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Larry King v. Alberta Hot Rods [2005] GENDND 1287 (21 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Larry King v. Alberta Hot Rods

Case No. D2005-0570

1. The Parties

The Complainant is Larry King, Los Angeles, California, United States of America, represented by Mark A. Barondess, United States of America.

The Respondent is Alberta Hot Rods, High Prairie, Canada.

2. The Domain Name and Registrar

The disputed domain name <larryking.com> is registered with CORE Internet Council of Registrars.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2005. On June 1, 2005, the Center transmitted by email to CORE Internet Council of Registrars a request for registrar verification in connection with the domain name at issue. On June 2, 2005, CORE Internet Council of Registrars transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 9, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2005.

The Center appointed Madeleine De Cock Buning as the sole panelist in this matter on July 8, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The following non-contested information is derived from the Complaint and supporting evidence submitted by the Complainant.

The Complainant is an internationally well-known broadcaster with CNN. Complainant is the host of CNN’s “Larry King Live” show.

The Respondent registered the domain name <larryking.com> on November 6, 1996. By maintaining the domain name registration, the Respondent has accepted the Policy, the Rules and the Supplemental Rules and is therefore bound by them.

Internet users trying to visit the website “www.larryking.com” find themselves automatically forwarded to the website “www.celebrity1000.com”. This website is also registered in the name of the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends to be the owner of a common law trademark under Californian law, LARRY KING.

The Complainant’s request for relief is based on the following arguments:

(i) The Complainant claims that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

(ii) The Complainant claims that the Respondent has no rights or legitimate interests with respect to the domain name for the following reasons:

- There is no evidence of the Respondent’s use of the domain name in connection with a bona fide offering of goods or services.

- The Respondent has (as an individual, business or other organisation) never been commonly known by the disputed domain name, nor has he ever done business under the domain name.

- The Respondent is not making a legitimate non-commercial or fair use of the domain name.

(iii) The Complainant claims that the domain name <larryking.com> was registered and is being used in bad faith, essentially because:

- The Respondent wished to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.

- The Respondent is using Complainant’s trademark or service mark to attract for commercial gain Internet users to the Respondent’s website.

- The Respondent has engaged in a pattern of conduct of registering domain names that are confusingly similar or identical to the names and trademarks of famous persons, such as <kevinspacey.com>.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under the Rules, paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.

The Respondent failed to file any reply to the Complaint and has not sought to answer the Complainant’s assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint.

The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by the Policy, paragraph 4(a). In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must prove that each of the following elements is satisfied:

(i) the domain name <larryking.com> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6A); and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name <larryking.com> (section 6B); and

(iii) the domain name <larryking.com> has been registered and is being used in bad faith (section 6C).

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide upon the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules or principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel shall draw such inference as it considers appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint.

A. Identical or Confusingly Similar

Complainant has argued that he is the owner of the common law trademark under Californian law, LARRY KING, and that the public associates the name “Larry King” with his broadcast services on CNN.

It has well been accepted, that: “authors and performers can establish trademark rights, either by showing that they have registered their names as marks for certain goods or services, or because, through deployment of the names as source indicators in commerce, they have unregistered or “common law” rights to protection against misleading use” (Celine Dion and Sony Music Entertainment (Canada) Inc. v. Jeff Burgar, WIPO Case No. D2000-1838). Stated differently: “due to the celebrity’s fame and the association of their name with their persona, [ … ] a celebrity’s name can serve as a trademark when identifying the celebrity’s performance services” (Kevin Spacey v. Alberta Hot Rods, National Arbitration Forum Case No. 114437). This Panel therefore finds that the name Larry King, given the international fame as a television broadcaster of the Complainant, can serve as a common law trademark.

The domain name <larryking.com> is identical to the Complainant’s common law trademark LARRY KING, except that the suffix “.com” is added. It is well settled that the addition of the top Level domain suffix “.com” is irrelevant when comparing the disputed domain name and the trademark for determining whether the domain name is identical or confusingly similar to the trademark. Rather one looks at the second-level domain for such a determination, since the “.com” suffix is merely descriptive of the registry services (Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Oleg Filipov-Guevreyan, WIPO Case No. DLA2003-0002).

Therefore, the Panel finds that the disputed domain name <larryking.com> is identical or at least confusingly similar to the common law trademark LARRY KING.

B. Rights or Legitimate Interests

Even though the Respondent has not filed any reply to the Complaint and has not contested the Complainant’s assertions, it is upon the Panel to consider whether the Respondent’s use of the disputed domain name demonstrates rights or legitimate interests in the domain name. According to the Policy, paragraph 4(c), the following circumstances, if proven, demonstrate a registrant’s rights or legitimate interests in a domain name:

(i) before notification of the dispute, the registrant has used or has been preparing to use the domain name or a corresponding name in connection with a bona fide offering of goods or services; or

(ii) the registrant (as an individual, business or other organization) has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or

(iii) the registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Policy, paragraph 4(c)(i) is not applicable. To satisfy this requirement, the Respondent’s use of the disputed domain name has to be in connection with a bona fide offering of goods or services. The Respondent is using the domain name <larryking.com> to divert people to the Respondent’s website “www.celebrity1000.com”. This does not qualify as use in connection with a bona fide offering of goods or services under the Policy (See also: MSNBC Cable v. Tysys.com, WIPO Case No. D2000-1204).

Policy, paragraph 4(c)(ii) is not applicable. The Respondent is not known by or under the name “Larry King”.

Policy, paragraph 4(c)(iii) is not applicable. The Respondent is misleadingly diverting people via “www.larryking.com” to the website “www.celebrity1000.com”. This is done with intent for commercial gain, as the website “www.celebrity1000.com” inter alia displays commercial banners from which the Respondent profits. This type of use cannot be qualified as legitimate non-commercial or fair use (MSNBC Cable v. Tysys.com, WIPO Case No. D2000-1204).

In addition to the above, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for its use of the disputed domain name.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Policy, paragraph 4(a)(iii) requires the Complainant to prove that the Respondent has registered and has used the domain name in bad faith. Policy, paragraph 4(b) provides that the following circumstances are deemed to be evidence that a registrant has registered and has used a domain name in bad faith:

(i) circumstances indicating that the registrant registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, who is the owner of the trademark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the registrant, by using the domain name, has intentionally attempted to attract, for commercial gain, internet users to registrant’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

The Complainant relies on paragraphs 4(b)(ii) and 4(b)(iv) of the Policy to assert registration and use in bad faith. This Panel agrees with the Complainant for the following reasons:

Even though Respondent has already been confronted with findings of bad faith for persistent registration and use of famous names and marks (Kevin Spacey v. Alberta Hot Rods, National Arbitration Forum Case No. 114437), the Respondent still continues to show a pattern of conduct of registering the names of famous people in order to prevent the owners of the trademark or service mark from reflecting the mark in a corresponding domain name.

The Respondent is using the domain name <larryking.com> to divert Internet users to Respondent’s website “www.celebrity1000.com”, that has banner advertisements from which Respondent profits. (Kevin Spacey v. Alberta Hot Rods, National Arbitration Forum, Case No. 114437). By using the domain name in this way, the Respondent is intentionally attempting to attract Internet users to the Respondent’s website, by creating a likelyhood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.

The Panel therefore concludes that there is sufficient evidence that the Respondent’s registration and use of the domain name <larryking.com> is in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <larryking.com>, be transferred to the Complainant.

Madeleine De Cock Buning
Sole Panelist

Dated: July 21, 2005