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Generic Top Level Domain Name (gTLD) Decisions |
Julie E. Gauthier p/k/a Juli Ashton v.
0-0 Adult Video Corporation
Claim
Number: FA0411000362293
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 0-0 Adult Video Corporation (“Respondent”),
49 Eaton Ct., Manhasset, NY 11030.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <julieashton.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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
9, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on November 13, 2004.
On
November 10, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed
by e-mail to the National Arbitration Forum that
the domain name <julieashton.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
November 15, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 6, 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@julieashton.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 13, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
Tyrus R. Atkinson, Jr., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 <julieashton.com>
domain name is confusingly similar to Complainant’s JULI ASHTON mark.
2. Respondent does not have any rights or
legitimate interests in the <julieashton.com> domain name.
3. Respondent registered and used the <julieashton.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Julie 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 celebrated 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 a prominent media personality 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 <julieashton.com> domain name on February 28, 1999.
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.
Registration of
a mark with a governmental authority is unnecessary for a complainant to
establish rights in a mark if a common law
mark has been established. 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 that the Uniform Domain Name Dispute Resolution Policy does not
require “that a
trademark be registered by a governmental authority for such
rights to exist”).
Complainant
has established rights in the JULI ASHTON mark through ownership of a common
law mark. Complainant established that
through Complainant’s long-term, continued use of the mark in commerce since
1994, Complainant’s mark
acquired secondary meaning and became 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).
Respondent’s <julieashton.com>
domain name is confusingly similar to Complainant’s JULI ASHTON mark. Respondent merely adds the letter “e” to
Complainant’s mark. This addition makes
the domain name phonetically identical to Complainant’s mark and represents a
common misspelling of Complainant’s
mark.
The mere addition of the letter “e” is not enough to negate a finding of
confusing similarity pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard
Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that
a domain name which is phonetically identical to Complainant’s mark satisfies
¶
4(a)(i) of the Policy); see also Reuters
Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding
that a domain name which differs by only one letter from a trademark has a greater
tendency
to be confusingly similar to the trademark where the trademark is
highly distinctive); see also Bama
Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding
that the domain names, <davemathewsband.com> and <davemattewsband.com>,
are common misspellings and therefore confusingly similar).
Furthermore, the
omission of the space between the words in Complainant’s JULI ASHTON mark is
insufficient to distinguish the domain
name from the mark. 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 Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO
Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is
identical to the WEMBLEY STADIUM mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in the <julieashton.com>
domain name. Due to Respondent’s failure to respond to the Complaint, it is
assumed that Respondent lacks rights and legitimate interests
in the disputed
domain name. The burden shifts to Respondent to show that it does have rights
or legitimate interests once Complainant
establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). See
Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov.
28, 2000) (finding that under certain circumstances the mere assertion by
Complainant that Respondent has
no rights or legitimate interests is sufficient
to shift the burden of proof to Respondent to demonstrate that such rights or
legitimate
interests do exist); see also G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate
interests with respect to
the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion).
Moreover, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted
a Response. See Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to
accept as true all allegations of the Complaint.”);
see also Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact in
the allegations of the Complaint to be deemed
true).
Respondent is
using the <julieashton.com> domain name to divert Internet traffic
to a website that offers and promotes products featuring Complainant.
Respondent’s use of
a domain name that is confusingly similar to Complainant’s
JULI ASHTON mark to redirect Internet users interested in products that
feature
Complainant to a website that offers and promotes Complainant’s products is not
a use in connection with a bona fide offering
of goods or services pursuant to
Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name
pursuant to Policy
¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO
Jan. 18, 2001) ("Use of complainant’s entire mark in infringing domain
names makes it difficult to infer a
legitimate use."); see also Nat’l Collegiate Athletic Ass’n v. Halpern,
D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell
Complainant’s goods without Complainant’s authority, as
well as others’ goods,
is not bona fide use); see also Clear Channel Commun,, Inc. v. Beaty Enters.,
FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a
competitor of Complainant, had no rights or legitimate interests
in a domain
name that utilized Complainant’s mark for its competing website); see also MBS
Computers Ltd. v. Workman, FA
96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate
interests when Respondent is using a domain name identical
to Complainant’s
mark and is offering similar services).
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 <julieashton.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 a domain name
confusingly similar to Complainant’s mark 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).
Additionally,
Respondent has registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iii) by registering
a domain name confusingly similar
to Complainant’s mark and using it to market competing adult material. See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding
that the minor degree of variation from Complainant's marks suggests that
Respondent, Complainant’s competitor, registered
the names primarily for the
purpose of disrupting Complainant's business); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business).
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 <julieashton.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
December 20, 2004
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