Generic Top Level Domain Name (gTLD) Decisions

The Complainant is CMG Worldwide, Inc., Indianapolis, Indiana, USA ("Complainant"). The Respondent is Eric Dluhos, Belleville, NJ, USA ("Respondent").

The domain name at issue is "LEESTRASBERG.COM", registered with Network Solutions, Inc. ("NSI").

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 05/26/2000; The Forum received a hard copy of the Complaint on 06/02/2000.

On 06/05/2000, NSI confirmed by e-mail to The Forum that the domain name "LEESTRASBERG.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 06/05/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 06/26/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.

On, June 5,2000 pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Henry W. Blizzard as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant contends that it is the agent for the Estate of Lee Strasberg,which owns certain rights protecting the unauthorized use his name,image or likeness including the right of sponsorship and publicity rights. Lee Strasberg, deceased was a famous acting teacher. The said Estate is the owner of trademark serial number 599896 for the "The Lee Strasberg Theater Institute", service mark and trademark registration number 74-475138 for the " Actor by Lee Strasberg". That the Respondent is not a licensee of the Complainant and that the domain name"LeeStrasberg.com", which the Respondent has registered is identical or confusingly similar to the mark owned by the said Estate and managed by the Complainant, as agent and that the Respondent has no rights or legitimate interest in respect to the said domain name in question. Further, that the use by Respondent of said domain name is not in connection with a bona fide offer of goods or services. That Respondent has registered the said domain name in question in bad faith, that is to prevent the owner of this trademark from reflecting it in a corresponding domain name and has registered the domain name for the purpose of disrupting the business of a competitor and Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondents web site or other on line location by confusion with the Mark used by Complainant, as agent.

Respondent filed a limited appearance response alleging that he has a right to the domain name in dispute. He filed suit in the U.S. District court of New Jersey in Newark seeking various relief.

The domain name in question is created in such a fashion as to be similar or confusingly

similar to complainant trade name. Respondent has no rights or legitimate interest in respect to the domain name in question. The Respondent registered and is using the domain name in question in bad faith.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements in order to demonstrate claims that a domain name should be canceled 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 and is being used in bad faith.

The trademark "The Lee Strasberg Theater Institute" and domain name "LeeStrasberg.com" are confusingly similar in that they both use the name "Lee Strasberg." See Quixtar Investments, Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar).

There is no evidence presented that respondent has any right or legitimate interest in the said domain name. See ICANN Policy ¶ 4(c) (Respondent has the burden of proof regarding rights to or legitimate interest in the domain name). See also Compangnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark or never applied for a license or permission from the Complainant to use the trademarked name).

Paragraph (b) of the "Policy" states that for the purposes of Paragraph (4) (a. III) certain circumstances, if found by the Panel to be present, shall be evidence of bad faith. The facts show that the Respondent intent is to deprive the owner of the trademark, the Estate of Lee Strasberg, from reflecting the work in a corresponding domain name. This is shown by the manner in which the name is used. The domain name "LeeStrasberg.com" is a primary part of the Complainants trademark "The Lee Strasberg Theater Institute."

See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where Respondent failed to provide any evidence to controvert Complainant's allegation that it registered the domain name in bad faith and where any future use of the domain name would do nothing but cause confusion with the Complainant’s mark, except in a few limited noncommercial or fair use situations, which were not present).

Based upon the above findings and discussion and pursuant to rule (4) (a) of the ICANN Uniform Domain Name Dispute Policy (The Policy"), it is decided as follows:

The relief requested by the Complainant is granted. The undersigned directs that the Domain Name "LeeStrasberg.com" registered to Eric Dluhos, be transferred to the Estate of Lee Strasberg.