Chrisma Productions, Inc. v. Thomas Quinn Jr.
Claim Number: FA0905001263592
Complainant is Chrisma Productions, Inc. (“Complainant”), represented by Norman Greenbaum, of SingerLewak, California, USA. Respondent is Thomas Quinn Jr. (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <harveykorman.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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 19, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 29, 2009.
On May 19, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <harveykorman.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 June 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 24, 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@harveykorman.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 29, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <harveykorman.com> domain name is identical to Complainant’s HARVEY KORMAN mark.
2. Respondent does not have any rights or legitimate interests in the <harveykorman.com> domain name.
3. Respondent registered and used the <harveykorman.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Chrisma Productions,
Inc., holds and/or represents Harvey Korman’s name, likeness, marks, and
assets. Harvey Korman is an
internationally known actor who has used his name and likeness in media and
commerce since 1961. Complainant holds a
registration of the HARVEY KORMAN mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 2,942,684 issued April 19, 2005) for the
purposes of promoting gaming machines.
Respondent registered the <harveykorman.com> domain name on January 26, 2007. The disputed domain name resolves to a website that only displays the message, “HarveyKorman Directory below! There was an error with your request or the service is unavailable. In no way is this site affiliated with the actor Harvey Korman.”
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 has sufficiently established rights in the HARVEY KORMAN mark under Policy ¶ 4(a)(i) because it holds a registration of the mark with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Respondent’s <harveykorman.com>
domain name contains Complainant’s entire mark, deletes the space within the
mark, and merely adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that none of these
alterations to Complainant’s mark sufficiently distinguish the disputed domain
name from Complainant’s mark. Therefore,
the Panel finds that the <harveykorman.com>
domain name is identical to Complainant’s HARVEY KORMAN 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 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 U.S. News & World Report, Inc.
v. Zhongqi, FA 917070 (Nat. Arb.
Forum Apr. 9, 2007) (“Elimination of punctuation
and the space between the words of Complainant’s mark, as well as the addition
of a gTLD does not sufficiently distinguish the disputed domain name from the
mark pursuant to Policy ¶ 4(a)(i).”).
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Initially, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). The burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”)
Respondent’s <harveykorman.com>
domain name resolves to a blank website except for the following message that
reads, “HarveyKorman Directory below!
There was an error with your request or the service is unavailable. In no way is this site affiliated with the
actor Harvey Korman.” The Panel finds
that Respondent’s failure to make an active use of the disputed domain name is
not a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii). See
Hewlett-Packard Co. v. Shemesh, FA 434145
(Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a
domain name that is identical to a complainant’s mark 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 also
Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583
(Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating
Complainant’s mark and is not using the <bloomberg.ro> domain name in
connection with an active website. The
Panel finds that the [failure to make an active use] of a domain name that is
identical to Complainant’s mark is not a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use of the domain name pursuant to
Policy ¶ 4(c)(iii).”).
Respondent is listed in the WHOIS information as “Thomas Quinn Jr.,” which indicates that
Respondent is not commonly known by the <harveykorman.com>
domain name. Respondent has not offered any 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 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
A finding of bad faith registration and use under Policy ¶ 4(a)(iii) is not limited to those instances enumerated in Policy ¶ 4(b). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Respondent
registered the disputed domain name on January 26, 2007 and since that
time has not made an active use of the disputed domain name. The
Panel finds that Respondent’s inactive use of the <harveykorman.com> domain name constitutes bad faith registration and use under Policy ¶
4(a)(iii). See DCI S.A. v. Link
Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the
respondent’s [failure to make an active use] of the domain name satisfies the
requirement of ¶ 4(a)(iii) of the Policy); see
also Pirelli & C. S.p.A. v. Tabriz, FA 921798
(Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar
domain name for over seven months constitutes bad faith registration and use).
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 <harveykorman.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin
Dated: July 13, 2009
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