Pete Wentz v. Domain Drop S.A. (PETERWENTZ-COM-DOM)
Claim Number: FA0711001109759
Complainant is Pete Wentz (“Complainant”), represented by Peter
E. Nussbaum, of Wolff & Samson PC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <peterwentz.com>, registered with Domaindoorman, LLC.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 19, 2007.
On November 27, 2007, Domaindoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <peterwentz.com> domain name is registered with Domaindoorman, LLC and that Respondent is the current registrant of the name. Domaindoorman, LLC has verified that Respondent is bound by the Domaindoorman, LLC 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 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 17, 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 postmaster@peterwentz.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 19, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a musician and entrepreneur for the rock band “Fall Out Boy.”
Complainant co-founded this band in 2001, and has since achieved great success.
Complainant and his band have been featured in numerous music and entertainment publications, and have performed in many concerts around the world.
Since 2001, Complainant has continuously promoted himself
and his name, both as a member of his band and through individual
entrepreneurial opportunities, including forming a publishing and clothing company,
authoring a book, designing a guitar, founding a film production company, and
opening a
Complainant uses the PETE WENTZ mark in connection with all of the aforementioned goods and services.
Respondent registered the <peterwentz.com> domain name on March 24, 2006.
Respondent uses the domain name to display links advertising Complainant’s products.
Complainant has not authorized these advertising activities nor has it provided Respondent with a license to use its mark in a domain name.
Respondent has been ordered by UDRP panels to transfer
domain names that infringed on the trademark rights of others, and were found
to have been registered and used by Respondent in bad faith and without rights
or legitimate interests. See, for
example, Starent Networks Corp. v. Domain
Drop S.A., FA 842901 (Nat. Arb. Forum Jan. 2, 2007); and Prepadom v. Domain Drop
Respondent’s <peterwentz.com> domain name is confusingly similar to Complainant’s PETE WENTZ mark.
Respondent does not have any rights to or legitimate interests in the <peterwentz.com> domain name.
Respondent registered and uses the <peterwentz.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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 same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant does not hold a registered trademark or service mark in the PETE WENTZ mark. However, a registered trademark is not necessary for Complainant to establish rights in its mark. Instead, common law rights are sufficient to satisfy Policy ¶ 4(a)(i). See Hiatt v. Pers. Fan & Official Site Builders: we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007):
Registration
with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary
meaning through extensive commercial use and common law rights have been
established ….
See also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant asserts common law rights to the PETE WENTZ mark based on his extensive marketing of the mark in commerce in connection with the “Fall Out Boy” band as well as Complainant’s related entrepreneurial activities as described in the Complaint herein. A panel in Wentz v. Lynch, FA 1082087 (Nat. Arb. Forum Nov. 8, 2007) recently confirmed common law rights in Complainant based upon this evidence. We agree that Complainant has established secondary meaning in the PETE WENTZ mark that sufficient to confer common law rights in its mark pursuant to Policy ¶ 4(a)(i). See Garnett v. Trap Block Techs., FA 128073 (Nat. Arb. Forum Nov. 21, 2002):
[P]rofessional athletes and other celebrities have common law trademark
rights in their personal names sufficient to satisfy the UDRP. This is due to the widespread recognition of
their names as indicators of the single source of the specific quality of the
services they publicly perform.
See also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainant alleges that Respondent’s <peterwentz.com> domain name is confusingly similar to his name and mark, PETE WENTZ. The disputed domain name merely changes the mark to “Peter” from “Pete,” and adds the generic top-level domain (“gTLD”) “.com.” Though Complainant’s name is “Pete,” that is a common nickname for “Peter,” and this one-letter difference contributes to the confusing similarity of the disputed domain name. Additionally, it is well-established that the addition of a top-level domain is irrelevant under the Policy because all domain names are required to have one. Therefore, we conclude that Respondent’s <peterwentz.com> domain name is confusingly similar to Complainant’s PETE WENTZ mark pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The addition of a top-level domain is irrelevant when establishing
whether or not a mark is identical or confusingly similar, because top-level
domains are a required element of every domain name.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights to or legitimate interests in the <peterwentz.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests under Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant
must make a prima facie showing that Respondent does not have rights or
legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interest in the subject domain names.
See also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights or legitimate interests in a domain name).
From the allegations of the Complaint, we conclude that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). And because Respondent has not responded to the Complaint, nothing further is required. Nonetheless, we will examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
In this connection, we first note that on at least one prior occasion, Respondent’s WHOIS
information included the domain name here in issue in all uppercase letters
with hyphens, followed by the word “DOM.”
See Prepadom v. Domain Drop
We also note that there is no dispute that Respondent is using the <peterwentz.com> domain name to display links advertising Complainant’s products for sale without Complainant’s authorization. Respondent likely profits from this arrangement, either by receiving click-through fees, or from the unauthorized sale of Complainant’s goods, or both. Either way, Respondent’s use of the <peterwentz.com> domain name constitutes neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that a respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to a complainant’s customers and presumably earning “click-through fees” in the process); see also See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell a complainant’s goods without that complainant’s authority is not bona fide use).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has noted that Respondent has previously been
ordered by UDRP panels to transfer disputed domain names which were found to be
identical or confusingly similar to complainants’ marks, and were registered
and used without rights or legitimate interests, and, therefore, in bad
faith. See Starent Networks Corp. v. Domain Drop S.A.,
FA 842901 (Nat. Arb. Forum Jan. 2, 2007); see also Prepadom v. Domain Drop
We also consider under this heading that Respondent’s use of the <peterwentz.com> domain name is likely to cause confusion among customers searching for Complainant’s products. Specifically, customers may mistakenly believe that Complainant is affiliated with or endorses Respondent’s sale of its products on the website that resolves from the disputed domain name. Respondent thus improperly benefits from use of Complainant’s PETE WENTZ mark by gaining revenue through click-through fees or the unauthorized sale of Complainant’s products, or both. Therefore, Respondent’s registration and use of the <peterwentz.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where a respondent used a disputed domain name to sell a complainant’s products without permission and misled Internet users by implying that that respondent was affiliated with that complainant); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007): “The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <peterwentz.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 27, 2007
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