The Barack Obama Foundation v. jose castellanos / ArtistJose.com
Claim Number: FA2109001965041
Complainant is The Barack Obama Foundation (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is jose castellanos / ArtistJose.com (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <obamasite.com>, <obamalibrary.co>, <obamalibrary.info> and <obamalibrary.com>, registered with GoDaddy.com, LLC.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 23, 2021. The Forum received payment on September 23, 2021.
On September 24, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <obamasite.com>, <obamalibrary.co>, <obamalibrary.info> and <obamalibrary.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 27, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@obamasite.com, postmaster@obamalibrary.co, postmaster@obamalibrary.info and postmaster@obamalibrary.com. Also on September 27, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 22, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, The Barack Obama Foundation, is a not-for-profit corporation that, among other things, oversees the creation of the Barack Obama Presidential Center. Former United States President Barack H. Obama has long-established common law trademark rights in the OBAMA mark, which he licensed to Complainant in 2014 with authority to bring proceedings under the Policy. Respondent’s <obamasite.com>, <obamalibrary.co>, <obamalibrary.info> and <obamalibrary.com> domain names are identical or confusingly similar to Complainant’s OBAMA mark.
Respondent lacks rights and legitimate interests in the <obamasite.com>, <obamalibrary.co>, <obamalibrary.info> and <obamalibrary.com> domain names as Respondent is not commonly known by the domain names and is neither an authorized user nor licensee of the OBAMA mark. Respondent does not use any of the domain names for a bona fide offer of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the domain names to host pay-per-click hyperlinks, pornographic material, and other content which suggests an affiliation between Complainant and Respondent.
Respondent registered and uses the <obamasite.com>, <obamalibrary.co>, <obamalibrary.info> and <obamalibrary.com> domain names in bad faith. Respondent demonstrates a pattern of bad faith registration by registering the four domain names at issue in this proceeding. Respondent also uses the domain names to create confusion among Internet users to attract them for commercial gain. Respondent’s combination of the OBAMA mark with references to “Library” and “Site” is clear evidence that Respondent intentionally registered the domain names to exploit the OBAMA mark in anticipation of President Obama’s nomination as the Democratic candidate for president in 2008 and/or the eventual opening of the Obama Presidential Library. Respondent’s bad faith is also demonstrated by his failure to respond to a cease-and-desist letter regarding the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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."
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint. However, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has shown that it has rights as licensee of former United States President Barack H. Obama’s common law trademark rights in the OBAMA mark which has become distinctive and famous, commencing in 1995 through authoring and promoting best-selling books, traveling throughout the United States to give speeches, participating in fundraisers and other events and running successful senatorial (2004) and presidential campaigns (2008 and 2012).
The Panel finds each of Respondent’s <obamasite.com>, <obamalibrary.co>, <obamalibrary.info> and <obamalibrary.com> domain names to be confusingly similar to the OBAMA mark, differing only by the addition of the generic terms “site” or “library”, which do nothing to distinguish the domain names from the mark, and the inconsequential generic top-level domains “.com”, “.co” or “.info”, which may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <obamasite.com> and <obamalibrary.com> domain names were registered on January 21, 2007, many years after the OBAMA mark had become famous and shortly after President Obama became a frontrunner for the Democratic Party in the 2008 presidential election. The <obamalibrary.co> and <obamalibrary.info> domain names were registered on November 01, 2013.
The <obamasite.com> domain name resolves to a website with comments about former President Obama and a link to the pornographic pay-per-click “www.artistjose.com” website. The <obamalibrary.com> domain name resolves to a website with content that falsely suggests an affiliation between Complainant and Respondent over the forthcoming Obama Presidential Library. The <obamalibrary.co> and <obamalibrary.info> domain names resolve to websites with pay-per-click hyperlinks.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that he does have rights or legitimate interests in the <obamasite.com>, <obamalibrary.co>, <obamalibrary.info> and <obamalibrary.com> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
(i) circumstances indicating that Respondent has registered or acquired the domain names primarily for the purpose of selling, renting or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain names; or
(ii) Respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of the famous OBAMA mark when Respondent registered the domain names and that, as found by the three-member Panel in The Barack Obama Foundation v. michael board, FA1955559 (Forum Aug. 18, 2021), by registering the <obamasite.com>, <obamalibrary.co>, <obamalibrary.info> and <obamalibrary.com> domain names beginning soon after President Obama became a presidential frontrunner, Respondent has engaged in a pattern of behaviour that constitutes registration and use in bad faith under Policy ¶ 4(b)(ii).
The Panel is also satisfied that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s websites and of the goods or services promoted on those websites. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Respondent’s failure to respond to the Complainant’s letter of demand dated July 21, 2021 is further evidence of registration and use of the domain names in bad faith.
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <obamasite.com>, <obamalibrary.co>, <obamalibrary.info> and <obamalibrary.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: October 25, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page