Jason Bateman v. Yin Sung
Claim Number: FA0711001114949
Complainant is Jason Bateman (“Complainant”), represented by Stephen
J. Strauss, of Fulwider Patton LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <jasonbateman.com>, registered with A Mountain Domains, Inc.
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 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 29, 2007.
On November 30, 2007, A Mountain Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <jasonbateman.com> domain name is registered with A Mountain Domains, Inc. and that Respondent is the current registrant of the name. A Mountain Domains, Inc. has verified that Respondent is bound by the A Mountain Domains, 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 December 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 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 postmaster@jasonbateman.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 1, 2008, 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 an internationally recognized and award-winning actor of motion pictures and television, who was nominated for such awards as: an Emmy Award (2005 for the television show Arrested Development); a Peoples Choice Award (2005); and the Screen Actor Guild Awards (2004 and 2006).
In 2005, Complainant won a Golden Globe for his leading role in Arrested Development.
In addition to his numerous television appearances, he has also starred in over fourteen movies including: Necessary Roughness, Starsky & Hutch, Dodgeball: A True Underdog Story, Fast Track, Mr. Magorium’s Wonder Emporium, and The Kingdom.
Respondent is neither commonly known by the <jasonbateman.com> domain name nor licensed by Complainant to register domain names using the JASON BATEMAN mark.
Respondent registered the <jasonbateman.com> domain name on February 13, 2007.
Respondent is using the disputed domain name to divert Internet users to a web directory featuring links to other third-party websites providing Complainant’s images, biography and products relating to the Arrested Development television show.
In addition, the <jasonbateman.com> domain name has also redirected users to a website located at <poker-web.net> domain name, which provides third-party links to adult-oriented content.
Respondent’s <jasonbateman.com> domain name is identical to Complainant’s JASON BATEMAN name and mark.
Respondent does not have any rights or legitimate interests in the <jasonbateman.com> domain name.
Respondent registered and uses the <jasonbateman.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark 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.
Registration of a trademark with the pertinent national authorities is unnecessary under Policy ¶ 4(a)(i), provided that Complainant can establish common law rights in its mark through evidence of continuous and extensive use of the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that a complainant's trademark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001):
The Policy does not require that a trademark be registered by a
governmental authority for such rights to exist.
Complainant asserts rights in the JASON BATEMAN mark through its personal use of the mark, his name, in connection with his career in television and motion pictures. Complainant lists his vast acting career in both television and motion picture films. Inasmuch as Respondent does not deny these allegations, we conclude that Complainant has acquired such a reputation in the JASON BATEMAN mark through his motion picture and television career that the JASON BATEMAN mark has taken on a secondary meaning and given rise to trademark rights at common law for the purposes of Policy ¶ 4(a)(i). 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 a complainant that common law trademark rights exist); see also 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 ….
Respondent’s <jasonbateman.com> domain name is identical to Complainant’s name and mark for purposes of Policy ¶ 4(a)(i) because it incorporates Complainant’s full name, and merely eliminates the spaces and adds the generic top-level domain (“gTLD”) “.com.” The omitted spacing and added gTLD are irrelevant for purposes of Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a 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 to a competing mark); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to a complainant’s TERMQUOTE mark); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights to and legitimate interests in the <jasonbateman.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant has established a prima facie case. And, because Respondent has failed to respond to the Complaint, we may assume that Respondent does not have rights or legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where a respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, a respondent failed to invoke any circumstance which could demonstrate its rights or legitimate interests in a domain name). However, we will examine the evidence of record to determine if there is any basis for concluding that Respondent may have such rights or interests in light of the provisions of Policy ¶ 4(c).
We first observe that Complainant contends, and Respondent does not deny, that Respondent is neither commonly known by the <jasonbateman.com> domain name nor licensed to register domain names using the JASON BATEMAN mark. In the absence of evidence suggesting otherwise, Respondent has therefore not established rights or legitimate interests in the <jasonbateman.com> domain name under the Policy ¶ 4(c)(ii). See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that a respondent’s failure to produce requested documentation supports a finding for a complainant); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence); further see Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because a respondent is not commonly known by a disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant also contends, and Respondent again does not deny, that Respondent is using the <jasonbateman.com> domain name, which we have concluded is identical to Complainant’s mark, for the purpose of guiding Internet users to a presumed pay-per-click web directory containing third-party links to other websites which include materials about Complainant. In addition, it is alleged without contradiction that the <jasonbateman.com> domain name has redirected Internet users to a website located at the <poker-web.net> domain name which provides third-party links to adult-oriented materials. Such uses of the disputed domain name do not constitute 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 to Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003): “Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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 also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that a respondent’s diversionary use of a complainant’s mark to attract Internet users to its own website, which contained a series of links 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). Further see Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)); to the same effect, see Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
There is no dispute that Respondent is using the <jasonbateman.com> domain name, which
is identical to Complainant’s JASON BATEMAN mark, to divert Internet users to a
web directory containing links to third-party websites related to Complainant’s
name and mark. In addition, the <jasonbateman.com> domain name has
redirected Internet users to a website located at the <poker-web.net>
domain name, which provides third-party links to adult-oriented materials. We infer from this that Respondent receives
click-through fees for diverting Internet users to these websites. Therefore, Respondent is taking advantage of
the likelihood of confusion between Respondent’s disputed domain name and
Complainant’s mark, thus capitalizing on the popularity and goodwill associated
with the JASON BATEMAN mark. Such use
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003): “Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’” See also
Drs. Foster & Smith, Inc.
v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
a respondent directed Internet users seeking a complainant’s site to its own
website for commercial gain).
Additionally, Respondent’s
redirection of Internet users from the <jasonbateman.com> domain name to a website containing adult-oriented
material located at the <poker-web.net> domain name shows bad faith
pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v.
Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding
that a respondent’s tarnishing use of a disputed domain names to redirect
Internet users to adult-oriented websites is evidence that the domain names
were being used in bad faith); see also Microsoft Corp. v. Horner,
D2002-0029 (WIPO Feb. 27, 2002) (holding that a respondent’s use of a
complainant’s mark to post adult-oriented photographs and to publicize
hyperlinks to additional adult-oriented websites evidenced bad faith use and
registration of a domain name).
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 <jasonbateman.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 9, 2008
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