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Generic Top Level Domain Name (gTLD) Decisions |
Jeanette
Lee v. Domain Research and Sales
Claim
Number: FA0203000105214
PARTIES
Complainant is Jeanette Lee, Indianapolis, IN
(“Complainant”) represented by Robert S.
Meitus, of Baker & Daniels. Respondent is Domain Research and Sales, Radviliskis, Lithuania (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at
issue is <jeanettelee.com>,
registered with Bulkregister.
PANEL
The undersigned
certifies that he has acted independently and impartially and to the best of
his knowledge, has no known conflict
in serving as Panelist in this proceeding.
James A. Carmody,
Esq., as Panelist.
PROCEDURAL
HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum (the “Forum”) electronically on February
28, 2002; the Forum received
a hard copy of the Complaint on March 1, 2002.
On March 5, 2002, Bulkregister
confirmed by e-mail to the Forum that the domain name <jeanettelee.com> is registered with Bulkregister and that
Respondent is the current registrant of the name. Bulkregister has verified that Respondent is bound by the Bulkregister
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 March 5, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting
a deadline of March 25, 2002 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@jeanettelee.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 March 29, 2002,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed James
A. Carmody, Esq., as Panelist.
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 Respondent.
RELIEF
SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
1. The domain name <jeanettelee.com> is identical to Complainant’s JEANETTE LEE
and JEANETTELEE.COM marks.
2. Respondent is not authorized and is not commonly known by <jeanettelee.com>.
Furthermore, Respondent has used the disputed domain name in connection
with a website that offers pornographic goods and services
and has offered to
the sell the disputed domain name for $2,250.
Such use of a domain name that is confusingly similar to a name of a
famous celebrity is not a use in connection with a bona fide
offering of goods
and services or a legitimate noncommercial or fair use.
3. Respondent has offered to sell the disputed domain name to Complainant
for consideration in excess of out-of-pocket costs. Respondent has prevented Complainant from reflecting her mark in
the corresponding domain name and Respondent has a pattern of registering
domain names that incorporate other famous marks. Further, Respondent is attracting users for commercial gain by
creating a likelihood of confusion with Complianant’s trademarks. Therefore, Respondent has registered and
used <jeanettelee.com>
in bad faith.
B. Respondent
No Response was
submitted.
FINDINGS
Complainant
is an accomplished professional athlete.
She has become widely known since she began playing pool professionally
in 1992. Her fame is due in large part
to her success as a pro pool player and her extensive appearances on
television. Complainant also has
numerous endorsement deals, including: Jeanette Lee pool cues, Canadian Club
products, several charitable causes,
and her book The Black Widow’s Guide to
Killer Pool.
Complainant
had owned the <jeanettelee.com> registration for about six years and used it as the “Official
Jeanette Lee web site;” then Complainant lost the registration. Subsequently, Complainant has used
<jeanettelee.tv> as the “Official Jeanette Lee web site.” Complainant filed for a United States Trademark
Registration on August 24, 2001 for a JEANETTE LEE design mark for billiards
and pool
goods.
According to Complainant, after Complainant’s <jeanettelee.com> registration lapsed in early 2001, an Armenian
company known as Seagod registered the disputed domain name without
Complainant’s authorization
and connected the disputed domain name to a website
that offered pornographic goods and services.
Subsequently, Seagod transferred the disputed domain name to
Respondent. Complainant believes that
Respondent and Seagod are the same entity.
Respondent has used the disputed domain name as early as June 21, 2001
and has directed users to a commercial website which feature
links to gambling
and pornographic websites.
On October 25, 2001, Complainant made an online bid
of $500 for the rights to the disputed domain name, but Respondent rejected the
offer and submitted a counter-offer for $2,250. According to Complainant, besides <jeanettelee.com>, Respondent also owns several domain names that incorporate other famous
marks, including: <dunlopgear.com>, <monarchrecords.com>,
and
<goworldnet.com>.
DISCUSSION
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 and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) 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; and
(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.
Identical
and/or Confusingly Similar
Complainant
has established its rights to the JEANETTE LEE mark, based on the popularity
she has achieved through her success as a
professional athlete. See Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution
Sept. 28, 2000) (finding that a “person may acquire such a reputation in his or
her own name as to give rise
to trademark rights in that name at common law”); see
also Roberts v. Boyd, D2000-0210
(WIPO May 29, 2000) (finding that trademark registration was not necessary and
that the name “Julia Roberts” has sufficient
secondary association with the
Complainant that common law trademark rights exist).
The
disputed domain name <jeanettelee.com>
is identical to Complainant’s JEANETTE LEE mark. Because it is impossible to include spaces in a domain name, the
fact that the disputed domain name does not incorporate the spaces
of
Complainant’s mark does not diminish the fact that the disputed domain name is identical
to JEANETTE LEE. See Amherst
v. IFC Corp., FA 96768 (Nat. Arb. Forum Apr. 3, 2001) (finding that
Respondent’s domain name <customcommerce.com> is identical to
Complainant’s
CUSTOM COMMERCE trademark registration); see also Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com>
domain name is identical to Complainant’s BODY
BY VICTORIA mark). Furthermore, even though Complainant’s mark
does not include a generic top-level domain name, the disputed domain name is
identical
to Complainant’s mark. See
Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to
Complainant’s mark because the generic top-level domain
(gTLD) “.com” after the
name POMELLATO is not relevant); see also Entrepreneur Media, Inc. v.
Smith, [2002] USCA9 115; 279 F.3d 1135, 1146 (9th
Cir. Feb. 11, 2002) (Internet users searching for a company's [w]ebsite . . .
assume, as a rule of thumb, that the domain name
of a particular company will
be the company name [or trademark] followed by '.com.').
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Respondent
has failed to file a Response in this matter.
Therefore, the Panel may presume
that Respondent has no rights or legitimate interests in <jeanettelee.com>. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no
legitimate interest in the domain names). Therefore, the Panel will presume that all
of the allegations made in the Complaint are true. See Vertical Solutions
Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31,
2000) (failure to respond allows all reasonable inferences of fact in the
allegations of Complainant
to be deemed true).
Respondent
has linked the disputed domain name, which is identical to Complainant’s famous
mark, to a website that offers advertisements
for pornographic and gambling
services. Such use by Respondent is not
a use connected with a bona fide offering of goods and services as pursuant to
Policy ¶ 4(c)(i). See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000)
(finding that it is not a bona fide offering of goods or services to use a
domain name for commercial
gain by attracting Internet users to third party
sites offering sexually explicit and pornographic material, where such use is
calculated
to mislead consumers and tarnish the Complainant’s mark); see
also Société des Bains de Mer v.
Int’l Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or
legitimate interests where Respondent used the <casinomontecarlo.com>
and
<montecarlocasinos.com> domain names in connection with an online
gambling website).
Respondent
has not been granted a license to use the disputed domain name and because
Complainant’s mark is identifiable only to her,
it is difficult to imagine
anyone other than Complainant to be commonly known as <jeanettelee.com>. Therefore, Respondent has failed to satisfy
Policy ¶ 4(c)(ii). See
Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (holding that
Respondent did not demonstrate any rights or legitimate interests in a famous
author’s
name he used for an Internet domain name. The author owned common law
trademark rights in her name and did not license her rights
or otherwise
provide permission for Respondent to use her mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397
(WIPO Dec. 21, 2000) (finding that no person besides Complainant could claim a
right or a legitimate interest with respect
to the domain name
<nike-shoes.com>).
It is established that the disputed
domain name is identical to Complainant’s famous mark. Respondent has used this disputed domain
name to divert users to a website that offers advertisements for pornographic
goods and services. This commercial use
not only tarnishes Complainant’s famous name and mark, but it is also not a
legitimate noncommercial or fair use
of <jeanettelee.com> pursuant to
Policy ¶ 4(c)(iii). See Nat’l Football League Prop., Inc. v. One Sex
Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that Respondent had
no rights or legitimate interests in the domain names <chargergirls.com>
and <chargergirls.net> where Respondent linked these domain names to its
pornographic website); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar.
5, 2001) (finding that infringing on another's well-known mark to provide a
link to a pornographic
site is not a legitimate or fair use).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Respondent
is known as “Domain Research and Sales.”
The Panel may infer by Respondent’s name alone that Respondent’s
intention was to sell the disputed domain name in excess of out-of-pocket
costs
when it registered <jeanettelee.com>. See
Euromarket Designs, Inc. v.
Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding “the manner
in which the Respondent chose to identify itself and its administrative and
billing contacts both conceals its identity and unmistakably conveys its
intention, from the date of the registration, to sell rather
than make any use
of the disputed domain name”).
Furthermore, Respondent’s counter-offer to sell the disputed domain name
for $2,250 is evidence that Respondent registered and used
the disputed domain
name for the purpose of selling it to Complainant for consideration in excess
of out-of-pocket costs. Thus,
Respondent is in bad faith as pursuant to Policy ¶ 4(b)(i). See
Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where
Respondent, a domain name dealer, rejected Complainant’s nominal offer of
the
domain in lieu of greater consideration); see also Technology Prop., Inc v. Hussain, FA
95411 (Nat. Arb. Forum Sept. 14, 2000) (finding bad faith where Respondent
verbally offered the domain names for sale for $2,000).
Respondent
has registered and used a domain name that incorporates a distinctive and
famous mark in its entirety. According
to Complainant, Respondent has done this before to other famous marks. This is evidence that Respondent has
registered the disputed domain name to prevent Complainant from reflecting its
mark in the corresponding
domain name and that Respondent has engaged in a similar
pattern of registering infringing domain names. Therefore, Respondent has registered the disputed domain name in
bad faith as outlined in Policy ¶ 4(b)(ii).
See Armstrong Holdings,
Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that
the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain
names,
which infringe upon others’ famous and registered trademarks); see also
Am. Online, Inc. v. iDomainNames.com,
FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a pattern of conduct where
Respondent has registered many domain names unrelated
to the Respondent’s
business which infringe on famous marks and websites).
By
registering and using a domain name that reflects a celebrity’s name in
connection with a website that advertises gambling and
pornographic goods and
services, Respondent is attracting users to its website for commercial gain by
creating a likelihood of confusion
with Complainant’s mark. This is evidence that Respondent has used
the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000)
(finding bad faith where Respondent linked the domain name in question to
websites displaying banner
advertisements and pornographic material); see
also Mars, Inc. v. Double Down
Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶
4(b)(iv) where Respondent linked the domain name <marssmusic.com>,
which
is identical to Complainant’s mark, to a gambling website).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that the requested relief be hereby granted.
Accordingly,
it is Ordered that the domain name <jeanettelee.com>
be transferred from
Respondent to Complainant.
James
A. Carmody, Esq., Panelist
Dated:
April 1, 2002
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