NBA star scores in celebrity cybersquatting case

International

Kevin Garnett, an All-Star forward for the National Basketball Association's (NBA) Minnesota Timberwolves franchise, recently scored a victory through the Uniform Domain Name Dispute Resolution Policy (UDRP) in his case against the registrant of 'KevinGarnett.com'. The decision is one of the clearest explanations of the rights of sports personalities in domain name disputes.

In 1995 Garnett appeared on the cover of Sports Illustrated magazine before playing his first NBA game and became the first high-school player selected in the NBA draft in over 20 years. In addition, Garnett has been named an NBA All-Star in five of his seven seasons in the league. Based on these facts, Garnett asserted that he had acquired common law trademark rights in his name. Meanwhile, New York-based Trap Block Technologies claimed that it had registered the domain name for use as a fan website.

National Arbitration Forum panellist Charles K McCotter agreed with Garnett, finding that he had acquired sufficient common law trademark rights to succeed under the UDRP. McCotter cited as precedent two earlier UDRP decisions involving sports personalities (Allan Houston v Kaliweb Inc and Daniel C Marino Jr v Video Images Productions). He also stated that:

"a complainant's allegation that respondent has no rights or legitimate interests in the domain name at issue shifts the burden to respondent to show by 'concrete evidence' that respondent has rights or legitimate interests in respect of the domain name."

McCotter defined 'concrete evidence' as requiring more than personal assertions; it places a burden on respondents to supply documents or third-party declarations in support of their assertions. Therefore, "a failure to produce such concrete evidence entitles a panel to conclude that the respondent has no such rights or legitimate interests".

Although Trap Block Technologies claimed that it registered 'KevinGarnett.com' for use as a fan website, it had never actually used the domain name. As a result, McCotter determined that it could not claim a bona fide non-commercial or fair use of the domain name, and had registered it in bad faith (ie, to capitalize on Garnett's fame).

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff LLP, Washington DC

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