national arbitration forum

 

DECISION

 

Randall Terry v. Jeff White

Claim Number: FA1012001362916

 

PARTIES

Complainant is Randall Terry (“Complainant”), represented by Michael S. Culver of Millen, White, Zelano & Branigan, P.C., Virginia, USA.  Respondent is Jeff White (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <randallterry.us>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 10, 2010; the Forum received a hard copy of the Complaint on December 10, 2010.

 

On December 10, 2010, GoDaddy.com, Inc. confirmed by e-mail to the Forum that the <randallterry.us> 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-name disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On December 16, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 5, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On January 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 <randallterry.us> domain name is identical to Complainant’s RANDALL TERRY mark.

 

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

 

3.      Respondent registered and used the <randallterry.us> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Randall Terry, is an author, media host, educator, and social activist in the field of pro-life activities.  Complainant has common law rights in the RANDALL TERRY mark dating back to at least 1987.

 

Respondent, Jeff White, registered the <randallterry.us> domain name on November 14, 2007.  The disputed domain name resolves to a generic pay-per-click link hosting webpage.

 

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.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant does not have any trademark registrations, but argues that he has common law rights in the RANDALL TERRY mark. Policy ¶ 4(a)(i) does not require a trademark registration if Complainant can establish common law rights in the mark.  See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that UDRP ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its marks); 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 UDRP ¶ 4(a)(i)).

 

Complainant asserts common law rights in the RANDALL TERRY mark because it is his personal name that he has used in connection with his political and pro-life activist activities.  Complainant asserts that he was the founder and director of Operation Rescue, an organization dedicated to stopping abortions that created one of the largest displays of protest and civil disobedience in American history.  Complainant’s Operation Rescue held rescue events at clinics across the country, including in Philadelphia, New York, Atlanta, and Los Angeles.  Complainant alleges that, in his career with Operation Rescue and continuing afterward, he has been the object of national publicity, including interviews in Time and Rolling Stone magazines, The New York Times, The Washington Post, 60 Minutes, CNN, Nightline, 20-20, Phil Donahue, Oprah, and Meet the Press, as well as many media outlets devoted to Christian broadcasting, including Pat Robertson’s 700 Club. In addition, Complainant has hosted two radio programs: Operation Rescue News Update in 1989 through 1993 that aired on over 200 stations and Randall Terry Live in 1992-2000 that aired on about 100 stations, including in Los Angeles, San Francisco, St. Louis, Miami, and Washington, D.C.  In May 2010, Complainant began hosting Randall Terry: The Voice of Resistance, which airs on television stations and the Internet.  Additionally, Complainant authored five books between 1988 and 2008 and released two musical CDs for country and Christian radio stations.  He has also been featured in two documentary movies, one in 1988 and one in 2007.  Complainant asserts he has been involved in numerous educational seminars, starting in 1999, and has been a frequent public speaker in churches, colleges, and other forums.  Complainant argues that his involvement in protests and social activism in the field of pro-life have kept him in the media spotlight since at least 2000.  He argues that his involvement in a U.S. Supreme Court case, his role as spokesman for the Terri Schiavo case, and his bid for the U.S. Senate also contributed to his renown around the country.  Based on this long-term continuous use of the RANDALL TERRY mark in connection with his personal, political, and activist endeavors, the Panel finds that Complainant has acquired secondary meaning in the RANDALL TERRY mark sufficient to prove common law rights pursuant 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 argues that Respondent’s <randallterry.us> domain name is identical to Complainant’s RANDALL TERRY mark because the disputed domain name only omits the space between the first and last name and adds the country code top-level domain (“ccTLD”) “.us.”  The Panel finds that omitting the space between terms is an insignificant change that fails to prevent a finding of identicality.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also 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).  The Panel also finds that the addition of the ccTLD does not prevent the disputed domain name from being deemed identical to Complainant’s mark.  See Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of ‘.us’ to a mark fails to distinguish the domain name from the mark pursuant to the Policy”); see also Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name [<Barbie.us>] is identical to the trademark ‘Barbie,’ as it uses the trademark in its entirety.  The only difference is the addition of the country code ‘us’ which for this purpose is insufficient to distinguish the domain name from the trademark.”).  Therefore, the Panel concludes that Respondent’s <randallterry.us> domain name is identical to Complainant’s RANDALL TERRY mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <randallterry.us> domain name.  The burden shifts to Respondent to prove it does have rights and legitimate interests pursuant to Policy ¶ 4(a)(ii) when Complainant makes a prima facie case in support of its allegations.  The Panel finds Complainant has made a sufficient prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. The Panel will examine the record, however, in light of the Policy ¶ 4(c) factors to determine whether  Respondent has rights or legitimate interests in the disputed domain name.  See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations  . . . unless clearly contradicted by the evidence.”); see also 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 [UDRP].”).

 

There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <randallterry.us> domain name.  Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy         ¶ 4(c)(i).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

Complainant alleges that it has not licensed or otherwise authorized Respondent to use the RANDALL TERRY mark.  The WHOIS information for the <randallterry.us> domain name identifies the registrant as “jeff white.”  The Panel therefore concludes that Respondent is not commonly known by the <randallterry.us> domain name and does not possess rights and legitimate interests in the disputed domain name pursuant to Policy     ¶ 4(c)(iii).  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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Complainant contends that Respondent is using the <randallterry.us> domain name to redirect Internet users to a generic website featuring pay-per-click links to unrelated third-party websites.  The Panel finds that Respondent’s use of the identical domain name to misdirect Internet users to a links page is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the disputed domain name according to Policy ¶ 4(c)(iv).  See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under UDRP ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied. 

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent’s <randallterry.us> domain name resolves to a generic hosting website for pay-per-click links to unrelated third-party web pages.  Complainant asserts that Respondent likely profits from these pay-per-click links as a result of “click-through” fees.  The Panel finds that Respondent’s use of Complainant’s mark to attract Internet users and create a likelihood of confusion as to the source or affiliation of Respondent’s website for profit indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefitted by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also 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 constituted bad faith under UDRP ¶ 4(b)(iv)).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

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

 

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

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  January 11, 2011

 

 

 

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