Rockets star fails to obtain transfer of 'YaoMing.com'
In Ming v Evergreen Sports Inc, National Arbitration Forum panellist Carolyn Johnson has denied Houston Rockets All-Star centre Yao Ming's request for transfer of 'YaoMing.com', making Ming the first National Basketball Association (NBA) player to lose a Uniform Domain Name Dispute Resolution Policy (UDRP) case involving a domain name identical to his personal name.
The complaint was filed on Ming's behalf by his management company, BDA Sports Management. The registrant, Ohio-based Evergreen Sports, failed to submit a response. BDA asserted that:
- the domain name is identical to Ming's common law YAO MING mark;
- Evergreen has no rights or legitimate interests in the domain name; and
- Evergreen had registered the domain name in bad faith.
According to Johnson, BDA's complaint was "fatally defective" because the company did not submit any evidence to support a finding that Ming has common law rights in his name. BDA did not include in its complaint evidence regarding the use of Ming's name in endorsements or athletic entertainment, or facts to support consumer knowledge. Furthermore, BDA failed to submit facts regarding Evergreen's use or passive holding of the domain name.
Unlike previous decisions involving sports personalities holding common law rights in their names (see eg, Boston Red Sox right-fielder wins 'TrotNixon.com' and NBA star scores in celebrity cybersquatting case), Johnson rejected BDA's claims, finding that "bald assertions of consumer knowledge are not an adequate form of evidence to establish secondary meaning in a name".
Given Ming's immense popularity in his native country China and his appearance in television commercials, he is clearly recognized by the public. This decision demonstrates that complainants must provide clear evidence of common law trademark rights in their names in order to satisfy the requirements of the UDRP and to enable panellists to make reasoned decisions.
James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, Washington DC
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