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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Daniel C. Marino, Jr. v. Video Images Productions, et al.
Case No. D2000-0598
1. The Parties
Complainant is Daniel C. Marino, Jr., professionally known as Dan Marino, who is a professional American football player.
Respondents are Video Images Productions, with a principal place of business at 13280 NW Freeway, Suite F407, Houston, Texas 77040 USA; Edgar Carrillo with a principal place of business at Video Images Productions, 13280 NW Freeway, Suite F407, Houston, Texas 77040 USA; and Greg Rice with a principal place of business at Rackspace.com, 112 E. Pecan, Suite 600, San Antonio, Texas 78205, USA.
2. The Domain Name and Registrar
The domain name at issue is "danmarino.com" (the "Domain Name"). The registrar is CORE, Internet Council of Registrars, World Trade Center II, 29, Route De Pre-Bois, CH-1215 Geneva, Switzerland.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainant via email on June 13, 2000. On June 15, 2000, the Center received hardcopy of the Complaint and sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.
On June 15, 2000, the Center advised Complainant of the need to amend his Complaint. On June 16, 2000, the amendment to the Complaint was received by the Center. On June 19, 2000, the Center acknowledged receipt of the amendment.
On June 15, 2000, the Center sent to the Registrar a request for verification of registration data. On June 26, 2000, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.
The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On June 28, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondents together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On July 19, 2000, the Center notified the Respondents of their default.
After the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page, Esq. (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Presiding Panelist.
4. Factual Background
Dan Marino is a professional athlete and has been the quarterback for the Miami Dolphins professional football team for 17 years. He is the most prolific passer in National Football League ("NFL") history and is considered by sports commentators to be among the greatest quarterbacks ever to play in the NFL. Widely recognized as a quarterback with "Hall of Fame credentials", during his career he completed 4,967 passes for 61,361 yards and 420 touchdowns, all NFL records. Dan Marino still holds single season league passing records for his performance during his second season when he threw for 5,084 yards and 48 touchdowns. He is one of the most recognized names in American sports. He has been widely featured throughout the world in sports publications and has hosted many television programs, including his own sports television show. He has also appeared in several movies, including Ace Ventura with Jim Carrey and Holy Man with Eddie Murphy. He recently signed an agreement to serve as a NFL commentator for HBO. Furthermore, he is widely recognized for his charitable contributions and activities, including the Dan Marino Foundation and Dan Marino CHILDNETT™, which provides medical care to children with special neurological needs. In 1999 he received the NFL’s Man of the Year Award, the only league-sponsored award recognizing player community service and excellence on the field. He has been featured on the cover of all major sports publications, including numerous times on Sports Illustrated and twice on the international magazine GQ.
Dan Marino previously authorized, registered and helped create the website www.danmarino.com to which the domain name resolves. On May 3, 2000, Respondents registered the Domain Name, after the authorized registration unintentionally lapsed. The Respondents registered the Domain Name without Complainant’s authorization, knowledge or approval.
5. Parties’ Contentions
A. Complainant contends that he has a trademark in DAN MARINO and that the
Domain Name is identical with and confusingly similar to the DAN MARINO trademark pursuant to the Policy paragraph 4(a)(i).
Complainant contends that Respondents have no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondents registered and are using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).
B. Respondents do not contest that Complainant assertion that he has a trademark in DAN MARINO or that the Domain Name is identical with or confusing similar the claimed trademark.
Respondents do not contest Complainant’s assertion that Respondents lack rights or legitimate interest in the Domain Name.
Respondents do not contest Complainant’s assertion that the registration and use of the Domain Name is in bad faith.
6. Discussion and Findings
Even though Respondents have failed to file a Response or to contest Complainant’s assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Identity or Confusing Similarity.
Complainant contends that he has a trademark in DAN MARINO and that the Domain Name is identical with and confusingly similar to the DAN MARINO trademark pursuant to the Policy paragraph 4(a)(i).
Complainant has no registered trademark in "Dan Marino." However, the Sole Panelist finds that the name "Dan Marino" is capable of acquiring secondary meaning. See Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210.
The Panel further decided that registration of her name as a registered trademark or service mark was not necessary and that the name "Julia Roberts" has sufficient secondary association with Complainant that common law trademark rights do exist under United States trademark law.
See also, Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235; Cho Yong Pil v. ImageLand, Inc., WIPO Case No. D2000-0229: Hunton & Williams v. American Distribution Systems, Inc. et al., WIPO Case No. D2000-0501.
Complainant has evidence that he has spent 17 years as the quarterback for the Miami Dolphins, has been a sports commentator, has acted in movies and has been recognized for community service. Complainant’s evidence is sufficient for the Sole Panelist to conclude that the name "Dan Marino" has acquired sufficient secondary meaning within the American sports, entertainment and public service communities to constitute a valid common law trademark.
The domain name "danmarino.com" contains the identical phrase as the trademark DAN MARINO.
Therefore, the Sole Panelist finds Complainant has rights in the trademark DAN MARINO and that the Domain Name is identical with or confusingly similar to the DAN MARION trademark pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest.
Th Policy paragraph 4(c) allows three methods for Respondents to demonstrate that it has rights or a legitimate interest in the Domain Names:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondents have no authorization or license to use the DAN MARINO trademark and can show none of the circumstances contemplated by the Policy paragraph 4(c).
Respondents offer no evidence of the applicability of any of the criteria in the Policy paragraph 4(c).
In fact, in light of the uniqueness of the name DanMarino.com, which is virtually identical to the Complainant’s personal name and common law trademark, it would be extremely difficult to foresee any justifiable use that the Respondent could claim. On the contrary, selecting this name gives rise to the impression of an association with the complainant, which is not based in fact. See Telstra Corporation Limited v. Nuclear Marshmallows Case No. D2000-0003.
Therefore, the Sole Panelist finds that Respondents have no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
The Policy paragraph 4(b) sets forth four criteria for bad faith registration and use of domain names:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Sole Panelist finds that Respondent has engaged in activities meeting the criteria under the Policy paragraph 4(b)(ii) and (iv) for bad faith:
(ii) Respondents have registered the Domain Name primarily for the purpose of disrupting the business of Complainant in his own online ventures. Respondents appear to have registered the Domain Name in order to prevent Complainant from using the DAN MARINO trademark in a corresponding domain name himself. According to Network Solutions, Inc.’s Whois database, Respondents have registered a pattern of at least 50 other domain names.
(iv) The Domain Name resolves to a website at www.danmarino.com which is automatically linked to a site administered and operated by Respondents, www.multicenter.com, which provides a variety of sports, entertainment, trivia and other special programs and includes links to vendors of Dan Marino related products. Thus, Respondents intentionally attempt to attract visitors to www.danmarino.com for commerce. Dan Marino is not connected with these vendors, nor does he have a relationship of any kind with Respondents. Respondents are attracting users by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of their website, its products or its services.
Therefore, the Presiding Panelist finds that Respondents have registered and used the Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).
The Sole Panelist concludes (a) that the domain name "danmarino.com" is confusingly similar to the trademark DAN MARINO, (b) that Respondents have no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name be transferred to Daniel C. Marino, Jr.
Richard W. Page
August 2, 2000