Bonnie Hunt and TP Promotions, Inc. v. Traverito Traverito
Claim Number: FA0806001211106
Complainant is Bonnie Hunt and TP Promotions, Inc. (“Complainants”), represented by J.
Andrew Coombs, of J. Andrew Coombs,
A Professional Corporation,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <bonniehunt.com>, registered with Moniker Online Services, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainants submitted a Complaint to the National Arbitration Forum electronically on June 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 20, 2008.
On June 24, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <bonniehunt.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 July
1, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 21, 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 postmaster@bonniehunt.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 28, 2008, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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.
Complainants request that the domain name be transferred from Respondent to Complainants.
A. Complainant makes the following assertions:
1. Respondent’s <bonniehunt.com> domain name is identical to Complainants’ BONNIE HUNT mark.
2. Respondent does not have any rights or legitimate interests in the <bonniehunt.com> domain name.
3. Respondent registered and used the <bonniehunt.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Bonnie Hunt is an internationally famous actress who has appeared in numerous motion pictures and television programs. Related to the various motion pictures and programs she has appeared in, she has been nominated for several awards, including an Emmy, Golden Globes, Screen Actor’s Guild, and Television Critics Awards. In September 2007, a press release was made announcing that in fall of 2008 a new television show hosted by Complainant Bonnie Hunt would premiere. The show will be produced by Complainant TP Promotions Inc. and is to be named “The Bonnie Hunt Show.”
The <bonniehunt.com> domain name was registered on November 25, 2004 and currently resolves to a commercial website with a search engine and directory containing links to various third-parties. Complainant alleges that many of the searches and links contained within this website redirect Internet users to products and services associated with Complainants’ BONNIE HUNT mark.
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 Complainants’ 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 Complainants 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 Complainants have 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.
Complainants assert that they have rights in the BONNIE HUNT mark because it is the personal name of Complainant BONNIE HUNT. The Panel recognizes that it is not necessary for a complainant to have registered its mark with a governmental authority so long as it can establish common law rights. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); 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).
Furthermore, a complainant may establish common law rights in a personal name if they can show a likelihood of success in pursuing an action against a third-party who attempts to trade off of the complaint’s name without permission. See Barnes v. Old Barn Studios Ltd., D2001‑0121 (WIPO Mar. 26, 2001) (finding that all that is required for a famous or very well-known person to establish a common law trademark in their name is likelihood of success in an action against a third party who has engaged in passing off as the famous person in trade without authority). This is shown through established secondary meaning in the famous person’s name. See McCarthy on Trademarks and Unfair Competition, § 13:1 (4th ed. 2002) (stating that the basic rules pertaining to the protection of personal names require actual proof of secondary meaning for protection); see also 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 the complainant that common law trademark rights exist). Complainant Bonnie Hunt is a famous actress who has appeared in numerous movies and television programs. Furthermore, she will be hosting her own show in the fall of 2008 under the name of “The Bonnie Hunt Show.” Complainant TP Promotions, Inc. will be producing this show. Accordingly, the Panel finds that Complainants have sufficiently established enforceable rights in the BONNIE HUNT mark for the purposes of Policy ¶ 4(a)(i) as it is Complainant Bonnie Hunt’s name.
Respondent’s <bonniehunt.com>
domain name is identical to Complainants’ BONNIE HUNT mark but for the
inclusion of the generic top-level domain (“gTLD”) “.com” and the omission of
the space between the words “BONNIE” and “HUNT.” It is well-established though that the
inclusion of a gTLD and omission of a space are irrelevant to a Policy ¶
4(a)(i) analysis. As a result, the Panel
finds that the <bonniehunt.com>
domain name is identical to Complainants’ BONNIE HUNT mark pursuant to Policy ¶
4(a)(i). See
The Panel concludes that Complainants have sufficiently established Policy ¶ 4(a)(i).
In a Policy ¶ 4(a)(ii) analysis, Complainants must first provide a prima facie showing that Respondent lacks rights and legitimate interests in the dispute domain name. 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.”). The Panel finds that Complainants have met this burden, and that it is accordingly shifted to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(c), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name).
Respondent has failed to file a reply to the Complaint. Therefore, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name. However, the Panel will still proceed to consider the remaining evidence in the record in consideration of the elements listed under Policy ¶ 4(c). See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); 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).
There is nothing in the record that indicates that
Respondent is or ever was commonly known by the disputed domain name. The disputed domain name’s Registrant is
listed as “Traverito Traverito.”
Additionally, Complainant asserts that is has not granted license or
permission to Respondent to use the BONNIE HUNT name in any way. Consequently, the Panel finds that Respondent
is not commonly known by the <bonniehunt.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Educ. Broad. Corp. v.
DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding
that the respondent was not commonly known by the <thirteen.com> domain
name based on all evidence in the record, and the respondent did not counter
this argument); see also IndyMac Bank
F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that
the respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed domain name).
Complainant argues that Respondent is using its <bonniehunt.com> domain name to
attract Internet users to its commercial website using Complainant’s BONNIE
HUNT mark and then display a series of searches and links to products and
services associated with Complainant.
The Panel finds that such a use does not constitute a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645
(Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain
name to redirect Internet users to websites unrelated to a complainant’s mark
is not a bona fide use under Policy ¶
4(c)(i)); see also 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).
The Panel concludes that Complainants have sufficiently established Policy ¶ 4(a)(ii).
The <bonniehunt.com>
domain name displays a series of links to third-parties. Complainant argues Respondent is using the
disputed domain name to divert Internet traffic to websites not owned or
otherwise approved by Complainants and as such is trading on the value
established in Complainants’ BONNIE HUNT mark.
In GMAC LLC v. WhoisGuard
Protected, FA 942715 (Nat. Arb.
Forum May 9, 2007), the panel highlighted that the requisite bad faith intent
under Policy ¶ (b)(iv) is found when, “evidence that a domain name registrant
has intentionally attempted to attract, for commercial gain, Internet users to
the registrant’s website by creating a likelihood of confusion with the
complainant’s mark.” Likewise, in Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25,
2007), the panel held that the use of a confusingly similar domain name to
display links to various third-party websites demonstrated bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). As a consequence, this Panel finds
Respondent’s use of the confusingly similar disputed domain name to
commercially benefit through its display a series of links to unrelated third
parties to presumptively establish Respondent’s bad faith registration and use
of the <bonniehunt.com> domain
name pursuant to Policy ¶ 4(b)(iv). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the
respondent was taking advantage of the confusing similarity between the
<lilpunk.com> domain name and the complainant’s LIL PUNK mark by using
the contested domain name to maintain a website with various links to
third-party websites unrelated to Complainant, and that such use for the
respondent’s own commercial gain demonstrated bad faith registration and use
pursuant to Policy ¶ 4(b)(iv)).
The Panel concludes that Complainants have sufficiently established 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 <bonniehunt.com> domain name be TRANSFERRED from Respondent to Complainants.
Judge Harold Kalina (Ret.), Panelist
Dated: August 7, 2008
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