Jeanette Lee v. Domain Research and Sales
Claim Number: FA0203000105214
Complainant is Jeanette Lee, Indianapolis, IN (“Complainant”) represented by Robert S. Meitus, of Baker & Daniels. Respondent is Domain Research and Sales, Radviliskis, Lithuania (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jeanettelee.com>, registered with Bulkregister.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 28, 2002; the Forum received a hard copy of the Complaint on March 1, 2002.
On March 5, 2002, Bulkregister confirmed by e-mail to the Forum that the domain name <jeanettelee.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 March 5, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 25, 2002 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 email@example.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 Forum transmitted to the parties a Notification of Respondent Default.
On March 29, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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.” 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.
1. The domain name <jeanettelee.com> is identical to Complainant’s JEANETTE LEE and JEANETTELEE.COM marks.
2. Respondent is not authorized and is not commonly known by <jeanettelee.com>. Furthermore, Respondent has used the disputed domain name in connection with a website that offers pornographic goods and services and has offered to the sell the disputed domain name for $2,250. Such use of a domain name that is confusingly similar to a name of a famous celebrity is not a use in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use.
3. Respondent has offered to sell the disputed domain name to Complainant for consideration in excess of out-of-pocket costs. Respondent has prevented Complainant from reflecting her mark in the corresponding domain name and Respondent has a pattern of registering domain names that incorporate other famous marks. Further, Respondent is attracting users for commercial gain by creating a likelihood of confusion with Complianant’s trademarks. Therefore, Respondent has registered and used <jeanettelee.com> in bad faith.
No Response was submitted.
Complainant is an accomplished professional athlete. She has become widely known since she began playing pool professionally in 1992. Her fame is due in large part to her success as a pro pool player and her extensive appearances on television. Complainant also has numerous endorsement deals, including: Jeanette Lee pool cues, Canadian Club products, several charitable causes, and her book The Black Widow’s Guide to Killer Pool.
Complainant had owned the <jeanettelee.com> registration for about six years and used it as the “Official Jeanette Lee web site;” then Complainant lost the registration. Subsequently, Complainant has used <jeanettelee.tv> as the “Official Jeanette Lee web site.” Complainant filed for a United States Trademark Registration on August 24, 2001 for a JEANETTE LEE design mark for billiards and pool goods.
According to Complainant, after Complainant’s <jeanettelee.com> registration lapsed in early 2001, an Armenian company known as Seagod registered the disputed domain name without Complainant’s authorization and connected the disputed domain name to a website that offered pornographic goods and services. Subsequently, Seagod transferred the disputed domain name to Respondent. Complainant believes that Respondent and Seagod are the same entity. Respondent has used the disputed domain name as early as June 21, 2001 and has directed users to a commercial website which feature links to gambling and pornographic websites.
On October 25, 2001, Complainant made an online bid of $500 for the rights to the disputed domain name, but Respondent rejected the offer and submitted a counter-offer for $2,250. According to Complainant, besides <jeanettelee.com>, Respondent also owns several domain names that incorporate other famous marks, including: <dunlopgear.com>, <monarchrecords.com>, and <goworldnet.com>.
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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and
(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 has established its rights to the JEANETTE LEE mark, based on the popularity she has achieved through her success as a professional athlete. See Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (finding that a “person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law”); 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 the Complainant that common law trademark rights exist).
The disputed domain name <jeanettelee.com> is identical to Complainant’s JEANETTE LEE mark. Because it is impossible to include spaces in a domain name, the fact that the disputed domain name does not incorporate the spaces of Complainant’s mark does not diminish the fact that the disputed domain name is identical to JEANETTE LEE. See Amherst v. IFC Corp., FA 96768 (Nat. Arb. Forum Apr. 3, 2001) (finding that Respondent’s domain name <customcommerce.com> is identical to Complainant’s CUSTOM COMMERCE trademark registration); 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). Furthermore, even though Complainant’s mark does not include a generic top-level domain name, the disputed domain name is identical to Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. Feb. 11, 2002) (Internet users searching for a company's [w]ebsite . . . assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by '.com.').
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to file a Response in this matter. Therefore, the Panel may presume that Respondent has no rights or legitimate interests in <jeanettelee.com>. 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). Therefore, the Panel will presume that all of the allegations made in the Complaint are true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent has linked the disputed domain name, which is identical to Complainant’s famous mark, to a website that offers advertisements for pornographic and gambling services. Such use by Respondent is not a use connected with a bona fide offering of goods and services as pursuant to Policy ¶ 4(c)(i). See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark); see also Société des Bains de Mer v. Int’l 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).
Respondent has not been granted a license to use the disputed domain name and because Complainant’s mark is identifiable only to her, it is difficult to imagine anyone other than Complainant to be commonly known as <jeanettelee.com>. Therefore, Respondent has failed to satisfy Policy ¶ 4(c)(ii). See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (holding that Respondent did not demonstrate any rights or legitimate interests in a famous author’s name he used for an Internet domain name. The author owned common law trademark rights in her name and did not license her rights or otherwise provide permission for Respondent to use her mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding that no person besides Complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>).
It is established that the disputed domain name is identical to Complainant’s famous mark. Respondent has used this disputed domain name to divert users to a website that offers advertisements for pornographic goods and services. This commercial use not only tarnishes Complainant’s famous name and mark, but it is also not a legitimate noncommercial or fair use of <jeanettelee.com> pursuant to Policy ¶ 4(c)(iii). See Nat’l Football League Prop., Inc. v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that Respondent had no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where Respondent linked these domain names to its pornographic website); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent is known as “Domain Research and Sales.” The Panel may infer by Respondent’s name alone that Respondent’s intention was to sell the disputed domain name in excess of out-of-pocket costs when it registered <jeanettelee.com>. See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding “the manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name”). Furthermore, Respondent’s counter-offer to sell the disputed domain name for $2,250 is evidence that Respondent registered and used the disputed domain name for the purpose of selling it to Complainant for consideration in excess of out-of-pocket costs. Thus, Respondent is in bad faith as pursuant to Policy ¶ 4(b)(i). See Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where Respondent, a domain name dealer, rejected Complainant’s nominal offer of the domain in lieu of greater consideration); see also Technology Prop., Inc v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (finding bad faith where Respondent verbally offered the domain names for sale for $2,000).
Respondent has registered and used a domain name that incorporates a distinctive and famous mark in its entirety. According to Complainant, Respondent has done this before to other famous marks. This is evidence that Respondent has registered the disputed domain name to prevent Complainant from reflecting its mark in the corresponding domain name and that Respondent has engaged in a similar pattern of registering infringing domain names. Therefore, Respondent has registered the disputed domain name in bad faith as outlined in Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names, which infringe upon others’ famous and registered trademarks); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a pattern of conduct where Respondent has registered many domain names unrelated to the Respondent’s business which infringe on famous marks and websites).
By registering and using a domain name that reflects a celebrity’s name in connection with a website that advertises gambling and pornographic goods and services, Respondent is attracting users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark. This is evidence that Respondent has used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material); see also 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 be hereby granted.
Accordingly, it is Ordered that the domain name <jeanettelee.com> be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 1, 2002
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