William B. Pitt a/k/a Brad Pitt v. Ikechukwu Udeokoro
Claim Number: FA1005001326361
Complainant is William
B. Pitt a/k/a Brad Pitt (“Complainant”),
represented by Stephen J. Strauss, of Fulwider Patton LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bradpittfoundation.org>, registered with GoDaddy.com, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 25, 2010.
On May 25, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bradpittfoundation.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. 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 May 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 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@bradpittfoundation.org. Also on May 26, 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 July 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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" 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 <bradpittfoundation.org> domain name is confusingly similar to Complainant’s BRAD PITT mark.
2. Respondent does not have any rights or legitimate interests in the <bradpittfoundation.org> domain name.
3. Respondent registered and used the <bradpittfoundation.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, William B. Pitt a/k/a Brad Pitt, is an internationally famous actor associated with several charitable and humanitarian organizations. Complainant asserts common law rights in the BRAD PITT mark based on his celebrity status and continuous use of the mark in the entertainment industry since at least as early as 1991.
Respondent, Ikechukwu Udeokoro, registered the <bradpittfoundation.org> domain name on September 28, 2009. The disputed domain name resolves to a search engine website featuring a directory of links to third party sites relating to charitable foundations and organizations not sponsored or approved by Complainant.
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 BRAD PITT mark. The Panel finds that a trademark registration for the BRAD PITT mark is not necessary for the purposes of Policy ¶ 4(a)(i) when there is evidence of continuous use and the establishment of secondary meaning that show common law rights in the mark. See Artistic Pursuit 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 the mark); 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 argues that he has established common law rights
in the BRAD PITT mark by virtue of its continue use in the entertainment
industry since at least as early as 1991 and subsequent acquisition of
secondary meaning. Complainant contends
that he is an internationally famous actor who has appeared in numerous motion
pictures, including Thelma and Louise
(1991), A River Runs Through It
(1992), Legends of the Fall (1994), Se7en (1995), Seven Years in Tibet (1997), Fight
Club (1999), Ocean’s Eleven
(2001), Troy (2004), Mr. & Mrs. Smith (2005), Babel (2006), The Curious Case of Benjamin Button (2008), and Inglorious Basterds (2009). Complainant states that he has been nominated
twice for an Academy Award for his performances in Twelve Monkeys (1995) and The
Curious Case of Benjamin Button (2008) and nominated for a Golden Globe
Award three times for Legends of the Fall,
Complainant alleges that Respondent’s <bradpittfoundation.org> is confusingly similar to Complainant’s BRAD PITT mark because the only differences are the omission of the space between the words and the addition of the descriptive word “foundation” and the generic top-level domain (“gTLD”) “.org.” The Panel finds that the omission of the space and the addition of the gTLD are irrelevant changes that do not create a distinctive domain name because of the structural requirements for domain names. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel also finds that adding a descriptive term like “foundation” is insufficient to prevent confusing similarity under Policy ¶ 4(a)(i). See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”). Therefore, the Panel finds that Respondent’s <bradpittfoundation.org> domain name is confusingly similar to Complainant’s BRAD PITT mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and
legitimate interests in the disputed domain name. Once Complainant has put forth a prima facie case, the burden shifts to
Respondent to demonstrate its rights and legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has adequately
presented a prima facie case in these
proceedings. Since Respondent has failed
to respond to the allegations against it, the Panel may assume that Respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶ 4(a)(ii). See Intel Corp. v. Macare,
FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “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 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.”). The Panel elects to
consider the evidence presented in light of the Policy ¶ 4(c) factors, however,
in order to make a complete determination of whether Respondent possesses
rights and legitimate interests in the disputed domain name.
Complainant alleges that Respondent is not commonly known by the <bradpittfoundation.org> domain name, has no relationship with Complainant, and is not authorized by Complainant to use Complainant’s BRAD PITT mark in any way. The Panel finds the WHOIS information for the disputed domain name provides evidence for these allegations as it identifies the registrant as “Ikechukwu Udeokoro,” a name which bears no nominal relationship with the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name and thus does not possess rights and legitimate interests 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 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).
Complainant argues that Respondent’s <bradpittfoundation.org> domain name
redirects Internet users to a search engine web page featuring a variety of
third-party links to sites relating to charitable foundations and organizations
that are not associated with or approved by Complainant. The Panel finds that using the disputed
domain name to direct Internet users to a page unrelated to Complainant
featuring pay-per-click links is not a bona
fide offering of goods or services or a legitimate noncommercial or fair
use according to Policy ¶¶ 4(c)(i) or 4(c)(iii). See
Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007)
(holding that the operation of a pay-per-click website at a confusingly similar
domain name was 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
also Vance Int’l, Inc. v. Abend, FA
970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a
pay-per-click website at a confusingly similar domain name does not represent a
bona fide offering of goods or
services or a legitimate noncommercial or fair use, regardless of whether or
not the links resolve to competing or unrelated websites or if the respondent
is itself commercially profiting from the click-through fees).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that the pay-per-click links displayed
on Respondent’s website resolve to various charitable organizations and
foundations. As Complainant is involved
with several charitable organizations, some of which he created himself, the
links on Respondent’s website redirect Internet users to organizations
competing with Complainant’s organizations for donor funds and support. The Panel finds that Respondent’s efforts to
trade off Complainant’s famous mark while competing with Complainant disrupt Complainant’s
altruistic activities and represent bad faith registration and use on the part
of the Respondent according to Policy ¶ 4(b)(iii). See
Respondent’s
<bradpittfoundation.org>
domain name resolves to a search engine website linking to numerous websites of
charitable organizations and foundations unrelated to Complainant. Complainant alleges that the links on
Respondent’s resolving website are pay-per-click links that profit Respondent
when clicked. Complainant contends that
Respondent incorporates Complainant’s BRAD PITT mark in the <bradpittfoundation.org> domain name
to take advantage of the allure and fame surrounding the mark and to increase
Respondent’s website traffic and, subsequently, his revenue. The Panel finds that Respondent’s activities
reveal his intention to mislead and confuse Internet users about the
sponsorship of the resolving website in order to attract increased traffic to
Respondent’s site for commercial gain.
The Panel finds this indicates bad faith registration and use pursuant
to Policy ¶ 4(b)(iv).
See T-Mobile USA, Inc. v. utahhealth, FA
697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of
a domain name confusingly similar to a complainant’s mark to direct Internet
traffic to a commercial “links page” in order to profit from click-through fees
or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv));
see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For
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 <bradpittfoundation.org> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 30, 2010
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