Disney Enterprises, Inc. v. Domains Unlimited LLC c/o Domain Admin
Claim Number: FA1003001313205
Complainant is Disney
Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional
Corporation,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <jimmykimmellive.com>, registered with Internet.Bs Corp.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 12, 2010.
On March 15, 2010, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <jimmykimmellive.com> domain name is registered with Internet.Bs Corp. and that Respondent is the current registrant of the name. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 March 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 12, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@jimmykimmellive.com. Also on March 22, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" through submission of a Written Notice, as defined in Rule 1. 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 <jimmykimmellive.com> domain name is identical to Complainant’s JIMMY KIMMEL LIVE mark.
2. Respondent does not have any rights or legitimate interests in the <jimmykimmellive.com> domain name.
3. Respondent registered and used the <jimmykimmellive.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Disney Enterprises, Inc.,
is a worldwide producer of entertainment goods and services such as movies,
television programs, books, and merchandise.
Complainant produces the nationally syndicated late-night talk show Jimmy Kimmel Live. The show received national press covered when
it first aired in 2003 and is currently in its seventh season. In addition, Complainant has filed copyright
registrations in the
Respondent registered the <jimmykimmellive.com> domain name on February 19, 2004. The disputed domain name resolves to a website that features links that connect to blank pages that list third-party websites, some of which compete with Complainant’s business.
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 does not hold a trademark registration for the
JIMMY KIMMEL LIVE mark. However, federal
trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Previous panels
have found that a governmental 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 argues it has acquired common law rights in the
JIMMY KIMMEL LIVE mark through sufficient secondary meaning associated with the
mark. Complainant uses the JIMMY KIMMEL
LIVE mark in association with its production of the nationally syndicated Jimmy Kimmel Live talk show. The late-night show received national press
coverage of its debut in 2003. It is now
in its seventh year of production. In
addition, Complainant has filed copyright registrations in the
Complainant claims Respondent’s disputed domain name is
identical to its JIMMY KIMMEL LIVE mark.
Respondent uses Complainant’s mark in its entirety in the disputed
domain name. Respondent then deletes the
spaces between the words in Complainant’s mark in the disputed domain
name. Finally, Respondent adds the
generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed
domain name. The Panel finds these
slight modifications do not distinguish Respondent’s disputed domain name from
Complainant’s mark. Therefore, the Panel
concludes that Respondent’s <jimmykimmellive.com> domain name is
identical to Complainant’s JIMMY KIMMEL LIVE mark pursuant to Policy ¶ 4(a)(i). See SCOLA v.
Wick, FA 1115109 (Nat. Arb. Forum
Feb. 1, 2008) (concluding that “the
domain name at issue is identical to [the] complainant’s SCOLA mark, as the
only alteration to the mark is the addition of the generic top-level domain
“.com.”); see also George Weston
Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007)
(finding that eliminating the space between terms of a mark still rendered the
<gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES
mark); see also Jerry Damson,
Inc. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant must first make a prima facie case showing Respondent lacks rights or legitimate interests in the <jimmykimmellive.com> domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); 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”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to respond, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
Complainant asserts Respondent is not authorized by Complainant to use the JIMMY KIMMEL LIVE mark in a domain name. In addition, the WHOIS information does not indicate Respondent is commonly known by the disputed domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant also argues Respondent uses the disputed domain name to profit from click-through fees. Respondent’s disputed domain name resolves to a website that features links that connect to blank pages that list third-party websites. Some of these third-party sites compete with Complainant’s business. Respondent most likely receives click-through fees for this use of the disputed domain name. Therefore, the Panel finds Respondent’s use of a domain name that is identical to Complainant’s mark to redirect Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); 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)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds Respondent’s use of the <jimmykimmellive.com> domain name to redirect Internet users to a website that provides links to third-party websites, including links to Complainant’s competitors, disrupts Complainant’s business and constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Respondent is using the disputed domain name that is
identical to Complainant’s mark to attract Internet users to Respondent’s
website so that it can profit from click-through fees. The Panel finds this behavior provides
further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Maricopa
Cmty. Coll.
Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that
Respondent receives click-through fees for diverting Internet users to a
competing website. Because Respondent’s
domain name is identical to Complainant’s
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 <jimmykimmellive.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 29, 2010
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