WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sun International Resorts, Inc. v. Adrian Najar
Case No. D2000-1349
1. The Parties
Complainant is Sun International Resorts, Inc., a corporation of Florida, USA with a principal place of business in Fort Lauderdale, Florida. Respondent is Adrian Najar, a resident of California whose address is 858 3rd Avenue, PMB #306, Chula Vista, Ca 91911.
2. The Domain Names and Registrars
This dispute concerns the domain names <solkerzner.org> and <solkerzner.net>, whose registrar is Register.com, Inc.; and <solkerzner.ws>, registered with Global Domains International, Inc.
3. Procedural History
The Complainant submitted a Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("UDRP Policy") implemented by the Internet Corporation of for Assigned Names and Numbers ("ICANN") on October 24, 1999, under the Rules for the UDRP Policy implemented by ICANN on the same date ("UDRP Rules"). The Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center"), by e-mail on October 3, 2000, and in a hard copy sent by courier on October 5, 2000. On October 24, 2000, the Center performed its check for compliance with formal requirements. That same day, the Center issued a Complaint Deficiency Notification to the Complainant, advising that three four of the six seven domain names originally listed in the Complaint (<solkerzner,.co.uk>, <solkerzner.org.uk>, <solkerzner.co.za>, and <solkerzner.cc>) are not covered by the UDRP Policy, that the registration authority for the domain name <solkerzner.ws> is covered by the registration authority Global Domains International, Inc., rather than Register.com; that Complainant has not specified the trademarks or service marks in which it has rights and which formed the basis for the Complaint; and that the mutual jurisdiction election was deficient in relation to the domain name <solkerzner.ws>, as the registration authority for that domain is located in California. On October 30, 2000, Complainant submitted a revised Complaint by email and courier.
On November 9, 2000, the Center issued a further Complaint Deficiency Notification, noting the Complaint was still deficient in that the mutual jurisdiction election for the domain name <solkerzner.ws> had not been corrected, and that Section 10 of the amended Complaint (pertaining to communications) did not reflect that the Complaint had been transmitted to Register.com, Global Domains International, Inc. and Respondent.
On November 14, 2000, Complainant submitted a second amended Complaint containing amendments to paragraphs 10, 25, 28, and 33.
On November 30, 2000, the Center issued a Notification of Complaint and Commencement of Administrative Proceeding, forwarding the Complaint to the Respondent by courier, facsimile and email. A copy of the Complaint was also communicated to the registrars, Register.com and Website.ws , Global Domains International, Inc. as well as to ICANN. The Notification set the deadline for response to the Complaint as December 19, 2000.
On December 12, 2000, the Center received a Response from the Respondent. On January 17, 2001, the Center issued to the Panel a Request for Declaration of Impartiality and Independence. This Panel provided its Declaration of Impartiality and Independence to the Center on January 19, 2001. On January 18 22, 2001, the Center transmitted the case file to this Panel for review.
4. Factual Background
"Sol Kerzner" is the nickname of Mr. Solomon Kerzner, Chairman and Chief Executive Officer of Complainant. Complainant is a wholly owned subsidiary of Sun International Hotels, Ltd. ("SIHL"), a developer of resorts and casinos.
5. Partiesí Contentions
A. Complainant asserts that SIHL is recognized around the world for its resorts, including its flagship property, the Atlantis Beach and Casino Resort on Paradise Island in the Bahamas; that Complainantís President, Mr. Solomon Kerzner, has been recognized internationally for his international developments and business success, is a highly sought public speaker, and the recipient of international management awards; that as a result of his successful developments of mega-resorts around the world and noted business acumen, Mr. Kerzner has become an internationally recognized, high-profile public figure; that the name "Sol Kerzner" is recognized worldwide as identifying one of the worldís leading commercial developers and as the leader of Complainant Sun; that on or about May 16, 2000, Sun registered the domain name <solzerner.com>, "solkerzner" being functionally identical to the name of Complainantís Chairman; that Respondent registered the domain names <solkerzner.org>, <solkerzner.ws>, and <solkerzner.net> about July 8, 2000; and that persons encountering these domain names will believe they emanate from, are endorsed by or are licensed by Complainant.
Complainant also asserts that Respondent wrote Mr. Kerzner at Sun a letter reading as follows:
Please be advised that I am the registered owner of the following domains: SolKerzner.org, SolKerzner.ws (Worldsite), SolKerzner.net, SolKerzner.co.uk, SolKerzner.org.uk, SolKerzner.co.za, SolKerzner.cc. These domains have attracted a considerably large amount of demand and are currently been offered to several very interested individuals and organizations, who appreciate their value and long term investment. With your .com domain in place you acknowledge the importance E-commerce will have on the future growth of your business, also youíll appreciate with the escalating costs in purchasing unique Domain names, now is an excellent time to secure your Domains. Prior to negotiating the sale of the above domains with interested partyís, please advise if Sun International would have an interest to acquire the above domains at a very affordable price. (emphasis in original).
Complainant asserts that Respondent has not created a web page using the disputed domain names; that Respondent has no right or legitimate interest in respect of the domain names which are the subject of the Complaint; that Respondent is not a licensee of Complainant or Mr. Kerzner, nor has either party authorized Respondent to use "Kerznerís namesake"; that Respondent has never been identified or otherwise engaged in business under the domain name and is not engaged in a legitimate non-commercial or fair use of the domain name, nor is the domain name a nickname of Respondent or other member of his family, the name of a household pet or in any other way identified or related to a legitimate interest of Respondent.
Complainant asserts that a public figure need not register his or her name as a trademark or service mark to iensure the protection of common law trademark rights under United States trademark law, citing See Julia Fiona Roberts v. Russell Boyd, Case No. D2000-0210 (WIPO May 29, 2000); Jeanette Winterson v. Mark Hogarth, Case No. D200-0235 (WIPO May 22, 2000); Cho Young Pil v. ImageLand, Inc., case No. D2000-0229 (WIPO May 10, 2000).
Complainant asserts that Respondentís use of the domain name creates a false suggestion of a connection with Complainant under 15 U.S.C. ß1052(a) of the United States Lanham Act.
Complainant asserts that Respondent has registered and used the domain name in bad faith, as shown by Respondentís lack of any active web page and his direct solicitation to Mr. Kerzner. Complainant asserts that Respondent acquired the domain name exclusively for the purpose of selling it to Complainant for valuable consideration in excess of Respondentís out-of-pocket costs in registering the domain name. Complainant asserts that Respondent also seeks commercial gain by attempting to sell the domain name for profit to others, and has placed the domain name up for sale on the domain name marketplace web site <greatdomains.com>.
Complainant asserts that where no plausible explanation has been provided for adopting a domain name that corresponds to the name of a famous entertainer, this tribunal has found a violation of the Policy has been found. See Madonna v. Dan Parisi, Case No. D2000-0847 (WIPO October 12, 2000); Helen Folsade p/k/a/ Sade v. Quantum Computer Services, Inc., Case No. D2000-0794 (WIPO September 26, 2000).
Finally, Complainant asserts that Respondentís actions also violate the United States Anti-Cybersquatting Consumer Protection Act, which makes it unlawful and bad faith to register, offer for sale, or use a domain name that is identical to, or confusingly similar to, or dilutive of an existing mark.
Complainant requests that this panel issue a decision transferring the contested domain names to it.
B. Respondent asserts that when he registered the domain names, he was not aware there was any conflict with a registered trademark owned by Sun Resorts, International and/or Solomon Kerzner; that he communicated with the offices of Complainantís representatives requesting proof of ownership to any such trademark and has received no evidence; that a considerable time had elapsed between the time Complainant had registered <solkerzner.com> and the time Respondent registered his domain names, leading Respondent to believe that Complainant had no interest in these domains; that "Sol Kerzner" is not the legal name, but the "nickname" of "Mr. Solomon Kerzner of Sun International Resorts; that one does not have the automatic rights to oneís own name, and thus Respondent sees "no grounds that Mr. Solomon Kerzner holds the rights to Ďsolkerznerí above all others of this name including my hamster."
Respondent asserts that the domain names which are the subject of this proceeding "will not be used for any business purpose that would conflict or cause damage to Sun International Resorts or Mr. Solomon Kerzner"; and that in the event Respondent sells the domain names an agreement to this effect would be signed with the new Registrant.
6. Discussion and Findings
A. Applicable Policy Provisions
The UDRP Policy requires the Complainant to prove each of the following three elements, in order to prevail in this proceeding:
1. That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. That Respondent has no rights or legitimate interests in respect of the domain name; and
3. That the domain name has been registered and is being used in bad faith.
UDRP Policy, Section 4(a).
As has been pointed out by previous Panels, it is not sufficient to prevail that a Complainant prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bossman, Dispute No. D99-0001; Robert Ellenbogen v. Mike Pearson, Dispute No. D00-0001.
However, the UDRP Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [the Registrant has] registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) [the Registrant has] 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 [the Registrant has] engaged in a pattern of such conduct; or
(iii) [the Registrant has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the Registrant has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on [its] web site or location.
UDRP Policy, Section 4(b).
These circumstances are non-inclusive, and the Panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.
The Respondent may demonstrate rights or legitimate interests to the domain name by any of the following, without limitation:
(i) Before any notice of the dispute, Registrant's 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) Registrant, as an individual, business, or other organization has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) Registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
UDRP Policy, Paragraph 4.c.
B. Opinion of the Panel
The Panel finds that Complainant has not proved part (i) of the UDRP Policy test under Paragraph 4.a. Specifically, Complainant has proved neither that it has rights in the trademark or service mark "Sol Kerzner" or "Solomon Kerzner", or that such names have been used in a manner akin to trademark or service mark use.
Complainant has not asserted that it has used the name "Sol Kerzner" or "Solomon Kerzner" in any manner to promote any product or service. Rather, it has asserted that "Sol Kerzner" is the nickname of its Chairman and Chief Executive Officer. This is entirely unlike the cases cited by Complainant, in which the Complainants themselves have offered some product or service under the domain name at issue. See Roberts v. Boyd, Id. (actress rendering services under her name), Winterson v. Hogarth, Id. (author whose name appears on books), Pil v. Image Land, Inc., Id. (name of Korean pop music singer, used in connection with his music).
Complainant asserts that Mr. Kerzner has used his name in connection with motivational speeches. Such use certainly could be akin to trademark or service mark use. Yet Complainant has presented absolutely no evidence that the name "Sol Kerzner" or "Solomon Kerzner" has been used in this fashion. This Panel takes notice that a visit to the web site <solkerzner.com> owned by Complainant, links directly to a web site about Complainantís Atlantis resort. No mention is made on the web site of Mr. Kerzner, his motivational speeches, or any other services rendered in the name of Mr. Kerzner.
Likewise, an Internet search performed by this Panel for "Sol Kerzner," the results of which are annexed to this decision as Exhibit A, uncovered over 1,000 hits. This Panel reviewed the first 100 of these hits, none of which refer to Mr. Kerznerís motivational speeches, or any other use of his name in any way akin to trademark or service mark use. Even assuming there were some trademark or service mark rights established in the name "Sol Kerzner," which has not been shown, Complainant has also failed to prove that any such rights would be owned by Complainant, rather than by Mr. Kerzner himself. As noted above, Complainant has produced no evidence that products or services are offered under Mr. Kerznerís name, let alone that such products or services are attributed to Complainant rather than to Mr. Kerzner himself. This Panel notes that all the decisions relied on by Complainant for the proposition that personal names are the subject of the Policy were filed by the persons themselves, rather than any organization with which they are connected. See Roberts v. Boyd, Id. (in the name of actress Julia Roberts), Jeanette Winterson v. Hogarth, Id. (in the name of author Jeannette Winterson), Pil v. ImageLand, Id. (in the name of singer Cho Young Pil).
The most telling evidence that Complainant has not proven rights to the personal name "Sol Kerzner" is the fact that, as Complainant asserts, Respondentís offer to sell the domain names was addressed not to Complainant, but to Mr. Kerzner, at a company apparently related, but not identical to Complaintant. Absent some other evidence to the contrary, this Panel cannot grant relief to a Complainant who has not proven rights in the domain name at issue.
This Panel does note, however, that Complainant has made the sufficient evidentiary showing in connection with Parts (ii) and (iii) of the Policy test. There is no evidence whatsoever that Respondent is known by the names "Sol Kerzner"; that he has used or made demonstrable preparations to use the domain name in connection with the bona fide offering of goods or services; or that he is making a legitimate non-commercial or fair use of the domain name. Rather, Respondent has clearly registered the domain names with the sole intent of auctioning them off for sale.
Likewise, Respondentís registration of Mr. Kerznerís nickname in multiple TLDís, his offer to sell these domain names to Mr. Kerzner, coupled with his threat to auction them off to others if Mr. Kerzner did not purchase them, all evidence Respondentís bad faith registration of the domain names at issue.
Nevertheless, the Rules clearly require Complainant to prove all three elements of the test of Paragraph 4.a. in order to be entitled to relief. Complainant has failed to prove one of these elements, and therefore is not entitled to relief.
It should not be up to this Panel to perform investigations in order to buttress a Complainantís assertions. Where even these efforts failed to produce evidence supporting a Complainantís assertion under the Policy, the Panel must deny relief to the Complainant.
This Panel decides that the Complainant has not proven one of the three elements in Section 4(a) of the UDRP Policy in the present proceeding. Therefore, pursuant to Paragraph 4(I) of the UDRP Policy, and Paragraph 15 of the UDRP Rules, this Panel must deny the Complaint. The domain names shall remain registered to the Respondent.
Jordan S. Weinstein
Dated: February 13, 2001