Kirk Douglas v. JAT Entertainment Group
Claim Number: FA0203000105846
PARTIES
Complainant
is Kirk Douglas of The Douglas Foundation, Beverly Hills, CA (“Complainant”)
represented by Gary J. Nelson, of Christie, Parker & Hale LLP. Respondent is JAT Entertainment Group, Santa Ana, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <kirkdouglasonline.com>,
registered with Network Solutions.
PANEL
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge, has no known conflict in serving as Panelist in this
proceeding.
Sandra
Franklin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 11, 2002; the Forum received a hard copy of the
Complaint on March 12, 2002.
On
March 15, 2002, Network Solutions confirmed by e-mail to the Forum that the
domain name <kirkdouglasonline.com>
is registered with Network Solutions and that Respondent is the current
registrant of the name. Network
Solutions has verified that Respondent is bound by the Network Solutions
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 15, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 4,
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 postmaster@kirkdouglasonline.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
April 9, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Sandra Franklin 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Respondent’s
<kirkdouglasonline.com> domain name is confusingly similar to
Complainant’s KIRK DOUGLAS name.
Respondent has no rights or legitimate interests in the
disputed domain.
Respondent registered and used the disputed domain
name in bad faith.
B.
Respondent
No
Response was received.
FINDINGS
Complainant has registered KIRK DOUGLAS
at the United States Patent and Trademark Office (“USPTO”) on February 5,
2002. Complainant has used the KIRK
DOUGLAS name since 1946 and, as a result of a successful acting and
movie-directing career, has built up substantial goodwill and fame in
association with it. As a result,
Complainant has common law rights to KIRK DOUGLAS.
Respondent registered the disputed domain
name on June 2, 2001. Respondent uses
the disputed domain name to link to a website that provides information to
Internet users about Complainant and its acting and film career. Moreover, the disputed domain name is also
linked to Respondent’s primary website, <jatentertainment.com>, where
Respondent promotes the sale of celebrity art, old photographs, and solicits a
$200 donation. Respondent also provides
advertisements at the disputed domain name through commercial links to business
associates.
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 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
Respondent’s
<kirkdouglasonline.com> is confusingly similar to Complainant’s KIRK
DOUGLAS name because it contains Complainant’s name in its entirety, merely
adding “.com” and the generic word “online.”
See Broadcom Corp.
v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the
<broadcomonline.com> domain name is confusingly similar to Complainant’s
BROADCOM mark); see also Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Rights or Legitimate Interests
Because Respondent has not filed a
Response it is presumed not to have any rights or 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).
Respondent’s attempt to divert Internet
users, interested in Complainant, to Respondent’s website which commercially
benefits Respondent through the advertisement and sale of its goods is not a
bona fide offering under Policy 4(c)(i) or a legitimate noncommercial fair use
under under 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).
Respondent, known as JAT Entertainment,
is not commonly known by <kirkdouglasonline.com> or
KIRK DOUGLAS, and consequently, does not have any rights or legitimate
interests in the dispute domain name under Policy ¶ 4(c)(ii). 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 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).
Moreover, due to the fame and celebrity associated with Complainant and
his name, it is presumed the Respondent could not be commonly known as <kirkdouglasonline.com> . See
Nike, Inc. v. B. B. de Boer,
D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests
where one “would be hard pressed to find a person who may show a right or
legitimate interest” in a domain name containing Complainant's distinct and
famous NIKE trademark).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent’s unauthorized use of
Complainant’s celebrity to lure Internet users to its own website for
commercial gain indicates that Respondent registered and used the disputed
domain name in bad faith under Policy ¶ 4(b)(iv). See America Online,
Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding bad faith where Respondent registered and used an infringing domain
name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent
directed Internet users seeking Complainant’s site to its own website for
commercial gain); see also State
Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11,
2000) (finding that the Respondent registered the domain name
<statefarmnews.com> in bad faith because Respondent intended to use
Complainant’s marks to attract the public to the web site without permission
from Complainant). Moreover, because
the KIRK DOUGLAS name is famously and exclusively associated with Complainant,
Respondent’s use of the confusingly similar domain name for a website that
links to other unauthorized celebrity websites creates a likelihood of
confusion as to the source, sponsorship, and authorization of Respondent’s <kirkdouglasonline.com> website. This indicates that Respondent
registered and used the disputed domain name in bad faith. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding bad faith where the domain name in question is obviously
connected with the Complainant’s well-known marks, thus creating a likelihood
of confusion strictly for commercial gain).
Moreover, Respondent’s use of <kirkdouglasonline.com>
to provide Internet users with
information about Complainant is not a good faith use if it presents a
likelihood of confusion. See State Farm Mut. Auto. Ins. Co. v. Northway,
FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent can
accomplish his stated purpose of providing news and information about State
Farm without the use of State Farm’s trademark in a name).
The Panel finds that Policy ¶
4(a)(iii) has been satisfied.
DECISION
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 <kirkdouglasonline.com>,
be transferred from Respondent
to Complainant.
___________________________________________________
Sandra Franklin, Panelist
Dated: April 19, 2002
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