Patrick Dempsey and TDS 66
Productions, Inc. v. Jennifer Frisby
Claim Number: FA0808001218786
PARTIES
Complainant is Patrick Dempsey and TDS Productions,
Inc. (“Complainant”), represented by Stephen J. Strauss, of Fulwider Patton LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <patrick-dempsey.org>, registered
with Tucows
Inc.
PANEL
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.
Christopher Gibson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“NAF”)
electronically on August 1, 2008; NAF received
a hard copy of the Complaint on August 4, 2008.
On August 6, 2008, Tucows Inc. confirmed by e-mail to the NAF that
the <patrick-dempsey.org>
domain name is registered with Tucows Inc.
and that the Respondent is the current registrant of the name. Tucows Inc.
has verified that Respondent is bound by the Tucows
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 August 8, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 28, 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@patrick-dempsey.org by e-mail.
A timely Response was received in electronic format only, but not in
hard copy on August 13, 2008. The Response is therefore incomplete under
ICANN Rule 5.
On August 19, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, NAF appointed
Christopher Gibson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name <patrick-dempsey.org> (the “Domain Name”) be transferred from
Respondent to Complainant.
PRELIMINARY ISSUE:
DEFICIENT RESPONSE
Respondent’s Response was submitted
only in electronic format, and not also in hard copy prior to the August 28,
2008 Response deadline. Thus, the National
Arbitration Forum does not consider the Response to be in compliance with ICANN
Rule 5. The Panel, at its discretion,
may choose whether to accept and consider this Response. See
Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any
weight to be given to the lateness of the response is solely in the discretion
of the panelist); see also Bank of Am. Corp. v. NW Free
Cmty. Access, FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (refusing to accept the respondent’s deficient response that
was only submitted in electronic form because it would not have affected the
outcome had the panel considered it).
The
Panelist is of the view that a refusal to accept and consider the Response in
this case would be a harsh sanction, particularly in view of the fact that an
electronic copy of the Response was received in a timely manner. The Response is therefore accepted. See
Strum v. Nordic Net
PARTIES’ CONTENTIONS
A. Complainant
The Complainant contends that the Domain Name is identical to a trademark in which the Complainant has rights, that Respondent has no rights or legitimate interests in the Domain Name, and that Domain Name was registered and is being used in bad faith. The Complainant requests that the Domain Name be transferred to the Complainant.
(1) Complainant contends the Domain Name is identical to a trademark in which Complainant has rights (ICANN Rules 3(b)(viii), (b)(ix)(1))
The Complainant has submitted evidence to show that Patrick Dempsey is an internationally recognized and award-winning actor of television and motion pictures. Mr. Dempsey has starred in various roles, perhaps most well-known for his role in the popular television series Grey’s Anatomy. Mr. Dempsey has also appeared in other television series and in movies and has achieved celebrity status.
Mr. Dempsey assigned his
rights in his name, likeness and image to his company, TDS 66 Productions, Inc
(“TDS 66”). Complainant TDS 66 has submitted
evidence to show that it has filed numerous trademark and service mark
applications with the United States Patent and Trademark Office (“USPTO”) covering
the PATRICK DEMPSEY mark. Complainant contends that the PATRICK DEMPSEY name has
enormous value and goodwill and identifies Complainant (particularly Mr.
Dempsey) uniquely and exclusively as the source of services and products to
which the PATRICK DEMPSEY name is applied.
Complainant contends that they have established strong common law
trademark rights in PATRICK DEMPSEY based on extensive use of the name in
connection with entertainment services for more than 25 years and through
application with the USPTO.
According to Complainant,
after Mr. Dempsey had achieved celebrity status, Respondent registered, on July
5, 2006, the domain name <patrick‑dempsey.org>. This Domain Name incorporates, in its
entirety, Complainant’s PATRICK DEMPSEY mark.
Complainant alleges that the Domain Name directs Internet users to an
active, commercial website (a copy was submitted into evidence), which
incorporates unauthorized uses of Mr. Dempsey’s publicity rights as well as the
PATRICK DEMPSEY name and mark, requests visitors to pay “donations” to keep the
website active, and posts a number of Google ads (for which Respondent receives
a commission) that provide links to other third party websites that offer goods
and services unrelated to the career of Mr. Dempsey.
(2) Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, Para. 4(a)(ii), Rules, Para. 3(b)(ix)(2))
Complainant maintains that the Domain Name incorporates, in its entirety, Complainants’ PATRICK DEMPSEY name and mark (with the exception of the hyphen between the first and last name). Thus, Complainant contends that Respondent’s registration and use of the Domain Name creates a likelihood of confusion with Complainants’ PATRICK DEMPSEY mark, and the addition of the generic top-level extension “.org” does not negate the confusingly similar aspects of the Domain Name, pursuant to Policy ¶4(a)(i).
Complainant states that they have no relationship with Respondent, nor has Complainant given permission or authorized Respondent to register and use the Domain Name. To the best of Complainants’ knowledge, Respondent has not been commonly known by the Domain Name.
Complainant submits that Respondent had actual knowledge of Complainants’ rights in the PATRICK DEMPSEY mark and name when Respondent registered the Domain Name. Complainant argues that Respondent’s use of the confusingly similar Domain Name in connection with a commercial website featuring unauthorized uses of Mr. Dempsey’s publicity rights as well as the PATRICK DEMPSEY name and mark, requesting visitors to pay “donations” to keep the website active, and posting a number of Google ads that provide links to other third party websites that offer goods and services unrelated to the career of Mr. Dempsey, is neither a bona fide offering of goods and services pursuant to Policy ¶4(c)(i), or a legitimate non-commercial or fair use pursuant to Policy ¶4(c)(iii).
(3) Complainant contends that the Domain Name was registered and is being used in bad faith (Policy paras 4(a)(iii), 4(b); Rules, para 3(b)(ix)(3)).
Complainant
contends that Respondent registered the Domain Name in bad faith under
Paragraph 4(b)(iv) of the Policy by registering and using it in an attempt to
purposely attract Internet users seeking Mr. Dempsey online to Respondent’s
commercial website, masquerading as a non-commercial fan site. Respondent derives
commercial benefit by receiving commissions from the numerous Google ads posted
on the site, and from “donations” from unwary Internet users.
The registration of the Domain Name, despite knowledge of Complainants’ rights in the PATRICK DEMPSEY mark, is also evidence, in and of itself, of bad faith registration and use.
Finally, Respondent’s unauthorized website usurps Complainant’s rights in the PATRICK DEMPSEY mark, and blocks the ability to control use of the mark as a Domain Name. Thus, regardless of whether or not Respondent is making money from the site, its registration and use of the Domain Name in connection with an unauthorized fan site is not a legitimate use and is in bad faith under the Policy.
B. Respondent
Respondent received various notifications and explanations from the National
Arbitration Forum, but nevertheless
appeared to be confused about her ownership/registration of the Domain Name and
the dispute resolution procedures.
Respondent offered no opposition to Complainant’s contentions concerning
registration and use of the Domain Name.
Respondent’s first communication to the National Arbitration
Forum was an e-mail on August 10, 2008:
I received a package from your organization today asking the I relinquish
the domain name [<patrick-dempsey.org>]
to Mr. Dempsey himself. I am not the owner of the domain name, I am the domain
name's host. The site has now been removed from my servers. I hope that will
successfully complete these discussions where I am involved.
Jennifer Frisby
On August 11, 2008, the National Arbitration Forum case coordinator sent the following reply
message to Respondent:
Dear Ms. Frisby,
The Registrar for the domain name <patrick-dempsey.org>
has verified you are the Registrant of the domain name. As such the case has
commenced and you have until August 28 to submit a response.
Regards,
[Domain Dispute Case Coordinator]
On that same day, August 11, 2008, Respondent sent the following
message to the National Arbitration Forum:
I don't know what response you want from me. The site has been removed
from my servers. If I owned the domain
name I would have no problem transferring ownership to you. I do own the domain
name <p-dempsey.com> and have removed that site as well. If you want that
domain name, you are welcome to it.
The person who owns the domain name <patrick-dempsey.org> is named Hayley and can be reached at [email
address]. I have spoken to her and she has no problem giving the domain to you
as well.
Jennifer Frisby
On August 12, 2008, the National Arbitration Forum case coordinator sent a further explanatory
e-mail to Respondent, as follows:
Dear Jennifer Frisby,
On [August] 11, 2008 the Forum received an email from you regarding the
ICANN UDRP procedure referenced above.
Since this document does not comply with ICANN UDRP or Forum requirements
spelled out in Rule 5 and Supp. Rule 5, it is unclear whether you intend this
communication to be considered as your complete and official Response in this
matter. The deadline for submission of
your Response is August 28, 2008 but if you reply to this email, copying the
Complainant, confirming that your Response is complete, the Forum will continue
with the administration of this proceeding and appoint a Panel within 5
days. The document will be included in
the file, and will be treated as a non-compliant Response.
Your immediate response to this issue is requested.
Best Regards,
[Domain Dispute Case Coordinator]
On August 13, 2008, Respondent sent the following message to the National
Arbitration Forum:
Hello again. My official response is this:
I hosted the site http://partick-dempsey.org
for several years but did not register the domain name and do not own the
domain name. The site has been removed from hosting per your request.
Jennifer Frisby
C. Additional Submissions
On August 26, 2008, the National Arbitration Forum received the following communication from a
third-party who claims to be the owner of the Domain Name:
Dear Sir,
My name is Hayley. I used to own the fansite
for Patrick, www.patrick-dempsey.org. Recently you contacted my webhost asking
the website be shut down. As a long time fan of Patrick's, I am disappointed. I
enjoyed working on the website and kept it a respectful fan site, allowing no
nasty comments or spam to get through. I always thought it was a way to promote
Patrick – in fact, I had some visitors who only just saw him in something and
came to my site to learn more about him. Fan Sites are a way to promote an
actor and to me, Patrick always seemed to appreciate his fans. Now hearing
this, I am very disappointed.
The reason I am emailing you, is because I
was wondering if I could keep the site at all? It was my hobby as I don't go
out at all, due to disabilities. Can I ask please what harm me having a fansite
was doing? If you could ask Mr.Dempsey I would be very appreciative.
Thank you for your time! And I hope to have
an answer from you soon.
Hayley
FINDINGS
The Panel finds that Patrick Dempsey
is an internationally recognized and award winning actor of television and motion
pictures
The Registrant registered the Domain Name in
July 2006.
DISCUSSION
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.
In this case, Respondent does not contest
Complainant’s claim of rights in the PATRICK DEMPSEY name and mark, nor does
Respondent seek to contest Complainant’s contentions in the Complaint in any
other significant respect. Instead,
Respondent states that she does not own the Domain Name and has taken steps to
remove all content that was previously posted on the website associated with
the Domain Name. However, it appears
Respondent has stopped just short of consenting to the transfer of the Domain
Name.
Complainant has submitted evidence to
establish that it has rights in the PATRICK DEMPSEY name and trademark. Complainant has used the PATRICK DEMPSEY mark in association
with the actor Patrick Dempsey and his career for more than 20 years. PATRICK DEMPSEY mark has acquired secondary
meaning through Complainant’s continuous use of the mark. The Complainant has established common law
rights in the mark, even while the trademark applications with the USPTO were
filed recently and are still pending. See Morris v. Lad, FA 584849
(Nat. Arb. Forum Jan. 16, 2006). The Domain Name contains Complainant’s mark
in its entirety. The Panelist finds that the Domain Name is identical to
Complainant’s PATRICK DEMPSEY mark, merely adding the top-level extension “.org.” Complainant has therefore satisfied the first required element of the
Policy, ¶ 4(a)(i).
The Panel is reminded that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.
According to Complainant, Respondent does not have rights or
legitimate interests in the Domain Name.
Respondent does not have
permission or authorization to use its PATRICK DEMPSEY mark, and Complainant
does not believe that Respondent is commonly known by the Domain Name. The Panel has considered Complainant’s
allegation that Respondent does not have any rights or legitimate interests in
respect of the Domain Name. Respondent has not contested these
assertions, but instead has stated that she does not own the Domain Name and
only acted as a host of the resolving website.
The Panel finds that the circumstances mentioned and evidenced by Complainant clearly establish a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds it very unlikely that Respondent could be in a position to claim any rights in the Domain Name at issue. As Respondent has not at all demonstrated any of the three circumstances that constitute rights to or legitimate interests in the Domain Name pursuant to paragraph 4(a)(ii) of the Policy, the Panel concludes that Respondent does not have any rights or legitimate interests in respect of the Domain Name. See Freeman v. Mighty LLC, D2005-0263 (WIPO Apr. 28, 2005).
The Panel has
considered Complainant’s assertions and evidence with regard to Respondent’s
registration and use of the Domain Name in bad faith. The
Panelist finds that there is evidence, through Respondent’s own submissions,
that she was fully aware of Complainant and its PATRICK DEMPSEY name and mark,
and that she clearly targeted the PATRICK DEMPSEY name when she registered the identical
Domain Name. The registration of the identical Domain Name, despite
knowledge of Complainants’ rights in the PATRICK DEMPSEY mark, may be
considered evidence of bad faith registration and use, particularly when the
Domain Name has been used as a fansite with commercial dimensions (i.e., Google
ads). See Dame Taylor, Elizabeth Taylor Cosmetics Co. & Interplanet Prod. Ltd.
v. Day After, FA 653586 (Nat. Arb. Forum Apr. 14, 2006) (“[E]vidence of bad
faith includes actual or constructive knowledge of a commonly known mark at the
time of registration”). When the Domain
Name is identical to the celebrity’s name and mark and is used for a fansite,
such a site can cause confusion as to the source, sponsorship, affiliation, or
endorsement vis-à-vis the celebrity. See
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <patrick-dempsey.org> Domain Name be TRANSFERRED
from Respondent to Complainant.
Christopher Gibson, Panelist
Dated: September 5, 2008
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