Emmitt J. Smith, III v. EMMITTSMITH.COM
c/o Whois IDentity Shield
Claim Number: FA0509000555486
Complainant is Emmitt J. Smith III (“Complainant”), represented
by John A. Thomas, of Glast, Phillips & Murray, P.C., 13355 Noel Road, Suite 2200, Dallas, TX 75140. Respondent is EMMITSMITH.com c/o Whois IDentity Shield (“Respondent”),
141-757 W. Hastings St., Suite #777, Vancouver, BC, Canada, V6C 1A1.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <emmittsmith.com>, registered with Nameview,
Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on September
8, 2005; the National Arbitration Forum received a hard copy of the Complaint
on September 12, 2005.
On
September 16, 2005, Nameview, Inc. informed the National Arbitration Forum by
email that Respondent’s registration of the <emmittsmith.com>
domain name had expired or been deleted by the registrant during the course of
this dispute. Complainant has renewed
or restored the domain name under the same commercial terms as Respondent. Accordingly, the <emmittsmith.com>
domain name has been placed in registrar hold and registrar lock status, the
WHOIS contact information for Respondent has been removed, and the WHOIS entry
indicates that the domain name is subject to dispute pursuant to EDDP ¶
3.7.5.7. Nameview, Inc. has verified
that Respondent is bound by the Nameview, 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
September 21, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 11, 2005 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@emmittsmith.com by
e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
October 14, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <emmittsmith.com>
domain name is identical to Complainant’s EMMITT SMITH mark.
2. Respondent does not have any rights or
legitimate interests in the <emmittsmith.com> domain name.
3. Respondent registered and used the <emmittsmith.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Emmitt Smith, III, was a professional football player in the National Football
League (“NFL”). Complainant began his
NFL career with the Dallas Cowboys, played for two years with the Arizona
Cardinals, and ended his career with the Dallas Cowboys in 2005. Complainant earned several honors in his
professional football career, including, but not limited to, 1990 Rookie of the
Year, 3-time Super Bowl Champion, NFL Most Valuable Player 1993, All-Time NFL
Rushing Yards Leader and All-Time NFL Rushing Touchdown Leader.
Respondent
registered the <emmittsmith.com> domain name on May 17, 2001. Respondent is using the disputed domain name
to redirect Internet users to its commercial website featuring links to
third-party businesses not associated with Complainant.
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. The Panel is entitled to
accept all reasonable allegations and inferences set forth in the Complaint as
true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the
respondent’s failure to respond allows all reasonable inferences of fact in the
allegations of the complaint to be deemed true); 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.”).
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.
Complainant
asserts that the EMMITT SMITH mark has acquired sufficient secondary meaning to
establish common law rights based on Emmitt Smith’s fame and reputation
associated with his NFL career.
Complainant’s NFL career began eleven years before the registration of
the disputed domain name. The Panel
concludes that Complainant has proved that the EMMITT SMITH mark has become
sufficiently connected to Emmitt Smith’s NFL career that the public associates
that NFL career with Emmitt Smith and the EMMITT SMITH mark. See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that
trademark registration was not necessary and that the name “Julia Roberts” has
sufficient secondary association with the complainant that common law trademark
rights exist); see also Estate of
Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (“A person
may acquire such a reputation in his or her own name as to give rise to
trademark rights in that name at common law …”); see also CMG Worldwide, Inc. v. Page, FA 95641
(Nat. Arb. Forum Nov. 8, 2000) (finding that Princess Diana had common law
rights in her name at her death and that those common law rights have since
been transferred to the complainant, the representative of Princess Diana’s
estate).
Respondent’s <emmittsmith.com>
domain name is identical to Complainant’s EMMITT SMITH mark because the domain
name features Complainant’s mark in its entirety, omits the space between the
words “emmitt” and “smith,” and adds the generic top-level domain “.com” to the
mark. The Panel finds that such a minor
addition to Complainant’s mark is insufficient to negate the identical aspects
of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain
names”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330
(Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle
that generic top-level domains are irrelevant when conducting a Policy ¶
4(a)(i) analysis”); see also Nev. State Bank v. Modern Ltd. – Cayman Web
Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established
that the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <emmittsmith.com>
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to prove that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, the Panel assumes that Respondent does not have
rights or legitimate interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that, where the complainant has asserted that respondent does not have
rights or legitimate interests with respect to the domain name, it is incumbent
on respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that, under certain circumstances, the mere assertion by the complainant that
the respondent does not have rights or legitimate interests is sufficient to
shift the burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Additionally,
the <emmittsmith.com> domain name is identical to Complainant’s
EMMITT SMITH mark and is used to redirect Internet users to a website featuring
links to a wide variety of third-party services and products unrelated to
Complainant. The Panel finds that
Respondent’s use of a domain name that is identical to Complainant’s mark to
divert Internet users to a website that links to third-party websites, and for
which Respondent presumably receives click-through fees, is not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i); nor is it a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop,
FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s
diversionary use of the complainant’s mark to attract Internet users to its own
website, which contained a series of hyperlinks to unrelated websites, was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain names); see also Black
& Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June
24, 2002) (holding that the respondent’s use of the disputed domain name to
redirect Internet users to commercial websites, unrelated to the complainant
and presumably with the purpose of earning a commission or pay-per-click
referral fee did not evidence rights or legitimate interests in the domain
name).
Moreover,
Respondent has offered no evidence and there is no evidence in the record
suggesting that Respondent is commonly known by the <emmittsmith.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the <emmittsmith.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where the respondent was not commonly known by the mark
and never applied for a license or permission from the complainant to use the
trademarked name); see also Gallup Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that the respondent does not have rights in a domain name when the respondent
is not known by the mark); see also
Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5,
2001) (finding no rights or legitimate interests because the respondent was not
commonly known by the disputed domain name nor was the respondent using the
domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The <emmittsmith.com>
domain name resolves to a website that features links to a wide variety of
third-party services and products unrelated to Complainant. The Panel presumes that Respondent receives
commissions for diverting Internet users to third-party websites via the search
engine and links located at Respondent’s website. Additionally, Respondent’s use of Complainant’s distinctive
EMMITT SMITH mark in the domain name creates a likelihood of confusion and
suggests an attempt to attract Internet users to Respondent’s website for
Respondent’s commercial gain. The Panel
finds that this is evidence of Respondent’s bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”); see also G.D. Searle &
Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that the respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see
also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if the respondent profits from its diversionary use of the
complainant's mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <emmittsmith.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
October 26, 2005
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