DECISION

Petra Nemcova v. In Stealth Mode and POOL Domain Manager

Claim Number:  FA0409000335401

PARTIES

Complainant is Petra Nemcova (“Complainant”), represented by Jeffrey Levy, of Roberts and Ritholz, 183 Madison Avenue, Penthouse Suite, New York, NY 10016.  Respondent is In Stealth Mode and POOL Domain Manager (“Respondent”), P.O. Box 1335, Owings Mills, MD.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <petranemcova.com>, registered with Domainstobeseen.

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 25, 2004; the Forum received a hard copy of the Complaint on September 29, 2004.

On September 28, 2004, Domainstobeseen confirmed by e-mail to the Forum that the domain name <petranemcova.com> is registered with Domainstobeseen and that Respondent is the current registrant of the name. Domainstobeseen has verified that Respondent is bound by the Domainstobeseen 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 October 5, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 25, 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@petranemcova.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 November 4, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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 makes the following assertions:

1. Respondent’s <petranemcova.com> domain name is identical to Complainant’s PETRA NEMCOVA mark.

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

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

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

FINDINGS

Complainant, Petra Nemcova, is an international supermodel.  In connection with her modeling, Complainant has appeared in advertisements for many international brands such as La Perla, Max Factor, Victoria’s Secret, Clarins, Cartier, Pantene, Freeman’s of London, Wonder Bra, Bloomingdale’s, Macy’s, and Neiman Marcus. 

In addition, Complainant has been featured on the cover and/or pages of the following publications: ELLE, Harper’s Bazaar, Cosmopolitan, Shape, Hamptons, Ocean Drive, Marie Claire, People, GQ, and Depeche Mode.  Complainant has also appeared in Sports Illustrated magazine’s world-renowned swimsuit issue in both 2001 and 2002.  In 2003, Complainant became the cover girl of Sports Illustrated’s swimsuit issue.  The swimsuit issue has a worldwide readership of hundreds of millions. 

As the result of her successes, Complainant has appeared on television programs and networks such as “The Tonight Show with Jay Jeno,” “The Craig Kilborn Show,” “The Today Show,” “Spike TV,” and “ESPN.”

Respondent registered the disputed domain name <petranemcova.com> on May 25, 2004.  The domain name resolves to a website located at the domain name <instealthmode.com>.  The website contains an offer for third parties to participate in business opportunities with Respondent, including supplying content and financial support.

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

To establish standing under Policy ¶ 4(a)(i), a complainant must establish that it has rights in a trademark or service mark.  Complainant claims rights in the service mark PETRA NEMCOVA.  A service mark is a symbol used by a person to identify and distinguish her services from those sold by others and to indicate the source of those services.  In the instant case, the Panel finds that the PETRA NEMCOVA mark functions as a service mark.  The mark is used to identify and distinguish Complainant’s modeling and advertising services.  See HER MAJESTY THE QUEEN v. Virtual Countries, Inc., D2002-0754 (WIPO Nov. 27, 2002) (“The primary function of a trademark or service mark is to identify the proprietor as the source of the goods or services to which the mark has been applied and, in so doing, to distinguish the proprietor's goods or services from the goods or services from the goods or services of other traders.”).

Complainant has not registered the PETRA NEMCOVA service mark with any legitimate governmental trademark authority.  Nonetheless, unregistered marks are generally afforded protection under the Policy provided the mark is distinctive.  See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding the Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).

Complainant’s service mark, PETRA NEMCOVA, is the personal name of Complainant.  In the context of personal names, protection under the Policy is limited to where the name has acquired secondary meaning in the minds of the public.  A mark acquires secondary meaning when, “in the minds of the public, the primary significance of [the mark] is to identify the source of the product rather than the product itself.”  Inwood Laboratories v. Ives Laboratories, [1982] USSC 106; 456 U.S. 844, 851, n.11 (1982); see also McCarthy on Trademarks and Unfair Competition, § 13:1 (4th ed. 2002) (stating that the basic rules pertaining to the protection of personal names require actual proof of secondary meaning for protection); 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 Complainant that common law trademark rights exist); see also Riley v. so so domains, D2003-0600 (WIPO Sept. 24, 2003) (“[P]ersonal names may enjoy protection against identical or confusingly similar domain names if the name has sufficient notoriety and distinctive character in connection with the goods offered by complainant.”); see also Laurenti v. Director., FA 243460 (Nat. Arb. Forum May 7, 2004) (“The Policy recognizes that an individual’s name can acquire secondary association that gives rise to a right to protection.”).

In determining whether a mark has acquired secondary meaning several factors are taken into account, including the extent of advertising, as well as the length and exclusive use of the mark.  In the instant case, Complainant has risen to the rank of an international supermodel under her personal name, Petra Nemcova.  As proof, Complainant has lent herself to advertise for such famous brand names as La Perla, Max Factor, Victoria’s Secret, Clarins, Cartier, Pantene, Freeman’s of London, Wonder Bra, Bloomingdale’s, Macy’s, and Neiman Marcus.  Complainant has appeared several times on a variety of popular broadcast television programs.  Moreover, Complainant has graced the cover and pages of such famous magazines as ELLE, Harper’s Bazaar, Cosmopolitan, Shape, Hamptons, Ocean Drive, Marie Claire, People, GQ, Depeche Mode, as well as the famous Sports Illustrated swimsuit issues.  Notably, in 2003, Complainant was featured on the cover of Sports Illustrated swimsuit issue, which is circulated to a vast readership all over the world.  Given the extent of such advertising of her own personal name, the continuous use of the mark, and the exclusive nature of such use, the Panel finds that Complainant has established that her personal name has acquired secondary meaning in the minds of the consuming public.  See Laurenti v. Director., FA 243460 (Nat. Arb. Forum May 7, 2004) (“Complainant’s extensive use, the fame associated with Complainant, and the quantity of television and motion picture appearances by Complainant are sufficient to meet the standard required by the ICANN Policy to show secondary meaning.”); see also 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 Santana v. Domain Sales, FA 222189 (Nat. Arb. Forum Feb. 24, 2004) (“Complainant has established secondary meaning in its CARLOS SANTANA mark based on the extent of use, the quantity of musical productions and performances and the qualitative nature therein, evidenced by the induction into the Rock and Roll Hall of Fame.”).

The domain name <petranemcova.com> is identical to Complainant’s PETRA NEMCOVA mark because the domain name incorporates the mark in its entirety and the addition of the top-level domain “.com” is immaterial in comparing domain names to marks under paragraph 4(a)(i) of the Policy.  See Daedong-USA, Inc., Kioti Tractor Division v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy 4(a)(i).”); see also Nevada State Bank v. Modern Ltd. – Cayman Web Development, FA204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to respond to the Complaint.  Therefore, the Panel accepts all reasonable allegations set forth in the Complaint as true.  See Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a complainant’s allegations allows a panel to accept all of the complainant’s reasonable allegations and inferences as true); see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that the failure to respond to a complaint allows a panel to make reasonable inferences in favor of a complainant and accept the complainant’s allegations as true).

In addition, the Panel construes Respondent’s failure to respond as an admission 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 Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”)

Respondent is not using the domain name <petranemcova.com> in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy because Respondent is attempting to capitalize illegitimately on the fame associated with Complainant’s PETRA NEMCOVA mark by attracting Internet users to its commercial website, which is completely unrelated to Complainant’s distinctive mark, through the use of an identical domain name.  See Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”); see also Bank of Am. Corp. v. Northwest Free Community Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).

Moreover, there is nothing in the record that indicates to the Panel that Respondent is commonly known by the domain name <petranemcova.com> pursuant to paragraph 4(c)(ii) of the Policy.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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 established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, bad faith registration and use is established when one registers a domain name with the intention of attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with a complainant’s mark.

Respondent registered the domain name <petranemcova.com> and has used it in connection with a website that contains an offer by Respondent for others to participate in business opportunities, including supplying content and financial support.  The fact that Respondent registered the domain name <petranemcova.com> and attached an active website is evidence that Respondent intentionally attempted to attract Internet users to its website.  The fact that Respondent registered and used a domain name that is identical to Complainant’s famous PETRA NEMCOVA mark is evidence that Respondent created a likelihood of confusion with Complainant’s mark.  The fact that Respondent is soliciting third parties for business, as well as financial support, is evidence that Respondent is intending to gain commercially from the use of the disputed domain name.  Therefore, Respondent registered and used the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy.  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 used the confusingly similar domain name to attract Internet users to its commercial website); see also Am. 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 Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

Moreover, given the fame of Complainant’s PETRA NEMCOVA mark, Respondent likely registered the disputed domain name with knowledge of Complainant’s rights in the mark.  Such disregard for Complainant’s rights is further evidence of Respondent’s bad faith registration and use pursuant to paragraph 4(a)(iii) of the Policy.  See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.").

Complainant has established Policy ¶ 4(a)(iii).

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

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

Louis E. Condon, Panelist

Dated:  November 18, 2004

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