Kate Hudson v. Fei Zhu
Claim
Number: FA0910001290319
Complainant is Kate Hudson (“Complainant”), represented by Charles
J. Harder, of Wolf, Rifkin, Shapiro,
Schulman & Rabkin, LLP,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <katehudson.com>,
registered with Rebel.com.
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.
Sally M. Abel, Esq., The Honorable Ralph Yachnin (Ret.) and Robert T. Pfeuffer (Ret.), Chair as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 20, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 21, 2009.
On October 21, 2009, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <katehudson.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 October 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 12, 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@katehudson.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 20, 2009, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Sally M. Abel , Esq., The Honorable Ralph Yachnin, (Ret.) and Robert T. Pfeuffer, (Ret.) Chair, as Panelists.
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
Identical or
Confusingly Similar: Policy ¶ 4(a)(i).
Complainant asserts as follows:
1. That although she has not registered the KATE HUDSON mark, she nevertheless asserts that governmental trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i)
2. That she has used the KATE HUDSON mark to conduct business in public through her acting career.
3. That in support of her assertion under paragraph 2, Complainant provides a list of motion pictures in which in which she starred prior to Respondent’s registration of the disputed domain name.
4. That she has been known by this name for the entire thirty years of her life, and has used it commercially as a mark since 1999.
5. That she had established common law rights in the KATE HUDSON mark through continuous and extensive commercial use predating Respondent’s 2006 registration of the disputed domain name under Policy ¶ 4(a)(i).
6. That the disputed domain name is identical to Complainant’s KATE HUDSON mark.
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Complainant contends that the burden of proof has shifted to the Respondent to show that it does have rights or legitimate interests.
9. Complainant claims that
Respondent has failed to offer any evidence suggesting that Respondent is
commonly known by the <katehudson.com> domain name.
10. That
the record does not contain any evidence suggesting that Complainant is
commonly known by the domain name.
11. Respondent
has no license or agreement with Complainant authorizing Respondent to use the
KATE HUDSON mark.
12. Respondent has failed to file any response to any of Complainant’s allegations.
13. That Respondent’s <katehudson.com>
domain name resolves to a website
featuring hyperlinks unrelated to Complainant.
14. That
some of the aforementioned hyperlinks resolve to websites featuring adult-oriented
content.
15. That
Respondent likely receives click-through fees from the hyperlinks featured on
Respondent’s resolving website.
16. That Respondent receives click-through fees from the above mentioned hyperlinks.
17. That the disputed domain name features hyperlinks to unrelated third-parties and hyperlinks to websites featuring adult-oriented content.
18. That Internet users searching for information about Complainant, or her motion pictures, may become confused as to Complainant’s affiliation with the resolving website and featured hyperlink.
19. That Complainant’s KATE HUDSON mark may become tarnished because of Respondent’s used of hyperlinks to adult-oriented websites.
20. That Respondent’s used of
the <katehudson.com>
domain name features hyperlinks to
websites containing adult-oriented content and that as such, they are in and of
themselves evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
21. The Respondent has filed no answer and has made no contention with respect to Complainant’s assertions in regards to Policy ¶ 4(a)(i), ¶ 4(a)(ii) and ¶ 4(a)(iii).
B. Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant’s contentions are well grounded and that she has established (1) that the disputed domain name is identical and/or confusingly similar to Complainant’s mark; (2) that Respondent has failed to establish any rights or legitimate interests in the domain name; and (3) that Respondent registered and is using the domain name 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 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.
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).
The Panel finds that Complainant has established common law rights in the KATE HUDSON mark through continuous and extensive commercial use which predates Respondent’s registration of the disputed domain name under Policy ¶ 4(a)(i). See Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (the complainant held common law trademark rights in his famous name MICK JAGGER); see also 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).
Previous Panels have found that a
domain name is identical to a complainant’s mark even after the removal of a
space and the addition of a gTLD as pointed out by Complainant. The Panel
therefore finds that Respondent’s <katehudson.com>
domain name is identical to Complainant’s KATE HUDSON mark pursuant to Policy ¶
4(a)(i). See
The Panel finds that Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Therefore, the burden shifts to Respondent to show it does have rights or legitimate interests, which it has wholly failed to do. See 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 UDRP ¶ 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 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.”).
No response having been filed by the Respondent, the Panel concludes that there is no evidence suggesting that Respondent has any right or legitimate interest in the <katehudson.com> domain name.
The Panel finds that the disputed domain name features hyperlinks to websites containing adult-oriented content. Previous panels have found that links to adult-oriented content in and of themselves are evidence of bad faith registration and use under Policy ¶ 4(a)(iii). This Panel is convinced from the evidence that these links in and of themselves are evidence of bad faith registration and use under the Policy ¶ 4(a)(iii). See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the diversion of the domain name to a[n] [adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (“this association with a[n] [adult-oriented] web site can itself constitute a bad faith”). Therefore, the Panel may find Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <katehudson.com> domain name be TRANSFERRED from Respondent to Complainant.
Sally M. Abel, Esq., Panelist
Honorable Ralph Yachnin, (Ret.), Panelist
Robert T. Pfeuffer, (Ret.), Chair Panelist
Dated: December 8, 2009
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