Saquon Barkley, SRQB, LLC v. Ari Armani, Ari Armani & Co.
Complainant is Saquon Barkley of Chicago, Illinois, United States of America ("United States" or "US") and SRQB, LLC of Cleveland, Ohio, United States, represented by Loeb & Loeb, LLP, United States.
Respondent is Ari Armani, Ari Armani & Co. of Manhattan, New York, United States, self-represented.
The disputed domain name <saquonbarkley.com> is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 4, 2019. On February 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2019. Respondent submitted an informal communication on February 25, 2019. The Center notified the Parties of the commencement of the Panel appointment process on February 27, 2019.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on March 12, 2019. 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.
Complainant, Saquon Barkley, is an American football player who plays for the New York Giants, the professional American football team of the National Football League ("NFL") based in the New York metropolitan area. Complainant SRQB, LLC is a company founded and owned by Mr. Barkley that handles the business affairs of Mr. Barkley and which holds and manages the trademarks of Complainant Saquon Barkley.
Complainant SRQB, LLC filed two trademark applications in the United States to register the marks SAQUON BARKLEY and MICHAEL ANN & SAQUON BARKLEY HOPE FOUNDATION (Serial Nos. 88181404 and 88181418). These applications were filed on November 5, 2018 and are currently pending.
Respondent Ari Armani is an individual with an address in New York, New York in the United States. Mr. Armani is the founder and owner of Respondent Ari Armani & Co, a company that appears to provide public relations and marketing services. Respondents Ari Armani and Ari Armani & Co operate a website at "www.ariarmani.com" that promotes their services.
Although the disputed domain name was originally registered on December 21, 2014, Respondents acquired the disputed domain name on or about January 25, 2018. 1 At some point thereafter, the disputed domain name redirected to Respondents' website at "www.ariarmani.com".
On November 7, 2018, Complainants' attorneys sent Respondents a demand letter regarding the registration and use of the disputed domain name. No response to that letter was received from Respondents. Complainants' attorneys subsequently followed-up with an email on November 28, 2018 and a second letter of November 29, 2018. No response was ever received from Respondents. Currently the disputed domain name redirects to Complainants' Instagram page at "https://www.instagram.com/saquon".
5. Preliminary Considerations
a. Consolidation of Parties
Complainant has submitted a request for consolidation of Complainants and Respondents in this proceeding.
In determining whether a single consolidated complaint can be brought by multiple complainants, panels typically look at whether (i) the complainants have a specific common grievance against the respondent, and (ii) it would be equitable and procedurally efficient to permit the consolidation. See section 4.11.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). As to determining whether a complaint can be filed against multiple respondents, panels typically look at whether (i) the disputed domain names or the corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Id. section 4.11.2.
Based on the evidence submitted, which is not contested by Respondent, the Panel accepts Complainants' contention that the disputed domain name is subject to the common control of Ari Armani and his company Ari Armani & Co. Moreover, Respondents' informal response on February 25, 2019, was on behalf of both Respondents Ari Armani and his company Ari Armani & Co, further suggesting common control. As to consolidation of Complainants, the Panel is satisfied that Complainant Saquon Barkely and his company SRQB, LLC have a common interest, given that Mr. Barkley owns SRQB, LLC and given that Mr. Barkley's trademarks are held by SRQB, LLC. Under the circumstances, the Panel finds that consolidation of Complainants and Respondents would be fair and equitable to all Parties. (Complainant in this proceeding will hereinafter be referred to collectively as "Complainant" in the singular form. Respondents in this proceeding will hereinafter be referred to collectively as "Respondent" in the singular form.)
b. Complainant's Supplemental Filing
Neither the Policy nor the Rules provide a party with an automatic right to submit additional arguments or evidence. Under paragraph 10 of the Rules, Panels enjoy broad powers for conducting administrative proceedings, provided that the parties are treated fairly and the proceedings are conducted expeditiously. Within this framework, a panel can determine within its sole discretion whether to admit or reject supplemental submissions, and, under paragraph 12 of the Rules, to request further statements or documents from either party. In exercising this discretion, many panels have made clear that additional evidence or submissions should only be admitted in exceptional circumstances, such as, by way of example, where new pertinent facts arise after the submission of the complaint or where a party could not have reasonably known of the existence, relevance or veracity of further material when it made its primary submission. See, e.g., Office Club, Ltd. v. John Adem, WIPO Case No. D2000-1480; Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; Cerulean Studios, LLC v. Hexuan Cai, WIPO Case No. D2013-0902. The Panel agrees with this position and adds that further material should only be admitted to the extent necessary in a proceeding and when such is essential in reaching a fair decision on the facts of the matter.
In the instant case, and after reviewing the Complaint and Respondent's informal response, the Panel is willing to accept a declaration under penalty of perjury filed by Complainant Saquon Barkley regarding an assertion made by Respondent in its February 25, 2019 informal response claiming that the disputed domain name had been registered upon the request of Mr. Barkley's former representative. As for the rest of Complainant's supplemental filing, the Panel does not believe there are exceptional circumstances in this matter that warrant the acceptance of this supplemental filing. The Panel therefore declines to accept the remainder of Complainant's Supplemental Filings and has disregarded such in reaching its decision.
Complainant asserts that he has been using the SAQUON BARKLEY name and mark well before December 21, 2014, when the disputed domain name was originally registered. Complainant maintains that he is a US sports celebrity and as a result of the fame and recognition he has garnered as an American football player, the significant third party commentary, publicity and renown regarding his football playing and other activities, and the use of his SAQUON BARKLEY name and mark in connection with various products and for various endorsements and charitable causes, he has acquired common law rights in the name and mark SAQUON BARKLEY. Complainant also asserts that he has rights in SAQUON BARKLEY by virtue of the two United States trademark applications that Complainant has filed that consist of SAQUON BARKLEY.
Complainant contends that the disputed domain name is identical to Complainant's SAQUON BARKLEY mark as it fully and solely consists of the SAQUON BARKLEY mark with the non-distinctive generic Top-Level Domain ("gTLD") ".com".
Complainant argues that Respondent has no rights or legitimate interest in the disputed domain name as Respondent (i) is not related to, affiliated or connected with Complainant in any way, (ii) has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services and instead has registered the disputed domain name to opportunistically profit from the disputed domain name in some way, such as redirecting the disputed domain name to Respondent's website, (iii) is not commonly known by the disputed domain name, and (iv) ignored demand letters sent by Complainant's attorneys.
Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith. Complainant argues that Respondent registered Complainant's name and mark opportunistically as Respondent has no connection to Complainant and has used the disputed name that is based on Complainant's well known SAQUON BARKLEY name and mark in bad faith to redirect web users to Respondent's website at "www.ariarmani.com". Complainant also argues that Respondent has a pattern of registering numerous domain names based on the names of celebrities and provides several examples of such registrations, some of which likewise redirect to Respondent's website at "www.ariarmani.com". Complainant further asserts that Respondent has registered the disputed domain name in order to prevent Complainant, the true owner of the SAQUON BARKLEY mark, from the reflecting the name and mark in a corresponding domain name. Finally, Complainant maintains that Respondent's actions are in bad faith in view of Respondent's failure to respond to Complainant's demand letters and by providing what appears to be some false contact information.
Respondent did not file a formal response but sent the Center an informal email on February 25, 2019, asserting that it had purchased the disputed domain name on January 25, 2018, and had done so because Respondent had been asked by Mr. Barkley's prior representative to do so "to protect his brand".
Respondent's communication then makes various assertions regarding the proceeding, including that it would be preferable if Complainant or its representative reached out to Mr. Armani directly to see if he would be willing "to give or sell her the domain". Respondent makes further assertions regarding the process and characterizes the dispute as an attempt to obtain a windfall, as Complainant according to Respondent has not suffered any actual harm. Respondent then maintains that it has acted in good faith given that Respondent has forwarded the disputed domain name to Complainant's Instagram page.
C. Complainant's Supplemental Declaration
In the supplemental declaration filed by Complainant Saquon Barkley, to address Respondent's claim of registering the domain name on behalf of Complainant, Mr. Barkley declares under penalty of perjury that neither Complainant nor any of its agents or representatives have ever engaged Respondent to acquire the disputed domain name on Complainant's behalf or to perform any other services for the Complainant.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusing Similarity
It is evident that the disputed domain name is identical to Complainant's "Saquon Barkley" name, as it consists solely of the name "Saquon Barkley" with the irrelevant ".com" gTLD extension. The sole issue is whether or not Complainant's "Saquon Barkley" name, which is not registered as a trademark, but only applied for at this time in the United States, functions as a common law or unregistered trademark.
While the Policy does not specifically protect personal names, in situations where a personal name that is not registered as a trademark is being used in commerce, a complainant may be able to establish common law or unregistered rights in such personal name. See section 1.5.2 of the WIPO Overview 3.0. Proving such common law or unregistered rights requires a complainant to show that the personal name has become a distinctive identifier which consumers associate with complainant's goods or services. WIPO Overview 3.0 at section 1.3. Merely having a famous or well-known name without showing that a personal name has been used in a sufficiently trademark source identifying way will not, in and of itself, establish such common law or unregistered rights. See, e.g., Philippe Pierre Dauman v. Dinner Business, WIPO Case No. D2013-1255. The touchstone for a complainant to establish common law or unregistered rights in a personal name requires proof that the personal name has achieved secondary meaning (even if such only exists in a particular geographical area or market niche). Relevant evidence of such secondary meaning typically includes the duration and nature of the use of the personal name as a mark, the amount of sales under the personal name, the nature and extent of advertising using the personal name, consumer surveys, and the degree of actual consumer, industry and media recognition of the personal name. WIPO Overview 3.0 at sections 1.3 and 1.5.2.
Here, Complainant contends that he is a sports celebrity and that he has acquired common law rights in his name and mark SAQUON BARKLEY on account of his renown as a high school, college and professional American football player, and on account of the use of his name with merchandise and endorsement, entertainment and charitable services. Complainant has provided much evidence regarding his career as an American football player and the many awards and honors that he has won over the years in connection with his football career. In that regard, Complainant has provided a number of third party articles, publicity and commentary that has been focused on him as a high school, college and professional football player. Complainant has also submitted pages from social media platforms he has used, such as Instagram, Facebook and Twitter, to promote his SAQUON BARKLEY name and mark and to provide information regarding his activities. Complainant has also submitted examples of the use of the SAQUON BARKLEY name and mark on apparel and footwear and in connection with many endorsement deals with famous brands such as "Nike", "Pepsi", "Visa", "Dunkin", "Campbell's" and "Panini America". Complainant has also provided examples of various charitable events that have used or featured his name and mark SAQUON BARKLEY.
Taking this evidence in its totality, the Panel is satisfied based on the documentary evidence submitted, none of which is contested by Respondent, that Complainant's SAQUON BARKLEY name
has acquired enormous value and goodwill and has thus become known to the public and the trade as the unique and exclusive source of services and products to which his name is applied.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant's SAQUON BARKLEY mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
The evidence before the Panel, none of which is contradicted by Respondent, shows that the disputed domain name is currently being used to redirect web traffic to complainant's Instagram page at "https://www.instagram.com/saquon". The evidence also shows that the disputed domain name was previously used by Respondent prior to November 2018, when Complainant's attorneys sent demand letters to Respondent, to redirect web traffic to Respondent's website at "www.ariarmani.com".
Respondent maintains that he purchased the disputed domain name on January 25, 2018 because he was allegedly asked by a prior representative of Mr. Barkley (who is not identified by Respondent) to protect Mr. Barkley's "brand." Apart from the fact that this claim in itself could be seen as an admission by Respondent that SAQUON BARKLEY functions as a mark and a brand, the claim is dubious given that Respondent has provided no evidence whatsoever to support the claim. To be sure, conclusory and self-serving allegations that are unsubstantiated with specific evidence are entitled to little or no weight. See WIPO Overview 3.0 at sections 1.3 and 3.1. In that regard, it should be noted that in response to Respondent's claim, Complainant, unlike Respondent, has submitted a sworn declaration in which Complainant declares that neither Complainant nor its agents and representatives have ever engaged Respondent to acquire the disputed domain name on behalf of Complainant or to perform any other services for Complainant.
Given that the disputed domain name is identical to Complainant's SAQUON BARKLEY mark, consumers are likely to believe that the disputed domain name is connected to Complainant. The fact that Respondent registered the disputed domain names that solely consists of Complainant's SAQUON BARKLEY name and mark, and then used the disputed domain to redirect web traffic to Respondent's website at "www.ariarmani.com" to promote Respondent's services, suggests that Respondent was well aware that consumers would see the disputed domain name and associate it with Complainant. Such use of the disputed domain name by Respondent to redirect web users to its own website does not support a claim to rights or legitimate interests in the disputed domain name. WIPO Overview 3.0 at section 2.5.3.
As Complainant has established with sufficient evidence that it owns rights in the SAQUON BARKLEY mark, and given Respondent's above noted actions, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
In view of Respondent's actions as noted above, it is not difficult for the Panel to infer that Respondent's use of the disputed domain name which consists of Complainant's SAQUON BARKLEY mark to attract and redirect consumers to Respondent's website, and then to Complainant's Instagram page after receiving a demand letter from Complainant, has been done opportunistically and in bad faith. The remaining question is whether the conjunctive requirement of bad faith registration has been established by Complainant as to the disputed domain name.
The Complainant has established that he owns common law rights in the mark and name SAQUON BARKLEY. As Respondent purchased the disputed domain name on January 25, 2018, the relevant date for the assessment of Respondent's bad faith is on that date. WIPO Overview 3.0 at 3.8.1. In reviewing the voluminous evidence submitted by Complainant, none of which has been contested by Respondent, it is clear that as of January 25, 2018, Complainant had already established some common law rights in the SAQUON BARKLEY name and mark. As such, Respondent's acquisition of the disputed domain name based solely on the SAQUON BARKLEY mark was clearly opportunistic and in bad faith, particularly as Respondent thereafter used the disputed domain to redirect web traffic to his website at "www.ariarmani.com", a website that promoted Respondent and its services.
The Panel again notes that Respondent has essentially admitted that Complainant's SAQUON BARKLEY name was functioning as a mark and brand at the time Respondent registered the disputed domain name, given that Respondent claims that he did so because he was asked to protect Complainant's "brand". As to whether Respondent acted in good faith as he seems to suggest, by claiming that was asked to register the disputed domain name on behalf of Complainant, the Panel finds that unsubstantiated allegation to be meritless. Respondent has provided no evidence of any kind to support that contention and has provided no details as to who was involved in the request. Notably, in contrast to Respondent, Complainant has refuted the claim is a sworn declaration under penalty of perjury. Consequently, it seems more likely than not that Respondent's assertion is self-serving and not truthful.
That Respondent registered and used the disputed domain in bad faith is further confirmed by the number of other domain names registered by Respondent based on the names of celebrities and which have been used by Respondent, at times, to also redirect web traffic to Respondent's website at <ariarmani.com>. These have included domain names such as, by way of example, <joeyfatts.com>, <nickmenza.com>, <tishhyman.com>, <apryljones.com>, <banditgangmarco.com>, and many others. Given that Respondent has chosen not to put in any evidence explaining its past practice in registering and using domain names based on the names of celebrities, it appears more likely than not that Respondent is engaged in a pattern of opportunistically registering domain names in bad faith that are based on the names of either current celebrities or up and coming potential celebrities. Such pattern underscores that Respondent's acquisition in January 2018 of the disputed domain name was not for a bona fide good faith purpose but to profit Respondent in some way at the expense of Complainant and the goodwill he had developed in his common law SAQUON BARKLEY mark.
Based on the totality of the evidence submitted, the Panel finds that Complainant succeeds under this element of the Policy
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <saquonbarkley.com> be transferred to the Complainant.
Georges Nahitchevansky
1 Although Complainant asserts that the disputed domain name was registered in December 2014, Respondent in its informal communication to the Center on February 25, 2019 asserted that it purchased the disputed domain name on January 25, 2018. Given the different dates provided, the Panel in its discretion under its general powers pursuant to paragraphs 10 and 12 of the UDRP Rules has for the benefit of the Parties reviewed archival WhoIs records for the disputed domain name that are available through Domaintools.com as well as associated domain name records. WIPO Overview 3.0 at section 4.8. These records confirm that the disputed domain name was originally registered in December 2014 and held by a party unrelated to the Parties in this proceeding, expired in either December 2017 or January 2018, and was then acquired by Respondents in January 2018.