Mary Marg Helgenberger v. Wing Wah
Claim Number: FA1008001341652
Complainant is Mary Marg Helgenberger (“Complainant”), represented by A.J. Bedel, of Quinn Emanuel Urquhart & Sullivan, LLP, California, USA. Respondent is Wing Wah (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marghelgenberger.com>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 17, 2010.
On August 20, 2010, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <marghelgenberger.com> 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 August 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 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@marghelgenberger.com by e-mail. Also on August 23, 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 September 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <marghelgenberger.com> domain name is identical to Complainant’s MARG HELGENBERGER mark.
2. Respondent does not have any rights or legitimate interests in the <marghelgenberger.com> domain name.
3. Respondent registered and used the <marghelgenberger.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is actress, Marg Helgenberger, which is both her given and stage name. Complainant produces evidence that her MARG HELGENBERGER mark has been made famous through her career as an actress in film, television and stage plays.
Respondent registered <marghelgenberger.com> on October 13, 2002. The disputed domain name previously linked to a third-party website which was adult-oriented in nature; currently the disputed domain name fails to resolve to an active website.
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 has not registered the MARG HELGENBERGER mark, but governmental trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Previous panels have determined that a federal registration is not required so long as a complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. 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 Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant uses the MARG HELGENBERGER mark in her work as an actress. She has appeared in the television series “CSI: Crime Scene Investigations” in excess of 250 episodes. She has also appeared in numerous films including: Erin Brokovich, Tootsie, Always, and In Good Company. Complainant uses this mark as her stage name, but it is also her given name. The Panel finds that Complainant has provided sufficient evidence to establish common law rights in the MARG HELGENBERGER service mark through continuous and extensive commercial use predating Respondent’s registration of the disputed domain name under Policy 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”).
Respondent’s <marghelgenberger.com> domain name is identical to Complainant’s MARG HELGENBERGER mark because the disputed domain name differs only by adding a generic top-level domain (“gTLD”) “.com.” The Panel finds the addition of a gTLD irrelevant in differentiating the disputed domain name from the Complainant’s mark. 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 Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain). Therefore, the Panel finds that Respondent’s <marghelgenberger.com> domain name is identical to Complainant’s MARG HELGENBERGER mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <marghelgenberger.com>domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to the Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. 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 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.”). Nevertheless, the Panel will examine the record in light of the factors outlined in Policy ¶ 4(c) to determine whether Respondent has rights or legitimate interests in the disputed domain name.
There is no evidence in the record to suggest that Respondent is commonly known by the <marghelgenberger.com> domain name. Complainant asserts that Respondent has no agreement with Complainant to use the MARG HELGENBERGER mark, and the WHOIS information identifies Respondent as “Wing Wah.” Thus, Respondent has not established rights or legitimate interests in the <marghelgenberger.com> domain name pursuant to 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Respondent’s former use of the <marghelgenberger.com>
domain name to divert Internet users to an adult-oriented website does not
constitute a bona fide offering of goods or services pursuant to Policy
¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant
to Policy ¶ 4(c)(iii). See Target Brands, Inc. v. Bealo Group S.A.,
FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the
<targetstore.net> domain name to redirect Internet users to a[n] [adult-oriented]
website did not equate to a bona fide offering of goods or services
under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain
name under Policy ¶ 4(c)(iii)); see also Dipaolo
v. Genero, FA 203168 (Nat. Arb. Forum Dec.
6, 2003) (“Diversion to [an adult-oriented website] is not a bona fide offering
of goods or services or a legitimate noncommercial or fair use of the domain
name pursuant to Policy ¶¶ 4(c)(i) and (iii).”).
The disputed domain name currently resolves to an inactive website. Respondent’s failure to make an active use of the <marghelgenberger.com> domain name, that is identical to Complainant’s mark, 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 Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has attempted to confuse Internet users by using the <marghelgenberger.com> domain name, which is identical to Complainant’s mark, and redirecting them to an adult-oriented website. The Panel infers that Respondent likely received commercial gain from the use of the disputed domain name. Because Respondent’s domain name is identical to Complainant’s MARG HELGENBERGER mark, Internet users could have become confused as to Complainant’s affiliation or sponsorship with the resulting website and disputed domain name. The Panel finds that such use constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)); see also Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“[I]t is now well known that [purveyors of adult-oriented material] rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques.”).
The Panel may find Respondent’s use of the <marghelgenberger.com> domain name to redirect Internet users to an adult-oriented website generally constitutes bad faith under Policy ¶ 4(a)(iii). See 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”); see also 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.”).
Respondent is not currently making an active use of the <marghelgenberger.com> domain name. Previous panels have concluded that the failure to make an active use of a disputed domain name constitutes bad faith registration pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
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 <marghelgenberger.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 30, 2010
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