Pilgrim Films and Television, Inc. v. Nikola Pesic a/k/a Home
Claim Number: FA0811001236018
Complainant is Pilgrim
Films and Television, Inc. (“Complainant”), represented by Stephen J. Strauss of Fulwider Patton LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ghosthuntersepisodes.com>, registered with Enom, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 26, 2008; the National Arbitration Forum received a hard copy of the Complaint December 1, 2008.
On November 26, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <ghosthuntersepisodes.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 9, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 29, 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@ghosthuntersepisodes.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 6, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <ghosthuntersepisodes.com>, is confusingly similar to Complainant’s GHOST HUNTERS mark.
2. Respondent has no rights to or legitimate interests in the <ghosthuntersepisodes.com> domain name.
3. Respondent registered and used the <ghosthuntersepisodes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pilgrim Films and Television, Inc., produces reality-based television shows. Complainant produces the GHOST HUNTERS television series, which has been broadcast since October 6, 2004. Complainant produced 76 episodes of this series over four seasons. Complainant has also produced a spin-off series entitled GHOST HUNTERS INTERNATIONAL. Complainant registered its GHOST HUNTERS mark with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 3,137,991 issued September 5, 2006) and other governmental trademark authorities worldwide.
Respondent registered the disputed <ghosthuntersepisodes.com> domain name October 6, 2008. The disputed domain name resolves to a website that depicts Complainant’s marks and logos and allows Internet users to view streaming videos of Complainant’s television episodes.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 submitted evidence of its registrations for the GHOST HUNTERS mark with the USPTO. The Panel finds that this evidence demonstrates Complainant’s rights in the mark under Policy ¶ 4(a)(i). See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”).
Respondent’s disputed <ghosthuntersepisodes.com> domain
name includes Complainant’s entire GHOST HUNTERS mark with the following
alterations: (1) the space between the words of the mark has been removed; (2)
the generic top-level domain “.com” has been added; and (3) the generic word
“episodes” has been included. The Panel
finds that removal of spaces and addition of a top-level
domain constitute immaterial changes.
See Bond & Co. Jewelers, Inc. v.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant made a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether evidence before the Panel suggests that Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). 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. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also 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.”).
The Panel notes that the WHOIS information for the disputed domain name lists the registrant as “Nikola Pesic a/k/a Home.” Moreover, Complainant contends that Respondent has no relationship or affiliation with Complainant and that Respondent has no permission to use Complainant’s mark. Therefore, without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also 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 in its response).
Respondent’s disputed domain name resolves to a website that
displays Complainant’s marks and logos, and provides Internet users with the
unauthorized opportunity to view Complainant’s television episodes. This use permits an inference by the Panel
that Respondent is attempting to profit by diverting Internet users to its own website
to make available for viewing Complainant’s television shows. Therefore, the Panel finds that Respondent
failed to make a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and failed
to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet
users seeking Complainant’s website to a website of Respondent and for
Respondent’s benefit is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit
Group, LLC v. LSO, Ltd., FA
758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of
the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to
respondent’s own website for commercial gain does not constitute either 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)).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s disputed domain name resolves to a website that
displays Complainant’s television shows in an unauthorized manner. Complainant asserts that it provides
legitimate viewings of its television shows at its own websites. Therefore, the Panel finds that Respondent’s
use of the disputed domain name has disrupted Complainant’s business. This constitutes evidence that Respondent
registered and is using the disputed domain name under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum
Sept. 21, 2006) (finding that the respondent registered and used the disputed
domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed
domain names to operate websites that compete with Complainant’s business); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Respondent’s use of the disputed domain name to offer
unauthorized viewings of Complainant’s television shows supports an inference
that Respondent receives some form of material gain by this unauthorized use.
The Panel therefore finds that Respondent registered and is using a disputed
domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent has
created, for commercial gain, a likelihood of confusion as to Complainant’s
endorsement or sponsorship of the disputed domain name. See
Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith
where the domain name in question is obviously connected with the complainant’s
well-known marks, thus creating a likelihood of confusion strictly for
commercial gain); see also Am. Online,
Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent
violated Policy ¶ 4(b)(iv) by displaying the
complainant’s mark on its website and offering identical services as those
offered by the complainant).
The Panel finds that Complainant satisfied the elements of ICANN 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 <ghosthuntersepisodes.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 20, 2009.
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