DECISION

Luca Laurenti v. Director. d/b/a Webhosting Service

Claim Number:  FA0402000243460

PARTIES

Complainant is Luca Laurenti (“Complainant”), represented by Luca Sandri, P.zza Castello, 26, Milano, Italy.  Respondent is Director. d/b/a Webhosting Service, The Lake Building, Tortola, 0000 VG (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lucalaurenti.tv>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically February 27, 2004; the Forum received a hard copy of the Complaint March 2, 2004.

On March 4, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <lucalaurenti.tv> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc. registration agreement and thereby has 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 8, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 29, 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@lucalaurenti.tv 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 April 9, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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. The domain name registered by Respondent, <lucalaurenti.tv>, is identical to Complainant’s LUCA LAURENTI name, which through secondary meaning, distinctive to Complainant, constitutes a protected mark.

2. Respondent has no rights or legitimate interests in the <lucalaurenti.tv> domain name.

3. Respondent registered and used the <lucalaurenti.tv> domain name in bad faith.

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

FINDINGS

Complainant is an actor from Italy who has appeared in a series of television commercials on various Italian broadcast channels for the Italian coffee blend known as “Lavazza.”  Complainant has also been a co-host in a variety of Italian prime time television programs such as “Dibattito,” “Urka,” “Il Gioco Dei Nove,” “Tira & Molla,” “Buona Domenica,” “Striscia La Notizia,” “Ciao Darwin,” “I Cervelloni,” “Beato Tra Le Donne,” and “Chi Ha Incastrato Peter Pan.” Complainant has also starred in various motion pictures that include Don Luca, I Fobici, Body Guards – Guardie del Corpo, Stuart Little 1, and Stuart Little 2.  Complainant urges that his name, LUCA LAURENTI has acquired secondary meaning as a result of his fame and that he is entitled to protection of the name as a mark.

Respondent is a business entity that registered the disputed domain name January 25, 2002.  Respondent has used the domain name to direct Internet users to Respondent’s <casino.tv> domain name, which provides online casino activities.  Respondent did not support a right to use Complainant’s name.

The Panel finds that Complainant made the necessary showings to prevail in this proceeding for the reasons set out below.

 

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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 to 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 to and/or Confusingly Similar

Under Policy ¶ 4(a)(i), a complainant must prove that the disputed domain name is identical to or confusingly similar to a trademark or service mark in which the complainant has rights. 

In this case, Complainant claims rights to the LUCA LAURENTI name but concedes that he has not registered LUCA LAURENTI with any governmental authority.  Nonetheless, he seeks protection under ICANN cases, which hold that unregistered marks may be afforded protection under the Policy in certain circumstances. 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 British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); 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 shows by sufficient proof that LUCA LAURENTI is Complainant’s personal name and that the name has acquired fame as a result of Complainant’s extensive activity in the entertainment media.  Unregistered celebrity names or marks used in conjunction with celebrity personalities have been consistently held to maintain common law trademark rights under the Policy. In the instant case, the LUCA LAURENTI mark is the personal name of an Italian celebrity.  See 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 Riley v. so so domains, D2003-0600 (WIPO Sept. 24, 2003) (stating, “personal 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 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 Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (Complainant held common law trademark rights in his famous name MICK JAGGER); see also 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”).

Complainant asserts he is entitled to the same protection given common law marks for the LUCA LAURENTI mark. While the record suggests that Complainant’s use of the LUCA LAURENTI mark occurred almost exclusively within the country of Italy, a civil law jurisdiction, Complainant’s appearances and work in such movies as Stuart Little suggests world-wide distribution and recognition in common law jurisdictions such as the United States.   

ICANN Policy is international.  Compliance with ICANN Policy and Rules is voluntarily agreed to by those who register domain names governed by ICANN.  Cases suggest that ICANN Policy protects unregistered trademarks and service marks in domain name disputes to prevent wrongful and abusive registrations of domain names.  British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).  Complainant established with sufficient extrinsic proof that LUCA LARENTI has secondary meaning distinctive to Complainant.  The fact that Complainant comes from a civil law jurisdiction that might not recognize common law rights, should not deny Complainant protection under ICANN Policy and Rules, with which Respondent voluntarily agreed to comply, where Complainant shows substantial secondary meaning associated with a trade name or service mark.  The Policy recognizes that an individual’s name can acquire secondary association that gives rise to a right to protection.  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).  The fact that the Panel is unable to determine to a legal certainty that Complainant’s mark falls within a particular jurisdiction’s common law protection should not prevent Complainant from having protection under ICANN Policy and Rules from what has been shown to be Respondent’s wrongful and opportunistic use of Complainant’s name to attract Internet users to Respondent’s website for commercial gain to Respondent.  Complainant has alleged such rights and offered proof to satisfy the Panel. Respondent has not favored the Panel with a Response, has not contested Complainant’s allegations that LUCA LAURENTI is Complainant’s name, has not challenged Complainant’s allegations and proof that the name has acquired secondary meaning, has not challenged Complainant’s allegations that Complainant has rights in the name and that Respondent has no rights to nor legitimate interests in the name, and has not shown rights in the name or domain name.  Further, the facts suggest that Respondent could not show that it is LUCA LAURENTI and that Respondent could not show that it is commonly known as LUCA LAURENTI or by the disputed domain name. 

The Panel finds that Complainant’s use of the LUCA LAURENTI mark in connection with a variety of movies and other aspects of the entertainment industry transcended local boundaries and acquired secondary meaning distinctive to Complainant.

The Internet has joined the community of nations electronically and ICANN Policy and the Rules are an international structure for protecting rights on the Internet. Respondent accepted the ICANN rules and regulations when registering the disputed domain name.  The Panel concludes that Complainant established secondary meaning in LUCA LAURENTI as a trade name or service mark in which Complainant has rights.  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 Desktop Media, Inc. v. Desktop Media, Inc., FA 96815 (Nat. Arb. Forum Apr. 12, 2001) (“[F]or the limited purposes of the domain name dispute resolution process[,] a low threshold of proof is all that is required to meet the first element ….”); see also Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (Complainant held common law trademark rights in his famous name MICK JAGGER); see also 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 Garnett v. Trap Block Technologies, FA 128073 (Nat. Arb. Forum Nov. 21, 2002) (holding that Complainant accrued common law rights in the KEVIN GARNETT mark).

The disputed domain name, <lucalaurenti.tv>, is identical to Complainant’s LUCA LAURENTI mark because the name incorporates the mark in its entirety and merely affixes a top-level domain, which is irrelevant under the Policy.  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy”); see also Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); 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 Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance).

Complainant established rights in the use of the LUCA LAURENTI mark pursuant to Policy ¶ 4(a)(i). 

Rights to or Legitimate Interests

Complainant established in this proceeding that he has rights in the LUCA LAURENTI mark.  Complainant alleges that Respondent has no such rights to and legitimate interests in the disputed domain name that contains in its entirety Complainant’s LUCA LAURENTI mark.  Complainant established with extrinsic proof in this proceeding that it has made prominent use of the mark.  Respondent did not rebut any of Complainant’s assertions and the Panel finds 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 interests in the domain names); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”).

Furthermore, no evidence before the Panel suggests that Respondent is commonly known by the <lucalaurenti.tv> domain name pursuant to Policy ¶ 4(c)(ii). 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").

A domain name that is identical to or confusingly similar to another’s famous personal name and that seeks to take advantage of the fame or recognition associated with the name for purposes of commercial gain has been found not to be 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).  In this case, Respondent used a domain name identical to Complainant’s personal name to direct Internet users to an online casino website that is completely unrelated to Complainant’s personal name. See Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or legitimate interest where Respondent used the disputed domain name to redirect Internet users to an online casino); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also 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”).

The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Registration of a domain name that is identical or confusingly similar to a third-party’s mark for the opportunistic purpose of attracting Internet users to a commercial business that is actually unrelated to the third-party supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  In this case, the disputed domain name is identical to Complainant’s LUCA LAURENTI mark.  Respondent uses the fame associated with Complainant to direct Internet users to an unrelated website that offers casino services for commercial gain.  Therefore, the Panel finds that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant as to the source, sponsor, affiliate, or endorser of the website, 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 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)).

Therefore, Complainant established that Respondent registered and used the disputed domain name in bad pursuant to Policy ¶ 4(a)(iii).

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 <lucalaurenti.tv> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: May 7, 2004

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