The Liberace Foundation for the Creative and Performing Arts v. Cyber Business Holdings Ltd.
Claim Number: FA0812001240344
Complainant is The Liberace Foundation for the Creative and
Performing Arts (“Complainant”),
represented by Erin E. Lewis, of Brownstein Hyatt Farber Schreck,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <liberacemuseum.com>, registered with Enom, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 30, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 31, 2008.
On December 31, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <liberacemuseum.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 January
6, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
January 26, 2009
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@liberacemuseum.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 30, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <liberacemuseum.com> domain name is confusingly similar to Complainant’s LIBERACE mark.
2. Respondent does not have any rights or legitimate interests in the <liberacemuseum.com> domain name.
3. Respondent registered and used the <liberacemuseum.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Liberace Foundation for the Creative
Performing Arts, is a non-profit organization based in
Respondent registered the disputed <liberacemuseum.com> domain name on May 27, 2004. Respondent’s disputed domain name resolves to a website that displays links and advertisements for a variety of third parties, including museums.
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.
The Panel finds that Complainant’s numerous registrations of
the LIBERACE mark with the USPTO squarely demonstrate Complainant’s rights in
the mark under Policy ¶ 4(a)(i). Moreover, the Panel finds that such rights
date back to the filing dates of the trademark applications. See Miller Brewing
However, Respondent’s disputed domain name was registered prior to Complainant’s filing dates and subsequent registration dates of the LIBERACE mark. Nevertheless, Complainant has alleged that it and its predecessor-in-interest have used the mark in variety of contexts since at least 1976, which represents the earliest date that the Foundation has provided scholarships to students across the country. The Panel finds that sufficient evidence exists to support the conclusion that Complainant has sufficient common law rights in the LIBERACE mark (including in its own use and that of its predecessor-in-interest) through requisite secondary meaning under Policy ¶ 4(a)(i). See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Kaino v. Fix, FA 699578 (Nat. Arb. Forum June 19, 2006) (finding common law rights where the complainant has been “…creating and displaying artwork under the GLENN KAINO mark since 1999, and that Complainant’s mark has been recognized as associated with Complainant’s artwork by several publications and the national media.”).
Respondent’s disputed <liberacemuseum.com>
domain name contains Complainant’s LIBERACE mark with the following additions:
(1) the generic and descriptive word “museum;” and (2) the generic top-level
domain “.com.” The Panel begins its
analysis much as previous foregoing panels have proceeded, and much as future
panels undoubtedly will continue to commence: the addition of a top-level
domain is without relevance in a Policy ¶ 4(a)(i)
analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar). The
addition of the word “museum” is not simply the tacking-on of a generic word
without reason. In this case,
Complainant runs the
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has 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 has established 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 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.”).
Complainant has alleged in the Complaint that it has not
uncovered any evidence suggesting that Respondent is commonly known by the
disputed domain name. Respondent has
failed to tender a response, and thus the Panel lacks such evidentiary
assertions to counter Complainant’s arguments.
The Panel does have an additional instrument with which to settle this
analytical foray: the WHOIS domain name registration information. This information lists Respondent’s identity
as “Cyber Business Holdings Ltd.,” and fails to destabilize Complainant’s
contentions. Therefore, the Panel finds
that Respondent lacks rights and legitimate interests under Policy ¶ 4(c)(ii), in that Respondent is not commonly known by the
disputed domain name. See Braun
Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006)
(concluding that the respondent was not commonly known by the disputed domain
names where the WHOIS information, as well as all other information in the
record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark); 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 Complaint maintains that the disputed domain name
resolves to a website that displays third-party links and advertisements for a
variety of businesses. Some of these
third-parties are museums, which is within the same industry as Complainant’s “
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
The Panel finds that Respondent’s registration and usage of
the disputed domain names to operate an Internet billboard of sorts for
Complainant’s direct competitors disrupts Complainant’s business and therefore
constitutes bad faith under Policy ¶ 4(b)(iii). See
David
Finally, the Panel finds that Respondent’s commercial gain
from the receipt of referral fees via the click-through websites is intentional
and designed to engender confusion among Internet users as to Complainant’s
affiliation and sponsorship of the disputed domain names and corresponding
websites. Therefore, the Panel finds
that Respondent both registered is using the disputed domain names in bad faith
under Policy ¶ 4(b)(iv). See
The Panel finds that 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 <liberacemuseum.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 13, 2009
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