b.    As Respondent has not disproved the claims regarding lack of legitimate rights over the disputed domain names, Respondent has admitted he lacks such legitimate rights.

c.    From the Response it is clear that Respondent knows who Complainant is and is aware of his well-known character.

d.    Respondent registered the disputed domain names in bad faith to prevent Complainant from properly promoting Complainant’s candidacy for FIDE’s presidency.

e.    Respondent has not provided any evidence of use or intent of use of the disputed domain names, despite his argument regarding a political satire website. On the contrary, there is evidence that the disputed domain names have been unused for nearly a year.

 

FINDINGS

1.    Complainant owns the KASOPAROV trademark in the United States of America, the European Community, Denmark and China, among others, since before the disputed domain names were registered by Respondent.

 

2.    Respondent was aware of the Complainant’s rights in the KASPAROV trademark, yet Respondent incorporated it in the disputed domain names. Thus, Respondent used the KASPAROV trademark to create a likelihood of confusion aimed to divert consumers to Respondent’s websites.

 

3.    Respondent has never been commonly known by the disputed domain names or the KASPAROV trademark.

 

4.    Respondent is not affiliated with Complainant in any way: Complainant has never authorized, contracted, licensed or otherwise permitted Respondent to use the KASPAROV trademark, nor is Respondent an authorized vender, supplier or distributor of Complainant’s goods and services.

 

5.    Before any notice, Respondent neither used the disputed domain names nor demonstrated that preparations have been made in connection with a bona fide offering of goods or services.

 

6.    Complainant and Respondent belong to the same business since both Complainant and Respondent are chess players. Therefore, Complainant and Respondent are competitors.

 

7.    Respondent might use different domain names to the possible and intended use described in his Response.

 

8.    Respondent has the intention to attract, Internet users by creating a likelihood of confusion with Complainant’s trademark disrupting Complainant’s business.

 

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”.

 

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.

 

This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:

 

First of all, the Panel will determine whether or not the disputed domain names are identical or confusingly similar to the trademark in which Complainant has rights. Secondly, the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain names; and thirdly, the Panel will establish whether or not the disputed domain names have been registered and are being used in bad faith by Respondent.

 

Identical and/or Confusingly Similar

 

Complainant contends to be the owner of trademarks KASPAROV and GK KASPAROV in the United States of America, China, Denmark, the European Community, Hong Kong, among others, which have been continuously used since 1986 to identify electronic games and computerized games, namely a computerized chess game, caps, t-shirts, downloadable computer software in the nature of computerized chess games, among others.

 

a)    Existence of a Trademark or Service Mark in Which the Complainant has Rights

 

Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in a number of many jurisdictions of the world.

 

The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

 

When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.

 

However, the UDRP does not discriminate between registered and unregistered trademarks^[1] and thus, it is well established that a Complainant does not need to own a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.

 

In this case, Complainant proved its rights in the Trademark KASPAROV. Exhibits A to the Complaint includes, among others:

 

·        United States Trademark Registration No. 1,653,781 registered on August 13, 1991, for : “electronic games and computerized games, namely a computerized chess game”;

 

·        United States Trademark Registration No. 3,891,234 registered on December 14, 2010, for : “caps, t-shirts”; and

 

·        United States Trademark Registration No. 4,221,362 registered on October 9, 2012, for: “Downloadable computer software in the nature of computerized chess games”.

 

This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademarks and the exclusive right to use them in connection with the stated goods and services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive^[2].

 

Thus, Complainant established its rights in the trademark KASPAROV^[3].

 

Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark KASPAROV for purposes of Paragraph ¶ 4(a)(i) of the Policy.

 

b)   Identity or Confusing Similarity Between the Disputed Domain Name and the Complainant’s Trademark

 

Complainant alleges that the disputed domain names are identical to the trademark KASPAROV.

 

On the first place, before establishing whether or not the disputed domain names <kasparov2014.com>, <kasparov2014.net>, <kasparov2014.info> and <kasparov2014.org> are confusingly similar to Complainant’s Trademark KASPAROV, the Panel wants to point out that the addition of generic top-level domain (“gTLD”), i.e., “.com,” “.biz,” “.edu,” “.net,” “.info,” “.org”, cannot be considered when determining if the registered domain names are identical or confusingly similar to the registered trademark[4]. Neither the addition of country-code top-level domains (“ccTLD”), i.e., “.co,” “.de,” “.cr,” “.es,” nor the insertion of a gTLD has a distinctive function[5].

 

UDRP Panels have unanimously accepted that the inclusion of any gTLD, in a disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that:

 

“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.”

 

Furthermore, the Panel considers that the reproduction of the trademark KASPAROV, by the disputed domain names <kasparov2014.com>, <kasparov2014.net>, <kasparov2014.info> and <kasparov2014.org>, is sufficient ground to establish that the disputed domain names are confusingly similar to the trademark[6], mainly since the disputed domain names reproduce entirely Complainant’s trademark without any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain name is Complainant.

 

In fact, including the number “2014” at the end of the domain names is not sufficient to make the disputed domain names different from the trademark KASPAROV, since the number “2014” could be understood to refer to the year 2014.

 

Consequently, the number “2014” does not add distinctiveness or a source of origin to the domain names. This addition rather than distinguishing the disputed domain names from Complainant’s trademarks makes them confusingly similar to the trademarks. Hence, the disputed domain names should be deemed as confusingly similar to the registered trademarks[7].

 

In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain names are confusingly similar to Complainant’s trademarks and thus, the requirement set forth in Paragraph ¶ 4(a)(i) of the Policy is duly complied with.

 

Rights or Legitimate Interests

 

a)  Prima Facie Case.

 

Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring Complainant to prove the lack of rights or legitimate interests of Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of Respondent[8].

 

In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:

 

“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.

 

Therefore, a Complainant is required to make a prima facie case that Respondent lacks of rights or legitimate interests in the disputed domain names. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests[9].  If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.

 

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names <kasparov2014.com>, <kasparov2014.net>, <kasparov2014.info> and <kasparov2014.org> because of the following: i) Respondent has not been authorized by Complainant to use the Trademark KASPAROV in any manner; ii) Respondent is not commonly known by the disputed domain names; iii) Respondent has not used the disputed domain names in connection with a bona fide offering of goods and services, because the disputed domain names display sponsored links, hence, Respondent is not making a legitimate noncommercial or fair use of the disputed domain names; and iv) Respondent has not made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.

 

The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.

 

b)  Respondent’s Rights or Legitimate Interests in the Disputed Domain Name.

 

Paragraph 4(c) of the Policy includes an enunciative listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:

 

(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

In his response, Respondent refers merely to the element of bad faith and does not submit any argument or evidence to prove his rights or legitimate interests in the disputed domain names.

 

Nonetheless, Respondent states that the disputed domain names are going to be used as an anti-political/political satire website. However, there is no evidence of the use or preparation of use on this regard.

 

Thus, the Panel concludes that Respondent failed to prove his rights or legitimate interests in the disputed domain names <kasparov2014.com>, <kasparov2014.net>, <kasparov2014.info> and <kasparov2014.org>. Simply stating that the disputed domain names are going to be used as an anti-political/political satire website is not evidence of Respondent’s rights or legitimate interest in them. Since their registration, Respondent has had enough time to prepare and use the websites of the disputed domain names; notwithstanding, it has not use them or prove that it has been preparing them to be used.

 

Accordingly, Respondent failed to prove that before receiving the written notice of the Complaint he was using or preparing a website to use the disputed domain names in connection with a bona fide offering of goods.

 

On July 15, 2013, the Panel conducted searches ex officio in the search engines Google and BING to confirm that Respondent is not commonly known by the disputed domain names <kasparov2014.com>, <kasparov2014.net>, <kasparov2014.info> and <kasparov2014.org>[10], concluding that Respondent was not and has never been commonly known by the disputed domain names, and providing that Respondent fails to comply with that defense as set forth under Policy ¶ 4(c)(ii).

 

Respondent registered several domain names identical to Complainant’s trademark KASPAROV to capitalize on Complainant’s trademark and goodwill by attracting internet users to the disputed domain names where, allegedly, Respondent will host an anti-political/political satire website.

 

Respondent has not used the disputed domain names, but as asserted in his Response, he plans to release them on January 1, 2014. Consequently, Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. Failing to actively use the disputed domain names does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)[11].

 

Therefore, the second requirement of paragraph 4(b) of the Policy is met.

 

Registration and Use in Bad Faith

 

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

 

(1)   Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(2)   Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(3)   Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(4)   By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.

 

Respondent asserts that he acquired the disputed domain names for an anti-political/political satire website against an election campaign by Complainant for a position within the FIDE.

 

This Panel deems that the mere fact of knowingly incorporating a third-party’s well-known trademark in a domain name constitutes registration in bad faith[12].  See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez, WIPO Case No. D2011-1311, where the panel found: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.

 

As stated by the panel in State Farm Mut. Auto. Ins. Co. v. Sotelo, the requirement of use in bad faith does not require that it prove in every instance that a respondent is taking positive action.

 

The mere failure to make an active use of the disputed domain names <kasparov2014.com>, <kasparov2014.net>, <kasparov2014.info> and <kasparov2014.org> is indicative of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)[13].

 

The passive holding of the disputed domain names <kasparov2014.com>, <kasparov2014.net>, <kasparov2014.info> and <kasparov2014.org> in sum with Respondent’s registration of multiple domain names incorporating Complainant’s trademarks, establishes a pattern of bad faith registration. 

 

In addition, Respondent’s intended use of the disputed domain names will disrupt Complainant’s business or campaign. Respondent’s intended use will falsely suggest sponsorship and/or endorsement by Complainant of Respondent’s website and use of the disputed domain names.

 

Since Complainant’s trademarks are used along with the number “2014” “it is reasonable to conclude that many Internet users would suppose that the website, to which the disputed domain name resolves, has a connection with the Complainant”[14]. This conclusion might disrupt Complainant’s business, especially since Complainant and Respondent are part of the chess world.

 

Moreover, Respondent has the capacity to create an anti-political/political satire website against an election campaign by Complainant for a position within the FIDE without using third parties trademarks in the domain names.

 

Consequently, the disputed domain names incorporating Complainant’s trademarks along with the number “2014”, being currently inactive or used by third parties, such us, GoDaddy or www.blankwebpage.com, and the possible disruption of Complainant’s business, evidence bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) and (iv).

 

Therefore, the three elements of the Policy 4(a) are satisfied in the present case in respect to Respondent of the disputed domain names.

 

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 disputed domain names <kasparov2014.com>, <kasparov2014.net>, <kasparov2014.info> and <kasparov2014.org> be TRANSFERRED from Respondent to Complainant.

 

 

Fernando Triana, Esq. Panelist

Dated:  July 16, 2013