Noah Cyrus v. Private Registration - bmon
Claim Number: FA1110001410854
Complainant is Noah Cyrus (“Complainant”), represented by Andrew D. Smith of IMM Inc., Florida, USA. Respondent is Private Registration - bmon (“Respondent”), Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <noahcyrus.com>, registered with Bargin Register, 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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 10, 2011; the National Arbitration Forum received payment on October 13, 2011.
On October 26, 2011, Bargin Register, Inc. confirmed by e-mail to the National Arbitration Forum that the <noahcyrus.com> domain name is registered with Bargin Register, Inc. and that Respondent is the current registrant of the name. Bargin Register, Inc. has verified that Respondent is bound by the Bargin Register, Inc. 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 31, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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@noahcyrus.com. Also on October 31, 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 29, 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:
[a.] UDRP Rule
3(b)(ix)(1); UDRP Policy ¶4(a)(i).
NoahCyrus.com domain name exactly matches both the legal and common law trademark for “Noah Cyrus”. This common law trademark has been used and is known worldwide through movies, music, tours, media and more.
[b.] UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
NoahCyrus.com is a very unusual name and was registered coinciding with
Disney’s Hannah Montana starring Noah, Noah’s sister (Miley Cyrus) and father
(Billy Ray Cyrus) exploding as the #1 show on Disney Channel in 2006. There
appears to be no legitimate reason that the registrant would register this
domain name except as a speculator (cyber squatter).
UDRP Policy ¶4(c):
There is no indication that the registrant has made any attempt to use NoahCyrus.com domain name for any bona fide offering of goods or services from 2006 to date.
The domain NoahCyrus.com was registered through a private registration process in the Cayman Islands to hide the registrants contact information.
We strongly believe that due to the timing and unusual name that the registrant has never been commonly known by Noah Cyrus or have any legitimate rights to the trademark.
[c.] UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
NoahCyrus.com was registered under a private registration in the Cayman Islands in 2006, the same year that Disney’s Hanna Montana (starring the Miley, Billy Ray and Noah Cyrus) became a #1 worldwide hit. The name is unusual enough to make it unreasonable that it was registered for any legitimate reason other than profit at a later date.
UDRP Policy ¶4(b):
We are unable at this time to determine if the registrant has engaged in a pattern of such conduct since the registration is private and all correspondence to the registrar has gone unanswered. Hopefully this process will be able to determine that through the registrar.
B. Respondent failed to submit a Response in this proceeding.
Complainant Noah Cyrus alleges common law rights in the NOAH CYRUS mark by virtue of its use and fame in the entertainment industry.
Respondent Private Registration – bmon registered the <noahcyrus.com> domain name on October 3, 2006. Complainant does not allege the use of the disputed domain name, stating only that it is not being used for any bona fide offering of goods or services.
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 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.
Complainant does not allege any registered trademark rights in the NOAH CYRUS mark. Previous panels, in SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000), and Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007), for example, have found that registration of a trademark is not required to establish rights in the mark if the complainant can prove common law rights in the mark. This Panel determines a trademark registration is not necessary under Policy ¶4(a)(i) for Complainant to prove rights in the mark.
Complainant argues she possesses common law rights in the NOAH CYRUS mark because it is the personal name of Noah Lindsey Cyrus, the sister of singer and actress Miley Cyrus. Complainant contends the NOAH CYRUS name and mark has been used extensively worldwide in connection with movies, music, tours, media, and more. Complainant claims the mark is famous and well-known as referring to the sister of superstar Miley Cyrus and the daughter of the country music star Billy Ray Cyrus. Complainant argues a search of worldwide media, publications, and public relations sources produces over 10 million relevant results, including references to the NOAH CYRUS at the <imdb.com> domain name, in a Wikipedia entry, and on various other websites and domain names. Complainant claims the NOAH CYRUS mark has been used in connection with touring with Miley Cyrus, including opening shows for international tours; performing roles in the movies Ponyo; Mostly Ghostly, Krunks New Groove, and Hannah Montana The Movie; appearing in the Hannah Montana, Doc , and Nashville Star TV shows; appearing in the music video “Face of God” and commercials for Mayfield Ice Cream; and performing in the Noie and Ems online show, as well as hundreds of appearances with family at events. The Panel finds this evidence is sufficient to prove continuous use and the subsequent acquisition of secondary meaning necessary to establish common law rights in the mark under Policy ¶4(a)(i). See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Bayless v. Cayman Trademark Trust, FA 648245 (Nat. Arb. Forum Apr. 3, 2006) (“The Panel concludes Complainant has proved that the RICK BAYLESS mark has become sufficiently connected to Complainant’s career as a chef and the public associates that career with Richard L. Bayless and the RICK BAYLESS mark.”).
Complainant claims Respondent’s <noahcyrus.com> domain name is identical to Complainant’s NOAH CYRUS mark. Previous panels have concluded neither a deleted space between terms nor the addition of the generic top-level domain (“gTLD”) “.com” is sufficient to prevent a disputed domain name from being identical to a mark. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark); see also 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”). The Panel finds Respondent’s <noahcyrus.com> domain name is identical to Complainant’s NOAH CYRUS for the purposes of Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant claims Respondent has neither rights nor legitimate interests in the <noahcyrus.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 barely made a prima facie case in support of her 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 <noahcyrus.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. While Complainant did not make this argument directly, the Panel will not ignore what is plainly in the record. In making this determination, past panels have held the WHOIS record for the disputed domain name 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). While not cleanly alleged by Complainant, it is clear from the record Respondent is not commonly known by the <noahcyrus.com> domain name. Additionally, the WHOIS record lists “Private Registration - bmon” as the domain name registrant. The Panel finds the available information supports Complainant’s claims. Under the circumstances of this case, it seems as though a nominee for an undisclosed real party in interest has not acquired any rights to the <noahcyrus.com> domain name. Without opposing evidence, the Panel finds Respondent is not commonly known by the <noahcyrus.com> domain name pursuant to Policy ¶4(c)(ii).
Complainant next contends Respondent’s use of the <noahcyrus.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Without more, the Panel finds Respondent’s use of the <noahcyrus.com> domain name 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.
Complainant claims Respondent had no motive to register the domain name, except to profit as a cyber squatter. If so, Respondent acquires no rights to the domain name. Respondent’s silence suggests Respondent was a cyber squatter who planned to profit from reselling this domain name.
The Panel holds Policy ¶4(a)(ii) just barely 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. No such claim has been made in this case.
Complainant claims Respondent had no motive to register the domain name, except to profit as a cyber squatter. Respondent’s silence suggests that is true.
Complainant essentially claims there is no possible good faith registration or use of the domain name. Respondent has not responded, leaving this assertion unopposed. It is difficult to hypothesize a good faith registration or use of the domain for commercial purposes when a nominee for an undisclosed principal holds the domain name registration. While there may be valid reasons to do so in the personal context, Respondent has failed to raise them here.
The Panel finds Policy ¶4(a)(iii) just barely 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 <noahcyrus.com> domain name BE TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: November 30, 2011
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