National Arbitration Forum

 

DECISION

 

Matthew S. Leinart v. The Rothmann Group

Claim Number: FA0703000949681

 

PARTIES

Complainant is Matthew S. Leinart (“Complainant”), represented by Michael Leventhal, of Praxis, LLP, 11700 National Blvd., Suite L, #106, Los Angeles, CA 90064.  Respondent is The Rothmann Group (“Respondent”), represented by Harry Rothmann, 1276 N. Wayne Street, Suite 1300, Arlington, VA 22201.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mattleinart.com>, registered with Enom, Inc.

 

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.

 

David A. Einhorn appointed as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 29, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 2, 2007.

 

On March 30, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <mattleinart.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 April 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 26, 2007 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@mattleinart.com by e-mail.

 

A timely, but unsigned, Response was received on April 26, 2007.

 

A timely Additional Submission was received from Complainant and determined to be complete on May 1, 2007.

 

On May 9, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.

 

On May 16, 2007, the Panel issued an Order for Respondent to submit a signed (and therefore certified) Response by Monday, May 21, 2007.

 

Respondent submitted a signed Response on Monday, May 21, 2007.

 

On May 23, 2007, the Panel issued an Order pursuant to Rule 12 of ICANN’s Uniform Dispute Resolution Policy for Complainant to provide documentary evidence (if any) in support of certain of its contentions by no later than May 29, 2007.

 

Complainant’s Additional Submission in response to the May 23, 2007 Order was timely received on Tuesday, May 29, 2007.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant makes the following assertions:

1.    Complainant, Matthew S. Leinart, a prominent professional football player (now playing for the Arizona Cardinals), has common law rights in his name.  Complainant further contends that Respondent’s domain name <mattleinart.com>, which Respondent is using as a fan site, is confusingly similar to Complainant’s name.

2.    Complainant contends that Respondent does not have any rights or legitimate interests in the <mattleinart.com> domain name.

3.    Complainant contends that Respondent registered and used the <mattleinart.com> domain name in bad faith.

 

B. Respondent

Respondent argues that while Complainant is now a well-known professional athlete, he was not well known when the domain name was originally registered – in late 2000.  At that time, Complainant was still a high school senior, was not even a well-known amateur athlete, and had little or no presence in the media.  Respondent argues that Complainant should not have rights under the Policy since his name did not have commercial recognition at the time of registration of the domain name.

 

C. Additional Submissions

Complainant claims, without supporting evidence, that he had attracted significant press coverage prior to and around the time of Respondent’s registration of the domain name.  Complainant notes that in an open letter to him, Respondent wrote that he originally registered the domain name because “I thought you might be a star someday.”

 

FINDINGS

This Panel finds that Complainant has not met his burden of showing that he was a well-known athlete at the time that Respondent registered the disputed domain name. 

 

The Panel issued an Order on May 23, 2007 requesting, inter alia, that Complainant provide any documentary evidence in support of its contention that Mr. Leinart was very well known and had attracted significant press coverage prior to and around the time of Respondent’s registration of the domain name at issue.  In response to this Order, Complainant submitted a Declaration of his father, Robert Leinart, claiming that there were numerous newspaper clippings relating to Matt Leinart and his football skills throughout his junior year (1999-2000) and through the summer of 2000, before his senior year.  As with his prior submissions, these claims were bare allegations and neither Complainant nor his father attached copies of these alleged newspaper clippings.

 

Further, Complainant’s own Additional Submission draws attention to a letter to Mr. Leinart from Respondent indicating that he registered the domain because “I thought you might be a star someday.”  This letter provides contrary evidence to Complainant’s contention that Matt Leinart was already well known at the time of registration of the disputed domain name.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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;

(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.

 

To prevail under Policy ¶ 4(a)(i), Complainant must establish that it had rights predating Respondent’s registration of the disputed domain name.  See Brooke Bollea, a/k/a Brooke Hogan v. McGowen, D2004-0383 (WIPO June 29, 2004) (finding for Respondent because Complainant, the daughter of Hulk Hogan, had not proven that she had been a public figure/celebrity at the time of the registration of the <brookehogan.com> domain name).

 

Panelists have generally found that an individual’s name may serve as a mark sufficient to invoke the Policy when the name has been used as a commercial identifier and where the name has gained sufficient fame or notoriety to serve a trademark function.  See, e.g., Brosnan v. Network Operations Ctr., D2003-0519 (WIPO Aug. 27, 2003).

 

Complainant has not provided adequate evidence to establish that Matt Leinart’s name had gained such fame or notoriety at the time of registration of the disputed domain name.  (Compare Brosnan, supra, in which the complainant established the fame of his name by providing evidence of the number of motion pictures which he starred in as well as the total box office sales from these motion pictures.)

 

As the Panel has determined that Complainant has failed to satisfy Policy ¶ 4(a)(i) because it does not have common law rights in the MATT LEINART mark that predate Respondent’s registration of the <mattleinart.com> domain name, the Panel need not decide the other two elements of the Policy.  See Wigwam Mills, Inc. v. Tex. Int’l Prop. Assocs., FA 903891 (Nat. Arb. Forum Mar. 20, 2007) (deciding not to inquire into the respondent’s rights or legitimate interests, or its registration and use in bad faith, where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

 

DECISION

As Complainant has failed to establish the requirements of Policy ¶ 4(a)(i), Complainant’s requested relief is hereby DENIED.

 

 

 

David A. Einhorn, Panelist
Dated:  June 11, 2007

 

 

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