Salman Khan v. Frank Gerdes
Claim Number: FA1110001410203
Complainant is Salman Khan (“Complainant”), represented by Stephen H. Sturgeon of The-Internet-Lawyers.com, P.C., Maryland, USA. Respondent is Frank Gerdes (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <salmankhan.com>, registered with Fabulous.com Pty Ltd.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 4, 2011; the National Arbitration Forum received payment on October 4, 2011.
On October 4, 2011, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <salmankhan.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty 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 October 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 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@salmankhan.com. Also on October 7, 2011, 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 November 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
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:
FACTUAL BACKGROUND:
Since at least as early as 1988, Complainant, as an individual and through Complainant’s licensees, has used the <Salman Khan> Mark in connection with a considerable number of activities, products and services as well as in connection with public speaking, general celebrity services and other commercial, philanthropic and publicity purposes.
Complainant has used these marks more than 11 years prior to Respondent’s registration of the subject domain name on March 31, 1999. Moreover, Complainant, under the name of “Salman Khan” is a famous personality and world-renowned entertainment icon. He is famous for being an Indian actor as well as for being an entertainer and world-renowned personality. He is best known for being Salman Khan the Actor, Brand Ambassador, Television Anchor and Social Personality (As confirmation of the Complainant’s identity as Salman Khan, a copy of his passport is attached as Exhibit A.) Additional information about his fame and celebrity status is provided in a Wikipedia article devoted entirely to a description of him and his activities, as follows.
Salman Khan (Hindi: सलमान ख़ान, Urdu: عبد الرشید سلیم سلمان خان, pronounced [səlˈmaːn ˈxaːn]; born Abdul Rashid Salim Salman Khan on 27 December 1965) is an Indian film actor. He has appeared in more than 80 Hindi films.
Khan, who made his acting debut with a minor role in the drama Biwi Ho To Aisi (1988), had his first commercial success with the blockbuster Maine Pyar Kiya (1989), for which he won a Filmfare Award for Best Male Debut. He went on to star in some of Hindi cinema's most successful films of those times, such as Saajan (1991), Hum Aapke Hain Kaun (1994), Karan Arjun (1995), Judwaa (1997), Pyar Kiya To Darna Kya (1998) and Biwi No.1 (1999), having appeared in the highest earning films of seven separate years during his career.
In 1999, Khan won a Filmfare Award for Best Supporting Actor for his extended appearance in Kuch Kuch Hota Hai (1998), and since then has starred in several critical and commercial successes, including Hum Dil De Chuke Sanam (1999), Tere Naam (2003), Mujhse Shaadi Karogi (2004), No Entry (2005), Partner (2007), Wanted (2009) and Dabangg (2010), which has become the second highest-grossing Bollywood film of all-time. Khan has thus established himself as one of the most prominent, leading, and successful actors of Hindi cinema.[1][2][3][4]
Early life
Khan is the eldest son of screenwriter Salim Khan and his first wife Salma Khan (maiden name Sushila Charak), his paternal grandfather came to India from Afghanistan and settled in Madhya Pradesh whereas his mother is a Marathi Brahmin.[5][6] His stepmother is Helen, a former Bollywood actress, who has co-starred with him in Khamoshi: The Musical (1996) and Hum Dil De Chuke Sanam (1999). He has two brothers, Arbaaz Khan and Sohail Khan, and two sisters, Alvira and Arpita. Alvira is married to actor/director Atul Agnihotri.
Khan finished his schooling through St. Stanislaus High School in Bandra, Mumbai, as did his younger brothers Arbaaz and Sohail. Earlier, he studied at The Scindia School, Gwalior for a few years along with younger brother Arbaaz.
Salman Khan made his acting debut with a supporting role in the 1988 film Biwi Ho To Aisi. His first leading role in a Bollywood movie was in Sooraj R. Barjatya's romantic family drama Maine Pyar Kiya (1989), one of India's highest grossing films.[7] It also won him a Filmfare Best Male Debut Award, and a nomination for Filmfare Best Actor Award.{cn}}
[edit] 1990s
1990 saw only one film release starring Khan, Baaghi: A Rebel for Love, alongside southern actress Nagma. The film was a box office success,[8] followed by three hit films in 1991, Patthar Ke Phool, Sanam Bewafa and Saajan.[9] Despite these early successes, nearly all of his 1992-1993 releases resulted in box office failures.[9]
Khan returned to success in 1994 with his second collaboration with director Sooraj Barjatya in the romance Hum Aapke Hain Kaun, co-starring Madhuri Dixit. This film was the biggest hit of that year, and turned out to be one of Bollywood's highest grossing films ever, becoming the fourth-highest earner of all time.[10] Apart from being a commercial success, the film was widely acclaimed and Khan was praised for his performance, earning his second nomination for Best Actor at the Filmfare.[citation needed] Three more films released that year featured Khan, none of which making a significant impact on the box-office as was the case with the previously mentioned title. He did however win praise for his performance in Andaz Apna Apna, alongside co-star Aamir Khan, which has gained a cult status since its release. In 1995 he cemented his success with Rakesh Roshan's blockbuster Karan Arjun, co-starring alongside Shahrukh Khan.[9] The film was the second biggest hit of the year, and his role of Karan once again put his name among the nominees for the Best Actor award at the Filmfare, which was eventually won by his Karan Arjun co-star Shahrukh Khan.
In 1996, Khan performed in two movies, Sanjay Leela Bhansali's directional debut Khamoshi: The Musical, a box office failure, but critically acclaimed; and Raj Kanwar's action hit Jeet.
He had only two releases in 1997: Judwaa and Auzaar. The former was a comedy directed by David Dhawan co-starring Karisma Kapoor, where he played a dual role of twins separated at birth. The film was a box office hit. The latter, co-starring Shilpa Shetty failed to do well, but developed a cult following after its video release.[citation needed]
Khan worked in five different films in 1998, his first release being the comedy Pyaar Kiya To Darna Kya opposite Kajol, one of the biggest commercial successes of that year. This was followed by the moderately successful drama Jab Pyaar Kisise Hota Hai.[9] Khan played a young man who has to take a child who claims to be his son, under his custody. Khan's performance in the film earned him several positive notices and favourable reviews from critics. He rounded of the year with Karan Johar's directorial debut, Kuch Kuch Hota Hai. Co-starring alongside Shahrukh Khan and Kajol, he had only an extended cameo playing the role of Aman. However, it eventually turned out beneficial to him, as his performance earned him his second Filmfare Award under the Best Supporting Actor category.
In 1999, Khan starred in three hit films: Hum Saath-Saath Hain: We Stand United, which reunited him with Sooraj Barjatya for the third time; Biwi No.1, which became the top grossing film that year; and Hum Dil De Chuke Sanam, which was a major critical success, and earned him another Best Actor nomination at the Filmfare.
[edit] 2000s
In 2000, Khan acted in films including Har Dil Jo Pyar Karega and Chori Chori Chupke Chupke. Chori Chori Chupke Chupke addressed the issue of surrogate childbirth; Khan played the role of a rich industrialist, who hires a surrogate mother after his wife becomes infertile. Critics noted his turn towards a more serious role, which reportedly had more substance in comparison to his previous roles.[11][12] In 2002 he starred in the delayed release Hum Tumhare Hain Sanam which was semi-hit at the box office.
Khan's following releases failed at the box office until he made a comeback in 2003 with Tere Naam. The film was a major earner and his performance was praised by critics, with film critic Taran Adarsh noting, "Salman Khan is exceptional in a role that fits him to the T. He breathes fire in sequences that demand uneasiness. But beneath the tough exterior lies a vulnerable person and this facet in particular comes to the fore in the latter reels. His emotional outbursts are splendid..."[13] He subsequently continued his success at the box office, with comedies like Mujhse Shaadi Karogi (2004) and No Entry (2005).[9] 2006 was an unsuccessful year for him when Jaan-E-Mann and Baabul both failed to do well at the box office.
Khan started 2007 with the ensemble film Salaam E Ishq which failed to do well at the box office. His next release Partner did very well at the box office, receiving a blockbuster verdict.[14] He next appeared in his first Hollywood movie, Marigold: An Adventure in India opposite American actress Ali Larter. Telling the love story of an Indian man and an American woman, the film was a major failure, both commercially and critically.
Khan starred in three films throughout 2008, all of which underperformed,[15] though his second film of the year, Heroes, met with praise from critics.
Khan hosted the second season of 10 Ka Dum in year 2009 which turned out to be even more successful than his first season as host of the game show in year 2008. The show got very high TRPs for Sony Entertainment Television and according to reports, the show helped Sony TV regain its third position in the Indian television ratings.[16]
Khan's first film of 2009, Wanted directed by choreographer turned director Prabhu Deva was declared a smash hit in its first weekend of release itself. The action film turned out to be a huge success. The movie got more recognition for its slick action sequences performed by the actor himself. In the same year, he appeared in two other films, Main Aurr Mrs Khanna and London Dreams, both of which were failures at the box office.
[edit] 2010s
Khan's first release of 2010, Anil Sharma's Veer underperformed at the box office. Khan's recent film, Dabangg produced by his brother Arbaaz Khan, was released on September 10, 2010. It made a record opening at the box office[17] and was declared an all time blockbuster and the second-highest grossing Indian movie of all-time.[18] For his performance in Dabangg, Khan received his first Star Screen Award for Best Actor and first Stardust Award for Star of the Year – Male and was nominated for his sixth Filmfare Award for Best Actor.
Additional proof and documentation of his celebrity status, numerous activities, use of the term in connection with commercial activities and his rights to use his own personal name are provided and demonstrated by a search conducted on the search engine GOOGLE which returns approximately 34,300,000 search results for the term “Salman Khan.”
[a.] The domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i).
Complainant has rights in the <Salman Khan> mark by virtue of the facts that (1) the term is Complainant’s personal name, (2) Complainant has made long, exclusive and continuous use of the mark in commerce over the past two decades and longer. To the extent that Complainant’s mark is not inherently distinctive, said use has resulted in Complainant marks having acquired distinctiveness.
Complainant’s numerous usages (described herein) of the term <Salman Khan> provide evidence that Complainant is a public figure, and that such public recognition proves the secondary meaning that Complainant enjoys, in both his name and surname, which is sufficient to establish common law trademark rights in Complainant’s name and surname.
Complainant owns common law trademarks rights in <Salman Khan>. Use of <Salman Khan> as described and referenced above unequivocally supports Complainant’s claim of common law trademark rights in <Salman Khan> Moreover, the substantial fame that Complainant enjoys in his persona and in the “Salman Khan name” only supports the conclusion that the <Salman Khan> trademark is a strong mark, where the public is even more likely to recognize <Salman Khan> as a trademark signifying a single source of Complainant’s goods and services.
Although Complainant does not, as an individual, have a registered trademark in the mark <Salman Khan>. Complainant asserts common law rights in the <Salman Khan> mark, which is also Complainant’s personal name. Complainant is a famous celebrity who also uses the <Salman Khan> mark in connection with the marketing of commercial products/services, charitable services, educational services, published works, and public speaking services. In order to garner the benefit of common law trademark rights, Complainant presents substantial evidence of extensive and continuous use of the mark in commerce, and that as a result of such exposure, that consumers have come to associate the mark with Complainant, as to the source of the goods.
The above cited recitation of media saturation of the <Salman Khan> name and persona, as well as his high visibility in entertainment, business activities, services and activities constitute substantial evidence to establish that the <Salman Khan> mark functions as a specific identifier of Complainant’s products and services, such as to establish that the marks have a secondary meaning in the minds of consumers. This secondary meaning in the <Salman Khan> mark establishes common law rights for purposes of Policy 4(a)(i). See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that a 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.”)
A substantial number of UDRP precedents as well as Federal case law precedents conclusively demonstrate that the Complainant has rights in his name in this situation. Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Complainant has common law rights to her name). See Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding Respondent’s domain name, <karlalbrecht.com>, identical to Complainant’s common law mark). See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the complainant have rights in a registered trademark but that it is sufficient to show common law rights and holding that the complainant has common law rights to her name). See CMG Worldwide, Inc. v. Lombardi, FA 95966 (Nat. Arb. Forum Jan. 12, 2001) (finding that the complainant had established enforceable rights in the common-law VINCE LOMBARDI name and mark); 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 …”); see also Garnett v. Trap Block Techs., FA 128073 (Nat. Arb. Forum Nov. 21, 2002) (holding that the complainant had accrued common law rights in the KEVIN GARNETT mark). See Garnett v. Trap Block Techs., Id.
The Complainant’s exclusive use of the mark in addition to its wide public dissemination, has caused the name to acquire a secondary meaning. A significant portion of the public associates the name and mark with the Complainant. The Respondent’s domain name is identical to the Complainant’s mark. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that Respondent’s domain name <charlesjourdan.com> is identical to Complainant’s marks). See also Dr. Michael Crichton v. In Stealth Mode D2002-0874 (WIPO), Cases where Panels found that individuals have trademark rights even where their names are not registered as trademarks: NAF/FA97112 (stephanieseymour.com, ''her fame as a supermodel and actress evidences a reputation worthy of protection under common law trademark laws''); NAF/FA95465 (karlalbrecht.com, author of books and articles on business and marketing); WIPO/D2000-0402 (stevenrattner.com, high profile investment banker); WIPO/D2000-0235 (jeanettewinterston.com,.net and.org, well-known British author); WIPO/D2000-0229 (choyoungpil.com, famous Korean pop music artist); NAF/FA95261 (mickjagger.com, famous American singer); NAF/FA95110 (brittanyandrews.com, "internationally known actress, model, public speaker, and feature entertainer'"); DEC/AF-303 (annemclellan.com, annemclellan.org, senior Canadian government official).
The Policy does not exclude unregistered marks from the sphere of protection. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding the Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”). Personal names or surnames may be protected as trademarks if such names have acquired distinctiveness, i.e. a complainant must demonstrate that, “in the minds of the public, the primary significance of [the mark] is to identify the source of the product rather than the product itself.” Inwood Labs. v. Ives Labs., 456 U.S. 844, 851, n.11 (1982). See McCarthy on Trademarks and Unfair Competition, § 13:1 (4th ed. 2002) (stating that there is protection of personal names when there is secondary meaning); see also Riley v. so so domains, D2003-0600 (WIPO Sept. 24, 2003) (“[P]ersonal names may enjoy protection against identical or confusingly similar domain names if the name has sufficient notoriety and distinctive character in connection with the goods offered by complainant.). See also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding the Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).
In numerous situations under the Policy, unregistered celebrity names have been protected. As stated in Luca Laurenti v. Director., FA 243460 (Nat. Arb. Forum May 7, 2004), “[u]nregistered celebrity names or marks used in conjunction with celebrity personalities have been consistently held to maintain common law trademark rights under the Policy.” See also Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (Complainant held common law trademark rights in his famous name MICK JAGGER); see also Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (finding that 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”). Unregistered celebrity names or marks have been consistently held to maintain common law trademark rights under the Policy when used in conjunction with celebrity personalities and the services provided therewith. See also Gardner's Super Markets Inc. v. Ambassa Holdings, Inc., D2002-0253 (WIPO June 14, 2002). See Ahmanson Land Co. v. Curtis, D2000-0859 (WIPO Dec. 4, 2000) (“In finding secondary meaning, courts consider factors such as the owner's long, continued use of the mark and its widespread public recognition, the size of the company, the number of customers, advertising expenditures, and unsolicited media coverage of the services and the mark.”).
The disputed domain name, <SalmanKhan.com> is identical to Complainant’s <Salman Khan> mark pursuant to Policy ¶4(a)(i) because the name incorporates the mark in its entirety without modification. The absence of a space or the addition of the generic top-level domain “.com” is immaterial under the Policy. 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 Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The addition of the top-level domain “.com,” is immaterial under the Policy. see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance). See also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademark CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”)
[b.] Respondent should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
Respondent is not known by the disputed domain name, does not transact in goods or services related to Complainant and is not authorized by Complainant to use his mark. These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interests in the disputed domain name on the part of Respondent.
Once Complainant makes a prima facie case in support of its allegations, the burden of production shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist)
The domain name in question is not a mark by which the Respondent is commonly known or is licensed to use. Policy ¶4(c)(ii). The Respondent has not used the domain name in connection with a bona fide offering of goods and services or is making a legitimate noncommercial or fair use of the site. Policy ¶4(c)(i), (iii). Therefore, the Respondent has no rights or legitimate interests in the domain name in question. See BIC Deutschland GmbH & Co. KG v. Tweed , D2000-0418 (WIPO June 20, 2000) also cite this case See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
UDRP panels have routinely examined WHOIS information in their determination of whether a registrant is known by the name in question. In the instant case, the WHOIS information identifies the registrant as “Whois Privacy Services Pty Ltd” which, of course, has no similarity to the term <Salman Khan>. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000); DIMC, Inc. v. Phan, D2000-1519 (WIPO Feb. 20, 2001) (rejecting the claim that the respondent was commonly known by the “Krylon” nickname since there was no evidence indicating when the alleged nickname was adopted and how it was used). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"). see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Where one selects a domain name that “gives rise to the impression of an association with the Complainant,” it is neither a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to paragraphs 4(c)(i) and (iii) of the Policy. Marino v. Video Images Prod., D2000-0598 (WIPO Aug. 2, 2000); see also Kasparov v. Am. Computer Co., FA 94644 (Nat. Arb. Forum May 30, 2000) (finding no legitimate rights and interests when Respondent used Complainant's name as a portal to a web site which, without permission, associated Complainant as an endorser of Respondent's causes). See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“[U]nauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).
Respondent does not offer any goods or services in conjunction with the disputed domain name. Respondent utilizes the disputed domain name to redirect Internet users to several websites which are unrelated to the Complainant. This is demonstrated in several screenshots of the website that appears on the domain name. The “portal” or “parking page” displays different advertisements and different links at different times on different days. At several times on the date of February 21, 2011 different webpages were displayed on the domain name. Different advertisers and different links appear at different times. The domain name is used as a portal and the registrant is not using the domain in a bona fide offering of goods or services for purposes of the Policy.
Such commercial use is neither a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”). In similar circumstances, the Panel in Stephanie Seymour v. Jeff Burgar d/b/a Stephanie Seymour Club, NAF Case No. FA0104000097112 held that by virtue of serving only as a portal, such a website "evidences no bona fide authorized offering of goods and services whatsoever and does nothing but misappropriate Complainant’s trademark in order to lure Internet users to Respondent’s commercial site". Likewise in Michael Andretti v. Alberta Hot Rods, NAF Case No. FA0108000099084.
Thus, by virtue of serving only as a portal, the site associated with the domain name at issue evidences no bona fide authorized offering of goods and services whatsoever and does nothing but misappropriate Complainant’s trademark in order to lure Internet users to Respondent’s commercial site. See Garth Brooks v Commbine.com, LLC, FA 96097 (Nat. Arb. Forum Jan. 12, 2001) (finding that Respondent’s explanation that the domain name was being used as a fan site for a legitimate noncommercial purpose was not plausible even though the site had no "banners" or links to its own or other commercial sites); see also Marino v. Video Images Prod., D2000-0598 (WIPO Aug. 2, 2000) (stating, "[I]n fact, in light of the uniqueness of the name <danmarino.com>, which is virtually identical to the Complainant’s personal name and common law trademark, it would be extremely difficult to foresee any justifiable use that the Respondent could claim. On the contrary, selecting this name gives rise to the impression of an association with the Complainant which is not based in fact."); see also Kasparov v. American Computer Co., FA 94644 (Nat. Arb. Forum May 30, 2000) (finding no legitimate rights and interests when Respondent used Complainant's name as a portal to a web site which, without permission, associated the Complainant as an endorser of Respondent's causes).
[c.] The domain name(s) should be considered as having been registered and being used in bad faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
Respondent registered, has used and continues to use the domain name at issue in bad faith because Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site and the activities therein. See Anne of Green Gable Licensing Authority, Inc. v. Internetworks, AF- 0109 (eResolution June 12, 2000) (finding bad faith where Respondent used the domain name <anneofgreengables.com> to link users to a web site that contains information about the Anne of Green Gables literary works, motion pictures and the author, L. M. Montgomery, where a visitor to the web site may believe that the owner of the mark ANNE OF GREEN GABLES is affiliated with or has sponsored or endorsed Respondent's web site); see also McLellan v. Smartcanuk.com, AF-0303 (eResolution Sept. 25, 2000) (finding bad faith where the domain name resolved to a website containing banner ads, a link to the Respondent’s website, and a brief history of the McLellen name).
Respondent is using the < SalmanKhan.com> domain name to operate a website featuring links to various other commercial websites for the purpose of collecting click-through fees for each Internet user connected to another website Respondent’s use of a domain name which is identical or confusingly similar to Complainant’s marks, is likely to lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting websites. Respondent is clearly hitching a free ride celebrity endorsement from a famous entertainer and celebrity to bolster the credibility of Respondent’s diversionary websites. Such use may be found to be evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); 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).
Furthermore, the fact that Respondent chose to register a domain name, which is identical to the name of a celebrity such as Complainant, and then use the name in connection with similar related content, creates a strong likelihood of initial interest confusion on the part of Internet users. The images and the associated links redirect a consumer to sites marketing automobiles and automobile-related products – which has been the precise basis for the fame and product/service offering of Complainant. This is further evidence of bad faith registration and use of the disputed domain name See Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated Complainant’s name); see also Harrods Ltd. v. Harrod’s Closet D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so obviously connected with well-known products, its very use by someone with no connection to these products can evidence opportunistic bad faith).
Respondent receives click-through fees for diverting Internet users to various related websites. Since Respondent’s domain name is identical to Complainant’s mark, consumers accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Respondent’s commercial use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).
Finally, due to the massive amount of media advertising of the disputed marks that it is only reasonable to presume that Respondent had at least constructive knowledge of the contested marks, in advance of the disputed domain name registration in. A simple search would reveal the considerable use of Complainant’s name in connection with the marketing of commercial goods and services. Respondent’s registration of the domain name < SalmanKhan.com>, with such actual or constructive knowledge of Complainant’s rights, amounts to bad faith registration and use pursuant to Policy ¶4(a)(iii). See Digi v. DDI Sys., FA 118313 (Nat. Arb. Forum, Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). See also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).
Respondent registered the disputed domain name in 1999, well after Complainant’s name and mark had been used in connection with entertainment and the Complainant’s products and services. The fact that Respondent has used the domain name to similar subjects and products supports the notion that Respondent not only had knowledge of Complainant’s mark prior to registering the domain name, but anticipated on capitalizing on the goodwill associated with the “Salman Khan” mark as a means of attracting Internet users to its website. Such registration and use has been found to be evidence of bad faith pursuant to Policy ¶4(a)(iii). See also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
The fact that Respondent chose to register the famous name of Complainant in the year 1999 approximately 11 years after Complainant began using his name as a service mark, indicates that Respondent registered the domain name with full knowledge of Complainant’s rights in the mark.
B. Respondent failed to submit a Response in this proceeding.
Complainant Salman Khan is the owner, having acquired common law rights, of the SALMAN KHAN mark. The mark is used in connection with Complainant’s extensive acting career, as well as related appearances, products, and services.
Respondent Frank Gerdes registered the disputed domain name on March 31, 1999. The <salmankhan.com> domain name resolves to a website which displays links to third-party websites. Some of these links compete with the services offered in connection with the SALMAN KHAN mark.
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 Complainant to 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.
In order for a complainant to prevail, it must establish it has rights in the mark. While registration of the mark is a common (and easily proven) basis for a claim of right, the registration of a mark is unnecessary if the complainant can demonstrate it has established common law rights in the mark. 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 Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant argues he has rights in the SALMAN KHAN mark because the mark has a long established secondary meaning, giving rise to common law rights. Continuous, ongoing use of a mark and the use of a mark in commerce years prior to the respondent’s registration of a disputed domain name have been found to demonstrate that secondary meaning exists. 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 Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding common law rights in the BOND DIAMONDS mark because the complainant had used the mark in commerce for twelve years before the respondent registered the <bonddiamond.com> domain name). Complainant argues the SALMAN KHAN mark has been used in connection with Complainant’s acting career since at least as early as 1988. This initial use predates Respondent’s registration of the disputed domain name by 11 years. Complainant has provided an excerpt from the Wikipedia website which describes Complainant’s achievements in the entertainment industry. In connection with his involvement in more than 80 Hindu films, Complainant has received a number of nominations and awards, including Filmfare’s “Best Male Debut” award and “Best Actor” award. As a result of Complainant’s continuous, ongoing use of its mark and initial use long predating Respondent’s registration of the <salmankhan.com> domain name, the Panel finds Complainant’s mark has achieved secondary meaning and Complainant has acquired common law rights in the SALMAN KHAN mark under Policy ¶4(a)(i).
Complainant also contends Respondent’s <salmankhan.com> domain name is identical to Complainant’s mark. Respondent has fully incorporated Complainant’s SALMAN KHAN mark and simply deleted the space and added the generic top-level domain (“gTLD”) “.com,” which are both required changes for a valid domain name. Panels have previously held the deletion of spaces and the addition of a gTLD in a domain name fails to prevent a finding the domain name is identical to the complainant’s mark. 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 finds Respondent’s changes to Complainant’s mark in the <salmankhan.com> domain name are insufficient to distinguish it from the SALMAN KHAN mark and the disputed domain name is identical to Complainant’s mark under Policy ¶4(a)(i).
The Panel Policy ¶4(a)(i) satisfied.
Complainant claims Respondent has neither rights nor legitimate interests in the <salmankhan.com> domain name. Once a complainant has made a prima facie case in support of its claims, the burden shifts to the respondent to disprove the complainant’s allegations. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c)); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech. Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”). The Panel finds Complainant has made a prima facie case in support of its contentions; Respondent has failed to submit a Response to the Complaint. The Panel will thus follow the decisions in cases such as Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), and Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000), which held the panel may make all reasonable inferences given the information available when the panel is without the benefit of a response from the respondent. Therefore, the Panel will look at the information on the record against the Policy ¶4(c) factors to determine if Respondent has any rights or legitimate interests in the <salmankhan.com> domain name.
A finding a respondent is commonly known by a disputed domain name confers rights or legitimate interests in the domain name on the respondent. In making this determination, past panels have held the WHOIS record for the disputed domain name, as well as the complainant’s assertions, is illustrative. 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 the respondent was commonly known by the disputed domain name). Complainant argues Respondent is not commonly known by the <salmankhan.com> domain name. Complainant argues Respondent is not licensed to use the SALMAN KHAN mark. Additionally, the WHOIS record lists “Frank Gerdes” as the domain name registrant. The Panel finds the available information supports Complainant’s claims. Without opposing evidence, the Panel finds Respondent is not commonly known by the <salmankhan.com> domain name pursuant to Policy ¶4(c)(ii).
Complainant next contends Respondent’s use of the <salmankhan.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. According to ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007), and TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the display of links, whether competing or noncompeting, is not a use protected by Policy ¶¶4(c)(i) and 4(c)(iii). The <salmankhan.com> domain name resolves to a website which displays links to competing and noncompeting links under headings such as “Salman Khan Movies,” “Bollywood News,” “Date Asian Woman,” and “Mountain House Foods.” The Panel finds Respondent’s display of competing and noncompeting links on the <salmankhan.com> domain name’s resolving website is neither a Policy ¶4(c)(i) bona fide offering of goods or services nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use.
The Panel finds Policy ¶4(a)(ii) satisfied.
Bad faith registration and use of a disputed domain is demonstrated by a respondent’s use of the domain name to disrupt the complainant’s business. The display of links promoting competing third parties at a disputed domain name has been held to be such a disruptive use. See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶4(b)(iii)). The <salmankhan.com> domain name resolves to a webpage which displays links to competing and noncompeting third-party websites. The display of these links on a domain name which is identical to Complainant’s mark will certainly divert some of Complainant’s expected Internet traffic to Respondent’s <salmankhan.com> domain name. The Panel finds Respondent’s <salmankhan.com> domain name disrupts Complainant’s business under the SALMAN KHAN mark pursuant to Policy ¶4(b)(iii).
Complainant lastly argues Respondent’s bad faith registration and use of the <salmankhan.com> domain name is evident due to Respondent’s intent to take commercial advantage of Internet users’ confusion as to the source, affiliation, or sponsorship of the disputed domain name. Respondent’s <salmankhan.com> domain name is identical to Complainant’s SALMAN KHAN mark. Internet users searching for Complainant who are faced with Respondent’s identical domain name will immediate assume the <salmankhan.com> domain name is in some way sponsored by or affiliated with Complainant. Upon entering the website, Internet users are faced with a variety of links. The Panel infers Respondent receives compensation for the Internet users it diverts through these links. Because many of these links offer services similar to those offered under the SALMAN KHAN mark, the Internet users will believe there is some connection between the disputed domain name and Complainant. As a result, the Internet users will click through the links, commercially benefiting Respondent. The Panel finds Respondent registered and uses the disputed domain name because of the potential for commercial gain, which reveals bad faith pursuant to Policy ¶4(b)(iv). See 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 from 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).”); see also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <salmankhan.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, November 15, 2011
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