Ami James v. Demand Domains
Claim Number: FA0711001106240
Complainant is Ami James (“Complainant”), represented by Bernard
C. Dietz, of Law Offices of Bernard C. Dietz PC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amijames.com>, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 5, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 6, 2007.
On November 6, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <amijames.com> domain name 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 November 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 10, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 14, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
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:
Trademark/Service Mark Information:
This Complaint is based on
the Complainant’s common law trademark rights in his name, Ami James. The Complainant, Ami James is an
internationally well-known tattoo artist and television actor who stars in the television series “Miami Ink,” televised on The
Learning Channel network throughout the
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
The Complainant, Ami James, is the star of the TLC network series “Miami Ink” which is a reality series about the Miami Ink tattoo shop owned by Ami James. The series is broadcast nationwide and worldwide since its debut on July 19, 2005 and is currently filming its fourth season. The debut of the series garnered widespread publicity prior to its release, including articles in the national newspaper USA Today and in The Hollywood Reporter. According to Nielsen records, the first season of the Miami Ink television show reached approximately fifty million viewers and, since then, has cumulatively reached over one hundred twenty five million viewers. His work on the “Miami Ink” television series, as well as other appearances on television shows and in a movie, have resulted in his inclusion in the Internet Movie Database, which catalogues and lists his appearances as a writer, actor, and tattoo artist, when users search for “Ami James”.
In addition to his work as an actor, Ami James is also a well-known and accomplished tattoo artist and businessman. He has been a tattoo artist for more than seventeen years and is the owner of the highly successful Miami Ink tattoo shop in South Beach, Florida and the popular bar and nightclub, Love Hate, in Miami Beach, Florida. Ami James also collaborated with the nationwide cell phone service T-Mobile and the cell phone manufacturer Motorola to design and release the Motorazr V3 Miami Ink Collection cell phone with tattoo-inspired designs by Ami James. The cell phone was released nationwide on October 30, 2006. His various activities and accomplishments have made Ami James a celebrity and have lead to instant recognition of his name and secondary meaning associated with his art. Over the last several years, the Complainant has developed and earned common law trademark rights in his name.
The true identity of the Respondent is unknown because it registered the domain in dispute using the anonymity service offered by the registrar, Enom, Inc., which allows anonymous registration. The domain was registered by the Respondent on September 8, 2005, almost two months after the July 19, 2005 launch of the national television series “Miami Ink” starring the Complainant and the worldwide publicity that preceded and accompanied the launch.
[a.] The Respondent’s domain name, amijames.com, minus the lack of capitalization, the lack of spaces between the words, and the generic “.com”, all of which are disregarded for purposes of comparison, is identical to the common law trademark in which the Complainant has rights. See Monty and Pat Roberts, Inc. v J. Bartell, Case No. D2000-0300 (WIPO, June 13, 2000) (finding that domain names are not case sensitive, that the elimination of spaces between words is dictated by technological factors, and that the addition of the generic top-level domain is not legally significant). As discussed above, the Complainant uses his name, Ami James, in a wide variety of artistic and business ventures, all of which have worldwide exposure and appeal and has achieved international recognition and renown in the field of tattoo art. The mark “Ami James” has come to be recognized by the general public as indicating an association with tattoo art designed and produced exclusively by the Complainant.
Personal names, such as Ami James, do not require federal trademark registration to receive trademark protection and are protected under common law when they acquire secondary meaning. Secondary meaning is established where, as in this case, a complainant uses his name and mark in commerce and achieves widespread recognition for his work. See Julia Fiona Roberts v. Russell Boyd, Case No. D2000-0210 (WIPO, May 29, 2000) (finding common law trademark rights in the name of an actress); Richard L. Bayless v. Cayman Trademark Trust, FA0602000648245 (Nat. Arb. Forum April 3, 2006) (finding common law rights in Chef’s personal name); Monty and Pat Roberts, Inc. v J. Bartell, Case No. D2000-0300 (WIPO, June 13, 2000) (finding common law rights in a horse trainer’s personal name); Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 (May 22, 2000) (finding common law rights in author’s personal name). Stevland Morris a/k/a Stevie Wonder v. Lad, FA0510000584849 (Nat. Arb. Forum Jan. 16, 2006) (finding common law rights in musician’s personal name; George Foreman Ventures, LLC v. zinnia c/0 Zinnia Gonzales, FA0511000599036 (Nat. Arb. Forum Dec. 30, 2005) (finding common law rights in boxer’s personal name). A helpful decision that summarizes a large number of cases involving common law rights to one’s name is Israel Harold Asper v. Communication X Inc., Case No. D2001-0540 (WIPO, June 11, 2001) (finding that there have been numerous cases, with near unanimous success by Complainants in domain disputes involving entertainers, both living and deceased as well as authors, athletes, and business people.)
As set forth in detail above, the Complainant has developed and used and uses his distinctive name in a wide variety of commercial ventures, starting with his internationally well-known tattoo shop, which lead to his worldwide television series “Miami Ink,” his personalized cell phone for sale throughout the United States, and his Miami bar and nightclub. As a result, the Complainant’s distinctive name “Ami James” has acquired secondary meaning in the entertainment industry in general and has, therefore, established common law trademark rights in the mark. (See Monty and Pat Roberts, Inc. v J. Bartell, Case No. D2000-0300 (WIPO, June 13, 2000) (finding Monty Roberts, a horse trainer, held rights in his name found to be the service mark Monty Roberts in connection with service of horse training). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights and secondary meaning in a mark that was used continuously and in an ongoing manner). As set forth in Policy ¶4(a)(i), a complainant does not need to hold a registered trademark or service mark to establish they have rights in a mark. See SeekAmerica Networks, Inc. v. Massod, D2000-0131 (WIPO Apr. 13, 2000) (finding that the UDRP Rules do not require the registration of a mark with a governmental authority for the complainant to have existing rights in a mark). In the instant case, Complainant’s strong common law rights in Ami James are more than sufficient under the UDRP policy to satisfy the requirements of Policy ¶4(a)(i).
For the foregoing reasons, Complainant respectfully requests the Panel to find that the “amijames.com” domain name is identical or confusingly similar to the “Ami James” mark in which the Complainant has common law trademark rights.
[b.] Under ICANN Rule 3(b)(ix)(2) and ICANN Policy 4 (a)(ii), the Respondent should be considered to have no rights or legitimate interests in respect of the subject domain name, amijames.com. Respondent has not been commonly known by the name or mark Ami James. Respondent is shielded by an anonymous domain registration service that allows consumers to register domain names privately. The respondent registered the domain amijames.com on September 8, 2005, after the nationwide launch of the television series “Miami Ink” and the nationwide publicity and promotion for the show. The Respondent’s registration and use of the domain amijames.com creates a likelihood of confusion that the Complainant, Ami James, is sponsoring, approving or associating with Respondent. Further, there is a likelihood that consumers will utilize Respondent’s domain name in an attempt to locate Complainant’s web site and find themselves misdirected to Respondent’s web site, which is presumably Respondent’s intent.
The website that correlates to the domain in question takes visitors to a page which states “Welcome to amijames.com” and has no other content other than a list of text links, the first of which is “Ami James,” and all of which take the visitor to another page with a list of sponsored hyperlinks. The text links on the domain in dispute lead visitors to sponsored, or paid, links to providers of products and services related to the Complainant, none of which are provided directly by Respondent. The links on the Respondent domain are designed to trade and profit off of the secondary meaning and goodwill generated by the Complainant and the confusion of visitors that mistakenly land on Respondent’s page when they are searching for the Complainant’s web site. As a result, the Respondent’s use cannot be considered fair or for non-commercial purposes.
The sole purpose of Respondent’s use of the domain name is to offer advertisements for products and services related to the Complainant and the business and industry in which the Complainant operates by misleading visitors into believing that Respondent is related to Complainant and misdirecting them to advertiser web sites.
For the foregoing reasons, the Complainant respectfully requests the Panel to find that the Respondent has no rights or legitimate interest in the “amijames.com” domain name.
[c.] Under ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii), the subject domain registered by Respondent, amijames.com should be considered as registered and used in bad faith. As discussed above, the Respondent has no demonstrable right or legitimate interest in the Ami James mark. The Respondent registered the domain name amijames.com after the worldwide launch of the Complainant’s television series to prevent Complainant, the owner of the Ami James name and mark, from using this domain and to enable Respondent purposefully to funnel confused visitors to a web site that offers paid advertising that financially rewards Respondent when the confused visitors click off the domain. The Respondent created the website in an effort to obtain financial gain by the misuse of Complainant’s name. Such activities establish bad faith in both registration and use. See Microsoft Corp. v. Random Interactive Tech., Inc., FA 614528 (Nat. Arb. Forum Feb. 13, 2006) (“Respondent’s use of a domain name that is confusingly similar to Complainant’s XBOX mark to redirect Internet users interested in Complainant’s goods and services to a website that offers similar goods and services in competition with Complainant is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant the Policy ¶4(c)(iii).”). See also Microsoft Corp. v. Woo Seungchul, FA 601455 (Nat. Arb. Forum Jan. 20, 2006) (“The panel finds that appropriating another’s mark to refer Internet traffic to competitors and unrelated third parties is not a bona fide offering of a good or service...”); and Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy § 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
For the foregoing reasons, the Complainant respectfully requests the Panel to find that the Respondent registered and is using the “amijames.com” domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Ami James has been a prominent tattoo artist in
Respondent registered the <amijames.com> domain name on September 8, 2005. The disputed domain name resolves to a website containing third-party links, including the name of Complainant as well as the name of Complainant’s television show, “Miami Ink.”
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 Complainant to 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 has common law rights in the AMI JAMES mark. Under Policy ¶4(a)(i), a complainant is not required to hold a nationally registered trademark to establish rights in a mark. Common law rights are sufficient when a complainant demonstrates secondary meaning associated with a mark. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
In determining whether or not Complainant has common law rights in the AMI JAMES mark, the Panel considers Complainant’s factual claims raised in his Complaint. The Panel views the Complaint in a light most favorable to Complainant because it is uncontested. See Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that complainant’s allegations are true unless clearly contradicted by the evidence).
The Panel finds Complainant’s evidence establishes common law rights in the AMI JAMES mark sufficient to grant standing under the UDRP. The AMI JAMES mark has become distinct through Complainant’s use and exposure of the mark in the marketplace and through use of the mark in connection with Complainant’s television show, clothing line, and tattoo shop for over seventeen years. See 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 complainant that common law trademark rights exist); see also 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 Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that complainant have rights in a registered trademark and that it is sufficient to show common law rights in holding that complainant has common law rights to her name).
The disputed domain name is identical to Complainant’s AMI JAMES mark except for the addition of the generic top-level domain (“gTLD”) “.com,” which is (and must be) irrelevant under a Policy ¶4(a)(i) analysis. 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 Sporty's Farm L.L.C. v. Sportsman's Mkt., Inc., 202 F.3d 489 (2d Cir. 2000), cert. denied, 530 U.S. 1262 (2000) ("For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com").
The Panel finds Complainant has satisfied Policy ¶4(a)(i).
Respondent has neither rights nor legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Complainant has the initial burden of showing Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case showing Respondent lacks rights and legitimate interests, the burden shifts to Respondent. The Panel finds Complainant has met the initial burden, and therefore has made a prima facie case under Policy ¶4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); 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).
Respondent did not contest Complainant’s assertion Respondent lacks any rights and legitimate interests in the disputed domain name. The Panel must conclude Respondent lacks any rights and legitimate interests in the disputed domain name. 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). Nevertheless, the Panel will examine all evidence in the record to determine if Respondent does have rights or legitimate interests in the disputed domain name under Policy ¶4(c).
Respondent has never been authorized to use the AMI JAMES mark. Respondent is not, and has never been, commonly known by the disputed domain name. The WHOIS information does not indicate Respondent is commonly known by the disputed domain name. Thus, the Panel finds Respondent is not commonly known by the <amijames.com> domain name pursuant to Policy ¶4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶4(c)(ii) does not apply); see also 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).
Respondent is using the <amijames.com> domain name to advertise links to third-party websites on a “click through” payment basis. These links include the AMI JAMES mark, as well as the name of Complainant’s television show. The Panel finds such use is not 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 DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”).
The Panel finds Complainant has satisfied Policy ¶4(a)(ii).
Respondent’s <amijames.com> domain name resolves to a webpage that offers information about Complainant’s products, as well as those of Complainant’s competitors. This is likely to disrupt Complainant’s business, and therefore constitutes bad faith registration and use pursuant to Policy ¶4(b)(iii). See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent).
Respondent is using the <amijames.com> domain name in an attempt to attract Internet users seeking Complainant to Respondent’s website. Internet users interested in Complainant’s products and services are likely to type in Complainant’s mark followed by the common gTLD “.com.” There may cause confusion regarding Complainant’s affiliation, endorsement, or sponsorship of the links advertised on Respondent’s website. The Panel assumes Respondent is commercially benefiting from this confusion by receiving “click through” advertising fees (as alleged in the complaint). The Panel concludes Respondent’s attempts to divert Internet users for commercial gain by attracting these users to Respondent’s website through a likelihood of confusion with Complainant’s mark is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if respondent profits from its diversionary use of complainant's mark when the domain name resolves to commercial websites and respondent fails to contest the Complaint, it may be concluded that respondent is using the domain name in bad faith pursuant to Policy ¶4(b)(iv)).
The Panel finds Complainant has satisfied Policy ¶4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amijames.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: Tuesday, December 27, 2007
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