Lynda Carter v.
Claim Number: FA0903001253377
Complainant is Lynda Carter (“Complainant”), represented by Ryan
C. Compton, of DLA Piper LLP (US),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lyndacarter.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 March 20, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 23, 2009.
On March 20, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <lyndacarter.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 March 24, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 13, 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@lyndacarter.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 20, 2009, 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 <lyndacarter.com> domain name is identical to Complainant’s LYNDA CARTER mark.
2. Respondent does not have any rights or legitimate interests in the <lyndacarter.com> domain name.
3. Respondent registered and used the <lyndacarter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Lynda Carter, has been a television, film, and stage performer for over twenty-five years. During this time Complainant has appeared in a variety of productions including the television series Wonder Woman, which aired from 1976-1979.
Respondent registered the disputed domain name on November 20, 1996. Respondent’s disputed domain name redirects Internet users to a website that provides information and advertisements for third-party celebrities that compete with Complainant.
Respondent has been the respondent in multiple other UDRP
proceedings wherein the respective panels found in the respective complainants’
favor. See e.g. Crichton v. Alberta Hot Rods, D2002-0872 (WIPO Nov. 25,
2002); see also Catherine Cookson
Charitable Trust v.
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 LYNDA CARTER mark with a governmental authority. The Panel finds registration of a mark with a governmental authority is not necessary to obtain rights in a mark under Policy ¶ 4(a)(i), provided Complainant can provide evidence of common law rights in her LYNDA CARTER mark through a showing of sufficient secondary meaning. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the complainant have rights in a registered trademark and that it is sufficient to show common law rights in holding that the complainant has common law rights to her name).
Complainant asserts she has been a television, film, and stage performer for over twenty-five years. During this time Complainant alleges she has appeared in a variety of productions including the television series Wonder Woman, which aired from 1976-1979. Complainant has provided evidence of Complainant’s biography and filmography as evidence of these contentions. The Panel finds Complainant’s use of her LYNDA CARTER mark in connection with her television, film, and stage performance career is sufficient to establish Complainant’s rights in her LYNDA CARTER mark pursuant to Policy ¶ 4(a)(i). See 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 …”); see also Garnett v. Trap Block Techs., FA 128073 (Nat. Arb. Forum Nov. 21, 2002) (holding that the complainant had accrued common law rights in the KEVIN GARNETT mark).
Respondent’s <lyndacarter.com>
domain name fully incorporates Complainant’s LYNDA CARTER mark with the mere
deletion of a space and the addition of the generic top-level domain (“gTLD”)
“.com.” The deletion of a space from a
mark in a disputed domain name is not relevant because spaces are not
permissible in domain names. Also, the
addition of a gTLD is not relevant when determining whether a disputed domain
name is identical to a mark pursuant to Policy ¶ 4(a)(i)
because a gTLD is a required element in every domain name. Therefore, the Panel finds Respondent’s
disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or
legitimate interests in the disputed domain name. Once Complainant presents a prima facie case supporting these
allegations, the burden shifts to Respondent to establish it does have rights
or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel
finds Complainant has presented a sufficient prima facie case to support its allegations. Respondent failed to submit a response in
these proceedings. Therefore, the Panel
may assume Respondent does not have rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel will inspect the record
and determine whether 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 Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence).
Respondent is using
its <lyndacarter.com>
domain name to redirect Internet users to Respondent’s commercial
<celebrity1000.com> domain name, which contains information about a
variety of entertainers and advertisements in competition with Complainant’s
business as a performer. The Panel finds
this use 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
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum
The WHOIS information and record do not indicate Respondent
is commonly known by the <lyndacarter.com>
domain name. The WHOIS information lists
Respondent as “
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant has asserted Respondent is a seasoned
cybersquatter who has been a party to numerous UDRP decisions in which the
domain names at issue were transferred to the respective complainants in those
proceedings. See, e.g., Crichton v. Alberta Hot Rods, D2002-0872 (WIPO Nov. 25,
2002); see also Catherine Cookson Charitable
Trust v.
Respondent’s disputed domain name redirects Internet users to
celebrity information and advertisements that compete with Complainant’s
performance business. The Panel finds
Respondent’s use constitutes disruption of Complainant’s business and is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum
Respondent is using the website resolving from its
confusingly similar disputed domain name to redirect Internet users to a website
that contains information and advertisements that compete with
Complainant. Respondent presumably
profits from this use of the confusingly similar disputed domain name in the
form of click-through fees.
Additionally, Respondent’s use of Complainant’s LYNDA CARTER mark
creates a likelihood of confusion regarding the source of the content resolving
from the disputed domain name. The Panel
finds this is an attempt by Respondent to profit from the goodwill associated
with Complainant’s mark. Therefore, the
Panel finds Respondent’s attempt to profit from its use of the confusingly
similar disputed domain name constitutes registration and use in bad faith
pursuant to Policy ¶ 4(b)(iv).
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 <lyndacarter.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: May 4, 2009
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