Generic Top Level Domain Name (gTLD) Decisions

DECISION

Ann Coulter v. Mark Vadnais

Claim Number:  FA0212000137221

PARTIES

Complainant is Ann Coulter, New York, NY (“Complainant”) represented by Thomas M. Barba, of Steptoe & Johnson LLP. Respondent is Mark Vadnais, Oakdale, MN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

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

PANEL

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 Panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 19, 2002; the Forum received a hard copy of the Complaint on December 23, 2002.

On December 30, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <anncoulter.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 20, 2003 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@anncoulter.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 28, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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 makes the following assertions:

1.   Respondent’s <anncoulter.com> domain name is identical to Complainant’s common law ANN COULTER mark.

2.   Respondent does not have any rights or legitimate interests in the <anncoulter.com> domain name.

3.   Respondent registered and used the <anncoulter.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Ann Coulter, is a professional political commentator and television personality. She is a regular on the MSNBC broadcast network and has appeared as a guest on political television programs such as ABC’s Good Morning America; NBC’s Today Show; CNN’s Larry King Live, Crossfire, and American Morning; and Fox News’ The O’Reilly Factor. A highly-sought public speaker, Complainant receives hundreds of requests for speaking engagements and public appearances each year.

Complainant has a widely distributed syndicated column which appears in more than fifty newspapers in the United States. Complainant has also written several books, including High Crimes and Misdemeanors: The Case Against Bill Clinton and Slander: Liberal Lies About the American Right, which spent eight and ten weeks on the New York Times Best-seller list, respectively. She has been a contributor to National Review, George, and Human Events, and her opinion-editorials have been published by hundreds of newspapers in the United States.

Complainant has been profiled in publications such as the Washington Post, National Journal, TV Guide and New York magazine. Judge Richard Posner lists Complainant as one of the “100 Top Public Intellectuals” and George magazine lists Complainant as one of the twenty “Most Interesting Women in Politics.”

Respondent, Mark Vadnais, registered the <anncoulter.com> domain name on January 27, 2000. Respondent previously used the domain name to post Complainant’s likeness and syndicated columns without Complainant’s authorization or license. Currently, Respondent posts no content at the disputed domain name.

After being notified of Complainant’s rights in the ANN COULTER mark in a series of communications in 2000-2001, Respondent agreed to transfer the disputed domain name to Complainant, as long as it could be assured that it was indeed the real Ann Coulter. After prolonged discussion, Respondent failed to sign or submit transfer documents given to him by Complainant, and ceased acknowledging any communications from Complainant.

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 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  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 common law rights in the ANN COULTER name and mark, permitting it to bring this dispute under the UDRP. 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 Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the Complainant have rights in a registered trademark and that it is sufficient to show common law rights); (finding that the Complainant has common law rights to her name).

Respondent’s <anncoulter.com> domain name is identical to Complainant’s ANN COULTER mark. Respondent’s elimination of the spaces between the words in Complainant’s name and mark and the addition of the top-level domain “.com,” both required features of a domain name, do not create distinctions that are relevant for the purposes of Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Yanni Mgmt., Inc. v. Progressive Indus., FA 95063 (Nat. Arb. Forum July 31, 2000) (concluding that a confusing similarity existed between <yanni.com> and Complainant’s YANNI trademark, but for the .com portion of the domain name).

Accordingly, the Panel finds that the <anncoulter.com> domain name is identical to Complainant’s common law ANN COULTER mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant can make an affirmative showing that Respondent has no rights or legitimate interests in the disputed domain name by demonstrating that Respondent does not qualify for the protections offered under Policy ¶¶ 4(c)(i)-(iii). With such a showing, Complainant has successfully met its burden under the Policy, shifting the burden to Respondent to rebut Complainant’s allegations. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name, Respondent must come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

In the past, Respondent has used the <anncoulter.com> to post Complainant’s likeness and syndicated columns without authorization or license from Complainant. Such activity, violating United States and international copyright and trademark laws, was neither a bona fide offering of goods and services as contemplated in Policy ¶ 4(c)(i), nor an example of a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Marino v. Video Images Prod., D2000-0598 (WIPO Aug. 2, 2000) (stating, "[I]n fact, in light of the uniqueness of the name <danmarino.com>, which is virtually identical to the Complainant’s personal name and common law trade mark, it would be extremely difficult to foresee any justifiable use that the Respondent could claim.  On the contrary, selecting this name gives rise to the impression of an association with the Complainant which is not based in fact"); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).

After Respondent removed the infringing material from its domain name, it ceased to post any content at all. Non-use of a domain name does not evidence rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).

Respondent is listed in the WHOIS contact information for the <anncoulter.com> domain name as Mark Vadnais, not “Ann Coulter.” Moreover, Respondent’s posting of Complainant’s columns on its website, along with its statement in an e-mail expressing a willingness to “gladly” transfer the disputed domain name when presented with “concrete evidence” that it was dealing with Ann Coulter both imply that Respondent is not commonly known by the name ANN COULTER. As such, Complainant has shown that Policy ¶ 4(c)(ii) does not apply to Respondent. 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Complainant has adequately met its burden under Policy ¶ 4(a)(ii). By not responding to the Complaint, Respondent fails to meet its burden. The Panel views this failure as evidence that Respondent lacks rights and 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); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <anncoulter.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

When determining whether a domain name has been used in bad faith, the Panel will not only look to Policy ¶ 4(b) for guidance, but to all of the circumstances surrounding the dispute in reaching its decision. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

Respondent initially used the <anncoulter.com> domain name to post Complainant’s syndicated materials without authorization by Complainant. In doing so, Respondent was violating both United States and international copyright and trademark laws, activity that equates to bad faith use of the domain name under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that Respondent's use of <monsantos.com> to misrepresent itself as Complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that Respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that Complainant endorsed and sponsored Respondent’s website).

The Panel infers from the facts that Respondent was well-aware of Complainant and its rights in the ANN COULTER mark prior to registering its infringing domain name. Respondent’s registration of the disputed domain name with actual knowledge of Complainant’s rights evidences bad faith registration of the domain name. See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (“The Respondent intentionally registered a domain name which uses the Complainant’s name.  There is no reasonable possibility that the name karlalbrecht.com was selected at random.  There may be circumstances where such a registration could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith”).

In light of Respondent’s bad faith registration and previous use of the disputed domain name, the Panel feels that Respondent would be hard-pressed to make any good faith use of the domain name. As Respondent did not come forward in this proceeding with any evidence rebutting this inference, the Panel concludes that Respondent’s passive holding of the <anncoulter.com> domain name is further evidence of bad faith on behalf of Respondent. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose).

The Panel thus finds that Respondent registered and used the <anncoulter.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

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

Honorable Paul A. Dorf (Ret.) Panelist

Dated:   February 11, 2003

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