Idris Elba and Myone Media Inc. v. Direct Privacy ID 6D6CC
Claim Number: FA1108001402898
Complainant is Idris Elba and Myone Media Inc. (“Complainant”), represented by Stephen J. Strauss of Fulwider Patton LLP, California, USA. Respondent is Direct Privacy ID 6D6CC (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <idriselba.com>, registered with DirectNIC Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 11, 2011; the National Arbitration Forum received payment on August 11, 2011.
On August 11, 2011, DirectNIC Ltd confirmed by e-mail to the National Arbitration Forum that the <idriselba.com> domain name is registered with DirectNIC Ltd and that Respondent is the current registrant of the name. DirectNIC Ltd has verified that Respondent is bound by the DirectNIC Ltd 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 August 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 1, 2011 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@idriselba.com. Also on August 12, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 7, 2011, 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 has common law rights in the IDRIS ELBA mark because it is his personal name, which he has used in connection with his music and acting career for almost twenty years.
Complainant is an internationally recognized music artist and award winning actor and producer of motion pictures and television.
Complainant has assigned his rights in his name, likeness, and image to co-Complainant, Myone Media Inc.
Complainant Myone Media Inc. has used the IDRIS ELBA mark in connection with the marketing of various goods and services, including video and sound recordings and various entertainment services.
Respondent registered the disputed <idriselba.com> domain name on December 23, 2003.
The disputed domain name resolves to a generic website featuring pay-per-click links to third-party websites relating to various motion picture celebrities and the acting profession.
Respondent’s <idriselba.com> domain name is identical to Complainant’s IDRIS ELBA mark.
Complainant has no relationship with Respondent, and Complainant has not given Respondent permission to use the IDRIS ELBA mark.
Respondent is not commonly known by the <idriselba.com> domain name.
Respondent does not have any rights to or legitimate interests in the domain name <idriselba.com>.
Respondent registered and uses the <idriselba.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a trademark 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 to a UDRP complaint 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.
Preliminary Issue: Multiple Complainants
Complainants Idris Elba and Myone Media Inc. bring the instant Complaint together. UDRP Rule 3(a) provides that “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Because there is no dispute as to the allegations of the Complaint to the effect that Complainant Idris Elba has assigned his rights in his name, likeness and image to co-Complainant Myone Media Inc., and that co-Complainant Myone Media Inc. has since used the IDRIS ELBA mark in connection with the marketing of various goods and services, including video and sound recordings and various entertainment services, the Panel finds that this relationship is sufficient to establish the required link between Complainants. We will, therefore, treat them as a single entity for purposes of this proceeding, collectively referring to them as “Complainant.”
Complainant does not have a registered trademark for the IDRIS ELBA mark. A trademark registration is, however, not necessary if Complainant can establish rights in the claimed mark through a showing of continued use and acquired secondary meaning. See Hiatt v. personal fan & official site builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007):
[R]egistration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….
See also Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for a complainant to establish rights in the mark for purposes of a UDRP proceeding).
Complainant asserts that it has rights in the IDRIS ELBA mark because the mark is its personal name, which it has used in connection with its acting and music career for close to twenty years. Complainant further asserts that it is an internationally recognized music artist and award winning actor and producer of motion pictures and television. We are satisfied from Complainant’s uncontested submissions that Complainant has common law rights in the claimed IDRIS ELBA mark sufficient for purposes of Policy ¶ 4(a)(i). See James v. Demand Domains, FA 1106240 (Nat. Arb. Forum Dec. 27, 2007) (“The AMI JAMES mark has become distinct through Complainant’s use and exposure of the mark in the marketplace and through use of the mark in connection with Complainant’s television show, clothing line, and tattoo shop for over seventeen years.”); see also Kaino v. Fix, FA 699578 (Nat. Arb. Forum June 19, 2006) (finding common law rights where the complainant has been “…creating and displaying artwork under the GLENN KAINO mark since 1999, and that Complainant’s mark has been recognized as associated with Complainant’s artwork by several publications and the national media.”).
Respondent’s <idriselba.com> domain name is substantively identical to Complainant’s IDRIS ELBA mark. The only differences are the removal of the space between the terms of the mark and the addition of the generic top-level domain (“gTLD”) “.com.” See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), and Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), holding disputed domain names identical to the marks there in issue because neither the removal of spaces nor the addition of gTLDs established distinctiveness between the marks and the contested domain names.
Therefore, the Panel finds that Respondent’s <idriselba.com> domain name is substantively identical to Complainant’s IDRIS ELBA mark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), the burden is on Complainant to present a prima facie case on the point of Respondent’s lack of rights to or legitimate interests in the contested domain name. Once that is done, the burden shifts to Respondent to demonstrate affirmatively that it has such rights or interests. See 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 Policy.
Complainant has met its burden under this head of the Policy. Therefore, and because Respondent has failed to respond to the Complaint filed in this proceeding, we may presume that Respondent does not have 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.
See also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000):
Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.
Nonetheless, we will examine the record before us, 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 first observe that Complainant contends, and Respondent does not deny, that Complainant has no relationship with Respondent, that Complainant has not given Respondent permission to use the IDRIS ELBA mark, and that Respondent is not commonly known by the <idriselba.com> domain name. Moreover, the pertinent WHOIS information identifies the registrant of the contested domain name only as “Direct Privacy ID 6D6CC,” which does not resemble the disputed domain name. On this record, we must conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights and 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 a disputed domain); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the relevant WHOIS information listed as the registrant of the disputed domain Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't, and there was no other evidence in the record to suggest that that respondent was commonly known by the domains in dispute).
We also note that Complainant alleges, without objection from Respondent, that the website resolving from Respondent’s <idriselba.com> domain name hosts pay-per-click links to third-party websites relating to motion picture celebrities and the acting profession. Because these links are offered under a domain name substantively identical to Complainant’s mark, despite the fact that Complainant has not authorized or sponsored them, we conclude that Respondent’s use of the disputed domain as alleged 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 ¶ (iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a domain name which is confusingly similar to a complainant’s domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or whether a respondent is itself profiting commercially from click-through fees); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that a respondent’s website, which is blank but for links to other websites, is not a legitimate use of disputed domain names).
The Panel thus concludes that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s employment of the disputed domain name in the manner alleged in the Complaint, disrupts Complainant’s business and evidences bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that a respondent registered and used the <eebay.com> domain name in bad faith where that respondent used it to promote auction sites competing with the business of a complainant); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name confusingly similar to a complainant’s mark to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
It is also evident that Respondent uses the <idriselba.com> domain name to capitalize on the fame of Complainant’s IDRIS ELBA mark in hopes that it will lure Internet users who will be interested in, and subsequently click on, the pay-per-click links displayed on the resolving website. This creates confusion as to the possibility of Complainant’s sponsorship or other relationship to the resolving website. Respondent attempts to profit from this confusion, and thus demonstrates bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See 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 a complainant’s well-known marks, thus creating a likelihood of confusion for a respondent’s commercial gain); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003):
Respondent's prior use of the … domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’
For these reasons, the Panel finds that Complainant has met its obligations of proof under 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, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <idriselba.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 15, 2011
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