Paul M. Birdsall v. WhoisGuard Protected c/o WhoisGuard
Claim Number: FA0708001067667
Complainant is Paul M. Birdsall
by Joel Broughton, 35 Glen
Eagles Terrace, Cochrane, AB, Canada, T4C1W5. Respondent is WhoisGuard Protected c/o WhoisGuard (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paul-birdsall.info>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her 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 (the "Forum") electronically on August 23, 2007; the Forum received a hard copy of the Complaint on August 24, 2007.
On August 23, 2007, eNom, Inc. confirmed by e-mail to the Forum that the domain name <paul-birdsall.info> is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 September 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 26, 2007 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.
On October 2, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
A. Complainant makes the following assertions:
1. Respondent’s <paul-birdsall.info> domain name is confusingly similar to Complainant’s PAUL BIRDSALL mark.
2. Respondent does not have any rights or legitimate interests in the <paul-birdsall.info> domain name.
3. Respondent registered and used the <paul-birdsall.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Paul Birdsall, is a famous Internet and network marketer. Complainant’s trademark rights in the name PAUL BIRDSALL can be traced back to as early as 1998, when Complainant was the owner of a successful direct marketing company and author of a successful direct sales manual. Since this time, Complainant has continuously used this mark in connection with professional direct sales, Internet marketing, network marketing, and other related products and services. Complainant currently is recognized by numerous companies and websites as the top Internet/network marketer in the field and has a subscriber list in excess of 200,000 members.
Respondent registered the <paul-birdsall.info> domain name on May 15, 2005. The disputed domain name currently resolves to a website featuring personal pictures, a personal address, email address and other information relating to Complainant. The disputed domain name also features unrelated sponsored advertisements.
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 need not hold a registration of their mark with
a governmental authority, so long as they can establish continuous and ongoing
common law rights in their mark through a demonstration of secondary
meaning. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that the complainant's trademark
or service mark be registered by a government authority or agency for such
rights to exist); see also
Complainant is a famous Internet and network marketer. Since as early as 1998, Complainant has owned a successful direct marketing company and has authored a successful direct sales manual. Complainant has continuously used its name in connection with professional direct sales, Internet marketing, network marketing, and other related products and services. Complainant currently is recognized by numerous companies and websites as the top Internet/network marketer in the field and has a list of subscribers in excess of 200,000 members. Consequently, the Panel finds pursuant to Policy ¶ 4(a)(i), that Complainant has established common law rights in the PAUL BIRDSALL mark, through continuous and ongoing use and a demonstration of secondary meaning. See Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (“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 Barnes v. Old Barn Studios Ltd., D2001‑0121 (WIPO Mar. 26, 2001) (finding that all that is required for a famous or very well-known person to establish a common law trademark in their name is likelihood of success in an action against a third party who has engaged in passing off as the famous person in trade without authority).
domain name contains Complainant’s PAUL BIRDSALL mark in its entirety
substituting the space for a hyphen and including the generic top level domain
(“gTLD”) “.info.” It is well established
that the inclusion of hyphens and a gTLD are not relevant to a Policy ¶ 4(a)(i)
analysis. Therefore, pursuant to Policy
¶ 4(a)(i), this Panel finds that Respondent’s disputed domain name is
confusingly similar to Complainant’s mark.
See Health Devices Corp. v.
The Panel concludes that Complainant has satisfied Policy ¶ 4 (a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.”). The Panel finds that Complainant has established a prima facie case against Respondent, and as such, the burden is shifted to Respondent to prove that it has rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent has failed to submit a response to the Complaint. As a result, the Panel presumes that Respondent has no rights or legitimate interests in the <paul-birdsall.info> domain name, but will still consider all available evidence in light of the factors listed under Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent’s WHOIS information indicates that Respondent’s true contact information is concealed by the WhoisGuard Protection service. Without anything in the record indicating otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name Pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support any assertion that a respondent is commonly known by a domain name, such assertions must be rejected).
The <paul-birdsall.info> domain name currently resolves to a website that contains among other things, unrelated sponsored advertisements. The Panel presumes that such advertisements financially benefit Respondent and as such, the Panel finds that this does not constitute either 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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the a famous mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
The Panel concludes that Complainant has satisfied Policy ¶ 4 (a)(ii).
Respondent’s <paul-birdsall.info> domain name resolves to a website featuring personal pictures, a personal address, email address and other information relating to Complainant. The Panel finds this to be an infringing use of Complainant’s mark, absent any evidence from Respondent to the contrary. Moreover, the disputed domain name features unrelated sponsored advertisements that presumably financially benefit Respondent. Consequently, the Panel finds that Respondent registered and is using the disputed domain name in bad faith 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 the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).
The Panel concludes that Complainant has satisfied Policy ¶ 4 (a)(iii).
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <paul-birdsall.info> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 31, 2007
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