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Generic Top Level Domain Name (gTLD) Decisions |
Charo Rasten, professionally known as
Charo v. URLPro
Claim
Number: FA0412000384835
Complainant is Charo Rasten, professionally known as Charo
(“Complainant”), represented by Susan
L. Pollyea, 3001 Hollyridge
Drive, Los Angeles, CA 90068.
Respondent is URLPro (“Respondent”),
P.O. Box 30521 SMB, George Town, Grand Cayman, KY 32094.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <charo.com>, registered with Moniker
Online Services, Inc.
The
undersigned 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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
16, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on December 20, 2004.
On
December 17, 2004, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain name <charo.com> is
registered with Moniker Online Services, Inc. and that Respondent is the
current registrant of the name. Moniker Online Services,
Inc. has verified that
Respondent is bound by the Moniker Online Services, 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
December 21, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of January 10, 2005 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@charo.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
January 19, 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 <charo.com>
domain name is identical to Complainant’s CHARO mark.
2. Respondent does not have any rights or
legitimate interests in the <charo.com> domain name.
3. Respondent registered and used the <charo.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Charo Rasten, professionally known as Charo,
is an internationally known singer, comedienne, dancer, actress and classical
guitarist. Complainant’s birth name in
her native Spain was Maria Rosario Pilar Martinez Molina Baeza, but she was
nicknamed CHARO in early childhood.
Complainant was professionally known as Charo as a teenaged recording
artist and television and film actress in Spain. In the United States, Complainant has been exclusively and
continuously known by the name CHARO from 1968 to the present.
Complainant has recorded and released numerous albums under the name
CHARO from the late 1960s to the present, including several platinum
and gold
albums. Additionally, Complainant has
won several awards, including Female Pop Album of the Year at the 1995
Billboard International Latin
Music Awards for her album Guitar Passion,
the Golden Eagle Award for Outstanding Entertainer of the Year from Nosotros, a
prestigious organization of Latino professionals
in the performing arts and
entertainment industries, and she was voted Best Falmenco Guitarist for two
years in a Guitar Player magazine readers’ poll.
Complainant has
also starred in and made hundreds of appearances on television shows, including
Love Boat, The Jeffersons, the Brady Bunch, the reality
show The Surreal Life and numerous other shows. Complainant has also appeared as a guest and
performed classical guitar solos on talk shows, including 45 appearances on The
Tonight Show, numerous appearances on David Letterman and The
Merv Griffin Show. In addition to
playing several characters as an actress, Complainant has most often been asked
to appear as herself in hundreds of
television and film appearances and
commercials. Complainant has also
become known for her signature hip shake which she named the “cuchi-cuchi.”
In addition to
her career in music, television and film, Complainant has also used CHARO
ENTERTAINMENT since the mid 1990s to market
compact discs and Internet
downloads of her songs to mount Law Vegas shows with Complainant as the
headline act and as the name of
her Nevada corporation, which was formed in
2001. Complainant and her husband owned
and operated a restaurant in Hawaii known as Charo’s from 1985 to 2001.
Complainant
registered the domain name <charo.com> in June 1997, where her own
website was displayed until October or November 2001, when her ownership of the
registration lapsed due
to an inadvertent failure to renew the registration in
a timely manner.
Respondent
registered the <charo.com> domain name on November 12, 2001. Respondent is using the disputed domain name
to redirect Internet users interested in Complainant to a website that features
a generic
search engine and links to various products and services unrelated to
Complainant. The website also features
pop-up advertisements that continue to appear after Complainant leaves the
initial website. Respondent presumably
receives advertising revenues by linking Internet users to the websites of
third-party advertisers. Furthermore,
Respondent has registered over 900 domain names that infringe upon the famous
marks of others.
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 has
not registered or filed an application to register the CHARO mark but asserts
that she has common law rights in the
mark, because the mark has acquired
secondary meaning as a source indicator for her entertainment services and
musical recordings. 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); 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 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).
At the time
Respondent registered the <charo.com> domain name in 2001,
Complainant had already expended substantial resources for approximately 35
years to develop the goodwill associated
with her CHARO mark. Complainant has made hundreds of television
and film appearances and has several worldwide platinum and gold albums to her
credit. Furthermore, Complainant has
been known exclusively and extensively as CHARO in the entertainment business
for more than 35 years. The
Panel finds that Complainant has established secondary meaning associated with
her CHARO mark and has, thereby, acquired common
law rights in the mark. See 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); see also Nat’l
Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21,
2003) (finding that Complainant had provided evidence that it had valuable
goodwill in the <minorleaguebaseball.com>
domain name, establishing
common law rights in the MINOR LEAGUE BASEBALL mark); see also American Anti-Vivisection Soc'y. v.
"Infa dot Net" Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that the fact that Complainant held the domain name prior to
Respondent’s registration
evidences rights in the domain name and the mark
therein contained).
The <charo.com>
domain name registered by Respondent is identical to Complainant’s CHARO mark
because the domain name incorporates Complainant’s
mark in its entirety, adding
only the generic top-level domain “.com.”
The addition of a gTLD to Complainant’s identical mark is irrelevant
and, therefore, does not distinguish the domain name from Complainant’s
mark. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal
significance since use of a gTLD is required of domain
name registrants"); see also Victoria's
Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the
<bodybyvictoria.com> domain name is identical to Complainant’s BODY
BY
VICTORIA mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent has no rights or legitimate interests in the <charo.com>
domain name, containing Complainant’s CHARO mark in its entirety. Once Complainant makes a prima facie
case in support of its allegations, the burden shifts to Respondent to show
that it does have rights or legitimate interests in the
disputed domain name
pursuant to Policy ¶ 4(a)(ii). However,
since Respondent has failed to respond to the Complaint, the Panel assumes that
Respondent lacks rights and legitimate interests
in the disputed domain
name. See G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where
Complainant has asserted that Respondent has no rights or legitimate
interests
with respect to the domain name it is incumbent on Respondent to come forward
with concrete evidence rebutting this assertion
because this information is
“uniquely within the knowledge and control of the respondent”); see also
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that once Complainant asserts that Respondent has no rights or
legitimate interests with
respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate
interests in the domain name); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply
to the Complaint).
Respondent is
using the <charo.com> domain name to divert Internet users
interested in Complainant to a website that displays a generic search engine
and contains links
to advertisers for various products and services unrelated
to Complainant. The website also
contains pop-up advertisements that continue to appear even after the users has
left the website. The Panel determines
that Respondent’s use of a domain name identical to Complainant’s mark to
redirect Internet users searching for
Complainant to a website that displays links
and advertisements unrelated to Complainant, presumably to earn advertising
revenues
from third-party advertisers, is not a use in connection with 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 Geoffrey, Inc. v. Toyrus.com,
FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that Respondent’s use of the
disputed domain name, a simple misspelling of Complainant’s
mark, to divert
Internet users to a website that featured pop-up advertisements and an Internet
directory, was neither a bona fide
offering of goods or services nor a
legitimate noncommercial or fair use of the domain name); see also Bank
of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3,
2003) (finding that Respondent’s use of infringing domain names to direct
Internet traffic to
a search engine website that hosted pop-up advertisements
was evidence that it lacked rights or legitimate interests in the domain
name);
see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat.
Arb. Forum June 12, 2003) (finding that Respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to
Complainant’s mark, websites where Respondent
presumably receives a referral
fee for each misdirected Internet user, was not a bona fide offering of goods
or services as contemplated
by the Policy).
Complainant registered the <charo.com>
domain name in June 1997 and displayed her own website there until October or
November 2001 when Complainant inadvertently failed
to renew the
registration. Furthermore, Respondent
registered the disputed domain name on November 12, 2001, shortly after
Complainant’s registration lapsed.
Thus, the Panel concludes that because Respondent registered the
disputed domain name so quickly after Complainant’s registration
of the domain
name lapsed is evidence that Respondent lacked rights and legitimate interests
pursuant to Policy ¶ 4(a)(ii). See American
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat.
Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration of the
same domain name is a factor in considering
Respondent’s rights or legitimate
interests in the domain name); see also Edmunds.com, Inc. v. Ult. Search Inc., D2001-1319 (WIPO Feb. 1, 2002) (finding
that Respondent could not rely on equitable doctrines under the Policy to
defend its registration
of the disputed domain name after the registration was
inadvertently permitted to lapse by Complainant, noting that “Respondent was
aware of the Complainant’s well-known business and its mark and intended to
exploit the mark”).
Complainant
alleges that Respondent is not commonly known by the CHARO mark or the <charo.com>
domain name and there is nothing in the record to dispute Complainant’s
contention. Furthermore, Complainant
has not authorized Respondent to use Complainant’s mark and Respondent is not
affiliated with Complainant
in any way.
Therefore, the Panel concludes that Respondent does not have rights and
legitimate interests in the disputed domain name pursuant
to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and
never applied for a license
or permission from Complainant to use the trademarked name); 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).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <charo.com> domain name to intentionally attempt to
attract Internet users searching for information regarding Complainant using
the common method
of typing in Complainant’s performing name and the popular
gTLD “.com.” Additionally, Respondent
presumably generates revenue from third-party advertisers through referral
fees. Thus, the Panel determines that
Respondent’s attempts to divert Internet users for commercial gain by
attracting Internet users to
Respondent’s website through a likelihood of
confusion with Complainant’s mark is evidence of bad faith registration and use
pursuant
to Policy ¶ 4(b)(iv). See
H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan.
8, 2003) (finding that the disputed domain name was registered and used in bad
faith pursuant to
Policy ¶ 4(b)(iv) through Respondent’s registration and use
of the infringing domain name to intentionally attempt to attract Internet
users to its fraudulent website by using Complainant’s famous marks and
likeness); 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)); see
also CMG Worldwide, Inc. v. Lombardi, FA 95966 (Nat. Arb. Forum Jan.
12, 2001) (finding that Respondent’s use of the VINCE LOMBARDI mark to divert
Internet users to its
commercial website constituted bad faith use and
registration of the disputed domain name).
Furthermore, in
addition to the <charo.com> domain name in the present case,
Complainant has provided evidence that Respondent has registered over 900
domain names that infringe
upon others’ famous marks. Respondent has also registered the disputed domain name to
prevent Complainant from registering a domain name that is identical to
Complainant’s CHARO mark. Therefore,
the Panel finds that Respondent’s pattern of registering domain names that
infringe upon the marks of others is evidence
of bad faith registration and use
pursuant to Policy ¶ 4(b)(ii). See
Enter. Rent-A-Car Co. v. URLPro, FA 324973 (Nat. Arb. Forum Oct. 28,
2004) (“Moreover, Complainant has an established pattern of registering over
nine hundred domain
names that incorporate famous marks and names of other
entities such as Adidas, Krispy Kream [sic], Hush Puppy and Penn State
University. Respondent’s history of
registering domain names incorporating famous marks evidences bad faith
registration and use pursuant to Policy
¶ 4(b)(ii).”); see also Hachette Filipacchi Presse v. Fortune Int'l
Dev., FA 96685 (Nat. Arb. Forum Apr. 6, 2001) (finding that where
Respondent has registered over 50 domain names that correspond to different
well-known trademarks, evidence of a pattern exists); see also Encyclopaedia Britannica Inc. v. Shedon.com,
D2000-0753 (Sept. 6, 2000) (finding bad faith where Respondent engaged in the
practice of registering domain names containing the
trademarks of others).
Furthermore,
Respondent’s registration of the <charo.com> domain name shortly
after Complainant inadvertently allowed her registration of the same domain
name to lapse is evidence of bad
faith.
Additionally, Respondent has provided no evidence to the contrary. Thus, the Panel finds that this is evidence
of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See InTest
Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding
that where the domain name has been previously used by Complainant, subsequent
registration of the domain name by anyone else indicates bad faith, absent
evidence to the contrary); see also BAA
plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad
faith where Respondent took advantage of Complainant’s failure to renew a
domain name);
see also R-H-Interactive
Jobfinance v. Mooburi Services, FA 137041 (Nat. Arb. Forum Jan. 16, 2003)
(finding that Respondent’s registration and use of the <jobfinance.com>
domain name
“immediately after Complainant failed to timely renew the domain
name registration” was evidence of bad faith).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <charo.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: February 2, 2005
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