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Generic Top Level Domain Name (gTLD) Decisions |
Amber Smith v. Network Operations Center
c/o Alberta Hot Rods
Claim
Number: FA0411000371622
Complainant is Amber Smith (“Complainant”), represented
by Steven M. Weinberg, of Greenberg Traurig, LLP,
2450 Colorado Avenue, Santa Monica, CA 90404.
Respondent is Network Operations
Center c/o Alberta Hot Rods (“Respondent”), P.O.
Box 1000, 4901 51st Ave, High Prairie, Alberta, T0G1E0 Canada.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <ambersmith.com>, registered with Core-50.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
23, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 29, 2004.
On
November 25, 2004, Core-50 confirmed by e-mail to the National Arbitration
Forum that the domain name <ambersmith.com> is registered with Core-50
and that Respondent is the current registrant of the name. Core-50 has verified
that Respondent is bound
by the Core-50 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
December 7, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 27, 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@ambersmith.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 30, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed John
J. Upchurch 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 <ambersmith.com>
domain name is identical to Complainant’s AMBER SMITH mark.
2. Respondent does not have any rights or
legitimate interests in the <ambersmith.com> domain name.
3. Respondent registered and used the <ambersmith.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
the international super-model and actress Amber Smith. Complainant has been featured on numerous
magazine covers such as Maxim, Elle, Vogue, Cosmopolitan,
Playboy, Marie Claire, and is regularly featured in the Sports
Illustrated’s swimsuit issues.
Complainant was also voted one of the “Sexiest Women In The World,”
by Maxim magazine.
Complainant has
also appeared in fifteen films, including roles in the Oscar winning American
Beauty and Oscar nominated L.A. Confidential. Since 1989, Complainant has used her name in
connection with the foregoing services.
Respondent
registered the <ambersmith.com> domain name on March 19,
1997. Respondent uses the domain name
in connection with a website that contains material directly related to
Complainant, including her
name and photograph prominently displayed at the top
of the page. The website also contains
a link to the “Official Amber Smith Web Site.”
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
asserts rights in the AMBER SMITH mark despite not having registered the mark
with any governmental authority. It is
established 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 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”).
The AMBER SMITH
mark is the personal name of Complainant.
Unregistered celebrity names or marks have been consistently held to
maintain common law trademark rights under the Policy when used
in conjunction
with celebrity personalities and the services provided therewith. 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).
Complainant has
advanced evidence of her extensive international use of the AMBER SMITH name
and mark dating back to 1989. Given the
extensive “advertising, promotion, sales, media
coverage and the length, manner and exclusivity of use of the mark by the
Complainant,” the Panel
finds that the AMBER SMITH name is protected under
common law. Gardner's Super Markets
Inc. v. Ambassa Holdings, Inc., D2002-0253 (WIPO June 14,
2002). Therefore, Complainant has established rights in the mark pursuant
to paragraph 4(a)(i) of the Policy. See
Ahmanson Land Co. v. Curtis, D2000-0859 (WIPO Dec. 4, 2000) (“In finding secondary meaning, courts
consider factors such as the owner's long, continued use of the mark and
its
widespread public recognition, the size of the company, the number of
customers, advertising expenditures, and unsolicited media
coverage of the
services and the mark.”).
The <ambersmith.com>
domain name is identical to Complainant’s AMBER SMITH mark because the
domain name incorporates the mark in its entirety and merely
adds the top-level
domain “.com,” which is immaterial under the Policy. See 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 has
established Policy ¶ 4(a)(i).
Respondent’s
failure to respond to the Complaint functions as an implicit 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.”).
Furthermore, the
lack of a response allows the presumption that Complainant’s assertions are
true, unless clearly contradicted by
the evidence. Complainant has asserted that Respondent lacks rights and
legitimate interests in the disputed domain name, and the evidence is consistent
with such an assertion. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond
allows a presumption that Complainant's allegations are true unless
clearly
contradicted by the evidence);
see also Vert. 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 Complainant to be deemed true).
In the instant
case, the disputed domain name essentially resolves to a fan-sponsored website
where information is posted relating
to Complainant. Where one selects a domain name that “gives rise to the
impression of an association with the Complainant,” it is neither a bona fide
offering of goods or services, or a legitimate noncommercial or fair use
pursuant to paragraphs 4(c)(i) and (iii) of the Policy. Marino
v. Video Images Prod., D2000-0598
(WIPO Aug. 2, 2000); see also Kasparov
v. Am. Computer Co., FA 94644 (Nat. Arb. Forum May 30, 2000) (finding no
legitimate rights and interests when Respondent used Complainant's name as a
portal to a web site which, without permission, associated Complainant as an
endorser of Respondent's causes).
Complainant has
asserted that Respondent is not commonly known by the <ambersmith.com>
domain name pursuant to paragraph 4(c)(ii) of the Policy. Nothing in the record clearly contradicts
this assertion. 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 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).
The factors set
forth in paragraph 4(b) of the Policy are non-exclusive. Thus, other factors may lead a Panel to find
that a domain name registrant has registered and used a domain name in bad
faith pursuant
to paragraph 4(a)(iii) of the Policy. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum
Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain
circumstances, without limitation,
that shall be evidence of registration and
use of a domain name in bad faith); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”);
see also Educ. Testing Serv. v. TOEFL, D2000-0044
(WIPO Mar. 16, 2000) (the Policy “indicates that its listing of bad faith
factors is without limitation”).
In the instant
case, Complainant’s name and mark, AMBER SMITH, has become famous all over the
world in connection with her modeling
and acting endeavors. The fact that Respondent chose to register
the famous name of Complainant in 1997, approximately eight years after
Complainant began
using her name as a service mark, indicates that Respondent
registered the domain name with full knowledge of Complainant’s rights
in the
mark. The latter is most clearly
evidenced by Respondent’s use of Complainant’s name and photograph on the website. Knowingly registering a domain name that
incorporates a famous third-party mark provides a presumption of bad faith
registration and
use. Respondent has
not overcome the presumption. See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(“[T]here 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.");
see also
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).
In the context
of fan-sponsored websites, bad faith registration and use has been found where
Internet users may believe that some
sort of affiliation exists between a
domain name and famous personality. It
could reasonably be argued that an Internet user would undoubtedly believe
Complainant is affiliated with a website that bears
Complainant’s name and
photograph, and which is located at a domain name bearing her name. See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109
(eResolution June 12, 2000) (finding bad faith where Respondent used the domain
name <anneofgreengables.com> to link
users to a web site that contains
information about the Anne of Green Gables literary works, motion pictures and
the author, L. M.
Montgomery, where a visitor to the web site may believe that
the owner of the mark ANNE OF GREEN GABLES is affiliated with or has
sponsored
or endorsed Respondent's web site); see also Experience Hendrix, L.L.C. v. Hammerton D2000-0364 (WIPO Aug. 15,
2000) (finding bad faith because “registration and use of the domain name
<jimihendrix.com> by Respondent
do not predate Complainant’s use and
rights in the name and mark but rather appears to be an attempt to usurp Complainant’s
rights
therein”).
Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <ambersmith.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: January 13, 2005
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