WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roy Jones, Jr. v. United Intelligence Ltd
Case No. D2008-0527
1. The Parties
The Complainant is Roy Jones, Jr., Encino, California, United States of America (“US”), represented by Aaronson and Aaronson, United States of America.
The Respondent is United Intelligence Ltd, Werrington Downs, Australia.
2. The Domain Name and Registrar
The disputed domain name <royjonesjr.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2008. On April 8, 2008, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On April 9, 2008, Fabulous.com 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”), 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 April 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2008.
The Center appointed Adam Samuel as the sole panelist in this matter on May 21, 2008. 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 Panel examined the complaint and found that on two of the three elements required for the Complaint to succeed, the Complainant had presented a plausible case but failed to provide sufficient evidence to support it. In particular, the original Complaint asserted that the Complainant had common law rights in the name ROY JONES JR without explaining why this should be the case or identifying the Complainant as a person likely to be entitled to such rights. The Panel, therefore, made an order in the following terms:
“In this case, the Complainant alleges that he is entitled to common law trademark rights in relation to his personal name, Roy Jones Jr. He also alleges bad faith by the Respondent in the use and registration of the domain name in dispute. The Complainant has not provided any evidence to support either claim.
The Panel is aware of a well-known boxer by the name of Roy Jones Jr. However, no evidence has been submitted that the Complainant is that boxer. The Complainant’s name “Roy Jones” is reasonably common in English-speaking countries.
There are no printouts of the website to which the domain name resolves. Currently, the site appears to be blocked or unused.
The Panel orders the Complainant to provide evidence to support its contention that it is entitled to the Common law trademark rights indicated. The Panel also orders the Complainant to provide any evidence to support its claim that the disputed domain name was registered and is being or has been used in bad faith.
This material must be provided within 14 days of this Order or the Panel will decide this case on the basis of the information and submissions made to date. During this period, the Respondent may provide any evidence or submissions on the points referred to here.”
The Complainant’s lawyer responded by providing the evidence requested on May 29, 2008. The Panel then ordered the Respondent to file any reply to this within 14 days. No such reply has been provided.
4. Factual Background
The Complainant is a world-famous boxer. He has also issued musical recordings and videos as a rap artist and songwriter. He has not registered any relevant trademark.
5. Parties’ Contentions
What follows are the Complainant’s contentions. The Panel does not necessarily accept each of them. However, to avoid repetition, the Complainant’s arguments will not be prefaced by remarks such as “the Complainant contends”.
The Complainant has rights in the common law trademark “Roy Jones Jr.” under US trademark law. Under that, a mark that is a surname is entitled to protection as a trademark if it has been used in commerce in connection with goods or services and has acquired “secondary meaning”. That secondary meaning is attained when, due to exposure to the mark, the relevant public has come to view the mark not in its primary surname sense but as an indication of the source of the product or service. Evidence of long use of the mark on products or services and/or extensive advertising through use of the mark can establish secondary meaning. The Complainant has attained world fame as one of the greatest boxers of all time. He has used his name and likeness on boxing apparel and equipment, sports memorabilia, toys, posters and video games over the past 15 years. He is also an accomplished rap music artist and songwriter who has released numerous musical recordings and accompanying videos.
The Respondent has no relationship with or permission from the Complainant for the use of his name or mark. The Respondent is capitalizing on the unauthorized use of Complainant’s famous name to ensnare Internet users into visiting its website. The Respondent is not authorized or licensed to make use of the Complainant’s ROY JONES, JR. common law mark in connection with its website. The Respondent has not been commonly known by the domain name. The Respondent has not made a legitimate non-commercial or fair use of the domain name.
The Respondent has registered the domain name <royjonesjr.com> in order to prevent the Complainant from using the disputed domain name. The Respondent seeks to capitalize on the Complainant’s celebrity status by using the infringing domain name to attract Internet users to its website, absent any authorization or consent from the Complainant. The Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or of a product or service on the Respondent’s web site .
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first issue is whether the Complainant has rights in a trademark or service mark “ROY JONES JR.”. In Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784, the panel described US trademark law in this area saying:
“This result is consistent with United States trademark law in which names are protectable as trademarks or service marks upon a showing that the name has become distinctive through the acquisition of secondary meaning. See Adray v. Adray-Aart, Inc., 68 F.3d 362 (9th Cir. 1995), amended on other grounds, 76 F.3d 984 (9th Cir. 1996) (personal names are capable of becoming strong trademarks upon a showing of secondary meaning). See also, McCarthy on Trademarks and Unfair Competition ‘13:2 (4th ed. 2000). Secondary meaning is the consumers’ association of the mark with a particular source or sponsor and is established out of long association of the name with the business, whereby the name and the business have become synonymous in the mind of the public, submerging the primary meaning of the name in favor of its meaning as a word identifying that business. See Visser v. Macrese et al., 214 Cal. App. 2d 249, 253, 29 Cal. Rptr. 367, 369 (Cal. Dist. Ct. App. 4th 1963); see also Levis Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1991) (en banc). In assessing secondary meaning, one must consider a variety of factors, including, but not limited to, (1) advertising expenditures, (2) consumer ... linking [of] the mark to the source, (3) unsolicited media coverage of the product, (4) sales success, ... and [(5)] length and exclusivity of the marks use. Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F.Supp. 2d 305, 313 (S.D.N.Y. 2000) (quoting Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1222 (2d. Cir. 1987).”
The first proposition can be found in Courtenay Communications Corporation, v. Patricia Hall and Hallmark Capital Corp., June 24 2003, 334 F.3d 210 at fn 2 which reads:
“Although CCC has not registered its mark, an unregistered mark is entitled to Lanham Act protection if it would qualify for registration. See Thompson Med. Co., Inc. v. Pfizer Inc., 753 F.2d 208, 215-16 (2d Cir. 1985). To qualify for registration, “a mark must be capable of distinguishing the applicant’s goods from those of others.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992) (citing 15 U.S.C. § 1052). To qualify for protection, a mark must either be (1) “inherently distinctive” or (2) distinctive by virtue of acquired secondary meaning.”
The second, as to the content of secondary meaning appears also in Ja-Ber Trading v. Novelty, Inc., 1999 WL 33117184 (D. Me.) where the judge said:
“Secondary meaning exists when the mark used has come to indicate that the goods in connection with which it is used are the goods manufactured by the alleged owner. Inwood Laboratories v. Ives Laboratories, 456 U.S. 844, 851 n. 11, 102 S.Ct. 2182, 2187 n. 11, 72 L.Ed.2d 606 (1982) (citation omitted) (“To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself.” ); There are undoubtedly other types of evidence that would also be relevant to a claim of secondary meaning. The fundamental question, however, is whether “ ‘the primary significance of the term in the minds of the consuming public is not the product but the producer.’ “ Centaur Communications, 830 F.2d at 1221 (citations omitted)….
In determining whether a mark has acquired secondary meaning, courts have considered factors including: (1) advertising expenditures, (2) consumer studies linking name to source, (3) sales success, (4) unsolicited media coverage, (5) attempts to plagiarize the mark and (6) the length and exclusivity of the mark’s use. .. In assessing the existence of secondary meaning, no “single factor is determinative,” American Footwear Corp., 609 F.2d at 663, and every element need not be proved.”
The reason for the Panel’s citation of US case law is to establish that the rights claimed by the Complainant, namely common law trademark rights, exist in a recognized legal system, a requirement for “rights in a trademark” to exist under the Policy. A complainant’s repeated citation of previous UDRP decisions does not achieve that.
The issue is whether “Roy Jones Jr.” has achieved secondary meaning in the sense that consumers associate the mark with a particular source or sponsor due to long association of the name with the business through which the name and the business have become synonymous in the mind of the public. This must then have the effect of, submerging the primary meaning of the name in favor of its meaning as a word identifying that business.
The Complainant has held World boxing titles from 1992 to 2007 and has often been referred to as “the best pound-for-pound boxer” in the world. “Roy Jones Jr.” could just refer to someone, typically from the United States of America, with the common first and family names in the English-speaking world of “Roy” and “Jones” and a father with the same name. Proof of secondary meaning emerges from the fact that when one presents the name before an audience of people with a vague awareness of boxing, everyone assumes that one is referring to the Complainant, not some other individual. The Complainant has unsurprisingly turned his fame to financial advantage outside boxing, earning significant sponsorship revenue and branching out into music and fashion. The Complainant submitted evidence in response to the Procedural Order of him promoting his fashion line through Fashion Week in New York City in 2005 and advertisements relating to his boxing merchandise. The fact that the Panelist, although unconnected in anyway to the Complainant although a general sports enthusiast, immediately assumed on seeing the domain name that it related to the Complainant provides some additional evidence of consumers linking the mark to the source. Evidence was provided of an article on <blackenterprise.com> of unsolicited media coverage of the Complainant’s clothes brand. The Complainant’s earnings through boxing alone are huge. The present dispute notwithstanding, nobody else appears to have used the Complainant’s name in the past commercially except in relation to the Complainant.
For all these reasons, the Panel concludes that the Complainant has rights in the trademark ROY JONES JR under US trademark law. Other UDRP decisions have reached similar conclusions, notably Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598; Freddy Adu v. Frank Fushille, WIPO Case No. D2004-0682 and Mike Schmidt, c/o Dreams, Inc. v. RegisterFly.com WIPO Case No. D2006-0603.
The domain name in issue is identical to the Complainant’s mark except that the words are joined together and the suffix “.com” is added. It follows that the domain name in issue is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent is apparently not called “Roy Jones” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant has authorized the Respondent to use his trademark. The Respondent has not asserted any rights or legitimate interests in that name.
For these reasons, on the basis of the available evidence, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The domain name has never been used for anything. The Complainant has accused the Respondent of registering the domain name in order to prevent the Complainant from registering it himself and exploiting it to promote himself and his various business activities. The Respondent has not replied to these allegations even though the effect of the Procedural Order gave it a considerable amount of time to do so.
It is difficult to see why the Respondent registered the domain name if it was not to achieve one or more of a number of objectives: 1) to persuade the Complainant to purchase the domain name from it at a price greater than the Respondent’s expenses 2) to divert internet users searching for websites relating to the Complainant to the Respondent’s website or 3) to prevent the Complainant from exploiting the domain name himself. It makes no difference as to which motive inspired registration in this case. Any one would provide evidence of bad faith. The second and third motives were clearly put to the Respondent and it has failed to deny them. One must, therefore, assume them to be correct.
The passive holding of a domain name to divert Internet users searching for websites relating to the Complainant to the Respondent’s website or prevent the Complainant from exploiting the domain name himself is evidence of bad faith.
For all these reasons, the Panel concludes that the domain name has been registered and is being used in bad faith.
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 <royjonesjr.com> be transferred to the Complainant.
Dated: June 26, 2008