Garnett dunks domain name squatter in fan site decision

Fredrikson & Byron attorneys recently prevailed on behalf of Minnesota Timberwolves star forward Kevin Garnett in a domain name decision that one commentator has characterized as “what may be the clearest explanation of the rights of sports personalities in domain name disputes.” 

The National Arbitration Forum ordered the transfer of the domain name kevingarnett.com from the Respondent Trap Block Technologies in Kevin Garnett v. Trap Block Technologies, which was decided on November 21, 2002 (Case No. FA0210000128073).  UDRPLaw.net, a leading domain name decision web site, heralded the decision as its “Case of the Week” for the week of November 25, 2002.  The decision is important for athletes and celebrities whose names are registered in identical domain names by those who claim to want to create fan sites.

Under the Uniform Dispute Resolution Policy (UDRP), in order to have a domain name transferred, a Complainant such as Mr. Garnett had to prove that he had trademark rights in his personal name, that the Respondent has no legitimate right or interest to the name, and that the Respondent registered and used the name in bad faith.  Fredrikson lawyers proved all these elements for Mr. Garnett in convincing fashion, with the single-arbitrator panel adopting the reasoning set forth in Mr. Garnett's complaint.

The panelist found overwhelming evidence that Mr. Garnett had trademark rights in his personal name due to his widespread recognition as an NBA superstar.  The panelist also found no doubt that the domain name kevingarnett.com was identical to the name Kevin Garnett.

Next, the panel held that the Respondent, Trap Block Technologies, had no right or legitimate interest in the name kevingarnett.com.  The Respondent claimed it had always intended to use the name for a fan web site devoted to Mr. Garnett, but had never done so because it was too expensive to do so.  The panel held that the Respondent had no rights in the name because it had never used it for any kind of web site, including a fan site.  Because it had never used the name, the Respondent could not claim that its registration and use was a fair use.  Finally, the panel concluded that Trap Block had never been known by the name, and registered it not because of some right of its own but to capitalize on Mr. Garnett's fame.

The panel conclusively held that the Respondent's failure to use the name for almost six years constituted bad faith under the UDRP.  The panel found that it was bad faith to register kevingarnett.com when Respondent knew full well of Mr. Garnett's rights to that identical name.  Importantly, the panelist held that it was hard to imagine any use that the Respondent could make of the identical name kevingarnett.com that would not at least cause initial interest confusion that Mr. Garnett endorsed the site or was affiliated with it.  Therefore, the panelist reasoned, domain names for fan sites should not be identical to the trademark holder's mark (or here, the famous person's name), but rather should indicate in the domain name that it is a fan site.

The kevingarnett.com decision and its reasoning should assist trademark holders in the future in domain name disputes.  Fredrikson & Byron's team of trademark attorneys would be pleased to assist.