Generic Top Level Domain Name (gTLD) Decisions

Twentieth Century Fox Film Corporation, Beverly Hills, California, USA
COMPLAINANT,

vs.

CDP and Marc Yu, owner, Fairfax, Virginia, USA
RESPONDENT.

DECISION
Claim Number:  FA0005000094827

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is “ALLYMCBEAL.COM”, registered with Network Solutions Inc. (“NSI”).

PANELIST(s)

                Honorable Daniel B. Banks, Jr., Honorable Louis E. Condon and Honorable Herman D. Michels, Chair, as Panelist

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“The Forum”) on May 15, 2000.

On May 17, 2000, NSI confirmed by e‑mail to The Forum that the domain name “ALLYMCBEAL.COM” is registered with NSI and that the Respondent CDP is the current registrant of the name.  NSI has verified that Respondents are 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 May 15, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 5, 2000 by which Respondents could file a Response to the Complaint, was transmitted to Respondents via email, post and fax, and to all entities and persons listed on Respondents’ registration as technical, administrative and billing contacts by email.  Respondent has not submitted a response to the Forum within the 20 days pursuant to Rule 5(a), which time has now expired.  The Complaint and the exhibits were docketed and forwarded to the Arbitrators for decision.

Complainant requested to have the dispute decided by a three-member panel and accordingly, the Forum appointed Honorable Daniel B. Banks, Jr., Honorable Louis E. Condon, Honorable Herman D. Michels, Chair, as the panelists.  Neither Complainant nor Respondents have contested the jurisdiction of the Forum or the undersigned arbitrators to resolve this controversy.

RELIEF SOUGHT

The Complainant requests that the domain name ALLYMCBEAL.COM be transferred forthwith from Respondents to the Complainant.

PARTIES’ CONTENTIONS

                A.  Complainant

Complainant contends that Respondents' domain name ALLYMCBEAL.COM is identical to its statutory and common-law trademark ALLY MCBEAL; that Respondent Marc Yu is doing business as Respondent CDP; that Respondent does not have any rights or legitimate interests in respect of the infringing domain nameALLEYMCBEAL.COM; and that the infringing domain name ALLYMCBEAL.COM was registered by Respondents in bad faith and is being used in bad faith.

B.  Respondents

Respondents did not submit an answer to the Complaint.

FINDINGS

Complainant is one of the world's leading entertainment and media companies and produces and distributes some of the most internationally well-known television and motion picture properties.  Complainant distributes its original television programs in major markets throughout the world and has become the leader in the United States of prime time television series productions.  As a result of Complainant's preimmence in the field of television, the various series produced and distributed by Complainant have become some of the most popular entertainment properties the world and such series and related trademarks have become firmly tied in the minds of the public with Complainant.

Among the most widely successful television series produced and distributed by Complainant is the one hour comedy drama series "ALLY MCBEAL."  This series debuted in the United States on September 8, 1997, and is currently licensed for television broadcast in over fifty countries world-wide.

To promote the ALLY MCBEAL series, Complainant has expended considerable effort and resources and has produced and purchased numerous advertisements for the series on network and local cable television stations and radio stations in the top twenty United States markets.  In addition, it has purchased national print advertisements.

As a result of the varied and vast world-wide use of its ALLY MCBEAL trademark, consumers strongly associate the ALLY MCBEAL trademark with Complainant and the ALLY MCBEAL series.

Complainant owns the following United States trademark registrations for the ALLY MCBEAL trademark ALLY MCBEAL, United States International Class 41, Registration No. 2279492, and has applications pending for the mark ALLY MCBEAL in the United States, Australia, Canada, Hong Kong, New Zealand, South Africa, United Kingdom and Community Trademark Europe.

Respondent has no statutory or common law trademark rights or any other rights or legitimate interest to the trademark ALLY MCBEAL or on the infringing domain name ALLYMCBEAL.COM.

Respondent has registered the infringing domain name ALLYMCBEAL.COM which is identical to and confusingly similar to Complainants ALLY MCBEAL trademark.  By doing so, Respondent has appropriated in its entirety Complainant's inherently distinctive and famous ALLY MCBEAL trademark with a clear intent to tradeoff the reputation of Complainant and the ALLY MCBEAL trademark.

Respondent's website has utilized and continues to utilize images, logos and infringing trademark designs from the ALLY MCBEAL series all in violation of Complainant's copyrights and trademarks.

The domain name ALLYMCBEAL.COM should be considered has having been registered by Respondent in bad faith due to the fact that Respondent has intentionally attempted to attract for commercial gain, internet users to its website by creating a likelihood of confusion with Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of their website.  The unauthorized and continued use by Respondent in interstate commerce of a domain name incorporating Complainants famous ALLY MCBEAL marks constitutes a use of a false designation of origin as well as a false description or representation that is likely to cause confusion, mistake or deception as to a) the affiliation, connection or association between Complainant and Respondent and b) the sponsorship or endorsement of Respondent's website by Complainant.

Respondent's activities constitute an infringement of Complainant's rights in its ALLY MCBEAL marks and have caused and will continue to cause substantial and irreparable harm to Complainant and its business reputation and good will.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“Policy”) provides

a.             Applicable Disputes.  You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that

i.      your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

ii.     you have no rights or legitimate interests in respect of the domain name; and

iii.    your domain name has been registered and is being used in bad faith.

                In the administrative proceeding, the complainant must prove that each of these three elements are present.

Identical and/or Confusingly Similar

The domain name ALLYMCBEAL.COM registered by Respondent on September 16, 1998 is identical or confusingly similar to Complainant's ALLY MCBEAL marks and registered trademarks registered on the principal register of the United States Patent and Trademark Office by Complainant and those pending in the United States, Australia, Canada, Hong Kong, New Zealand, South Africa, United Kingdom and Community Trademark Europe.  Complainant has all rights and interests in the ALLY MCBEAL trademarks.

Rights or Legitimate Interests

Respondent does not have any rights or legitimate interests in respect to the domain name ALLYMCBEAL.COM.

Registration and Use in Bad Faith

Respondent has registered and used the domain name ALLYMCBEAL.COM in bad faith.

DECISION

Based upon the above findings and discussion and pursuant to Rule 4(1) of the Rules of the Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum Supplemental Rules of ICANN's Uniform Domain Name Dispute Resolution Policy, we hereby Order that 1) the domain name ALLYMCBEAL.COM registered by Respondent CDP and Marc Yu, owner, be transferred forthwith to Complainant Twentieth Century Fox Film Corporation, and 2) Respondent CDP and Marc Yu, owner, shall cease and desist from any and all use of the domain name ALLYMCBEAL.COM.

FOR THE PANEL

Honorable Herman D. Michels, Chair

Dated: July 7, 2000