national arbitration forum

 

DECISION

 

Disney Enterprises, Inc. and American Broadcasting Companies, Inc. v. J Kimmel

Claim Number: FA1110001410423

 

PARTIES

Complainants are Disney Enterprises, Inc. and American Broadcasting Companies, Inc. (collectively “Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA.  Respondent is J Kimmel (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <jimmykimmelabc.com>, registered with GoDaddy.com.

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 5, 2011; the National Arbitration Forum received payment on October 5, 2011.

 

On October 6, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <jimmykimmelabc.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name.  GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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@jimmykimmelabc.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 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

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 <jimmykimmelabc.com> domain name is confusingly similar to Complainant’s ABC mark.

 

2.    Respondent’s <jimmykimmelabc.com> domain name is confusingly similar to Complainant’s JIMMY KIMMEL LIVE mark.

 

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

 

4.    Respondent registered and used the <jimmykimmelabc.com> domain name in bad faith.

 

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

 

FINDINGS

Disney Enterprises, Inc. and American Broadcasting Companies, Inc. are the owners of the JIMMY KIMMEL LIVE and ABC marks, respectively. American Broadcasting Companies, Inc. has several registrations for the ABC mark (e.g., Reg. No. 755,703 registered August 27, 1963) with the United States Patent and Trademark Office (“USPTO”). Disney Enterprises, Inc. has established common law rights in the JIMMY KIMMEL LIVE mark. The marks are used in connection with operating a major United States television network and a variety of goods and services including the promotion of television shows, including the talk show, Jimmy Kimmel Live.

 

Respondent, J Kimmel, registered the disputed domain name on May 31, 2011. The <jimmykimmelabc.com> domain name currently resolves to a website which simply displays a banner that the domain name is for sale. The <jimmykimmelabc.com> domain name previously redirected Internet users to Complainant’s website.

 

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.

 

Preliminary Issue: Multiple Complainants

 

The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e).  UDRP Rule 3(a) states, “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.”

 

There are two complaining parties in this matter: Disney Enterprises, Inc. and American Broadcasting Companies, Inc. American Broadcasting Companies, Inc. is the owner of the ABC mark. Disney Enterprises, Inc. is the parent company of American Broadcasting Companies, Inc.  

 

The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other.  For example, in Vancouver Organizing Comm. for the 2010 Olympic and Paralymic Games and Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.  Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. 

 

The Panel concludes that the evidence in the record is sufficient to establish a sufficient nexus or link between each complaining party and therefore will consider them as a single entity in this proceeding. 

 

Identical and/or Confusingly Similar

 

Complainant argues that it has rights in the ABC mark. The registration of a mark with a federal trademark authority is an adequate basis upon which a complainant may successfully assert its rights in the mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Complainant has provided the Panel with evidence of its extensive registrations of the ABC mark (e.g., Reg. No. 755,703 registered August 27, 1963) with the USPTO. Therefore, the Panel finds that Complainant has rights in the ABC mark for the purposes of Policy ¶ 4(a)(i).

 

While registration of a mark is one way of establishing rights in a mark, the registration of a mark is unnecessary for such a finding. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). The Panel will thus determine whether secondary meaning has been established in regard to Complainant’s JIMMY KIMMEL LIVE mark.

 

Complainant argues that its JIMMY KIMMEL LIVE mark has established secondary meaning. Continuous, ongoing use and public awareness have been found by past panels to generate association with a mark sufficient for a finding of secondary meaning. 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 Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001)("setting aside the contrary statements about the date of Complainant's first actual use, the mere claim of use is not enough to establish rights. Use must be in a manner sufficiently public to create some public awareness.").

 

Complainant has been using the JIMMY KIMMEL LIVE mark since 2003 when the talk show began airing. The show is now in its eighth year of programming. The show includes celebrity interviews, musical acts, and comedy routines by its Emmy Award winning host, Jimmy Kimmel. Due to the longevity of the show as well as the notable guests and host, the Panel finds that the JIMMY KIMMEL LIVE mark has established widespread public awareness. Complainant has copyrights with the United States Copyright Office for various episodes of the talk show which are based on the JIMMY KIMMEL LIVE mark. The Panel finds that Complainant’s continuous, ongoing use and public awareness surrounding the talk show give the JIMMY KIMMEL LIVE mark secondary meaning, and thus that Complainant has common law rights in the JIMMY KIMMEL LIVE mark under Policy ¶ 4(a)(i).

 

Complainant next argues that the <jimmykimmelabc.com> domain name is confusingly similar to its ABC and JIMMY KIMMEL LIVE marks. The Panel finds that Respondent’s combination of two of Complainant’s marks increases the confusing similarity of the domain name.  See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”).

 

Additionally, Respondent’s domain name uses the JIMMY KIMMEL LIVE mark only eliminating the last term, “LIVE.” However, because of the public awareness of the talk show and the fact that the show’s host’s name is “Jimmy Kimmel,” the Panel finds that the confusing similarity of the domain name is not alleviated by this change. See American Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). Respondent has also deleted the spaces in and between Complainant’s marks and added the generic top-level domain (“gTLD”) “.com.” Each of these changes is required in domain names and thus have consistently been held to not negate a finding of confusing similarity. See American Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); 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 Policy ¶ 4(a)(i)). Therefore, the Panel finds that the <jimmykimmelabc.com> domain name is confusingly similar to Complainant’s marks.

 

The Panel finds that Policy ¶ 4(a)(i) is met.

 

Rights or Legitimate Interests

 

Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name. When a complainant makes a prima facie case in support of its claims, the burden shifts to the respondent to disprove what the complainant has put forth. 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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”).

 

Where, however, the respondent has not provided the panel with the benefit of a response, the panel is to make a determination of the respondent’s rights and legitimate interests based upon the assumption that respondent has neither. See 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.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). The Panel finds that Complainant has made a prima facie case in support of its allegations and will review the record to determine if Respondent has any rights or legitimate interests in the disputed domain name.

 

Complainant argues that Respondent is not commonly known by the disputed domain name. The WHOIS record for the <jimmykimmelabc.com> domain name lists “J Kimmel” as the domain name registrant. While this seems to suggest that Respondent is commonly known by the disputed domain name, without more, this is insufficient to find in favor of Respondent under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).

Complainant argues that Respondent’s previous use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <jimmykimmelabc.com> domain name previously redirected Internet users to Complainant’s website. The Panel finds that Respondent’s diverting of Internet users through its own domain name demonstrates Respondent’s lack of rights and legitimate interests in the disputed domain name as not offering bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (holding that the respondent was attempting to build up “mistaken confidence” in the disputed domain name by having it resolve to the complainant’s official website and that an unconnected party has no right or legitimate interest to use an otherwise deceptive trademark, name or indicia to redirect Internet traffic, even if it is directed to the legitimate owner of the trademark”); see also MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding that “the linking of the disputed domain name to the Complainant’s commercial website is not a legitimate non-commercial or fair use of the domain name” and that the respondent’s use “cannot give rise to a right or legitimate interest in the disputed domain name”).

Complainant has submitted email correspondence between it and Respondent in which Respondent offered to sell the domain name for $10,000.  The offering of a domain name for sale in such a manner is not 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).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name). 

 

The Panel finds that Policy ¶ 4(a)(ii) is met.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s bad faith registration and use of the disputed domain name is demonstrated by its willingness to sell the domain name. In an e-mail sent to Complainant by Respondent, Respondent offers the amount of $10,000 for the Complainant to buy the <jimmykimmelabc.com> domain name from Respondent. The Panel infers that this exceeds the out-of-pocket costs Respondent incurred from acquisition of the disputed domain name. Additionally, the disputed domain name currently resolves to a website which contains no content except for a banner which pronounces that the domain is for sale. The Panel therefore determines that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).

The disputed domain name previously diverted Internet users to Complainant’s website.  Using a disputed domain name to resolve to Complainant’s official website is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See McKinsey Holdings, Inc. v. Mgr. Jakub Bystron, FA 1330650 (Nat. Arb. Forum July 23, 2010) (finding that Respondent's use of the  <mckinsey.us> domain name to resolve to Complainant’s official website was further evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also MySpace, Inc. v. Mari Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when "Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant.").

The Panel finds that Policy ¶ 4(a)(iii) is met.

 

DECISION

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

 

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

 

 

Bruce E. Meyerson, Panelist

Dated:  November 11, 2011

 

 

 

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