DECISION

Kirk Douglas v. JAT Entertainment Group

Claim Number: FA0203000105846

PARTIES

Complainant is Kirk Douglas of The Douglas Foundation, Beverly Hills, CA (“Complainant”) represented by Gary J. Nelson, of Christie, Parker & Hale LLP.  Respondent is JAT Entertainment Group, Santa Ana, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <kirkdouglasonline.com>, registered with Network Solutions.

PANEL

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

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 11, 2002; the Forum received a hard copy of the Complaint on March 12, 2002.

On March 15, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <kirkdouglasonline.com> is registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 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 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 4, 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@kirkdouglasonline.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 April 9, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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

Respondent’s <kirkdouglasonline.com> domain name is confusingly similar to Complainant’s KIRK DOUGLAS name.

Respondent has no rights or legitimate interests in the disputed domain.

Respondent registered and used the disputed domain name in bad faith.

 

B. Respondent

No Response was received.

FINDINGS

Complainant has registered KIRK DOUGLAS at the United States Patent and Trademark Office (“USPTO”) on February 5, 2002.  Complainant has used the KIRK DOUGLAS name since 1946 and, as a result of a successful acting and movie-directing career, has built up substantial goodwill and fame in association with it.  As a result, Complainant has common law rights to KIRK DOUGLAS.

Respondent registered the disputed domain name on June 2, 2001.  Respondent uses the disputed domain name to link to a website that provides information to Internet users about Complainant and its acting and film career.  Moreover, the disputed domain name is also linked to Respondent’s primary website, <jatentertainment.com>, where Respondent promotes the sale of celebrity art, old photographs, and solicits a $200 donation.  Respondent also provides advertisements at the disputed domain name through commercial links to business associates.

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 common law rights to his famous KIRK DOUGLAS name.  See Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (Complainant held common law trademark rights in his famous name MICK JAGGER); 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).

           

Respondent’s <kirkdouglasonline.com> is confusingly similar to Complainant’s KIRK DOUGLAS name because it contains Complainant’s name in its entirety, merely adding “.com” and the generic word “online.”  See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

 

           The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Because Respondent has not filed a Response it is presumed not to have any rights or legitimate interests in the disputed domain name.  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).

Respondent’s attempt to divert Internet users, interested in Complainant, to Respondent’s website which commercially benefits Respondent through the advertisement and sale of its goods is not a bona fide offering under Policy 4(c)(i) or a legitimate noncommercial fair use under under Policy 4(c)(iii).  See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

Respondent, known as JAT Entertainment, is not commonly known by <kirkdouglasonline.com>  or KIRK DOUGLAS, and consequently, does not have any rights or legitimate interests in the dispute domain name under Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie 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 and never applied for a license or permission from Complainant to use the trademarked name).  Moreover, due to the fame and celebrity associated with Complainant and his name, it is presumed the Respondent could not be commonly known as <kirkdouglasonline.com> .  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

            The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s unauthorized use of Complainant’s celebrity to lure Internet users to its own website for commercial gain indicates that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  See America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant).  Moreover, because the KIRK DOUGLAS name is famously and exclusively associated with Complainant, Respondent’s use of the confusingly similar domain name for a website that links to other unauthorized celebrity websites creates a likelihood of confusion as to the source, sponsorship, and authorization of Respondent’s <kirkdouglasonline.com> website. This indicates that Respondent registered and used the disputed domain name in bad faith.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).  Moreover, Respondent’s use of <kirkdouglasonline.com> to provide Internet users with information about Complainant is not a good faith use if it presents a likelihood of confusion.  See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent can accomplish his stated purpose of providing news and information about State Farm without the use of State Farm’s trademark in a name).

 

            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 shall be hereby granted.

                                                                                                                                 

Accordingly, it is Ordered that the domain name <kirkdouglasonline.com>, be transferred from Respondent to Complainant.

___________________________________________________

Sandra Franklin, Panelist

Dated: April 19, 2002

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