Williard C. Smith III v. Vip Mangalick d/b/a iMegaMillions.com
Claim Number: FA0305000156844
PARTIES
Complainant is
Williard C. Smith III, Beverly Hills, CA (“Complainant”) represented by Barbara
A. Solomon, of Fross Zelnick Lehrman & Zissu, P.C. Respondent is Vip Mangalick d/b/a iMegaMillions.com,
Franklin, MI (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue
is <willsmith.us>, registered with Go Daddy Software, Inc.
PANEL
The undersigned
certifies that he or she has acted independently and impartially and to the
best of his or her knowledge has no known conflict in serving as Panelist in
this proceeding.
R. Glen Ayers was
selected as Panelist.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum (the “Forum”) electronically on May
8, 2003; the Forum received a hard copy of the Complaint on May 9, 2003.
On May 9, 2003, Go Daddy
Software, Inc. confirmed by e-mail to the Forum that the domain name <willsmith.us>
is registered with Go Daddy Software, Inc. and that the Respondent is the
current registrant of the name. Go Daddy Software, Inc. has verified that
Respondent is bound by the Go Daddy Software, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution
Policy (“usDRP”).
On May 12, 2003, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of June 2, 2003 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance with 2(a) of the Rules of Procedure for the usTLD
Dispute Resolution Policy (the “usDRP Rules”).
A timely Response was
received and determined to be complete on June 2, 2003.
On June 12, 2003,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed R. Glen Ayers as Panelist.
RELIEF SOUGHT
Complainant requests that
the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends
that Willard C. Smith, also known as “Will Smith”, is a famous actor and
performer, holding both a registered trademark and entitled to assert a common
law trademark in his name, or the shortened form of his name “Will Smith.” Mr. Smith is a very well known name.
Complainant asserts that
his trademark is identical to or confusingly similar to the domain name
registered by Respondent. That domain
name is <willsmith.us>.
Complainant asserts that
Respondent registered the domain name on April 24, 2002, by which time Will
Smith held a registered federal trademark.
Complainant also asserts
that the domain name has not been used for any purpose.
Complainant asserts that
it sent a demand letter concerning use of the domain name to which Respondent
replied that he “had received offers for up to $500.00 for the purchase of the
domain name. Respondent then advised
that he would sell the domain name to Complainant for $100.00.” Of course, this was never done.
Complainant stresses
that Respondent appears to hold no rights or legitimate interest in the domain
name and asserts that Respondent has not licensed the use of the domain
name.
Finally, Complainant
stresses the offer to sell the domain name is an element of bad faith. But, Complainant also asserts that the name
was registered without authorization, which is evidence of bad faith. Complainant asserts that Respondent
certainly had constructive notice of Mr. Smith’s exclusive right to the use of
the name. Complainant notes that
registration of the domain name blocks use by Complainant. All of this adds up to what some panels have
referred to as “opportunistic bad faith.”
See Veuve Cliquot Ponsardin v. The Polygenic Group Co., WIPO
D2000-0163. Complainant asserts that
similar finds have been made by panels dealing with domain names which compete
with the claims of such persons as Emeril Lagasse and others.
B. Respondent
Respondent, in a very
brief Response, points out that Will Smith is a fairly common name and his
argument can best be summarized by a quote:
As the name “Will Smith”
is one of the most common, indistinctive names in the United States,
trademarking and claiming legal rights to such a name is analogous to
trademarking the word “Air,” then further claiming rights to any similar names,
whether it be “Air,” “Airplane,” or any other form of the word.
Respondent asserts that
the domain name has been used for the transmittal of e-mails and therefore has
had some use.
Finally, the domain name
was not registered in bad faith, says the Respondent, because he did not
register it for the purpose of selling (Respondent in fact originally agreed to
sell for a nominal sum). Respondent
says he was “coerced” into making that offer.
Respondent notes that Will Smith made no attempt to reserve his name in
the “.us” context even though he could easily have done so. Finally, Respondent notes that there are no
other elements of bad faith present.
FINDINGS
The Complainant has
clearly demonstrated that the domain name and the trademark are identical. The
Complainant has also demonstrated the Respondent has made no use of the domain
name and has no rights in or interests in the name. Those facts are essentially not disputed, even though Respondent
would assert some uses for purposes of e-mails.
The real issue is
whether or not there are sufficient elements of bad faith. Complainant has established that Respondent
was willing to sell the domain name.
However, before Respondent refused to go forward with that transaction,
Respondent had agreed to a transfer for the nominal sum of $100.00. Given the amount, there is certainly no
objective evidence of bad faith.
Complainant’s best
argument is basically, that no one would have registered “Will Smith” as a
domain name without some element of bad faith, unless, of course, the
Respondent were named “William Smith” or “Will Smith” or “Willard Smith.” Here, given the statements made in Respondent’s
response, it is fairly clear that Respondent intentionally registered <willsmith.us>
knowing of a relationship to the famous actor and performer. This panelist finds this to be a very close
question. As the panel stated in Emeril
Lagasse v. VPOP Technologies, NAF 94373:
“The Complainant’s owned first and last names of the foundation of this
trade and service mark. ... The
Respondent’s registration of emeril.com prevented Complainant from using
his trademark in the corresponding domain name.”
The very act of
registration then, said that panel, is bad faith because it prevents
“Complainant from using its mark in a corresponding domain name.”
If Respondent had the
least bit of interest in the name “Will Smith”, this panelist would find that there
is not a sufficient showing of bad faith.
If the name itself were more distinctive (Emeril Lagasse, for example)
the Panelist would have less hesitation.
The deciding factor is that the mark holder is very, very famous.
DISCUSSION
Paragraph 15(a) of the
usDRP Rules instructs this Panel to “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
usDRP requires that the Complainant must prove each of the following three
elements to obtain an order that a “.us” Domain Name was registered in
violation of the usDRP and obtain an order that a “.us” Domain Name should be
cancelled or transferred:
(1) the domain name registered by the Respondent is
identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered
or is being used in bad faith.
Given the similarity
between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the
usTLD Policy, the Panel will draw upon UDRP precedent as applicable in
rendering its decision.
The
domain name and trademark are obviously identical
Respondent
has no rights or legitimate interests in the name.
Respondent,
by inference, has registered the name in bad faith, having no interest in the
name and, by registering the name, blocking its use by “Will Smith.” This is a close call, given the fact that
the mark and name are so common.
DECISION
Having established all
three elements required under ICANN Policy, the Panel concludes that relief
shall be GRANTED.
Accordingly, it is
Ordered that the <willsmith.us> domain name be TRANSFERRED
from Respondent to Complainant.
R. GLEN AYERS, panelist
Dated: June 26, 2003
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