Adrian Lewis Peterson v. ChrisCabrera.com
Claim Number: FA1203001433185
Complainant is Adrian Lewis Peterson (“Complainant”), represented by Kevin S. Wiley of Gant & Hicks, PLLC, Texas, USA. Respondent is ChrisCabrera.com (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adrianpetersononline.com>, registered with Godaddy.Com, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 6, 2012; the National Arbitration Forum received payment on March 6, 2012.
On March 7, 2012, Godaddy.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <adrianpetersononline.com> domain name is registered with Godaddy.Com, Llc and that Respondent is the current registrant of the name. 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 March 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 2012 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@adrianpetersononline.com. Also on March 13, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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. 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 cancelled.
A. Complainant makes the following assertions:
1. Respondent’s <adrianpetersononline.com> domain name is confusingly similar to Complainant’s ADRIAN PETERSON mark.
2. Respondent does not have any rights or legitimate interests in the <adrianpetersononline.com> domain name.
3. Respondent registered and used the <<adrianpetersononline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is ADRIAN PETERSON, a professional football player for the Minnesota Vikings of the National Football League (“NFL”).
Respondent uses the <adrianpetersononline.com> domain name for a website that displays products related to Complainant and uses Complainant’s image.
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.
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.”).
Preliminary Issue: Non-UDRP Legal Arguments
Complainant argues various legal points pursuant to United States Trademark and Copyright Law in connection with this proceeding. The Panel notes that this dispute is governed by the UDRP and not by United States Trademark or Copyright Law. While Policy ¶ 4(k) allows the parties to litigate such legal matters in court, the Panel finds that they are not applicable to this arbitration proceeding under the UDRP. See Abbott Labs. v. Patel, FA 740337 (Nat. Arb. Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else).
Accordingly, the following analysis does not address any arguments made with respect to United States Trademark and Copyright Law.
Complainant is an NFL football player with the Minnesota Vikings and submits multiple supporting printouts from the NFL website. Complainant has been using the ADRIAN PETERSON mark since at least 2007. Complainant need not hold a trademark registration to demonstrate rights in the ADRIAN PETERSON mark under the common law. The Panel finds that Complainant has established rights in the ADRIAN PETERSON mark under Policy ¶ 4(a)(i) through continuous and ongoing use since 2007. See Bayless v. Cayman Trademark Trust, FA 648245 (Nat. Arb. Forum Apr. 3, 2006) (“The Panel concludes Complainant has proved that the RICK BAYLESS mark has become sufficiently connected to Complainant’s career as a chef and the public associates that career with Richard L. Bayless and the RICK BAYLESS mark.”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Respondent’s disputed domain name is confusingly similar to the ADRIAN PETERSON mark, as it includes the entire mark and merely removes the space and adds the generic top-level domain (“gTLD”) “.com” and the generic term “online.” The Panel finds that these changes are insufficient to differentiate the domain name from Complainant’s mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and thus the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant states that Respondent is not authorized by him, the NFL, or the NFL Players Association (NFLPA) to use the ADRIAN PETERSON mark or his likeness. The WHOIS information identifies the registrant of the disputed domain name as “ChrisCabrera.com.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant states that the disputed domain name resolves to a website that offers products for sale, which appear to be versions of Complainant’s own jerseys from various teams. The website includes a statement indicating that none of the jerseys shown on the website are for sale from the site, which is supported by the caption under each photograph of a jersey. Posted prominently across the top of the website is the phrase “Your #1 Adrian Peterson’s Fansite.” The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”).
The evidence indicates that the disputed domain name resolves to a fan website, which does not demonstrate rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Van Halen v. Morgan, D2000-1313 (WIPO Dec. 20, 2000) (finding that the respondent’s “expectation of developing a legitimate interest in the domain name,” which was used in connection with a fan-based website, was insufficient to establish rights or legitimate interests in the domain name); see also Harrison v. LOVEARTH.net, FA 97085 (Nat. Arb. Forum June 4, 2001) (“Respondent’s various uses of Complainant’s mark as fan sites does not substantiate Respondent’s rights or legitimate interests.”). Complainant holds the right to control the use of his own trademark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered the disputed domain name with the intent of preventing Complainant from reflecting his mark in a domain name. The use of the ADRIAN PETERSON mark and his likeness on the Internet prevents Complainant from using his likeness and mark as he sees fit, demonstrating bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant also argues that Respondent sells unauthorized merchandise from its website, in the form of Complainant’s jerseys. The Panel notes, however, that evidence submitted indicates that the jerseys are not actually for sale from the website, and Complainant has not demonstrated bad faith registration and use under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel nonetheless finds bad faith registration and use under Policy ¶ 4(a)(iii) because Respondent is not authorized by Complainant, the NFL, or the NFLPA to market products bearing Complainant’s mark, or to make any other use of Complainant’s mark. Respondent’s disputed domain name resolves to a website featuring products that are unlicensed versions of apparel legitimately offered through Complainant’s own commercial channels. The Panel finds that Respondent’s disputed domain name disrupts Complainant’s business, indicating bad faith registration and use under Policy ¶ 4(b)(iii). See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding bad faith registration and use where the <anneofgreengables.com> domain name resolved to an informational website that misled Internet users to believe that the website was affiliated with the ANNE OF GREEN GABLES mark); see also Spacey v. Alberta Hot Rods, FA 114437 (Nat. Arb. Forum Aug. 1, 2002) (finding bad faith registration and use of the <kevinspacey.com> domain name because the respondent lacked rights and authorization to use the complainant's name, “Kevin Spacey,” and where the respondent pointed the name to an unauthorized fan website).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <adrianpetersononline.com> domain name be CANCELLED.
Sandra J. Franklin, Panelist
Dated: April 23, 2012
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