Danjaq LLC and United Artists Corporation v. Fonzie Miller
Claim Number: FA0807001216468
Complainant is Danjaq LLC and
United Artists Corporation (“Complainant”), represented by Nathan
J. Hole, of Loeb & Loeb LLP, Illinois, USA. Respondent is Fonzie Miller (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fromrussiawithlove.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.
James A Crary 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 21, 2008.
On July 21, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <fromrussiawithlove.com> domain name is registered with Godaddy.com, Inc. and that 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 July 24, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 13, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 19, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <fromrussiawithlove.com> domain name is identical to Complainant’s FROM RUSSIA WITH LOVE mark.
2. Respondent does not have any rights or legitimate interests in the <fromrussiawithlove.com> domain name.
3. Respondent registered and used the <fromrussiawithlove.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Danjaq LLC created and marketed the James Bond films and related products with the cooperation of Complainant United Artists Corporation. Complainants, Danjaq LLC and United Artists Corporation, will be hereafter collectively referred to as Complainant. In 1963, Complainant released the second film in its James Bond franchise, FROM RUSSIA WITH LOVE. Complainant’s FROM RUSSIA WITH LOVE mark and its related products have generated considerable revenue from their sales. Complainant has devoted significant funds promoting and advertising its FROM RUSSIA WITH LOVE in the media. Complainant has also licensed numerous third-parties to use its FROM RUSSIA WITH LOVE mark in connection with movie-related goods and services. Complainant registered its FROM RUSSIA WITH LOVE mark with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) on August 3, 2006 (Reg. No. 4,333,308). Complainant also registered its FROM RUSSIA WITH LOVE mark with the United States Patent and Trademark Office (“USPTO”) on October 31, 2006 (Reg. No. 3,166,490).
Respondent registered the disputed domain name on June 8, 2003. Respondent’s disputed domain name redirects Internet users to the <loveme.com> domain name which provides services related to an international female companionship company that offers single men an opportunity to meet foreign females. The website also advertises fiancée immigration legal services. Respondent presumably receives commissions for diverting Internet users from the disputed domain name to <loveme.com>.
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 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 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 Respondent is identical or confusingly similar to a trademark or 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 domain name has been registered and is being used in bad faith.
Complainant has provided evidence it registered its FROM RUSSIA WITH LOVE mark with the OHIM and the USPTO. The Panel finds these registrations sufficiently establish Complainant’s rights in its mark pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). These registrations do not predate Respondent’s registration of the disputed domain name, however, Complainant also alleges common law rights in its FROM RUSSIA WITH LOVE mark dating back to 1963.
Complainant released its FROM RUSSIA WITH LOVE movie in 1963. Since then Complainant has spent significant funds promoting the film using its FROM RUSSIA WITH LOVE mark. Complainant’s FROM RUSSIA WITH LOVE movie and related products have garnered substantial revenue for Complainant. The Panel finds Complainant has established common law rights in its FROM RUSSIA WITH LOVE mark pursuant to Policy ¶ 4(a)(i) dating back to 1963 when its movie was released. See Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Complainant contends Respondent’s <fromrussiawithlove.com> domain name is identical to
Complainant’s FROM RUSSIA WITH LOVE mark.
Respondent’s disputed domain name merely deletes the spaces in
Complainant’s mark and adds the generic top-level domain “.com.” Numerous other panels have held that these
alterations are insignificant in determining whether a disputed domain name is
identical to a mark because spaces are impermissible in a domain name and
top-level domains are a required element of every domain name. Thus, the Panel finds Respondent’s <fromrussiawithlove.com> domain name
is identical to Complainant’s FROM RUSSIA WITH LOVE mark pursuant to Policy ¶
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts Respondent does not possess rights or legitimate interests in the disputed domain name. Complainant is required to produce a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. The burden of proof then shifts to Respondent to counter Complainant’s allegations. The Panel finds Complainant has established a sufficient prima facie case. Respondent has failed to submit a response to these proceedings, thus the Panel may infer Respondent lacks rights and legitimate interests in the disputed domain name. The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”).
Respondent’s disputed domain name redirects Internet users to a website that advertises services related to international female companionships, including fiancée immigration services. The Panel finds Respondent’s use of the disputed domain name is not 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 WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant maintains Respondent is not commonly known by the disputed domain name. The WHOIS information lists Respondent as “Fonzie Miller.” Complainant contends it has never authorized Respondent to use its FROM RUSSIA WITH LOVE mark. Thus, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using its identical disputed domain name to redirect Internet users to the <loveme.com> domain name. Respondent presumably receives commissions for this use of the disputed domain name. The Panel finds Respondent’s attempt to profit from the goodwill Complainant has established in its FROM RUSSIA WITH LOVE mark, and Internet users confusion as to Complainant’s affiliation with the disputed domain name, is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fromrussiawithlove.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: September 2, 2008
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