Dr. Pamela Peeke v.
Claim Number: FA0807001216216
Complainant is Dr. Pamela Peeke (“Complainant”), represented by James
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pamelapeeke.com>, registered with Compana, 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 July 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 22, 2008.
On July 21, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <pamelapeeke.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, 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 July 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on August 18, 2008.
On August 25, 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.
Complainant requests that the domain name in issue be transferred from Respondent to Complainant.
Complainant contends, among other things, that:
Complainant is a well-known physician, author, speaker and media personality.
Complainant has acquired common law rights to the name and corresponding trademark PAMELA PEEKE in that it has become a distinctive source identifier which has acquired secondary meaning through a variety of means, including Complainant’s television and radio appearances on such programs as the Oprah Winfrey Show and Discover Health, as well as its web site (<drpeeke.com>), published books, magazine articles and compact discs and speaking engagements.
Complainant has used the PAMELA PEEKE name and mark to promote its
professional reputation in the field of wellness throughout the
Respondent registered the disputed domain name in 2005.
Respondent’s domain name <pamelapeeke.com> is identical to Complainant’s mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent does not offer bona fide goods or services by means of the web site associated with the disputed domain name.
Rather Respondent, for commercial gain in the form of “click-through fees,” uses that website to divert Internet users to third-party providers of services that have no association with Complainant but which are similar to the nutrition and health-related goods and services offered by Complainant.
Respondent is not commonly known by the disputed domain name.
Respondent had knowledge of Complainant’s rights in the PAMELA PEEKE name and mark at the time it registered the offending domain name.
Respondent registered and uses the same domain name in bad faith.
Respondent contends, among other things, that:
Complainant has no registered mark rights in the PAMELA PEEKE name, and Complainant has failed to show common law trademark rights in that name.
Respondent is within its rights in establishing an Internet search service built around a name for which no mark exists.
Respondent’s website associated with the disputed domain name is controlled by a company with which it contracts for site management services, and Respondent is not in control of what material appears on that site.
Respondent had no knowledge of Complainant at the time that the disputed domain name was registered.
Respondent is the registrant of thousands of domain names which consist of generic terms as to which no one can claim exclusive use, and the disputed domain name is but one such domain.
Respondent did not register the disputed domain name in order to sell it to Complainant.
(1) the domain name registered by Respondent is identical to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in 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 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:
i. the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the 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 asserts rights in the name, PAMELA PEEKE, which is not registered with any trademark authority. However, Complainant need not own a trademark registration in order to establish protectable rights in the name under the Policy. See, for example, Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the ICANN Policy does not require that a complainant have rights in a registered trademark, so that it is sufficient to show common law rights in a name under Policy ¶ 4(a)(i)). See also 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 ….
As to whether Complainant has
established such secondary meaning, Complainant contends that the PAMELA PEEKE
name is a distinctive source identifier which has acquired secondary meaning
through various means identified in the Complaint. Complainant also claims that
it has developed its reputation on a national level in the
We next observe that the <pamelapeeke.com> domain name is identical to Complainant’s common law
mark pursuant to Policy ¶ 4(a)(i) because it includes the mark in its entirety
without the space between its elements and merely adds the gTLD “.com.” See,
for example, Diesel v. LMN,
FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to a complainant’s mark because
“simply eliminat[ing] the space between terms and add[ing] the generic
top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the
disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶
4(a)(i)”); see also Bond & Co. Jewelers, Inc. v.
We therefore find that Complainant has met the proof requirements of Policy ¶ 4(a)(i).
Under this heading, Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show that it does have such rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first 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 interests in the subject domain names.
We are satisfied that Complainant has made out a prima facie showing for purposes of Policy ¶ 4(a)(ii). In particular, Complainant alleges that Respondent is not commonly known as “Pamela Peeke.” Respondent does not dispute this allegation. Indeed the pertinent WHOIS information identifies Respondent as “Texas International Property Associates-NA NA,” which supports Complainant’s allegation. We therefore conclude that Respondent is not commonly known by the <pamelapeeke.com> domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the pertinent WHOIS information, suggesting that that respondent was commonly known by the disputed domain name); see also M. Shanken Comm. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the pertinent WHOIS information and other evidence in the record).
We also take note of Complainant’s assertion, which Respondent does not deny, that Respondent uses the <pamelapeeke.com> domain name to display hyperlinks to advertising of health-related products and services that may be of interest to Complainant’s customers. Complainant further alleges, without contradiction from Respondent, that Respondent receives click-through fees from these links. This use of the disputed domain name constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under 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 Royal Bank of Scot. Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was 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 pursuant to Policy ¶ 4(c)(iii), where a respondent presumably received “click-through” fees for each consumer it redirected to other websites).
In its defense, Respondent alleges that the hyperlinks posted to its website resolving from the <pamelapeeke.com> domain name are the responsibility of a contract site manager, and that Respondent has no control over the posted hyperlinks. We find this position-taking disturbingly disingenuous. Respondent is ultimately responsible for the content posted to its website at the disputed domain name. See, for example, Netbooks, Inc. v. Lionheat Publ., FA 1069901 (Nat. Arb. Forum Oct. 18, 2007):
The Panel also notes that Respondent is responsible for the content of any website using the domain name at issue, and cannot pass that responsibility off to its registrar or domain name service provider.
See also StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug. 27, 2007):
Respondent has alleged that the registrar, GoDaddy, has posted these [competing] links for the website associated with the Domain Name. However, the Panel finds this is no excuse and holds Respondent accountable for the content posted to the site that resolves from the Domain Name.
For these reasons, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied by Complainant’s submissions.
On the point of bad faith, we have
no difficulty in concluding, on the record before us, that Respondent has
intentionally attempted to attract Internet users to its website at the
disputed domain name for commercial gain by creating a likelihood of confusion
with Complainant’s PAMELA PEEKE mark as to the possible source, sponsorship,
affiliation, or endorsement of that website or of products or services
advertised on or from that web site.
This is bad faith as defined in Policy ¶ 4(b)(iv). See
Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
To the same effect, see also BPI Comm., Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002).
Also apropos the question of bad faith registration and use of the disputed domain name, Complainant contends that Respondent had knowledge of Complainant’s rights in the PAMELA PEEKE name and mark when it registered the domain. Respondent pointedly denies this assertion, but, as previously noted, we find this denial to be incredible in light of the distinctive character of Complainant’s name and the undenied lengths to which Complainant has gone over a long period of years in promoting its profession and business under this mark. Therefore, we conclude for this separate reason that Respondent registered and uses the <pamelapeeke.com> domain name in bad faith. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where a respondent was aware that disputed domain names incorporated marks in which a complainant had rights); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002):
[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.
Thus the Panel finds that Complainant has prevailed under Policy ¶ 4(a)(iii).
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 <pamelapeeke.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 8, 2008
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