national arbitration forum

 

DECISION

 

Jordan Belfort v. jordanbelfort.com c/o Whois Privacy Service

Claim Number: FA 1359594

 

PARTIES

Complainant is Jordan Belfort (“Complainant”), represented by Denise M. Gosnell of Gosnell & Associates, Inc., Indiana, USA.  Respondent is jordanbelfort.com c/o Whois Privacy Service (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <jordanbelfort.com>, registered with TIERRANET INC. D/B/A DOMAINDISCOVER.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Mark McCormick and Jeffrey M. Samuels, as Panelists, David S. Safran, as Panel Chair.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 19, 2010; the National Arbitration Forum received payment on November 19, 2010.

 

On November 23, 2010, TIERRANET INC. D/B/A DOMAINDISCOVER confirmed by e-mail to the National Arbitration Forum that the <jordanbelfort.com> domain name is registered with TIERRANET INC. D/B/A DOMAINDISCOVER and that Respondent is the current registrant of the name.  TIERRANET INC. D/B/A DOMAINDISCOVER has verified that Respondent is bound by the TIERRANET INC. D/B/A DOMAINDISCOVER 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 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 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@jordanbelfort.com.  Also on November 24, 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 January 4, 2011, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Mark McCormick and Jeffrey M. Samuels, as Panelists, David S. Safran, as Panel Chair.

 

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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <jordanbelfort.com> domain name is identical to Complainant’s JORDAN BELFORT mark.

 

2.      Respondent does not have any rights or legitimate interests in the <jordanbelfort.com> domain name.

 

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

 

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

 

FINDINGS

The mark Jordan Belfort is owned by the Complainant named Jordan Belfort, who is a world-famous author, speaker, and consultant and who has his works published in dozens of languages around the globe. Complainant Jordan Belfort has continuously used for several years (since 2007 and earlier), and continues to use, the mark “Jordan Belfort” in commerce as a brand that identifies the source of his training materials, books, and consulting services. The domain name <jordanbelfort.com> is identical to the mark in which Complainant has rights. Respondent is not using the disputed domain name for a bona fide offering of goods or services. The Respondent has not made a legitimate non-commercial or fair use of the domain name. Respondent attempted to sell the domain name to the complainant for $50,000. Respondent is attempting to tarnish or disrupt the business of a competitor. Respondent has also intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion.

 

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."

 

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.

 

Identical and/or Confusingly Similar

Complainant asserts common law rights in the JORDAN BELFORT mark.  The Panel finds that a trademark registration is not necessary to establish rights in the mark if Complainant can show common law rights through continuous use and the subsequent acquisition of secondary meaning.  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 argues that it has common law rights in the JORDAN BELFORT mark because it is his personal name that has been continuously used in connection with Complainant’s well-known activities, including his publication of training materials and books and his offering of consulting services.  Complainant provides evidence in his Complaint that he first started his successful and very well-known brokerage firm in 1987 and was banned from the securities business by 1994, which indicates that he was already well-known by the American public.  Complainant asserts that he published his first book about his exploits, The Wolf of Wall Street, in September 2007 and subsequently published other books and training materials, including Catching the Wolf of Wall Street and Jordan Belfort Straight Line Success System. Complainant contends that to further publicize his mark and the related products and services, Complainant consistently uses the JORDAN BELFORT mark in online advertisements and in social mediums on the Internet like Facebook.  The Panel therefore finds that Complainant’s continuous use of the JORDAN BELFORT mark, which is also his personal name, in connection with his famous business activities, book publications and consulting services has created secondary meaning in the JORDAN BELFORT mark sufficient to establish rights in the mark which predate Respondent’s registration of the <jordanbelfort.com> domain name, according to Policy ¶ 4(a)(i).  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 <jordanbelfort.com> domain name is identical to Complainant’s JORDAN BELFORT mark because the only changes are the deletion of the space between the first and last name and the addition of the generic top-level domain (“gTLD”) “.com.”  The Panel finds that neither removing the space nor attaching the gTLD overcomes a finding that the disputed domain name is identical to Complainant’s mark.  See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).  Therefore, the Panel finds that Respondent’s <jordanbelfort.com> domain name is identical to Complainant’s JORDAN BELFORT mark for the purposes of Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t 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.”).

 

Complainant asserts that Respondent is not in any way associated with Complainant and is not authorized to use Complainant’s mark.  The WHOIS information for the <jordanbelfort.com> domain name does not reflect any association with the disputed domain name or Complainant’s mark.  The Panel therefore finds that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests 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 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 alleges that the only content displayed on the website resolving from the <jordanbelfort.com> domain name consists of comments about Complainant and two banner advertisements that presumably generate pay-per-click fees for Respondent.  Complainant argues, and the Panel agrees, that using the disputed domain name to feature pay-per-click advertisements, some of which relate to Complainant, is not consistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) and 4(c)(iii).  See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)).

 

Registration and Use in Bad Faith

Complainant argues that Respondent’s <jordanbelfort.com> domain name attempts to attract Internet users seeking Complainant by using Complainant’s mark in the disputed domain name and even displaying Complainant’s “JB” logo in the address bar.  Complainant alleges that Respondent intends to create a likelihood of confusion as to the source or affiliation of the resolving website and then profit through the pay-per-click banner advertisements on the page.  The Panel therefore finds that Respondent has shown bad faith registration and use according 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 Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites form which Respondent presumably receives referral fees.  Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

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 <jordanbelfort.com> domain name be TRANSFERRED.

 

For the Panel, David S. Safran, Panel Chair

 

Dated:  January 7, 2011

 

 

 

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