Queen O. Robinson v. Erwin Solihin
Claim Number: FA1009001348422
Complainant is Queen O. Robinson ("Complainant"), represented by Paul W. Kruse of Bone McAllester Norton PLLC, Tennessee, USA. Respondent is Erwin Solihin ("Respondent"), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leadbellybluesfestival.com>, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 24, 2010; the National Arbitration Forum received payment on September 24, 2010.
On September 27, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <leadbellybluesfestival.com> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 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@leadbellybluesfestival.com. Also on September 28, 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 October 27, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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:
Complainant holds a registration with the United States Patent and Trademark Office (“USPTO”) for the LEAD BELLY trademark (Reg. No. 2,890,736, issued October 5, 2004).
Complainant’s ancestor was Huddie “Lead Belly” Ledbetter.
Complainant uses the LEAD BELLY mark in connection with a non-profit organization that is dedicated to preserving Lead Belly’s legacy.
Respondent registered the <leadbellybluesfestival.com> domain name on November 10, 2008.
The disputed domain name resolves to a website that provides hyperlinks to third-party websites.
Respondent’s <leadbellybluesfestival.com> domain name is confusingly similar to Complainant’s LEAD BELLY mark.
Respondent is not authorized to use Complainant’s mark in any way.
Respondent does not have any rights or legitimate interests in the domain name <leadbellybluesfestival.com>.
Respondent registered and uses the disputed <leadbellybluesfestival.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the LEAD BELLY service mark pursuant to Policy ¶ 4(a)(i) by virtue of its registration of the mark with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
See also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). Moreover, it is irrelevant whether Complainant holds trademark registrations with the trademark authority in the country in which Respondent resides. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of a respondent’s residence, it being sufficient that a complainant have rights in a mark in some jurisdiction).
Respondent’s <leadbellybluesfestival.com> domain name is confusingly similar to Complainant’s LEAD BELLY mark. Respondent’s domain name fully incorporates Complainant’s mark in the disputed domain name and merely omits the space between the words in the mark and adds the generic terms “blues” and “festival” and the generic top-level domain (“gTLD”) “.com.” These changes do not avoid a finding of confusing similarity. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003):
Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.
See also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of a complainant combined with a generic word or term); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to a complainant’s DISNEY mark because it incorporated Complainant’s entire mark and merely added two terms to it); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” to a mark in forming a contested domain name is insufficient to differentiate the domain name from the mark).
Therefore, the Panel determines that Respondent’s <leadbellybluesfestival.com> domain name is confusingly similar to Complainant’s LEAD BELLY service mark under Policy ¶ 4(a)(i).
Complainant must first make out a prima facie case showing that Respondent lacks rights to and legitimate interests in the <leadbellybluesfestival.com> domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove that it has rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
We may view Respondent’s failure to submit a Response to the Complaint filed in this proceeding as evidence that Respondent lacks rights to or legitimate interests in the contested domain name. See 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, we will evaluate the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant alleges, and Respondent does not deny, that Respondent is not authorized to use its mark in any way. In addition, the pertinent WHOIS information lists the registrant of the disputed domain name only as “Erwin Solihin”, which does not resemble the <leadbellybluesfestival.com> domain name. On this record, we are constrained to conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain name sufficient for purposes of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a 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 a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name).
We also note that Complainant claims, without objection from Respondent, that the <leadbellybluesfestival.com> domain name resolves to a website that provides hyperlinks to third-party websites that are unrelated to Complainant’s non-profit organization. In the circumstances here obtaining, we may comfortably presume that Respondent profits from this use of the disputed domain name through the receipt of click-through fees. Therefore, we conclude that Respondent does not use the contested <leadbellybluesfestival.com> domain name for 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying links to third-party websites was not a use in connection with 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), where a respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that a respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to websites that may be of interest to a complainant’s customers, and presumably receiving “click-through fees” in the process).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
For commercial gain, Respondent has attempted to attract Internet users to its website by creating a likelihood of confusion with Complainant's mark as to its source, sponsorship, affiliation or endorsement. Respondent likely profits from its use of the domain name through the receipt of click-through fees. Respondent’s domain name is confusingly similar to Complainant’s LEAD BELLY mark. Therefore, Respondent has engaged in registration and use of the domain in bad faith 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a contested domain name to display links to various third-party websites demonstrated bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv)).
For this reason, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <leadbellybluesfestival.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 16, 2010
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