The Survivor’s Trust created under the John Family Trust v. denofsins
Claim Number: FA1108001405157
Complainant is The Survivor’s Trust created under the John Family Trust (“Complainant”), represented by Curtis Krasik of K&L Gates LLP, Pennsylvania, USA. Respondent is denofsins (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myjohnnyramone.us>, registered with GoDaddy.com, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 26, 2011; the National Arbitration Forum received a hard copy of the Complaint on August 29, 2011.
On August 29, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <myjohnnyramone.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 disputes brought by third-parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 31, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 20, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <myjohnnyramone.us> domain name is confusingly similar to Complainant’s JOHNNY RAMONE mark.
2. Respondent does not have any rights or legitimate interests in the <myjohnnyramone.us> domain name.
3. Respondent registered and used the <myjohnnyramone.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant received all rights, title, and interest in the intellectual property owned by John Cummings, known as JOHNNY RAMONE, when Mr. Ramone passed away in September 15, 2004, including the rights to the JOHNNY RAMONE mark. Complainant uses the JOHNNY RAMONE mark to provide information about Mr. Ramone and to sell JOHNNY RAMONE related goods and services.
Respondent registered the <myjohnnyramone.us> domain name on December 5, 2010. The disputed domain name resolves to an adult-oriented website containing advertisement for adult-oriented services and adult-oriented pictures.
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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or 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.
Complainant does not allege, or present any evidence, of a trademark registration with a national trademark agency for its JOHNNY RAMONE mark. The Panel finds that Complainant is not required to provide a trademark registration in order to demonstrate rights in a mark under Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the UDRP “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The [UDRP] does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant claims that Mr. Ramone transferred all intellectual property rights, including rights to the JOHNNY RAMONE mark, when Mr. Ramone died in 2004. Complainant asserts that Mr. Ramone, using his JOHNNY RAMONE name, was inducted into the Rock and Roll Hall of Fame in 2002 and received a lifetime achievement award in 2011. In 2003, Mr. Ramone was named by Rolling Stone magazine as the 16th greatest guitarist of all time. Time magazine listed JOHNNY RAMONE as one of “The 10 Greatest Electric-Guitar Players.” Mr. Ramone starred in Rock ‘n’ Roll High School as JOHNNY RAMONE. While Complainant does not provide any earlier evidence of Mr. Ramone’s career, the Panel is satisfied that Complainant’s JOHNNY RAMONE mark has acquired secondary meaning that is sufficient to prove Complainant owns Policy ¶ 4(a)(i) common law rights in the mark. See MPL Commc’ns Ltd v. Hammerton, FA 95633 (Nat. Arb. Forum Oct. 25, 2000) (finding that the complainant owned common law rights to the name Paul McCartney); see also Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (the complainant held common law trademark rights in his famous name MICK JAGGER).
Complainant argues that Respondent’s <myjohnnyramone.us> domain name contains Complainant’s entire mark and that Respondent has simply removed the space separating the terms of the mark and added the generic term “my” and the country-code top-level domain (“ccTLD”) “.us.” The Panel determines that the addition of the generic term does not adequately distinguish the disputed domain name and that the removal of the space and the addition of the ccTLD are irrelevant to a Policy ¶ 4(a)(i) analysis. See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under UDRP ¶ 4(a)(i)); see also CDW Computer Centers, Inc. v. The Joy Company, FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). Therefore, the Panel holds that Respondent’s <myjohnnyramone.us> domain name is confusingly similar to Complainant’s JOHNNY RAMONE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <myjohnnyramone.us> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when the 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. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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 <myjohnnyramone.us> domain name. Therefore the Panel finds that Respondent does not have rights and 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 Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because 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 claims that Respondent is not licensed or authorized to use Complainant’s JOHNNY RAMONE mark. Complainant asserts that Respondent does not use the disputed domain name in the course of trade to identify itself. The WHOIS information lists the registrant of the <myjohnnyramone.us> domain name as “denofsins,” which is not similar to the disputed domain name. Consequently, the Panel holds that Respondent is not commonly known by the <myjohnnyramone.us> domain name under Policy ¶ 4(c)(iii). 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 [UDRP] ¶ 4(c)(ii) does not apply); 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 UDRP ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant asserts that Respondent uses the <myjohnnyramone.us> domain name to offer adult-oriented services and provide adult-oriented pictures. The Panel determines that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Am. 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 [UDRP] ¶¶ 4(c)(i) [and] (iii).”).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Complainant contends that Respondent chose the <myjohnnyramone.us> domain name to host its adult-oriented website because Respondent was attempting to commercially gain by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name. While the Panel is not required to find both bad faith registration and use, in this case, the Panel determines that Respondent registered and uses the <myjohnnyramone.us> domain name in bad faith pursuant to 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 UDRP ¶ 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).
The Panel further finds that Respondent’s offering of adult-oriented services at a website resolving from the confusingly similar <myjohnnyramone.us> domain name is evidence, by itself, that Respondent both registered and uses the disputed domain name in bad faith 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 Jon-Don Prods., Inc. v. CarpetSolutions, FA 95293 (Nat. Arb. Forum Aug. 24, 2000) (finding bad faith where the respondent threatened to use the domain name for adult-oriented material).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the JOHNNY RAMONE mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) because the Panel finds Respondent had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds Policy ¶ 4(a)(iii) is 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 <myjohnnyramone.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 5, 2011
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