S.M.S.I., Inc. v American Computer Company

The above entitled matter came on for an administrative hearing on May 26, 2000, before the undersigned on the Complaint of Garry Kasparov, hereafter "Complainant", against American Computer Company, hereafter "Respondent". Complainant was represented by David A. Barrett, Esq., Latham & Watkins, 1001 Pennsylvania Avenue NW, Washington D.C. 20004. Respondent was represented by Daniel L. Grossman, Esq., 11 Commerce Drive, Cranford, NJ 07016-3515. Upon the written submitted record, the following DECISION is made:

Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a)^[1] and Rule 4(c): April 24, 2000

After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent on April 24, 2000, in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified Network Solutions, Inc. (Network Solutions), the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. Respondent submitted a response to The Forum within twenty (20) days pursuant to Rule 5(a).

On June 13, 1996, Respondent registered the domain name "Kasparov.com" with Network Solutions, the entity that is the Registrar of the domain name. On April 24, 2000, Network Solutions verified that Respondent is the Registrant for the domain name "Kasparov.com", and that further by registering its domain name with Network Solutions, Respondent has agreed to resolve disputes regarding its domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.

1. That Complainant is named Kasparov and is the owner of a trademark that includes the term “Kasparov”.

2. That Complainant is the owner of at least 1 trademark registration worldwide for “Kasparov”.

3. That in June, 1996, Respondent registered the Kasparov.com domain name on his own initiative, or at Complainant’s request, for the benefit of Complainant.

4. That Complainant has a substantial financial investment in his business as the world’s top ranked chess player and related chess activities for profit and not-for-profit.

5. That Respondent registered and used the domain name “Kasparov.com” in bad faith and has no rights to legitimate interests in respect to said domain name. The following is evidence of Respondent’s bad faith:

a. That Respondent is holding the Kasparov.com domain name hostage to enforce an alleged debt.

b. Respondent has used the domain name as the portal to a website which without permission associates Mr. Kasparov as an endorser of Respondent’s products and services.

6. Complainant's prayer for relief requests that the domain name "Kasparov.com" be transferred from Respondent to Complainant.

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:

1. The domain name "Kasparov.com", registered by Respondent on June 13, 1996 with Network Solutions, is identical and confusingly similar to Complainant’s name and trademark in which Complainant has rights and to which Respondent has no right or legitimate interests.

2. Respondent admitted he registered and acquired the domain name "Kasparov.com" primarily for Complainants’ purposes, but now uses the domain name as a portal to a website in which Complainant is criticized and condemned for his commercial conduct. Passing no judgment on Respondent’s claims of complainants’ indebtedness (which is not properly addressed in this proceeding), Respondent’s registration and use of “Kasparov.com” is in bad faith.

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "Kasparov.com" REGISTERED BY RESPONDENT BE TRANSFERRED TO COMPLAINANT.

^[1] Any reference to “Rule” or “Rules” are to ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy and Uniform Domain Name Dispute Resolution Policy as supplemented by the National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain Resolution Policy.