With You Inc. v. Private
Claim Number: FA0805001191869
Complainant is With You Inc. (“Complainant”), represented by Edmund J. Ferdinand, of Grimes & Battersby LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jessicasimpsononline.com>, registered with GoDaddy.com, 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.
The Forum appointed a three judge panel including R.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 20, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 21, 2008.
On May 20, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <jessicasimpsononline.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 May 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 18, 2008 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.
A timely Response was received and determined to be complete on June 18, 2008.
Timely Additional Submissions were received from Complainant on June 23, 2008 and from Respondent on June 25, 2008.
On June 30, 2008, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed R.
Complainant requests that the domain name be transferred from Respondent to Complainant.
In its Amended Complaint, With You, Inc. has asserted that it is a
rights holding company owned by Ms. Jessica Simpson. With You, Inc. states that it owns the
trademark JESSICA SIMPSON, which is properly registered in the
Further, Complainant has attached extensive documentary evidence supporting its position as to its ownership and registration of the “Jessica Simpson” name as a mark and other Jessica Simpson related marks. Complainant has asserted that Respondent has no “rights or legitimate interests in” the name “Jessica Simpson.” Complainant asserts that neither it nor Ms. Simpson has licensed the use of her name to the Respondent. Complainant points out that Respondent is not commonly known by the disputed domain name and has made no legitimate or fair use of the domain name. [The issue of “fair use” will play a very large role in the defense provided by Respondent.]
As to bad faith, Complainant asserts that the website is used for commercial activity in an attempt to use Ms. Simpson’s name, reputation, and fame. The Complainant also asserts that Respondent has offered to sell the domain to Complainant. Complainant asserts that the evidence, including communications from Respondent, show that Respondent has “intentionally attempted to attract, for commercial gain, Internet users” by creating confusion between Respondent’s site and the mark held by Complainant. In fact, Complainant has provided a communication wherein Respondent asserts that he has used the site “to sell shoes.”
The Complainant concludes with a discussion of Respondent’s conduct in appropriating the name “Jessica Simpson” as evidence of “bad faith.”
The Response filed by Wilhelm H. Helmbold first asserts that the domain name <jessicasimpsononline.com> is not identical to or confusingly similar analysis even though the trademarks held by Complainant are very similar to the domain name. Respondent says that such rules do not apply because his domain name resolves to a website which is a “Fan Site.” The Respondent’s basic defense is “fair use.” Respondent then discusses how his site represents fair use as a “Fan Site.” Respondent asserts, contrary to the clear content of the supposed “Fan site,” that the site is not primarily commercial, but is rather a true expression of fandom. Respondent also denies the diversion of e-commerce by use of this domain name.
Respondent also asserts that he kept the site after receiving a demand for Complainant open because he thought that he was going to be able to sell the site to representatives of Complainant or Ms. Simpson. However, he denies that he ever “demanded” any price for the domain name.
Respondent’s entire defense is centered upon the concept of fair use. Respondent does not attempt to rebut the allegations that the domain name and the marks held by Plaintiff are identical or confusingly similar. He does not assert that he has any rights in the name beyond those allowed by the concept of fair use. He does not deny an attempt to sell the property and does not address the issue of “bad faith” except in the context of fair use.
C. Additional Submissions
Complainant’s Additional Submission
Complainant filed an additional submission, again addressing the issue of fair use by a fan site. Complainant argues that the site is not a legitimate fan site and exists only to generate traffic from which Respondent profits. Complainant asserts that the non-commercial content of the “Fan Site” is largely copied from other sources.
Complainant spends much time in an attempt to show that the “Fan Site” is not in any way representative of a fan club or similar operation. As to legitimate non-commercial or fair use, Complainant asserts that there is no bona fide offering of goods or services by the Respondent himself.
Complainant also asserts that bad faith can be shown by the commercial nature of the “Fan Site.” Complainant disputes Respondent’s allegation, because this “Fan Site” redirects Internet traffic to authorized resellers of Complainant’s trademark products, that somehow there is “no harm, no foul.”
Respondent’s Additional Submission
In Respondent’s additional submission, Respondent asserts that he does have legitimate rights. Respondent argues here as he has previously that his commercial activities were appropriate because, at the time he established the “Fan Site,” Complainant and other parties related to Ms. Simpson had not established any commercial site. Again, Respondent argues that he kept the site going because he thought Complainant or other parties related to Ms. Simpson were interested in purchasing his “Fan Site.”
Respondent attempts again to assert that this “Fan Site” constitutes fair use. Respondent denies that he has made an attempt to mimic a legitimate fan site with the content and organization of <jessicasimpsononline.com>. Then, Respondent spends a significant amount of time attempting to show that he has not been operating in bad faith. Respondent, for example, asserts that he did not offer to sell the site to Complainant, but rather that Complainant asked him about a possible purchase of the site. Finally, as to business disruption, Complainant quite appropriately notes that there were no commercial sites operated by Complainant or other persons related to Ms. Simpson until April of 2008. Therefore, he argues, commercial disruption of Complainant’s own or related commercial sites should not be an issue.
The Panel unanimously finds that Respondent does not operate a “Fan Site.”
First, there is no doubt that the domain name and the marks are identical or confusingly similar. The addition of “online” is not significant. Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001).
The Respondent’s operation is clearly a commercial operation. The entry of the domain name immediately resolves to an advertisement for the sale of shoes apparently endorsed by Ms. Simpson and sold by a third party.
This analysis is, of course, unnecessary, given Respondent’s admissions and failure to make any attempt to rebut the issues presented by ICANN Policy ¶ 4(a).
As to rights and legitimate interests in the name, ICANN Policy ¶ 4(a)(ii), Respondent rests his entire case upon his argument concerning “fair use.”
The Complainant has made a prima facie case that Respondent is not authorized to use the JESSICA SIMPSON mark in any way. Respondent is not commonly known by that name and does not assert that he is commonly known by that name. Complainant’s position is that the website exists primarily for the commercial benefit of Respondent.
Certainly, as Complainant notes, Respondent’s use does not constitute a bona fide offering of goods and services under ICANN Policy ¶ 4(c)(i). This is also not a legitimate non-commercial fair use under ICANN Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000). Respondent, on the other hand, asserts that this is primarily a “Fan Website.” Respondent does admit commercial gains from the website. Respondent even argues that Respondent has acknowledged that this is a “Fan Website.” Finally, Respondent has placed a disclaimer on the website. None of this changes the simple fact that Respondent has no rights in the name and that the alleged legitimate “fair use” simply does not exist.
As Complainant has pointed out, the information about Jessica Simpson’s career, personal life, and music is largely copied from other sites and is merely incidental to Respondent’s attempts to use the site for commercial purposes.
This brings us to the issue of bad faith, ICANN Policy ¶ 4(a)(iii). Complainant has certainly made prima facie case of bad faith. See, e.g., Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003). Respondent offered to sell the name, and Complainant has also shown the use of the name for commercial purposes – that is to say, the use of the site to sell shoes.
Since the Respondent’s use is not fair use, nor is it permitted use, Complainant has clearly established that Respondent is attempting to use the website to which the domain name resolves in order to redirect Internet traffic for commercial gain to Respondent’s site. In comparison, if Respondent’s use was only to establish a fan club or fan site, such would constitute fair use. See, e.g., Springsteen v. Burgur, D2000-1532 (WIPO Jan. 25, 2001) and Nintendo of Am. Inc. v. Jones, D2000-0998 (WIPO Nov. 17, 2000). These are classic examples of fair use.
Because there is no “Fan Site,” the defense of fair use fails.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 finds that the sites of Complainant and Respondent are identical or confusingly similar.
The Panel has found that Respondent has no rights in the name “Jessica Simpson.”
The Panel finds that the Respondent has used the name “Jessica Simpson” in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jessicasimpsononline.com> domain name be TRANSFERRED from Respondent to Complainant.
R. GLEN AYERS, JR., Chair
HON. TYRUS R. ATKINSON, JR.
M. KELLY TILLERY
Dated: July 7, 2008
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