WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Terrell Eldorado Owens v. Aran Smith d/b/a Sportsphenoms.com and/or Sportsphenoms
Case No. D2003-0463
1. The Parties
The Complainant is Terrell Eldorado Owens, of North Carolina, United States of America, represented by R. David Joseph of United States of America.
The Respondent is Aran Smith d/b/a Sportsphenoms.com and/or Sportsphenoms, of San Francisco, United States of America.
2. The Domain Name and Registrar
The disputed domain name <terrellowens.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 16, 2003. On June 18, 2003, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On June 18, 2003, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, zone, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 June 25, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on July 17, 2003.
The Center appointed Andrew Mansfield as the sole panelist in this matter on July 25, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The language of this proceeding is English.
4. Factual Background
The Complainant in this matter is a professional football player for the San Francisco Forty-Niners. He has appeared in the feature film, "Any Given Sunday" and is a spokesperson for various products.
Respondent registered the domain name on November 30, 1999.
5. Partiesí Contentions
Complainant alleges that he has achieved celebrity through his efforts as a professional football player and in the entertainment industry. Complainantís name has achieved secondary meaning and association with Complainant and is a common law trademark. Complainant states that it has not authorized Respondent to use the mark "Terrell Owens."
Respondentís bad faith may be discerned from a history of registering the names of professional athletes as domain names and then attempting to sell such names to the athletes or divert consumers who seek information on those athletes.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Other panels have properly found that the names of professional athletes may become common law trademarks and therefore may be protected under the Policy. Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598; Serena Williams and Venus Williams v. Eileen White Byrne and Allgolfconsultancy, WIPO Case No. D2000-1673. Of course, decisions finding that athletes may have common law trademark rights in their names are a subset of the cases that find that various celebrities and businesspeople may have such rights. See Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210.
In this case, Terrell Owens is a widely-known professional United States athlete. He has been a professional athlete for seven years. The Panel finds that Terrell Owens has achieved secondary meaning associated with Complainant and is, therefore, a common law trademark.
A. Identical or Confusingly Similar
The domain name is identical to Complainantís trademark.
B. Rights or Legitimate Interests
Respondent did not reply to the Complainantís contentions. In addition, the Panel finds no rights or legitimate interests that Respondent might assert in the domain name.
C. Registered and Used in Bad Faith
Complainant draws the attention to the fact that Respondent registered at least one other professional athleteís common law trademark as a domain name. In that case, Shane Battier v. Sportsphenoms, a/k/a Aran Smith, WIPO Case D2001-1418, the proceeding was terminated prior to decision.
The Policy paragraph 4(b) sets forth four indications of bad faith registration and use of domain names. The Panel finds that Respondentís bad faith is indicated by the prior registration of an athleteís domain name. The facts of the case appear to suggest two of the indications set forth in that paragraph:
(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.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Dated: August 9, 2003