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Generic Top Level Domain Name (gTLD) Decisions |
Julie E.
Gauthier p/k/a Juli Ashton v. Russian Communications
Claim Number: FA0408000307349
Complainant
is Julie E. Gauthier p/k/a Juli Ashton (“Complainant”), represented by Nancy J. Mertzel, of Brown Raysman Millstein Felder & Steiner
LLP, 900 Third Avenue, New
York, NY 10022. Respondent is Russian Communications, (“Respondent”), PostBox 4075, Moscow, na
333000.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juliashton.com>,
registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Complainant submitted a Complaint to the
National Arbitration Forum (the "Forum") electronically on August 4,
2004; the
Forum received a hard copy of the Complaint on August 6, 2004.
On August 5, 2004, Intercosmos Media
Group, Inc. d/b/a Directnic.com confirmed by e-mail to the Forum that the
domain name <juliashton.com> is registered with Intercosmos Media
Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant
of the name. Intercosmos
Media Group, Inc. d/b/a Directnic.com has verified
that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a
Directnic.com
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 August 9, 2004, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"),
setting a deadline of August 30, 2004 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@juliashton.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 September 9, 2004, pursuant to
Complainant's request to have the dispute decided by a single-member Panel, the
Forum appointed
Honorable Paul A. Dorf (Ret.) 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.
Complainant requests that the domain name
be transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1.
Respondent’s
<juliashton.com> domain name is identical to Complainant’s JULI ASHTON mark.
2.
Respondent
does not have any rights or legitimate interests in the <juliashton.com>
domain name.
3.
Respondent
registered and used the <juliashton.com> domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant,
Julie, E. Gauthier, adopted the pseudonym “Juli Ashton” in 1994 to use as her
performing name and to identify herself
professionally. Complainant is a
performer, actor, model and celebrity personality in the adult entertainment
industry.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office (“USPTO”) for the JULI ASHTON mark (Reg.
No. 2,618,320, issued on Sept.
10, 2002).
Complainant
is one of the most well-known media personalities in the adult entertainment
industry. For the past nine years, Complainant
has hosted shows on Playboy TV
and XM Satellite Radio, and has appeared in numerous publications and on
numerous television shows.
Complainant has expended substantial amounts of time
and money promoting herself as “Juli Ashton” in the adult entertainment
industry.
As a result of such efforts, Complainant has established a positive
reputation and become well-known in the adult entertainment industry
by her
pseudonym, “Juli Ashton.”
Respondent
registered the <juliashton.com> domain name Jan. 10, 2000.
Respondent is using the domain name to promote and sell products featuring
Complainant, including DVDs
and videos. Respondent also uses Complainant’s name
and likeness to promote its website.
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.
Complainant
has established rights in the JULI ASHTON mark through ownership of a common
law mark. A common law mark is established
when a Complainant’s goods or
services become distinctive and acquire secondary meaning. Complainant
established that through Complainant’s
long-term, continued use of the mark
since 1994, Complainant and Complainant’s related goods and services have
acquired secondary
meaning and become distinctive of Complainant’s goods and
services. Thus, Complainant has established secondary meaning in the JULI
ASHTON mark through its continued and exclusive use for the last ten years. See
Tuxedos By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary
meaning was
established); see also Keppel
TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“On account of long
and substantial use of the said name [<keppelbank.com>] in connection
with
its banking business, it has acquired rights under the common law.”); see
also BroadcastAmerica.com, Inc. v.
Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that Complainant has common
law rights in BROADCASTAMERICA.COM, given extensive use of
that mark to
identify Complainant as the source of broadcast services over the Internet, and
evidence that there is wide recognition
with the BROADCASTAMERICA.COM mark
among Internet users as to the source of broadcast services).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Moreover,
Respondent has offered no evidence and there is no proof in the record
suggesting that Respondent is commonly known by the
<juliashton.com>
domain name. Thus, Respondent has not established rights or legitimate
interests in the disputed domain name pursuant to 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 interests
where Respondent was not commonly known by the mark
and never applied for a
license or permission from Complainant to use the trademarked name).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the <juliashton.com> domain name for its own commercial
gain. Respondent’s domain name diverts Internet users, who intend to search
under Complainant’s
well-known mark, to a website sponsored by Respondent that
offers Complainant’s products. Respondent’s practice of diversion, motivated
by
commercial gain, through the use of an identical domain name evidences bad
faith registration and use pursuant to Policy ¶ 4(b)(iv).
See G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that Respondent registered and used the domain name in bad faith
pursuant to
Policy ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website);
see
also Fossil Inc. v. NAS, FA 92525
(Nat. Arb. Forum Feb. 23, 2000) (finding that Respondent acted in bad faith by
registering the <fossilwatch.com>
domain name and using it to sell
various watch brands where Respondent was not authorized to sell Complainant’s
goods); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat.
Arb. Forum June 23, 2003) (finding that Respondent’s use of the
<saflock.com> domain name to offer goods competing
with Complainant’s
illustrates Respondent’s bad faith registration and use of the domain name,
evidence of bad faith registration
and use pursuant to Policy 4(b)(iv)); see
also 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 Complainant’s
well-known marks,
thus creating a likelihood of confusion strictly for commercial gain).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the <juliashton.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul
A. Dorf (Ret.), Panelist
Dated: September 21, 2004
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