Mrs. Fred Astaire v. Joseph Cote
Claim Number: FA0908001281710
Complainant is Mrs. Fred Astaire (“Complainant”), represented by Stephen
J. Strauss, of Fulwider Patton LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue are <astaireawards.com>, <astaireawards.net> and <astaireawards.org>, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 26, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 28, 2009.
On August 27, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <astaireawards.com>, <astaireawards.net> and <astaireawards.org> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. 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 September 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 22, 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@astaireawards.com, postmaster@astaireawards.net, postmaster@astaireawards.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 29, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <astaireawards.com>, <astaireawards.net> and <astaireawards.org> domain names are confusingly similar to Complainant’s ASTAIRE mark.
2. Respondent does not have any rights or legitimate interests in the <astaireawards.com>, <astaireawards.net> and <astaireawards.org> domain names.
3. Respondent registered and used the <astaireawards.com>, <astaireawards.net> and <astaireawards.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mrs. Fred Astaire, succeeded all her late husband’s intellectual property rights upon his death in 1987. Throughout his life, the late Mr. Astaire developed world-wide recognition in his ASTAIRE mark in connection with entertainment and dance business. The late Mr. Astaire received numerous awards and accolades for film, television, musical and dance productions throughout his career. The late Mr. Astaire starred in over forty motion pictures and multiple television specials. Upon his death, Complainant acquired Mr. Astaire’s intellectual property rights and has since used the ASTAIRE mark, licensing its use to third-parties in connection with multiple ventures including the “Astaire Awards,” an award ceremony honoring dancers and choreographers administered by the Theater Department Fund.
Respondent registered the disputed domain names on June 30, 2008. The <astaireawards.com> domain name resolves to an inactive website. The <astaireawards.net> and <astaireawards.org> domain names resolve to a website featuring a search engine and links to third-party businesses offering dance instruction and fitness classes.
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 asserts common law rights in the ASTAIRE mark
through the acquisition of secondary meaning.
The Panel finds it is not necessary that a complainant hold a trademark
registration with a governmental trademark authority, provided the complainant
establishes sufficient secondary meaning in the mark to establish common law
rights in the mark under Policy ¶ 4(a)(i).
See Zee TV USA, Inc. v.
Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the
complainant need not own a valid trademark registration for the ZEE CINEMA mark
in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also
Complainant acquired rights in the ASTAIRE mark upon the death of the late Mr. Fred Astaire. Complainant has provided evidence that Mr. Astaire’s lifetime career in the entertainment and dance industry included numerous awards, as well as appearances in numerous movies and multiple television specials in the 1950s through the 1980s. Upon his death, Complainant acquired rights in the ASTAIRE mark and since has licensed the mark for third-party use, notably in connection with the “Astaire Awards,” which honors dancers and choreographers administered by the Theater Department Fund. The Panel finds Complainant’s evidence sufficiently establishes Complainant’s rights in the ASTAIRE mark under Policy ¶ 4(a)(i). See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association with the complainant that common law trademark rights exist); see also CMG Worldwide, Inc. v. Naughtya Page, FA 95641 (Nat. Arb. Forum Nov. 8, 2000) (finding that Princess Diana had common law rights in her name at her death and that those common law rights have since been transferred to the complainant, the representative of Princess Diana’s estate).
Respondent’s disputed domain names each contain Complainant’s ASTAIRE mark with the addition of the descriptive term “awards” and a generic top-level domain. The term “awards” is descriptive of an awards program administered by a third-party who licenses Complainant’s mark. The Panel finds neither the addition of a descriptive term, nor the addition of a generic top-level domain distinguishes Respondent’s disputed domain names from Complainant’s mark in these circumstances. Thus, the Panel finds the disputed domain names are confusingly similar to Complainant’s ASTAIRE mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain names. 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 names 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.”).
The WHOIS information lists Respondent as “Joseph Cote.”
Complainant argues that Respondent is not permitted or authorized to use
Complainant’s mark and that Respondent is not commonly known by the disputed
domain names. Absent evidence in the
record to the contrary, the Panel finds Respondent is not commonly known by the
disputed domain names under Policy ¶ 4(c)(ii).
See Broadcom Corp. v. Intellifone
Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or
legitimate interests because the respondent is not commonly known by the
disputed domain name or using the domain name in connection with a legitimate
or fair use); see also Ian Schrager Hotels, L.L.C. v.
Taylor, FA 173369 (Nat. Arb. Forum Sept.
25, 2003) (finding that without demonstrable evidence to support the assertion
that a respondent is commonly known by a domain name, the assertion must be
rejected).
Respondent’s <astaireawards.net> and <astaireawards.org> domain names resolve to websites that contain search engines and links promoting Complainant’s competitors in the dance industry via click-through links. The Panel presumes Respondent receives compensation in the form of referral fees or click-through fees for its use of the disputed domain names. The Panel finds Respondent’s use of the disputed domain names 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).
Respondent’s <astaireawards.com> domain name does not
resolve to an active website. The Panel
finds Respondent’s failure to make an active 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 Hewlett-Packard Co. v.
Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“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).”); see also Thermo Electron Corp.
v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the
respondent’s non-use of the disputed domain names demonstrates that the
respondent is not using the disputed domain names for a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
The <astaireawards.net> and <astaireawards.org>
domain names each resolve to websites displaying advertisements for Complainant’s
competitors, which disrupts Complainant’s business by misleading Internet users
searching for information related to Complainant’s business. Thus, the Panel finds Respondent has engaged
in bad faith registration and use of the disputed domain names pursuant to
Policy ¶ 4(b)(iii). See Travant
Solutions, Inc. v. Cole, FA 203177 (Nat.
Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in
bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of
a competitor of Complainant . . .”); see also David
The Panel finds that Respondent’s use of the confusingly similar <astaireawards.net> and <astaireawards.org> domain names is an attempt by Respondent to profit through the receipt of referral or click-through fees by attempting to mislead Internet users as to Complainant’s affiliation with the website. Respondent registered each of these disputed domain names on June 30, 2008, long after Complainant had established rights in the ASTAIRE mark. Therefore, the Panel finds Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See GMAC LLC v. WhoisGuard Protected, FA 942715 (Nat. Arb. Forum May 9, 2007) (“Under Paragraph 4(b) of the Policy, evidence that a domain name registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website by creating a likelihood of confusion with the complainant’s mark serves as evidence of bad faith.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Furthermore, Respondent’s <astaireawards.com> domain name does not
resolve to an active website. The Panel
finds the factors enumerated in Policy ¶ 4(b) are not comprehensive examples of
bad faith registration and use. See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010
(WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within
the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the
domain names at issue were not registered in and are not being used in bad
faith.”). Respondent registered the disputed domain
name on June 30, 2008 and has failed to commence use of the disputed domain
name in over a year. Thus, the Panel
finds Respondent’s failure to make an active use of the <astaireawards.com>
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Pirelli & C. S.p.A. v.
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 <astaireawards.com>, <astaireawards.net> and <astaireawards.org> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
October 12, 2009
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