Tony Orlando v. Dotsan
Claim Number: FA0110000100246
Complainant is Tony Orlando, Branson, MO ("Complainant") represented by Michelle Nahon Leonard, of Greene & Curtis LLP. Respondent is Dotsan, Mumbai, INDIA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tonyorlando.com>, registered with BulkRegister.
On November 9, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 3, 2001; the Forum received a hard copy of the Complaint on October 4, 2001.
On October 3, 2001, BulkRegister confirmed by e-mail to the Forum that the domain name <tonyorlando.com> is registered with BulkRegister and that Respondent is the current registrant of the name. BulkRegister has verified that Respondent is bound by the BulkRegister 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 October 8, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 29, 2001 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 firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
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." 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 name be transferred from Respondent to Complainant.
The <tonyorlando.com> domain name is confusingly similar to Complainant's mark.
Respondent has no rights and legitimate interests in the disputed domain names.
The disputed domain name has been registered and used in bad faith.
The Respondent failed to submit a Response.
Complainant is the famous recording artist known as TONY ORLANDO. Complainant has used the name in his singing/songwriting career establishing common law trademark and service mark rights throughout the world. Complainant has not registered the name TONY ORLANDO as a trademark or service mark.
Complainant most famous song is "Tie a Yellow Ribbon Around the Old Oak Tree." Complainant has been a television personality, hosting the TV show "Tony Orlando and Dawn" as well as being a recurring guest on the Jerry Lewis Telethon, and "Latenight with David Letterman." Complainant is also a well-known performer in casinos in Las Vegas, Atlantic City, Reno, and Biloxi. He also maintains a touring schedule with performing arts centers around the United States. Complainant was recently inducted into the Casino Legends Hall of Fame with the likes of Tom Jones, Frank Sinatra and Elvis.
Complainant has sold, and continues to sell albums and compact discs of his work. In addition to albums and compact discs, Complainant has sold and continues to sell, merchandise bearing his name and his likeness.
Complainant had possession of <tonyorlando.com> until September 12, 2001 when the domain name expired. Complainant had tried to renew the domain name with Register.com previously but Register.com told Complainant that it was unnecessary to renew the domain name until August 5, 2002. Complainant attempted to log on to <tonyorlando.com> on September 12 and failed because the website was not active. At this time Register.com informed Complainant that their registration grace period had expired and the domain name would be offered to the public at 4:00 A.M. Central time, September 13, 2001. Complainant attempted to renew the <tonyorlando.com> domain name on September 13, 2001 but it had already been sold to Respondent on September 12, 2001.
Respondent registered the disputed domain name <tonyorlando.com> on September 12, 2001. When the Internet user visits Respondent domain a pop-up window appears stating "Congratulations!!! You've won virtual reality casino! Click on OK and get your +35$ free bonus now!!!" If the Internet user presses OK they are directed to a web page for "Casino on net" and another pop-up window appears stating "20% bonus download casino now." If the Internet user clicks CANCEL they are directed to <half.com> and yet another pop-up window appears offering "$5 off a $10 purchase on all products!" The Respondent has not received permission to use Complainant's TONY ORLANDO mark in relation to its activities.
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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, through extensive and continuous use has established that he has common law rights in the mark TONY ORLANDO. See Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (Complainant held common law trademark rights in his famous name MICK JAGGER); see also Sade v. Quantum Computer Serv., Inc., D2000-0794 (WIPO Sept. 26, 2000) ("Although the Complainant has not registered the word ‘SADE’ either as a trademark or as a service mark in any jurisdiction, the Complainant has adapted the word ‘SADE’ as her stage-name and as a trademark and service mark and this Administrative Panel…is further satisfied that the Complainant has established that she has common law rights in the said mark.").
Furthermore, Respondent's domain name <tonyorlando.com> is identical to Complainant's common law mark TONY ORLANDO because the disputed domain name incorporates the entirety of Complainant's mark and merely adds the top-level indicator "com". It has been found that the addition of a top-level indicator such as ".com" or ".org" does not create a distinct mark. See Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding Respondent’s domain name, <karlalbrecht.com>, identical to Complainant’s common law mark); see also World Wrestling Fed'n Entm't., Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (finding that "[t]he addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish those names from Complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a response and therefore it is presumed that Respondent has no rights or legitimate interests in the <tonyorlando.com> 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).
Furthermore, when Respondent fails to submit a response the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint").
Respondent registered the disputed domain name at 7:00 A.M. on September 12, 2001, the very day that Complainant's registration for <tonyorlando.com> ended. It can be inferred that the Respondent had knowledge that the disputed domain name previously belonged to Complainant, and therefore that Respondent would not have rights or legitimate interests in the domain. 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 interest in the domain name).
There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <tonyorlando.com> domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Furthermore, Respondent has linked the disputed domain name to an online casino and an advertising website. It has been found that the use of a confusingly similar domain name as a link to gambling and advertisement websites does not create rights and legitimate interests. See Société des Bains de Mer v. International Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or legitimate interests where Respondent used the <casinomontecarlo.com> and <montecarlocasinos.com> domain names in connection with an online gambling website); see also FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website).
Respondent is intentionally diverting Internet users to its website for its own commercial gain and is therefore not making legitimate noncommercial, or fair use of the disputed domain pursuant to Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
The <tonyorlando.com> domain name is identical to Complainant's mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Registration of the identical <tonyorlando.com> domain name is evidence of bad faith. See Marino, Jr. v. Video Images Prod., D2000-0598 (WIPO Aug. 2, 2000) (finding bad faith where the Respondent linked the domain name <danmarino.com> to a site administered and operated by Respondents which provides a variety of sports, entertainment, trivia and other special programs and includes links to vendors of Dan Marino related products); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is "inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant"); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s good will and attract Internet users to the Respondent’s website).
Respondent registered the disputed domain name in order to prevent Complainant from reflecting his mark in a corresponding domain name. Respondent has linked the <tonyorlando.com> domain name to an e-commerce shopping website that offer goods that are in direct competition with the goods that were offered online by Complainant, when Complainant used to have possession of the disputed domain name. Furthermore, it can be inferred that Respondent had knowledge that Complainant had previously owned the domain name based on the timing of Respondent's registration. As a result, Respondent registered the <tonyorlando.com> domain name in bad faith. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary); see also Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that "Registration of a domain name (by Respondent that incorporates another’s trademark) goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services: it prevents the trade mark owner from reflecting that mark in a corresponding domain name").
Respondent's use of the <tonyorlando.com> domain name, which is identical to Complainant's TONY ORLANDO mark, for a link to a gambling website is evidence of bad faith. See Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked the domain name <marssmusic.com>, which is identical to Complainant’s mark, to a gambling website).
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 the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <tonyorlando.com> be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated: November 16, 2001
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