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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mike Schmidt, c/o Dreams, Inc. v. RegisterFly.com - Ref. #17067566

Case No. D2006-0603

1. The Parties

The Complainant is Mike Schmidt, c/o Dreams, Inc., Niles, Illinois, United States of America, represented by Shuham & Shuham, P.A., Plantation, Florida, United States of America.

The Respondent is RegisterFly.com - Ref. #17067566, Margaretville, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <mikeschmidt.com> is registered with eNom, Inc. (“eNom”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2006. On May 16, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On May 16, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 23, 2006. The Center verified that the Complaint together with the amendment to 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 2, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2006.

The Center appointed M. Scott Donahey as the sole panelist in this matter on July 4, 2006. 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.

4. Factual Background

Complainant is an individual whose personal name corresponds to the part of the domain name at issue that precedes the gTLD “.com” suffix. Complainant does not have a trademark registration for the MIKE SCHMIDT mark, but claims a common law trademark right in the mark and the right to use the mark to market, distribute and sell goods to the public identified with his name, likeness, and autograph. Complainant joined the Philadelphia Phillies baseball club in 1972. During his baseball career, Complainant played third base for the Philadelphia baseball club. He first led the National League of baseball in home runs in 1974. Later in his career, he led the league in home runs on seven other occasions and won ten Gold Gloves for being the best fielder at his position.

In 1980, Complainant was unanimously voted the Most Valuable Player in the National League of baseball, an award which he received three times over the course of his career. In that same year, the Philadelphia baseball club won the championship of American professional baseball (the “World Series”) for the first time in the history of the baseball club. In 1983, the centennial of the founding of the Philadelphia baseball club, club supporters voted to name Complainant as the greatest player in the club’s history. He was voted by baseball supporters across America to the National League of baseball All Star Team on twelve separate occasions. In 1995, Complainant was inducted into the Baseball Hall of Fame.

Complainant has marketed and sold collectibles bearing his name, likeness, and autograph to the public and intends to continue to do so.

Respondent registered the domain name at issue on September 17, 2002. The domain name at issue does not resolve to a website.

The Panel has ascertained from the record that the Respondent has been properly notified of the present proceeding and the opportunity to submit a Response.

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name at issue is identical to Complainant’s mark, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:

(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2) that the 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.

A. Identical or Confusingly Similar

Panels have long held that the addition of a gTLD suffix is irrelevant in an examination of identicality. Credit Management Solutions, Inc. v. Collex Resource Management, WIPO Case No. D2000-0029. However, Complainant concedes that he is not the owner of a registered trade mark. Complainant asserts that he has common law trademark rights in his name. In the present case, Complainant is a famous American baseball player whose fame was well established prior to Respondent’s registration of the domain name at issue. Complainant’s name has clearly acquired secondary meaning in the mind of the American public. Moreover, Complainant has been using his name commercially in the distribution and marketing of baseball memorabilia. In similar cases, panelists have found that a sports celebrity has a common law trademark right in his name. 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. Accordingly, the Panel finds that the domain name at issue is identical to a mark in which Complainant has rights.

B. Rights or Legitimate Interests

The consensus view of WIPO UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of a domain name is as follows:

While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent 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 Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.

In the present case, the Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.

C. Registered and Used in Bad Faith

Complainant’s allegations fail to come within any of the four examples of bad faith registration and use set out in paragraph 4(b) of the Policy. However, the examples in paragraph 4(b) are intended to be illustrative, rather than exclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In Telstra it was established that “inaction” can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent panels. Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Association of British Travel Agents Ltd. v. Sterling Hotel Group Ltd., WIPO Case No. D2000-0086; Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075.

Telstra established that whether “inaction” could constitute bad faith registration and use could only be determined by analyzing the facts in a given case. In the present case, Complainant’s name had acquired widespread secondary meaning in the United States long before Respondent, an entity located in the United States, not far from Philadelphia, where Complainant played during his entire Major League baseball career, registered the domain name at issue. Respondent has not used the domain name at issue in the almost four years since it was registered. Respondent failed to respond to the allegations of the Complaint. Under these circumstances, the Panel finds that Respondent registered the domain name in bad faith and that Respondent’s inaction constitutes bad faith registration and use.

7. Decision

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, <mikeschmidt.com>, be transferred to the Complainant.

M. Scott Donahey
Sole Panelist

Dated: July 18, 2006