WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Michael Gerard Tyson v. Dreamseller Inc. - In Stealth Mode, J. Williams DomainManager
Case No. D2011-1758
1. The Parties
The Complainant is Michael Gerard Tyson, also know as Mike Tyson, of Los Angeles, California, United States of America, represented by Tune Law, United States of America.
The Respondent is Dreamseller Inc. - In Stealth Mode, J. Williams DomainManager of Centreville, Virginia, United States of America (“U.S.”).
2. The Domain Name and Registrar
The disputed domain name <miketyson.com> (the “Disputed Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2011. On October 17, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On October 17, 2011, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2011.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on November 16, 2011. The Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant Michael Gerard Tyson a/k/a Mike Tyson (“Complainant”) owns a U.S. registered trademark, U.S. Registration No. 3,489,868 for MIKE TYSON, used in connection with a variety of services including toys, apparel, posters, video games, entertainment services, and other products (the “Mark”).
Respondent is, according to the WhoIs information and described by Complainant, “Dreamseller Inc. – in Stealth Mode.” The WhoIs information also lists Respondent’s registration as “J.Williams DomainManager”. The registration date is listed as April 23, 2004.
Respondent has not responded to the Complainant’s or the Center’s attempts to contact it, and therefore further facts are uncontested. These facts are described in Complainant’s contentions section below.
5. Parties’ Contentions
Complainant requests that the Disputed Domain Name be transferred to Complainant. First, Complainant argues that the Disputed Domain Name is identical to and confusingly similar to the Mark, and that Respondent makes no bona fide offering of goods or services in connection with the Disputed Domain Name.
Complainant describes Tyson as an “international megastar” and entertainer of “legendary status,” who rose to fame in the mid-1980s and has remained recognizable to the public to the present day. According to Complainant, Mike Tyson has established his rights to the use of the Mark through common law and secondary meaning since as early as 1987.
In support of this, Complainant has attached a detailed history of the use of the Mark from at least Mike Tyson’s professional boxing debut on March 6, 1985. Through various boxing accomplishments, endorsement and advertising exposure, and other media coverage, Complainant contends that the Mark has continuously been used by Complainant through the present day for the described services. The Mark was registered on the principal register of the U.S. Patent and Trademark Office on August 19, 2008.
Finally, Complainant contends that Respondent has singularly used the Disputed Domain Name as a parked domain that has not been used for any active or legitimate activity. Further, Complainant notes that Respondent has filed at least one other celebrity website. See Bundchen v. Dreamseller Inc – In Stealth Mode, FA 812001237167 (Nat. Arb. Forum January 15, 2009) (transferring the domain <giselebundchen.com> to the celebrity model complainant Gisele Bundchen).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(1) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trade mark or service in which Complainant has rights;
(2) that Respondent has no rights or legitimate interests in respect to the Disputed Domain name; and
(3) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has proven that the Disputed Domain Name is confusingly similar to the Mark, and that Complainant has a common law right to the Mark. Although Complainant did not file its registration until 2008, secondary meaning in a celebrity’s name can be established without a registration. Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598; Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210. First, Complainant’s ample and detailed showing of use from at least 1987 onward provides convincing evidence that Complainant had common law rights to the Mark prior to Respondent’s registration in 2004, and thereafter. Accordingly, the Panel finds that Complainant’s continuous use of the Mark since prior to 2004 establishes trademark rights in MIKE TYSON
Second, the Disputed Domain Name is identical to the Mark, except for a missing space between words and the addition of a “.com” domain name. These variances are not material under the Policy when comparing the disputed domain name to a trademark to assess identity or confusing similarity. See Daniel C. Marino, supra.
For these reasons, the Panel concludes that Complainant has proven that the Disputed Domain Name is identical or confusingly similar to Complainant’s valid trademark.
B. Rights or Legitimate Interests
Complainant has shown that Respondent has no right or legitimate interest in the Disputed Domain Name. The record shows that Respondent fails to meet the requirements of Paragraph 4(c) of the Policy.
First, Respondent has not presented evidence that it has made a bona fide offering of goods or services at <miketyson.com>. Indeed, Complainant cites Internet Archive copies of the site, showing that the Disputed Domain Name has consistently been parked, and its only commercial use has been as a parked page. At best, the page has been used to link to unrelated keywords in an apparent attempt to commercially benefit from visitors to the website. Such a use is not legitimate under the Policy. See, e.g., Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560 (linking a celebrity domain name to a separate website for commercial gain found to not be a legitimate right or interest).
Second, Respondent has not shown, and there is no evidence in the record to infer, that Respondent is commonly known by the Disputed Domain Name.
Third, there is no evidence before the Panel that Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. Indeed, as noted above, the only facts available support that Respondent intended to use the Disputed Domain Name to trade on Complainant’s celebrity name recognition. Further, Respondent registered the Disputed Domain Name in 2004, long after 1987, after which point Complainant had established a valid and continuous use of the Mark.
Complainant has provided a history of the pages displayed by Respondent at the Disputed Domain Name, and the Panel agrees that Respondent has failed to establish any legitimate use in the name.
For these reasons, the Panel concludes that Respondent has no rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
For similar reasons to those described above, the Panel finds that Respondent registered and used the Disputed Domain Name in bad faith.
Respondent’s bad faith purpose is clear from, at least, Respondent’s registration of a known celebrity name, and failure to develop the website for any good faith use. As described above, Respondent registered the domain in 2004, long after Complainant’s common law rights had been established and in continuous use.
Thereafter, Respondent failed to develop the website in the approximately seven years since it was registered. Failure to develop a website for a good faith purpose can be evidence of bad faith. Brown & Williamson Tobacco Corp., et al. v. Dennis Wilkins, WIPO Case No. D2001-0865 (finding bad faith where Respondent did not develop an active website or make good faith use of the domain name for three years).
Finally, a “pattern of conduct” of registering domains “in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name” is evidence of bad faith under paragraph 4(b) of the Policy. Thus, the evidence put forth by the Complainant that Respondent has engaged in at least one other attempt to trade on a celebrity name is evidence of a bad faith purpose. See Bundchen, supra.
For the foregoing reasons, this Panel finds that the Disputed Domain Name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <miketyson.com>, be transferred to the Complainant.
Maxim H. Waldbaum
Dated: November 18, 2011