Ms. Gisele Bundchen v. Dreamseller Inc - In Stealth Mode
Claim Number: FA0812001237167
Complainant is Ms. Gisele Bundchen (“Complainant”), represented by Brad
D. Rose, of Pryor Cashman, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <giselebundchen.com>, registered with Godaddy.com, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 5, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 5, 2008.
On December 5, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <giselebundchen.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 December 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 30, 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@giselebundchen.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 Honorable Karl V. Fink (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <giselebundchen.com> domain name is identical to Complainant’s GISELE BUNDCHEN mark.
2. Respondent does not have any rights or legitimate interests in the <giselebundchen.com> domain name.
3. Respondent registered and used the <giselebundchen.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ms. Gisele Bundchen, is a Brazilian model. Complainant has been in the modeling industry
since the mid-1990s. Complainant made
her cover debut in 1998 on the cover of Allure
magazine. Since then, Complainant has
also appeared on the cover of Vogue
and numerous other publications. In
1999, Complainant won VH1/Vogue’s “Model of the Year” title. Complainant has also participated in a
variety of advertising campaigns including Christian Dior, Dolce & Gabbana,
Versace, Ralph Lauren, Michael Kors and
Respondent registered the disputed domain name on December 20, 1999. The disputed domain name resolves to a website that is blank except for the line “giselebundchen.com IN STEALTH MODE.”
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 not registered her GISELE BUNDCHEN mark with any governmental trademark authority. However, the Panel finds a mark need not be registered for a complainant to establish rights in it pursuant to Policy ¶ 4(a)(i). Rather, Complainant may demonstrate proof of secondary meaning associated with her name in order to have sufficient common law rights. See 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); see also 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).
Complainant has used the GISELE BUNDCHEN mark in connection with her extensive modeling career since the mid-1990s. By at least 1998, she had modeled for the cover of Allure magazine and following that debut continued to model for the cover of various magazines and publications. Additionally, Complainant secured several contracts modeling for well-known fashion lines. Complainant also won several titles related to her popularity as a model. Therefore, the Panel finds Complainant has established rights in her GISELE BUNDCHEN mark dating back to 1998. See Vandergriff & Vandergriff Motorsports, Ltd. v. Sklute & Racers Edge Photography, FA 959691 (Nat. Arb. Forum May 29, 2007) (finding common law rights in the name of a drag race car driver who marketed merchandise under his own name); see also Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (“A person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law …”).
Complainant contends Respondent’s disputed domain name is identical to her GISELE BUNDCHEN mark. The disputed domain name simply omits the space between the terms and adds the generic top-level domain “.com.” The Panel finds that since spaces are an impermissible character in a domain name and top-level domains are a required component of every domain name, these alterations are irrelevant under Policy ¶ 4(a)(i). Thus, the Panel finds the disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to 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 Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges Respondent does not possess rights or legitimate interests in the disputed domain name. Initially, the burden of proof lies with Complainant to establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has produced a prima facie case, the burden then shifts to Respondent to prove it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has sufficiently established a prima facie case under Policy ¶ 4(a)(ii). Respondent has failed to file a response in these proceedings and thus the Panel may presume Respondent lacks rights and legitimate interests in the disputed domain name. The Panel, however, will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Respondent’s disputed domain name resolves to a website that is blank except for the language “giselebundchen.com IN STEALTH MODE.” The Panel finds Respondent has not made an active use of the disputed domain name. Therefore, 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 Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that the respondent had not established any rights or legitimate interests in the domain name); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question).
Complainant maintains Respondent is not commonly known by the disputed domain name. The WHOIS information, which lists Respondent as “Dreamseller Inc – In Stealth Mode,” and record do not indicate Respondent is, or has been commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed 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 the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also 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).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent has failed to make an active use of the disputed domain name it has held for almost ten years. Failure to make an active use of a disputed domain name can be evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). The Panel finds that in this instance, where Respondent has failed to make an active use of the identical disputed domain name for ten years and has failed to submit a response to the Complaint, Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in 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 <giselebundchen.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 15, 2009
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