Joseph S. Liberti d/b/a Drown The Clown, LLC v. Demurrelt Enterprises Limited / Web Master
Claim Number: FA 1355851
Complainant is Joseph S. Liberti d/b/a Drown The Clown, LLC (“Complainant”), represented by William McCarthy, New York, USA. Respondent is Demurrelt Enterprises Limited / Web Master (“Respondent”), , represented by the Eclipse Group, LLP, Cyprus.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <drowntheclown.com>, registered with Enom, 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 November 1, 2010; the National Arbitration Forum received payment on November 12, 2010.
On November 2, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <drowntheclown.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 November 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@drowntheclown.com. Also on November 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 December 21, 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.
On December 22, 2010, Respondent submitted an untimely Response. Nevertheless, the Panel, in the exercise of its discretion, will consider it.
On December 27, 2010, the National Arbitration Forum received an Additional Submission for Complainant.
On January 3, 2011, the National Arbitration Forum received an Additional Submission for Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <drowntheclown.com> domain name is identical to Complainant’s DROWN THE CLOWN mark.
2. Respondent does not have any rights or legitimate interests in the <drowntheclown.com> domain name.
3. Respondent registered and used the <drowntheclown.com> domain name in bad faith.
B. Respondent makes the following assertions:
1. A predecessor in interest to Respondent registered the domain name on April 4, 2000.
2. Internet users will not confuse the resolving website with Complainant’s trademark.
3. Respondent has used the domain name for adult services since 2000.
4. Respondent denies that Complainant has suffered any damage to its trademark.
5. Respondent was unaware of the Complainant’s identity until the notice of this dispute.
Complainant, Joseph S. Liberti d/b/a Drown The Clown, owns the exclusive rights to the DROWN THE CLOWN mark, which it uses in connection with its family entertainment business. This business provides, among other things, games, rides, concessions, and carnival entertainers.[1] Complainant holds a federal trademark registration with the United States Patent and Trademark Office (“USPTO”) for its DROWN THE CLOWN mark (Reg. No. 2,941,785 filed November 24, 2003, issued April 19, 2005).
Respondent, Demurrelt Enterprises Limited / Web Master, registered the disputed domain name on April 4, 2000. The disputed domain name resolves to a website featuring adult-oriented material with video, design, and graphics remarkably similar to that of 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."
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 contends that it has established rights in the DROWN THE CLOWN mark. The Panel finds that trademark registrations with a federal trademark authority are sufficient to establish rights in a mark, irrespective of Respondent’s country of residence. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Complainant holds a trademark registration with the USPTO for the DROWN THE CLOWN mark (Reg. No. 2,941,785 filed November 24, 2003, issued April 19, 2005).
In addition, the Panel finds that on this record Complainant has established common law rights in the DROWN THE CLOWN mark through its continuous use of the mark for over 30 years, wherein its activities have been featured in dozens of fairs, concerts, carnivals and national television. 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 Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Therefore, the Panel finds that Complainant has established rights in the DROWN THE CLOWN mark pursuant to Policy ¶ 4(a)(i).
Complainant argues Respondent’s <drowntheclown.com> domain name is identical to Complainant’s DROWN THE CLOWN mark. The disputed domain name contains Complainant’s entire mark, only removing the spaces, and adds the generic top-level domain (“gTLD”) “.com.” Earlier panels have asserted that when a disputed domain name removes the spaces from a complainant’s mark and adds a gTLD, the disputed domain will be rendered identical to the mark in question. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark); see also 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).”).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the <drowntheclown.com> domain name. Earlier panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it has rights or legitimate interests under Policy ¶ 4(a)(ii). See Hanna-Barbera Prods., Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel finds Complainant to have made a prima facie case.
Complainant asserts that Respondent is not authorized to use the DROWN THE CLOWN mark. The WHOIS information identifies the domain name registrant as “Demurrelt Enterprises Limited / Web Master.” There is no other evidence set forth in the record to indicate that Respondent has been commonly known by the <drowntheclown.com> domain name. Thus, Respondent has not established rights or legitimate interests in 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent uses the <drowntheclown.com> domain name to divert Internet users to an adult-oriented website. The Panel finds that this does not constitute 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 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 America Online, Inc. v. Boch, FA 209902 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent uses <aol-x.com> in connection with [adult-oriented] material, which is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶¶ 4(c)(i) [and] (iii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
The record indicates that Respondent uses the <drowntheclown.com> domain name to resolve to a website featuring adult-oriented content along with a video, nearly identical to the video featured on Complainant’s website. According to Complainant, Internet users will, and already have, become confused as to Complainant’s affiliation with the disputed domain name and resolving website. Complainant asserts that Respondent likely commercially benefits from this confusion. Thus, Respondent’s registration and use of the <drowntheclown.com> domain name evidence bad faith registration and use under 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 Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Previous panels have determined that the use of a confusingly similar or identical domain name to host a website containing adult-oriented content constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith). The Panel may find accordingly.
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 <drowntheclown.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 10, 2011
[1]Complainant describes it Drown the Clown attraction this way: “Does the opportunity to dunk an insulting clown stir your competitive juices? Then step up for your chance to drown the clown, while being subjected to the world’s greatest insults. Get your pitching arm in gear, drown the clown and leave with dignity.”
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