national arbitration forum

DECISION

Patrick Dempsey and TDS 66 Productions, Inc. v. sysadmin admin c/o balata.com ltd

Claim Number: FA0909001282909

PARTIES

Complainant is Patrick Dempsey and TDS 66 Productions, Inc. (“Complainant”), represented by Stephen J. Strauss, of Fulwider Patton LLP, California, USA. Respondent is sysadmin admin c/o balata.com ltd (“Respondent”), Hong Kong.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <patrickdempsey.org>, registered with Gal Communication, and <patrickdempsey.net> registered with Black Ice Domains, Inc.

PANEL

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.

Judge Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 8, 2009.

On September 11, 2009, Gal Communication confirmed by e-mail to the National Arbitration Forum that the <patrickdempsey.org> domain name is registered with Gal Communication and that Respondent is the current registrant of the name. Gal Communication has verified that Respondent is bound by the Gal Communication 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 14, 2009, Black Ice Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <patrickdempsey.net> domain name is registered with Black Ice Domains, Inc. and that Respondent is the current registrant of the name. Black Ice Domains, Inc. has verified that Respondent is bound by the Black Ice Domains, 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 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 5, 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@patrickdempsey.org and postmaster@patrickdempsey.net by e-mail.

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On October 9, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge RalphYachnin 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.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <patrickdempsey.org> and <patrickdempsey.net> domain names are identical to Complainant’s PATRICK DEMPSEY mark.

2. Respondent does not have any rights or legitimate interests in the <patrickdempsey.org> and <patrickdempsey.net> domain names.

3. Respondent registered and used the <patrickdempsey.org> and <patrickdempsey.net> domain names in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Since 2005 Patrick Dempsey has starred in the role of Derek Shepherd in the television series Grey’s Anatomy. In 2000-2002 Patrick Dempsey appeared as Aaron Brooks in the television series Once and Again. Complainant, Patrick Dempsey and TDS 66 Productions, Inc. collectively, hold several trademark registrations of the PATRICK DEMPSEY mark (See, e.g., Reg. No. 3,505,023 issued Sept. 23, 2008) with the United States Patent and Trademark Office (“USPTO”) for use in connection with promoting and endorsing various goods and services.

Respondent, sysadmin admin c/o balata.com ltd, registered the <patrickdempsey.org> domain name on December 13, 2006 and <patrickdempsey.net> domain name on October 17, 2007. These disputed domain names resolve to websites incorporating a generic search engine and links to other third party websites relating to Complainant Patrick Dempsey, entertainment, and celebrities which directly competes with Complainant’s ability to promote himself.

DISCUSSION

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.

Identical and/or Confusingly Similar

The Panel finds that, under Policy ¶ 4(a)(i), registration of a trademark is not necessary to establish that Complainant has rights in the mark provided Complainant can demonstrate its common law rights through sufficient secondary meaning. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).

Complainant claims it has established common law rights in the PATRICK DEMPSEY mark. The mark is Complainant’s name and Complainant contends the name has acquired secondary meaning due to the fame and repute of Complainant as an actor. Complainant has stared in the television show Grey’s Anatomy since 2005. Prior to Respondent’s registration of the <patrickdempsey.org> and <patrickdempsey.net> domain names, Complainant appeared in the television series Grey’s Anatomy and Once and Again and the movie Sweet Home Alabama. The Panel finds that Complainant has established common law rights in the PATRICK DEMPSEY mark pursuant to Policy ¶ 4(a)(i) predating Respondent’s 2006 registration of the disputed domain name. 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 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.”).

The <patrickdempsey.org> and <patrickdempsey.net> domain names incorporate Complainant’s PATRICK DEMPSEY mark in its entirety, omitting the space between the words of the mark and adding the generic top-level domains (“gTLDs”) “.org” or “.net” respectively. The Panel finds that the disputed domain names are identical to Complainant’s PATRICK DEMPSEY 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 Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); 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 the complainant’s mark under Policy ¶ 4(a)(i)).

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the <patrickdempsey.org> and <patrickdempsey.net> domain names. If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain names pursuant to the guidelines in Policy ¶ 4(c). The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain names. However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c). 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 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).”).

The Panel finds no evidence in the record suggesting that Respondent is commonly known by either of the <patrickdempsey.org> and <patrickdempsey.net> domain names. Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the PATRICK DEMPSEY mark, and the WHOIS information identifies Respondent as “sysadmin admin c/o balata.com ltd.” Thus, the Panel finds that Respondent is not commonly known by either of the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (“Given the Complainants’ established use of their famous VICTORIA’S SECRET marks it is unlikely that the Respondent is commonly known by either [the <victoriasecretcasino.com> or <victoriasecretcasino.net>] domain name.”).

Respondent is using the <patrickdempsey.org> and <patrickdempsey.net> domain names, which are identical to Complainant’s PATRICK DEMPSEY mark, to advertise third-party websites that compete with Complainant’s ability to promote himself as an actor under his own name. The Panel finds that this is 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 of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent has been the respondent in three other cases through the National Arbitration Forum where the disputed domain names were transferred from Respondent to the complainants in those cases. See Harrah's License Co., LLC v. sysadmin admin, FA 1107042 (Nat. Arb. Forum Nov. 15, 2007); see also Ali Wing, Inc. v. sysadmin admin, FA 1169833 (Nat. Arb. Forum April 9, 2008); see also Am. Auto. Ass’n, Inc. v. Sysadmin admin, FA 1213525 (Nat. Arb. Forum Aug. 18, 2008). The Panel finds Respondent has engaged in a pattern of registering infringing domain names, amounting to bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).

The <patrickdempsey.org> and <patrickdempsey.net> domain names, which were registered on December 13, 2006 and October 17, 2007, respectively, resolve to websites containing links to third-party websites, some of which directly compete with Complainant. The Panel finds Respondent is using the <patrickdempsey.org> and <patrickdempsey.net> domain names to disrupt Complainant’s self-promotion efforts by diverting Internet users to Complainant’s competitors, including other actors and celebrity gossip websites. This is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).

Respondent is using the <patrickdempsey.org> and <patrickdempsey.net> domain names to display links to sites that are related to and in direct competition with Complainant. The Panel infers that Respondent receives either pay-per-click or advertising fees for these advertisements. Since the disputed domain names are identical to Complainant’s mark, Internet users are likely to be confused as to Complainant’s affiliation with, or sponsorship of, the disputed domain name and resolving website. The Panel finds this is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <patrickdempsey.org> and <patrickdempsey.net> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: October 21, 2009

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