Lyle Lovett v. Website Work c/o Cristina Donoso
Claim Number: FA0710001087392
Complainant is Lyle Lovett (“Complainant”), represented by Jill
M. Pietrini, of Manatt, Phelps & Phillips LLP, 11355
W. Olympic Boulevard,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lylelovett.net>, registered with Aaaq.com.
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 electronically on
On October 10, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 30, 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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <lylelovett.net> domain name is identical to Complainant’s LYLE LOVETT mark.
2. Respondent does not have any rights or legitimate interests in the <lylelovett.net> domain name.
3. Respondent registered and used the <lylelovett.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Lyle Lovett, is a famous musician and actor. Complainant has released thirteen studio albums since 1986, and is the winner of four Grammy awards. Moreover, Complainant has appeared in several movies and television shows. Complainant also operates a website at the <lylelovett.com> domain name.
Respondent registered the <lylelovett.net>
domain name on
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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.
The Panel holds that
registration of a trademark is unnecessary under Policy ¶ 4(a)(i), provided
Complainant can establish common law rights in its mark through evidence of
continuous and extensive use of the mark.
See British Broad. Corp. v. Renteria, D2000-0050 (WIPO
Complainant asserts rights in
the LYLE LOVETT mark through Complainant’s personal use of the mark, his name,
in connection with his career in the entertainment industry, particularly as a
singer. Complainant states that he has
been writing and performing music in the 1970’s and was signed with a record
label in 1986. Complainant has since
released thirteen albums, and received numerous awards, including four Grammy
awards. Complainant has also acted in a
number of films and television shows.
Complainant also currently operates a website at the <lylelovett.com>
domain name. The Panel thus finds that
Complainant’s submitted evidence sufficiently establishes rights in the LYLE
LOVETT mark for the purposes of Policy ¶ 4(a)(i). See
Roberts v. Boyd, D2000-0210 (WIPO
The Panel additionally finds
that the <lylelovett.net> domain name is identical
to Complainant’s LYLE LOVETT mark under Policy ¶ 4(a)(i) as the disputed domain
name incorporates Complainant’s mark in its entirety and adds the generic
top-level domain “.net.” This minor
variation to the mark has been found to be irrelevant in a Policy ¶ 4(a)(i)
analysis due to the inherent nature of domain names. See Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has adequately met its burden in the instant proceeding. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is using the <lylelovett.net> domain name to operate a website that appears to be a fan website, but is not. Moreover, Complainant asserts that Respondent is using the disputed domain name to display a website that contains hyperlinks to various third-party websites for Respondent’s own commercial benefit through the accrual of click-through fees. The Panel agrees with Complainant’s contentions, and thus finds that Complainant has not made a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).
The Panel finds that Respondent is
not commonly known by the <lylelovett.net> domain name under
Policy ¶ 4(c)(ii) as Respondent’s WHOIS information lists Respondent as “Website
Work c/o Cristina Donoso,” and there does not appear to be any evidence in the
record indicating that Respondent is or has ever been commonly known by the
disputed domain name or authorized to use Complainant’s mark. See Gallup,
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Additionally, Complainant asserts that Respondent has offered to sell the <lylelovett.net> domain name on at least two separate occasions to people connected with Complainant. The Panel finds that Respondent’s offer to sell the disputed domain name, for amounts in excess of $18,000 and $27,000 respectively, indicates that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel holds that
Respondent’s offer to sell the <lylelovett.net> domain name
for an amount far in excess of Respondent’s out-of-pocket costs indicates bad
faith registration and use under Policy ¶ 4(b)(i). See Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum
Additionally, the Panel finds,
as Complainant alleges, that Respondent is commercially benefiting from the <lylelovett.net>
domain name through the earning of click-through fees. Moreover, the disputed domain name and
corresponding website are capable of creating a likelihood of confusion as to
Complainant’s source, sponsorship, affiliation or endorsement of the <lylelovett.net>
domain name and resulting website. Such
a use indicates bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.”); see also Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <lylelovett.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 16, 2007
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