George Hamilton v. BWI Domain Manager c/o Domain Manager
Claim Number: FA0904001259771
Complainant is George Hamilton (“Complainant”), represented by Stephen J. Strauss, of Fulwider Patton LLP, CA. Respondent is BWI Domain Manager c/o Domain Manager (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <georgehamilton.com>, registered with Rebel.com.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 28, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 30, 2009.
On April 29, 2009, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <georgehamilton.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.com 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 May 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 21, 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@georgehamilton.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 26, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 without delay from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is an internationally recognized and award-winning major motion picture actor, and Complainant has used the common law trademark and service mark GEORGE HAMILTON throughout his acting career.
Complainant’s career has spanned almost 60 years, and he has acted in, directed and produced both motion pictures and television programming, including the 1959 film Crime and Punishment and the 2007 television program Dancing with the Stars.
Respondent registered the <georgehamilton.com> domain name on July 3, 1997.
The disputed domain name resolves to a website that features a search engine and links to third-party websites.
Respondent is gaining commercially from the unlicensed use of the disputed domain name, through the collection of “click-through fees” that Respondent receives from the third-party websites.
Respondent’s <georgehamilton.com> domain name is identical to Complainant’s GEORGE HAMILTON mark.
Respondent does not have any rights or legitimate interests in the domain name <georgehamilton.com>.
Respondent registered and uses the <georgehamilton.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant does not assert a trademark or service mark registration with any governmental trademark authority for his GEORGE HAMILTON mark. However, Complainant does not need to demonstrate such registration in order to have rights in the mark under Policy ¶ 4(a)(i), provided that Complainant can demonstrate common law rights in the mark through sufficient evidence of secondary meaning. See, for example, 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 SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that a complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
Complainant asserts
rights in the GEORGE HAMILTON mark through his long career as a major motion
picture actor. Evidence submitted with
the Complaint demonstrates that Complainant has become famous through a long
career as an actor, director and producer of film and television entertainment. Complainant has thus shown sufficient
secondary meaning in his GEORGE HAMILTON mark under Policy ¶ 4(a)(i) to establish common law rights in the mark. See Barnes v. Old Barn Studios Ltd., D2001‑0121
(WIPO Mar. 26, 2001) (finding that all that is required for a famous person to
establish a common law trademark in his name is likelihood of success in an
action against a third party who has engaged in passing off as the famous
person in trade without authority); see
also James v. Demand Domains, FA 1106240 (Nat. Arb. Forum Dec. 27, 2007):
“The AMI JAMES mark has become distinct through Complainant’s use and exposure
of the mark in the marketplace and through use of the mark in connection with
Complainant’s television show, clothing line, and tattoo shop for over
seventeen years.”; further see Iacocca v.
Complainant argues that the <georgehamilton.com> domain name is identical to Complainant’s GEORGE HAMILTON mark despite the omission of the space in the mark and the addition of the generic top-level domain “.com.” Neither alteration creates a sufficient distinction between the mark and that the disputed domain name, so that the domain is substantively identical to the mark under Policy ¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to a 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 Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i)).
We find, therefore, that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent lacks rights to and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden of production therefore shifts to Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights to or legitimate interests in a contested domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant
must first 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
interests in the subject domain names.
Complainant’s prima facie case includes evidence that Respondent
is not commonly known by the disputed domain name. The WHOIS information lists Respondent as “BWI Domain Manager c/o Domain Manager.’” No evidence to the contrary appearing in the
record, we conclude that Respondent is not commonly known by the disputed
domain name under Policy ¶ 4(c)(ii). See, for example, M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat.
Arb. Forum Aug. 3, 2006) (finding that a 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 Coppertown Drive-Thru
Sys., LLC v. Snowden, FA 715089
(Nat. Arb. Forum July 17, 2006)
(concluding that a respondent was not commonly known by the
<coppertown.com> domain name where there was no evidence in the record,
including the pertinent WHOIS information, suggesting that that respondent was
commonly known by the disputed domain name).
Complainant also contends that Respondent hosts a search engine which features links to third-party websites, at the website that resolves from the disputed domain name. Respondent does not deny this allegation. We conclude therefore that Respondent has not made either an actual use or demonstrable preparations to use the disputed domain name in connection with 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, for example, Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because a respondent's evident purpose in selecting contested domain names was to cause confusion with a complainant's website and marks, its use of the domain names was not in connection with a legitimate offering of goods or services or any fair use); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying links to third-party websites was not a use in connection with 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)).
We thus find that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Complainant contends, and Respondent does not deny, that
Respondent gains commercially from the use of the disputed domain name by means
of “click-through fees” that Respondent receives from the third-party
websites. The collection of such fees is
evidence of commercial gain from the use of the disputed domain name in bad
faith pursuant to Policy ¶ 4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v.
This Domain Name My Be For
For this reason, we find that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <georgehamilton.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 9, 2009
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