Eric Bischoff v. Kentech, Inc.
Claim Number: FA0512000611723
Complainant is Eric Bischoff (“Complainant”), represented by Scott M. Hervey, of Weintraub Genshlea Chediak Law Corporation, 400 Capitol Mall, 11th Floor, Sacramento, CA 95814. Respondent is Kentech, Inc. (“Respondent”), 1st Floor Muya House Kenyatta, P.O. Box 4276-30100, Eldoret, RiftValley 30100, KE.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ericbischoff.com>, registered with Domain Contender, Llc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 20, 2005.
On December 20, 2005, Domain Contender, Llc confirmed by e-mail to the National Arbitration Forum that the <ericbischoff.com> domain name is registered with Domain Contender, Llc and that Respondent is the current registrant of the name. Domain Contender, Llc has verified that Respondent is bound by the Domain Contender, Llc 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 December 20, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 9, 2006 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@ericbischoff.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 11, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <ericbischoff.com> domain name is identical to Complainant’s ERIC BISCHOFF mark.
2. Respondent does not have any rights or legitimate interests in the <ericbischoff.com> domain name.
3. Respondent registered and used the <ericbischoff.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Eric Bischoff, has been a dominant force in the professional wrestling industry for more than two decades, dating back as early as 1982. Complainant has been a central on-screen character of two of cable television’s highest rated programs, World Wrestling’s WCW Monday Nitro on cable network TNT and World Wrestling Entertainment’s WWE Raw on cable network USA, for over ten years. As a result of Complainant’s appearances on these programs, Complainant is recognizable by millions of professional wrestling fans across the country and around the world.
Complainant was the driving force behind the emergence of World Championship Wrestling (“WCW”), and was responsible for it becoming the highest rated wrestling organization in the industry. Complainant was responsible for signing many of professional wrestling’s top names the WCW, including Hulk Hogan, Randy Savage, Kevin Nash, and Scott Hall.
Additionally, Complainant created one of the most popular shows in professional wrestling, WCW’s Monday Nitro. More than 10 million viewers watched WCW’s Monday Nitro each week. Complainant created and produced WCW’s Monday Nitro, and was a regular on-screen feature of that show.
Respondent registered the <ericbischoff.com> domain name on June 11, 2005. Respondent is using the disputed domain name to redirect Internet users to a website featuring links to a wide variety of third-party services and products unrelated to Complainant, as well as a link to sell the disputed domain name registration.
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 ERIC BISCHOFF mark has acquired sufficient secondary meaning to establish common law rights based on Complainant’s fame and reputation associated with his professional wrestling career, and Complainant’s television exposure associated with Complainant’s television shows. Complainant’s professional wrestling career began more than twenty years before the registration of the disputed domain name. The Panel concludes that Complainant has proved that the ERIC BISCHOFF mark has become sufficiently connected to Complainant’s professional wrestling career that the public associates that professional wrestling career with Complainant and the ERIC BISCHOFF 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 <ericbischoff.com> domain name is
identical to Complainant’s ERIC BISCHOFF mark because the domain name features
Complainant’s mark in its entirety, omits the space between the terms “eric”
and “bischoff,” and adds the generic top-level domain “.com” to the mark. The Panel finds that such minor alterations
to Complainant’s mark are 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 <ericbischoff.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 <ericbischoff.com> domain name is identical to Complainant’s ERIC BISCHOFF 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), or 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 <ericbischoff.com> domain name. Thus, Respondent has not established rights or legitimate interests in the <ericbischoff.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 <ericbischoff.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 ERIC BISCHOFF 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)).
Moreover, Respondent’s offer to sell the disputed domain name registration evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
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 <ericbischoff.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 25, 2006
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