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Generic Top Level Domain Name (gTLD) Decisions |
Hugh Jackman v. Peter Sun
Claim Number: FA0403000248716
PARTIES
Complainant
is Hugh Jackman (“Complainant”), represented
by Michael L. Gannon, of Fish & Richardson P.C., P.A., 3300 Dain Rauscher Plaza, 60 South Sixth Street, Minneapolis, MN
55402. Respondent is Peter Sun (“Respondent”), 525 W.
Hawthorne Pl. Apt. 3101, Chicago, IL 60657.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <hughjackman.com>, <hughjackman.net>
and <hughjackman.org>, registered with Go Daddy Software, Inc.
PANEL
The
undersigned, Daniel B. Banks, Jr., Panelist, 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 19, 2004; the Forum received
a hard copy of the
Complaint on March 22, 2004.
On
March 19, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain names <hughjackman.com>, <hughjackman.net>
and <hughjackman.org> are registered with Go Daddy Software, Inc.
and that the Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that
Respondent is bound by the Go Daddy Software, 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
March 25, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 14,
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@hughjackman.com, postmaster@hughjackman.net and
postmaster@hughjackman.org by e-mail.
A
timely Response was received and determined to be complete on April 13, 2004.
A
timely Additional Submission was received from Complainant and was determined
to be complete on April 19, 2004.
A
timely Additional Submission was received from Respondent and was determined to
be complete on April 16, 2004.
On April 26, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Daniel B. Banks,
Jr., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant;
Complainant,
Hugh Jackman, is a world famous professional actor and entertainer. He has starred and appeared in numerous
feature films, television series, made for TV movies and Broadway productions. In 2002, Mr. Jackman received the Golden
Globe nomination for Best Actor in a Musical or Comedy and has been named “One
of the 50
Most Beautiful People in the World” by People Magazine for the past three years. Complainant has become internationally recognized and famous and
his name serves as his trademark. To
that end, Complainant has applied to register his name as a U.S.
trademark. Complainant claims common
law trademark rights to his name.
Complainant makes the following claims:
1. The domain names at issues are identical
to Complainant’s name in which he has
rights.
2. Respondent has no rights or legitimate
interests in the domain names for the following reasons:
a. Respondent has not used or demonstrably
prepared to use the domain names in connection with a bona fide offering of
goods or services.
b. Respondent has never been commonly known
by the domain names.
c. Respondent is not making a legitimate
noncommercial or fair use of the domain names.
3. The domain names should be considered as
having been registered and being used in bad faith for the following reasons:
a. Respondent’s registration and use of the
three disputed domain names with full knowledge of Complainant’s rights is
evidence of bad
faith.
b. Respondent’s failure to establish a
website in connection with the domain names is evidence of bad faith.
c. Respondent has registered the domain
names in order to prevent Complainant from reflecting his mark in a
corresponding domain name
and Respondent has engaged in a pattern of such
conduct.
B.
Respondent:
Respondent
admits that the disputed domain names are similar to the mark “HUGH JACKMAN”
and that Complainant has a common law trademark
interest in that mark. Respondent also concedes that he has never
been known or referred to as HUGH JACKMAN.
He registered the domain names with the purpose of establishing an
independent celebrity fan website. He
asserts that he plans to make a legitimate noncommercial use of the domain
names without the intent for commercial gain to misleadingly
divert consumers
or to tarnish the trademark or service mark at issue. He states that the domain names have not been registered and are
not being used in bad faith. Respondent
alleges that the delay in establishing a website in connection with the domain
names is not sufficient evidence of bad
faith.
He also asserts that he did not register the domain names in order to
prevent Complainant from reflecting its mark in a corresponding
domain name and
he has not engaged in a pattern of conduct sufficient to constitute bad
faith.
C.
Additional Submissions:
In
Complainant’s Additional Submission, Complainant asserts that Respondent has
conceded (1) Complainant’s common law trademark rights
in the disputed domain
name and (2) that Respondent has no rights or legitimate interests in the disputed
domain names. He further asserts that
Respondent’s claim that he intends to form a fan website is not sufficient to
establish rights in the trademark
and his passive holding of the domain names
for 1 to 4 years is sufficient evidence of bad faith. Also, Respondent’s registration of several different domain
names, which are infringing of the same trademark constitutes a “pattern
of
conduct” under the UDRP. Complainant also
adds allegations that Respondent has attempted to deceive the Panel by asserting
the he is a “non-commercial amateur.”
Complainant alleges that Respondent has been in the domain name business
quite some time, registering many domain names using a variety
of different
addresses, telephone numbers and e-mail addresses.
In
Respondent’s Additional Submission he says that Complainant is mistaken about
the registration periods of the disputed domain names
and the he has not been
in the domain name registration business.
Respondent also asks the Panel to sanction Complainant under Code of
Procedure Rule 46 because Complainant’s allegations of Respondent’s
previous
domain name activities were malicious in nature and were not supported by any
evidence.
FINDINGS
1. The disputed domain names are identical
to a trademark or service mark in which Complainant has rights.
2. Respondent has no rights or legitimate
interests in respect of the domain names.
3. The domain names were registered and are
being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
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;
(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.
Basically,
Respondent has conceded that the disputed domain names are identical to the
mark HUGH JACKMAN and that Complainant has
established a common law trademark
interest therein. Additionally,
Complainant applied to register the HUGH JACKMAN mark with the U.S. Patent and
Trademark Office (“USPTO”) on September
30, 2003 (Application Number
78,307,587). Complainant asserted that
he has established rights in the mark via the application. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000)
(finding that the Rules do not require that Complainant's trademark or service
mark be registered
by a government authority or agency for such rights to
exist. Rights in the mark can be
established by pending trademark applications).
This
Panel finds that Complainant has established common law rights in the HUGH
JACKMAN mark. This is supported by the
fact that it is Complainant’s name, he has been in numerous film, television,
Broadway performances, and
has been nominated for performance awards. Moreover, Complainant has been named as “One
of the 50 Most Beautiful People in the World” by People Magazine for the
past three years. As a result of Mr.
Jackman’s fame, the name Hugh Jackman has become internationally recognized and
famous and serves as Mr. Jackman’s
trademark to identify his performance and
entertainment services. See 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 that common law
trademark rights exist); see also Jagger
v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (Complainant held
common law trademark rights in his famous name Mick Jaggger); 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
S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum
Mar. 13, 2003) (holding that Complainant established rights in the descriptive
RESTORATION GLASS mark
through proof of secondary meaning associated with the
mark).
The
disputed domain names are identical to the HUGH JACKMAN mark because they fully
incorporate the mark and merely add the generic
top-level domains “.com,”
“.net,” and “.org.” Generic top-level
domains are irrelevant in determining whether a domain name is identical to
another’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain
(gTLD) “.com” after the name
POMELLATO is not relevant); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar); see also Microsoft Corp.
v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name
<microsoft.org> is identical to Complainant’s mark).
Respondent lacks rights and legitimate interests in
the domain names pursuant to Policy ¶ 4(c)(ii) because Respondent is not
commonly
known by the domain names.
Moreover, Complainant did not authorize or license Respondent to
register or use domain names that incorporate the HUGH JACKMAN mark. See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly
known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant;
(2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the
domain name in question).
Furthermore,
Respondent lacks rights and legitimate interests in the domain names because
Respondent has failed to develop a website
for the domain names. The evidence indicates that the disputed
domain name <hughjackman.com>
was registered on September 14, 1999.
The disputed domain name <hughjackman.net>
was registered on July 21, 2000. The
disputed domain name <hughjackman.org>
was registered on July 22, 2000. The
evidence indicates that Respondent has passively held the domain names since
their registration and has not made any preparations
to use the names. In
addition, there is no evidence to corroborate Respondent’s claim that its
purported website was in development prior to notice
of the dispute. Passive holding of a domain name does
not constitute a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Ritz-Carlton Hotel v. Club Car Executive,
D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the
dispute, Respondent had not used the domain names in connection
with any type
of bona fide offering of goods and services); see also Melbourne IT Ltd. v. Stafford,
D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in
the domain name where there is no proof that Respondent
made preparations to
use the domain name or one like it in connection with a bona fide offering of
goods and services before notice
of the domain name dispute, the domain name
did not resolve to a website, and Respondent is not commonly known by the
domain name).
The
Panel finds and Respondent concedes that, due to his celebrity status,
Respondent had actual or constructive knowledge of Complainant’s
rights in the
HUGH JACKMAN mark. Indeed, Respondent’s
claimed rights in the domain names were to open a fan website for Mr.
Jackman. Registration of a domain name
that is confusingly similar to a mark, despite knowledge of the mark holder’s
rights, is evidence of
bad faith registration pursuant to Policy ¶ 4(a)(iii). See 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 Paws, Inc. v. Odie, FA 96206 (Nat. Arb. Forum Jan. 8, 2001)
("Given the uniqueness and the extreme international popularity of the
[ODIE] mark,
Respondent knew or should have known that registering the domain
name in question would infringe upon the Complainant's goodwill.");
see
also Stam
v. Cohen,
D2000-1061 (WIPO Nov. 4, 2000) (finding that Respondent’s registration of the
<jaapstam.com> domain name was in bad faith
because he “would have been aware of Complainant and
his reputation as an international football player at the time when Respondent
registered
the said domain name”).
Furthermore,
Respondent has passively held the domain names. The Panel finds, under the circumstances presented in this case,
that such conduct constitutes bad faith registration and use pursuant
to Policy
¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of
the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy); see
also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in
bad
faith); see also Garnett v. Trap Block Techs., FA 128073 (Nat. Arb.
Forum Nov. 21, 2002) (finding that Respondent’s passive holding of the <kevingarnett.com>
domain name constituted bad faith registration and use).
It
also appears that Respondent could not possibly use the domain names in a
manner that would not infringe upon Complainant’s rights
in the HUGH JACKMAN
mark. Complainant asserts that this
would be true even if the domain names resolved to a fan website. See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000)
(finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used
the domain
name because “It makes no sense whatever to wait until it actually
‘uses’ the name, when inevitably, when there is such use, it will
create the
confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260
(WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the
domain name in question and there are no
other indications that Respondent
could have registered and used the domain name in question for any
non-infringing purpose).
Finally,
the Panel finds that Respondent has registered and used the domain names in bad
faith pursuant to Policy ¶ 4(b)(ii) because
Respondent registered multiple
domain names identical to Complainant’s mark.
If Respondent merely wanted to establish a fan website, he could do so
with one domain name instead of three.
Moreover, in Complainant’s Additional Submission, it appears that
Respondent has registered two domain names that incorporate the
television star
of Showtime’s acclaimed series Queer as Folk, Scott Lowell. See YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001)
(finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's
registration of two domain
names incorporating Complainant's YAHOO! mark); see
also Gamesville.com, Inc. v.
Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000) (finding that
Respondent engaged in a pattern of conduct of registering domain names to
prevent the owner of the trademark from reflecting the mark in a corresponding
domain name, which is evidence of registration and
use in bad faith).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hughjackman.com>, <hughjackman.net>
and <hughjackman.org> domain names be TRANSFERRED from Respondent to Complainant.
Daniel
B. Banks, Jr., Panelist
Dated: May 10, 2004
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