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Bendon Limited v. NetSphere, Inc and Jeff Baron, Compana LLC [2005] GENDND 119 (14 January 2005)


National Arbitration Forum

national arbitration forum

DECISION

Amber Smith v. Network Operations Center c/o Alberta Hot Rods

Claim Number:  FA0411000371622

PARTIES

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.

PANEL

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.

PROCEDURAL HISTORY

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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

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.

FINDINGS

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.”

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 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.

Identical and/or Confusingly Similar

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).

Rights or Legitimate Interests

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).

Registration and Use in Bad Faith

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).

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 <ambersmith.com> domain name be TRANSFERRED from Respondent to Complainant.

                                                                       

                                                                        John J. Upchurch, Panelist

                                                                        Dated:  January 13, 2005


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