Dr. Buzz Aldrin v. Cathal Dunphy
Claim Number: FA1005001326949
Complainant is Dr.
Buzz Aldrin (“Complainant”), represented by Robert O'Brien, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <buzzaldrin.net>, registered with Moniker Online Services, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 27, 2010.
On May 28, 2010, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <buzzaldrin.net> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 June 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 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@buzzaldrin.net. Also on June 8, 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 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <buzzaldrin.net> domain name is identical to Complainant’s BUZZ ALDRIN mark.
2. Respondent does not have any rights or legitimate interests in the <buzzaldrin.net> domain name.
3. Respondent registered and used the <buzzaldrin.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dr. Buzz Aldrin, is a former National Aeronautics and Space Administration (“NASA”) astronaut who participates in numerous space and science organizations worldwide assisting in the development of future space programs and space education for the world’s youth. Complainant has authored magazine articles and various non-fiction books in conjunction with these efforts. Complainant has used the BUZZ ALDRIN mark since 1969 in relation to these activities as well as the licensing and endorsement of commercial products and his own online retail goods. Complainant registered and operates a website resolving from the <buzzaldrin.com> domain name.
Respondent, Cathal Dunphy, registered the disputed domain name on August 15, 2008. The disputed domain name resolves to a website that purports to be a biographical website about Complainant, but merely contains commercial advertising and links to third-party websites from which Respondent likely receives click-through fees.
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.
The Panel finds that Complainant need not establish rights based on a registered trademark and that a finding of common law rights and sufficient development of secondary meaning in the BUZZ ALDRIN mark is sufficient to establish Complainant’s rights under Policy ¶ 4(a)(i). See 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); 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 asserts common law rights in its BUZZ ALDRIN mark through its continuous use since 1969. Complainant is a former NASA astronaut who most famously walked on the moon on July 20, 1969. Since that time, Complainant has used its BUZZ ALDRIN mark in connection with images related to that moonwalk and Complainant’s career as an astronaut. Complainant has also participated in numerous space and science organizations worldwide, assisted in the development of future space programs and space education for the world’s youth, and has lectured throughout the world on the latest concepts and ideas for space exploration. Complainant has also authored various magazine articles and non-fiction books, as well as two fiction novels and two illustrated children’s books. Complainant has endorsed, and continues to endorse, commercial products in print advertisements and television commercials and by entering into license agreements with various companies including Bulova, Nike, and others. Complainant also recently appeared on the ABC television show “Dancing with the Stars.” Complainant operates a website resolving from the <buzzaldrin.com> domain name which features an online retail store that sells apparel, collectibles, books, toys, and autographed items branded under the BUZZ ALDRIN mark. Complainant’s <buzzaldrin.com> domain name also features other services including information about Complainant, his career, and promoting his speaking engagements and iPhone application. Based on Complainant’s extensive use of the BUZZ ALDRIN mark since 1969 in connection with such a wide variety of products and services, the Panel finds that Complainant has provided sufficient evidence to support a finding of common law rights in the BUZZ ALDRIN mark pursuant to Policy ¶ 4(a)(i). See Bayless v. Cayman Trademark Trust, FA 648245 (Nat. Arb. Forum Apr. 3, 2006) (“The Panel concludes Complainant has proved that the RICK BAYLESS mark has become sufficiently connected to Complainant’s career as a chef and the public associates that career with Richard L. Bayless and the RICK BAYLESS mark.”); see also Hiatt v. personal fan & official site builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”).
Complainant asserts that Respondent’s <buzzaldrin.net> domain name is
identical to Complainant’s BUZZ ALDRIN mark.
Respondent’s disputed domain name merely deletes the space between the
terms in Complainant’s mark and adds the generic top-level domain (“gTLD”)
“.net” to the entirety of Complainant’s mark.
The Panel finds that the deletion of spaces between terms in a mark and
the addition of a gTLD do not sufficiently distinguish a domain name from a
mark. See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and
legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to prove it has rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has
established a prima facie case in
this instance and that Respondent’s failure to respond to these proceedings
allows the Panel to infer that Respondent lacks rights or legitimate interests
in the disputed domain name. The Panel
will, however, still examine the record to determine whether Respondent has
developed any rights or legitimate interests in the disputed domain name under
Policy ¶ 4(c).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 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.”).
Complainant asserts that it has never authorized or licensed Respondent to use its BUZZ ALDRIN mark or any of Complainant’s intellectual property. The WHOIS information lists the disputed domain name’s registrant as “Cathal Dunphy,” which Complainant argues does not provide evidence that Respondent is commonly known by the disputed domain name. The Panel finds that based on the WHOIS information and other evidence in the record, 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 asserts that although Respondent purports to operate an informational site related to Complainant, Respondent’s resolving website actually contains a variety of third-party commercial links. The Panel finds that Respondent’s use of a domain name that is identical to Complainant’s mark to display commercial links from which Respondent presumably profits is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to 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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent has demonstrated an extensive pattern of conduct of registering domain names incorporating the names and trademarks of celebrities including <bettemidler.org>, <sophialoren.org>, <lisamariepresley.org>, and <burtreynolds.net>. The Panel finds that Respondent’s multiple registrations of domain names incorporating famous names is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks).
Complainant argues that Respondent has registered and used the disputed domain name in bad faith because Respondent has attempted to divert Internet users seeking information about Complainant or the goods and services offered under the BUZZ ALDRIN mark to a deceptive commercial website that includes references to Complainant and that displays advertising and commercial links to unrelated third party websites. Complainant asserts, and the Panel presumes, that Respondent receives click-through revenue and thus profits from Internet users’ resulting likelihood of confusion. The Panel finds that Respondent’s use of the disputed domain name amounts to an attraction for commercial gain and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
The Panel finds that 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 <buzzaldrin.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 8, 2010
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