Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Twentieth Century Film Corporation, Beverly Hills, CA, USA ("Complainant") represented by Dale Cendali, O'Melveny & Myers LLP. The Respondent is Cupcake Confidential, Andalusia, PA, USA ("Respondent").

The domain name at issue is "alleymcbeal.com" registered with Network Solutions, Inc.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as a panelist in this proceeding.

Tyrus R. Atkinson, Jr.

Carolyn Marks Johnson

John Upchurch

as Panelists.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on November 27, 2000; The Forum received a hard copy of the Complaint on November 27, 2000.

On November 29, 2000, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "alleymcbeal.com" is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 4, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 26, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@alleymcbeal.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On January 5, 2001, pursuant to Complainant’s request to have the dispute decided by a Three Member panel, the Forum appointed Tyrus R. Atkinson, Jr, Carolyn Marks Johnson and John Upchurch as Panelists.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

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

A. Complainant

Complainant is one of the world’s leading entertainment and media companies and distributes well-known television properties in major markets throughout the world.

Among the most successful television series produced and distributed by Complainant is the comedy/drama series "Ally McBeal." The series was first distributed in the United States on September 8, 1997.

"Ally McBeal" and its cast have received considerable press coverage and received a number of awards including the Peabody Award, Emmy Awards, Golden Globe Awards, and others distinctions.

Complainant owns United States Trademark Registrations for "Ally McBeal", United States, International Class 41, Registration No. 2279492, and United States, International Class 9, Registration No. 2360815. Complainant has applications pending for the mark "Ally McBeal" in the United States, Australia, Canada, Hong Kong, New Zealand, South Africa, United Kingdom and Europe.

Complainant licenses various merchandise under the name "Ally McBeal."

As a result of the varied and worldwide use of the trademark "Ally McBeal", consumers associate the trademark with Complainant.

Complainant and/or its licensees have expended in excess of 15 million dollars in advertising the "Ally McBeal" series.

Complainant operates a web site for the series at ALLYMCBEAL.COM.

On May 18, 1999, Respondent registered the domain name ALLEYMCBEAL.COM.

Respondent sells no goods or services on this web site, but instead redirects users who access the site to a series of other web sites, each with its own window, advertising the products and services of third parties.

Respondent’s domain name ALLEYMCBEAL.COM is confusingly similar to Complainant’s ALLYMCBEAL marks and domain name for the series web site, which incorporates that mark

Respondent’s registration of a domain name spelled slightly differently from Complainant’s mark is confusingly similar to the mark. This creates "initial interest confusion" which is sufficient to establish a likelihood of confusion under law.

Respondent has not registered any trademark for "Ally McBeal." Respondent is not a licensee of Complainant or affiliated in any way with Complainant or to the series. Respondent has never been commonly known as "Ally McBeal". Respondent has no rights or legitimate interests in the mark.

Respondent appears to use the domain name ALLEYMCBEAL.COM improperly to earn money by directing users to numerous other web sites. There is no bona fide offering of goods and services for a non-commercial or fair use.

Respondent registration and use of the domain name ALLEYMCBEAL.COM is parasitic and in bad faith. Respondent attracts, for commercial gain, Internet users to his site by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation or endorsement or location or of a product or service.

Respondent has registered domain names that differed in slight ways with recognized marks of others on numerous occasions. Respondent operates web sites under such domain names for the purpose of trading on the goodwill and fame attached to such marks. Respondent performs these acts in a calculated and knowing manner to attract Internet users who slightly misspell the web site they are attempting to reach so as to actually reach web sites operated by Respondent. The advertisers on web sites to which such users are directed by Respondent’s web site compensate Respondent for such referrals.

Respondent acted in bad faith by refusing to correspond with Complainant regarding this matter.

B. Respondent

No response was filed. Respondent is in default. In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the rules, the Panel shall proceed to a decision on the complaint. Rule 5(e), Rules for Uniform Domain Name Dispute Resolution Policy. The Panel finds no exceptional circumstances to exist in this case. Under such circumstances, the Panel shall draw such inferences as it considers appropriate. Rule 14, Rules for Uniform Domain Name Dispute Resolution Policy. The Panel shall decide a complaint on the basis of the statements and documents submitted. Rule 15(a), Rules for the Uniform Domain Name Dispute Resolution Policy.

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled 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.

Complainant has rights in the mark "Ally McBeal" on account of the registrations noted herein and the use and promotion of the mark.

The Respondent’s domain name is nearly identical and confusingly similar to Complainant’s mark. The sole difference is the addition of the letter "e" to the domain name. Respondent has intentionally chosen domain names that differ only by one letter from the established marks of others. See Cabela’s Inc. v. John Zuccarini, FA95233 (Nat. Arb. Forum Aug. 28, 2000), where this same Respondent’s domain name "Cabela.com" was found to be confusingly similar to the Complainant’s domain name "cabelas.com". see Hewlett- Packard Co. v. Cupcake City (HEWLITTPACKARD-DOM), FA93562 (Nat. Arb. Forum Mar. 31, 2000) where it was found that Respondent’s domain name "HEWLITTPACKARD.COM was confusingly similar and phonetically identical to complainant’s mark, HEWLETT PARKARD. See also L.L. Bean, Inc. v. Cupcake Patrol, FA95105 (Nat. Arb. Forum Aug. 4, 2000) finding LLLBEAN.COM confusingly similar to "L. L. Bean." See also Bama Rags, Inc. v. John Zuccarini, FA94380 (Nat. Arb. Forum May 8, 2000) comparing DAVEMATHEWSBAND.COM and DAVEMATTHEWBAND.

Respondent’s intention is to register domain names that are confusingly similar to the marks of others. Respondent’s purpose was achieved in this case.

Respondent is not a licensee of Complainant nor affiliated with Complainant or the series "Ally McBeal". There is no evidence to suggest that Respondent has ever been known as "Ally McBeal" or "Alley McBeal". See Uniform Domain Name Dispute Resolution Policy, Sec. 4(c)(ii).

It is clear that Respondent knew of the dispute between the domain name and Complainant’s mark prior to the time Respondent registered the domain name. See Uniform Domain Name Dispute Resolution Policy, Sec. 4(c)(i). Respondent’s past conduct compels this conclusion. See Budget Rent a Car Corp. v. Cupcake City, D2000-1020 (WIPO Oct. 19, 2000); Bama Rags, Inc. v. John Zuccarini, FA94380 (Nat. Arb. Forum May 8, 2000); Cabela’s Inc. v. John Zuccarini, FA 95233 (Nat. Arb. Forum Aug. 28, 2000); Diageo p.l.c. v. John Zuccarini, D2000-0541 (WIPO Aug. 22, 2000). These cases are representative of many citations which could have been included here involving the identical or similar conduct of this Respondent in other domain name dispute cases.

There is no evidence to show that Respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the mark at issue. See Uniform Domain Name Dispute Resolution Policy, Sec. 4(c)(iii). The opposite is proved in the pleadings. Complainant shows that when the domain name in issue is reached, certain commercial advertisements are displayed to the user that are unauthorized by Complainant. The exhibition of the advertisements creates a stream of income to Respondent, Complainant contends. Because of lack of discovery in this proceeding, Complainant was unable to prove the income stream. The best Complainant could offer was the content of cases where discovery was permitted. In the case of Shields v. Zuccarini, the Court states as follows:

Respondent has no rights or legitimate interests in the domain name in issue.

Four instances of evidence of registration and use in bad faith are set out in the Uniform Domain Name Dispute Resolution Policy. Only one of these provisions need be considered. That reads as follows: "(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site…by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location." Uniform Domain Name Dispute Resolution Policy, Sec. 4(b)(iv).

Respondent is in plain and conspicuous violation of this provision.

Again, quoting the Court from Shields v. Zuccarini:

Respondent’s conduct in this case is no different than it was in Shield v. Zuccarini or in the other cases in which he was named as Respondent or Defendant in domain name disputes. Respondent acted in bad faith in registering the domain name ALLEYMCBEAL.COM and operating a web site with that name to intentionally attract, for commercial gain to his web site by creating a likelihood of confusion with Complainant’s mark, as to the source, sponsorship, affiliation, or endorsement of the web site ALLEYMCBEAL.COM. This impermissible behavior requires the relief sought by Complainant.

THE DOMAIN NAME, ALLEYMCBEAL.COM, NOW REGISTERED TO RESPONDENT, BE TRANSFERRED TO COMPLAINANT.