Alexz Johnson v. Alexz Johnson c/o Domain Administrator
Claim Number: FA0908001281714
Complainant is Alexz
Johnson (“Complainant”), represented by Stephen Stohn, of STOHN HAY CAFAZZO DEMBROSKI RICHMOND LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <alexzjohnson.com>, registered with Nameview, 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.
John J. Upchurch 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 31, 2009, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <alexzjohnson.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, 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 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 29, 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@alexzjohnson.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 2, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <alexzjohnson.com> domain name is identical to Complainant’s ALEXZ JOHNSON mark.
2. Respondent does not have any rights or legitimate interests in the <alexzjohnson.com> domain name.
3. Respondent registered and used the <alexzjohnson.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alexz Johnson, is a film and television actress, as well as a performing and recording musical artist. Complainant gained notoriety under her name, the ALEXZ JOHNSON mark, in 2000. Complainant also has become associated with downloadable music files and online streaming of music in 2001. Complainant has appeared and performed in television shows, movies, music albums, and Internet webisodes as well as live appearances. Complainant originally registered the <alexzjohnson.com> domain name, but inadvertently permitted it to lapse.
Respondent registered the <alexzjohnson.com> domain name on October 10, 2002. The disputed domain name resolves to a parked website offering links using Complainant’s ALEXZ JOHNSON mark, but resolving to unrelated third-party websites. The website resolving from the disputed domain name also offers the domain name for sale.
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 the ALEXZ JOHNSON mark, but
governmental trademark registration is not necessary to establish rights under
Policy ¶ 4(a)(i). Previous panels have
determined that a federal registration is not required so long as the Complainant
can establish common law rights through proof of sufficient secondary meaning
associated with the mark. 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 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).
Complainant has worked under the ALEXZ JOHNSON name since
2000. In 2000, Complainant starred on
the television show, “So Weird,” which appeared in
Complainant alleges Respondent’s <alexzjohnson.com> domain name is identical to Complainant’s ALEXZ JOHNSON mark. The disputed domain name contains Complainant’s entire mark and simply adds the generic top-level domain “.com.” The Panel finds the addition of a generic top-level domain is irrelevant to a Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that the respondent’s <treeforms.com> domain name is identical to the complainant’s TREEFORMS mark). Therefore, the Panel finds Respondent’s <alexzjohnson.com> domain name is identical to Complainant’s ALEXZ JOHNSON mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <alexzjohnson.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent’s <alexzjohnson.com> domain name resolves to a website featuring
multiple hyperlinks. The hyperlink
titles contain Complainant’s mark and refer to topics relating to information
about Complainant. However, the
hyperlinks resolve to unrelated third-party websites. The website resolving from the disputed
domain name also offers to sell the disputed domain name. The Panel finds Respondent’s use of the <alexzjohnson.com>
domain name to provide links to unrelated third party websites and to offer
the sale the disputed domain name is not a bona
fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate
non-commercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Constellation
Wines
Complainant contends
Respondent is not commonly known by the <alexzjohnson.com> domain
name. Complainant asserts that
Complainant has not authorized or consented to Respondent’s use of the disputed
domain name or Complainant’s ALEXZ JOHNSON mark. The WHOIS information lists Respondent as
“Alexz Johnson c/o Domain Administrator.”
However, Respondent has provided no further evidence, and there is no
further evidence on the record, that Respondent is commonly known by the
disputed domain name. Therefore, the
Panel finds Respondent is not commonly known by the <alexzjohnson.com>
domain name under Policy ¶ 4(c)(ii).
See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20,
2007) (finding that although the respondent listed itself as “AIM Profiles” in
the WHOIS contact information, there was no other evidence in the record to
suggest that the respondent was actually commonly known by that domain name); see
also Nature’s Path Foods Inc. v. Natures Path, Inc., FA
237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information,
Respondent lists its name and its administrative contact as ‘Natures Path,
Inc.’ However, since Respondent failed
to respond to the Complaint, there has not been any affirmative evidence
provided to the Panel showing that Respondent was commonly known by the
disputed domain name prior to its registration of the domain name.”).
Moreover,
Complainant formerly held the <alexzjohnson.com> domain name until
2002 when Complainant inadvertently allowed the registration to lapse. Respondent then registered the disputed
domain name on October 10, 2002.
Previous panels have found that a complainant’s prior registration of a
domain name is to be considered when conducting analysis under Policy ¶
4(a)(ii). See also Am. Anti-Vivisection Soc’y
v. “Infa dot Net” Web Servs., FA
95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the complainant’s prior
registration of the same domain name is a factor in considering the
respondent’s rights or legitimate interests in the domain name); see also RH-Interactive
Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003)
(“Complainant’s prior registration of the domain name, coupled with
Respondent’s failure to respond to this dispute, is evidence that Respondent
has no rights or legitimate interests in the domain name pursuant to Policy
4(a)(ii).”). The Panel finds Respondent
has not established rights or legitimate interests under Policy ¶ 4(a)(ii).
The Panel finds
Complainant has satisfied Policy ¶ 4(a)(ii).
On the website resolving from Respondent’s <alexzjohnson.com>
domain name, Respondent offers the
domain name for sale. Previous panels
have held that a general offer to sell a disputed domain name constitutes bad
faith registration and use under Policy ¶ 4(b)(i). See
Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the
disputed domain name registration for sale establishes that the domain name was
registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa
dot Net” Web Serv., FA 95685
(Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain
name, even if no certain price is demanded, are evidence of bad faith”). The Panel finds Respondent’s use of the
disputed domain name to offer to sell the domain name constitutes bad faith
registration and use pursuant to Policy
¶ 4(b)(i).
The Panel infers Respondent receives click-through fees from
the links to the unrelated third-parties.
Respondent’s use of an identical disputed domain name may cause
confusion to Internet users as to Complainant’s affiliation and sponsorship of
the resolving website. The fact that the
hyperlinks were labeled with Complainant’s mark, implying the hyperlinks
related to information about Complainant, supports this point. The Panel finds such use is evidence of bad
faith registration and use under Policy
¶ 4(b)(iv). See The Ass’n of Junior Leagues Int’l Inc. v. This Domain
Name My Be For
Finally, Complainant originally registered the <alexzjohnson.com> domain name before inadvertently allowing it lapse. Respondent then registered the disputed domain name and has not provided evidence that the registration occurred in good faith or without the knowledge of Complainant’s mark. The Panel finds Respondent’s registration of the disputed domain name after Complainant previously owned it is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”); see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where the respondent took advantage of the complainant’s failure to renew a domain name).
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 <alexzjohnson.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 16, 2009
National
Arbitration Forum
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