Complainant is Stephen J. Nash aka Steve Nash of Valley, Arizona, United States of America, represented by the law firm Seiler, Epstein, Zeigler, & Applegate LLP, United States of America.
Respondent is HOOPology.com of Norwalk, California, United States of America.
The disputed domain name <stevenash.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2009. On February 20, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On February 20, 2009, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to emails from the Center concerning the identity of the concerned registrar and registrant, Complainant filed amendments to the Complaint on February 24 and 26, 2009, respectively.
The Center verified that the Complaint together with the amendments to 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 Respondent of the Complaint, and the proceedings commenced on February 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2009. Respondent did not submit any response; accordingly the Center notified Respondent's default on March 20, 2009.
The Center appointed Richard G. Lyon as the sole panelist in this matter on March 31, 2009. The Panel finds that it was properly constituted. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant is a star performer in the National Basketball Association (NBA), the top-level professional basketball league in the United States of America. He has played professionally in the NBA since 1996 and was the League's most valuable player in two consecutive seasons. Mr. Nash is one of the NBA's best-known players. He uses his name, Steve Nash, widely for advertisements, other promotions, and a charitable foundation that bears his name. Complainant holds no registered trademarks.
Little is known of Respondent. Respondent appears to be controlled by an individual named Luis Zavala, who according to the contact details listed with the registrar has an address in Whittier, California, United States of America. Respondent registered the disputed domain name in 1999.
The disputed domain name currently resolves to a page with prominent pictures of a basketball goal, a basketball on a hardwood floor, and arena seats. The page contains many hyperlinks to basketball-related topics including three that include Complainant's name.1 At another website Respondent offers the disputed domain name for sale.
Complainant initiated email correspondence with Respondent in October 2008, inquiring about acquiring the disputed domain name from Respondent through Mr. Zavala. Respondent's final email states “Like I said before, I was not looking to part with the domain. You guys can make an offer like anyone else if serious.”
Complainant contends as follows:
Complainant has common law trademark rights in his name, Steve Nash, by reason of his fame as an athlete and his use of his name for commercial, promotional, and charitable purposes. It is well established under the Policy that a celebrity's name may serve as a mark if famous and regularly used to identify goods or services provided or endorsed by the celebrity. The disputed domain name is identical to Complainant's mark.
Respondent has never been known by the name Steve Nash and Complainant has never authorized Respondent to use his name. Respondent has never used the disputed domain name in connection with a bona fide offering of goods and services, and he cannot establish demonstrable preparations to do so. The only use to which the disputed domain name has been put is basketball-related (thus demonstrating knowledge of Complainant and the value of his name) and commercial, consisting of “sponsored links” and other links to commercial websites. Respondent has also offered to sell the disputed domain name to the public. None of this use is legitimate, and it serves only to show that Respondent was well aware of Complainant when he registered the disputed domain name.
His registration and subsequent use are for the same reasons in bad faith under the Policy, as an attempt either to profit from the sale of the disputed domain name or misleadingly to divert fans or consumers using the Internet to search for Complainant, all for Respondent's commercial gain. Respondent's conduct following Complainant's email communications to him reveals that he registered the disputed domain name in bad faith in a “blatant” attempt to attract consumers by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites.
Respondent did not reply to Complainant's contentions.
In any default case the Panel must review the record to determine whether Respondent received actual notice of the Complaint and, if not, whether the Center as Provider met its “responsibility to employ reasonably available means calculated to achieve actual notice to Respondent.” Rules, paragraph 2(a). While the Center's email notification to the address in the contact information supplied by the registrar was returned,2 the courier's records indicate that the hard copy version was duly delivered. Clearly the Center satisfied its responsibility under Rule 2(a), as it employed the procedures explicitly set out in subsections (i) and (ii) of that Rule. In any event the Panel is satisfied that actual notice was achieved.
Complainant has common law trademark rights in his name, which he has used in the trademark sense for many years.3 The disputed domain name is identical to Complainant's mark and name. Paragraph 4(a)(i) of the Policy has been satisfied.
Complainant has made the required prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent to use his name, and nothing indicates that Respondent (either Mr. Zavala or his company) has ever been commonly known by the words “Steve Nash”. Respondent's website at the disputed domain name is commercial, and in no way an informational “fan site.” In accordance with previous Policy decisions, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1 (consensus view), Respondent thus “carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” Respondent in this case has not made any such showing. Years of use as a page of hyperlinks do not ipso facto constitute legitimate use.4
The use to which Respondent now puts the disputed domain name is clearly use in bad faith for Policy purposes; such use is classic cybersquatting. Determining if registration of the disputed domain name in 1999 was in bad faith requires a bit more analysis, and is not the slam dunk as argued by Complainant. According to the Wayback machine, “www.archive.org”, the basketball-related themes did not appear on Respondent's website until relatively recently. Earlier use included “coming soon” pages and standard parking pages with links to commercial sites. None, however, indicated any legitimate use or entitlement by Respondent to Complainant's name and in his email communications with Complainant Mr. Zavala indicates that he was aware of Complainant's stature when the disputed domain name was registered. In these circumstances the Panel infers from Respondent's subsequent conduct particularly commercial links using Complainant's name and repeated offers to sell the disputed domain name that registration was made with some eventual commercial exploitation of Complainant's name or mark in mind. That is an easy inference in light of Complainant's renown and Respondent's conduct when asked to transfer the disputed domain name.5
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 <stevenash.com> be transferred to Complainant.
Richard G. Lyon
Dated: April 14, 2009
1 Other links include comparable references to other NBA stars.
2 The error message read “The e-mail system was unable to deliver the message, but did not report a specific reason. Check the address and try again. If it still fails, contact your system administrator. ‘mx1.wipo.int #5.0.0 SMTP'; 554 ‘email@example.com': Relay access denied”.
3 While the Complaint is short on evidence of use and renown of Complainant's name in the trademark sense, two circumstances in this proceeding allow the Panel to conclude that such matters have been proven. First, Mr. Nash is not just any NBA player but one of its most highly-publicized stars. In the basketball world his name has fame in the trademark sense, making any person in that world presumptively aware of his name. Respondent principal Mr. Zavala is evidently familiar with that world, as demonstrated by his basketball-themed website. More importantly the email correspondence provided with the Complaint makes it clear that Mr. Zavala was well aware of Mr. Nash when the disputed domain name was registered. In the present circumstances, this latter fact alone is tantamount to an admission of trademark value. See, e.g., Julie & Jason, Inc. d/b/a The Mah Jongg Maven v. Faye Scher d/b/a Where the Winds Blow, WIPO Case No. D2005-0073; Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro d/b/a Weber's Mackinac Island Florist, WIPO Case No. D2001-0653. The Panel recommends to future complainants in similar circumstances, however, that they include direct evidence of commercial use of their names as marks. See Kellwood Company v. Onesies Corporation, WIPO Case No. D2008-1172.
4 E.g., Société Nationale des Chemins de Fer Français v. LCOB, Nif ty Lemo de, WIPO Case No. D2009-0161.
5 Respondent purported to sell the disputed domain name to a third party shortly after being contacted by Complainant. This possible cyberflight gives further support to the Panel's inference.