national arbitration forum

 

DECISION

 

William B. Pitt a/k/a Brad Pitt v. Mircea Roibu

Claim Number: FA1010001352398

 

PARTIES

Complainant is William B. Pitt a/k/a Brad Pitt (“Complainant”), represented by Stephen J. Strauss of Fulwider Patton LLP, California, USA.  Respondent is Mircea Roibu (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bradpittapp.com>, registered with GoDaddy Software, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically October 15, 2010; the National Arbitration Forum received payment October 15, 2010.

 

On October 15, 2010, GoDaddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <bradpittapp.com> domain name is registered with GoDaddy Software, Inc. and that Respondent is the current registrant of the name.  GoDaddy Software, Inc. verified that Respondent is bound by the GoDaddy Software, Inc. registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 18, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@bradpittapp.com.  Also on October 18, 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 November 17, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain name that Respondent registered, <bradpittapp.com>, is confusingly similar to Complainant’s BRAD PITT mark.

 

2.      Respondent has no rights to or legitimate interests in the <bradpittapp.com> domain name.

 

3.      Respondent registered and used the <bradpittapp.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, William B. Pitt a/k/a Brad Pitt, is an internationally famous actor of television and motion picture films.  Complainant holds common law rights in the BRAD PITT mark dating back at least to 1991.

 

Respondent, Mircea Roibu, registered the <bradpittapp.com> domain name December 22, 2009.  The disputed domain name does not currently resolve to an active website.

 

DISCUSSION

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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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.

 

Identical to and/or Confusingly Similar

 

Complainant argues that it has rights in the BRAD PITT mark for the purposes of Policy ¶ 4(a)(i).  Policy ¶ 4(a)(i) does not require a trademark registration with the United States Patent and Trademark Office (“USPTO”) if Complainant can establish common law rights in the mark.  See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum March 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 asserts rights in the BRAD PITT mark because it is a personal name that Complainant has continuously used throughout the United States and internationally in connection with television and motion picture films.  Complainant asserts that it has extensively used the mark for more than 25 years in connection with various entertainment and charitable related goods and services.  Complainant provides evidence that its rights in the mark date back to at least 1991 when Complainant appeared in the motion picture Thelma & Louise. Since that time, Complainant has achieved significant celebrity under the BRAD PITT mark, appearing in numerous other motion pictures, including 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 has also been nominated twice for an Academy Award, nominated for a Golden Globe Award three times, and won one Golden Globe Award.  The Panel finds that Complainant’s continuous use of the BRAD PITT mark in connection with his film and television career and his achieved fame has created secondary meaning in the BRAD PITT mark sufficient to establish common law rights.  See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association with the complainant that common law trademark rights exist); see also Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (“A person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law . . .”).

 

Complainant alleges that Respondent’s <bradpittapp.com> domain name incorporates Complainant’s entire BRAD PITT mark. The only changes are the elimination of the space between the two terms and the additions of the abbreviation “app,” presumably standing for “application,” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that adding a generic term or abbreviation to Complainant’s mark does not change the mark sufficiently to prevent confusing similarity.  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 Victoria’s Secret v. Plum Promotions, FA 96503 (Nat. Arb. Forum Feb. 27, 2001) (“The mere addition of the generic term “tv” does not reduce the likelihood of confusion under Policy 4(a)(i).”).  The Panel also finds that eliminating the space between the terms and adding the gTLD are insignificant changes that do not affect a Policy ¶ 4(a)(i) analysis.  See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). 

 

Therefore, the Panel finds that Respondent’s <bradpittapp.com> domain name is confusingly similar to Complainant’s BRAD PITT mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name.  Once Complainant makes a prima facie case to supports its allegations, the burden of proof shifts to Respondent to demonstrate that it does have rights and interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  The Panel finds that Complainant made 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 any rights and 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 [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 contends that it has no relationship with Respondent and has not given Respondent permission to use or register the disputed domain name.  The WHOIS information for the disputed domain name lists the registrant as “Mircea Roibu,” a name which has no apparent association with the disputed domain name. The Panel therefore finds that Respondent is not commonly known by the <bradpittapp.com> domain name and thus lacks rights and legitimate interests according 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that respondent was commonly known by the disputed domain name).

 

Complainant also asserts that Respondent is not currently making active use of the <bradpittapp.com> domain name because it resolves to a website only stating: “Internet Explorer cannot display the webpage.”  Complainant argues, and the Panel agrees, that Respondent’s failure to actively use the disputed domain name permits findings that Respondent has shown no bona fide offering of goods or services according to Policy ¶ 4(c)(i) and has shown no legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where the respondent made no use of the infringing domain names).

 

The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

When conducting a Policy ¶ 4(a)(iii) analysis, the Panel finds that it may consider the totality of the circumstances without being limited to the enumerated factors in Policy      ¶ 4(b).  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence.

 

Complainant alleges that Respondent’s <bradpittapp.com> domain name currently resolves to an inactive website with no original content.  Complainant argues that Respondent’s failure to actively use this disputed domain name constitutes passive holding of the domain name and permits findings of bad faith registration and use according to Policy ¶ 4(a)(iii).  The Panel agrees.  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); 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 Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bradpittapp.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: November 29, 2010.

 

 

 

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