Nigel Lythgoe v. None
Claim Number: FA1112001418297
Complainant is Nigel Lythgoe (“Complainant”), represented by Victor K. Sapphire of Connolly Bove Loge & Hutz LLP, California, USA. Respondent is None (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nigellythgoe.com>, registered with GoDaddy.com, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2011; the National Arbitration Forum received payment on December 5, 2011.
On December 5, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <nigellythgoe.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2012 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@nigellythgoe.com. Also on December 13, 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 January 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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:
1. Respondent’s <nigellythgoe.com> domain name is identical similar to Complainant’s NIGEL LYTHGOE mark.
2. Respondent does not have any rights or legitimate interests in the <nigellythgoe.com> domain name.
3. Respondent registered and used the <nigellythgoe.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nigel Lythgoe, is the owner of the NIGEL LYTHGOE mark. The mark is Complainant’s name and is used by Complainant in connection with the directing and producing work done by Complainant on television shows and films.
Respondent, None, registered the disputed domain name on December 19, 2006. The <nigellythgoe.com> domain name resolves to a website which displays a variety of links, some of which compete with Complainant’s work in the entertainment industry.
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.
Complainant argues that it has rights in the NIGEL LYTHGOE mark. While Complainant does not have a registered trademark for the NIGEL LYTHGOE mark, the Panel finds that registration of a mark is unnecessary. 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 determine whether Complainant’s mark has acquired secondary meaning so as to provide Complainant with rights in the mark.
Complainant argues that its NIGEL LYTHGOE mark has acquired secondary meaning. Complainant uses its mark in connection with its television and film directing and production work. The mark began being used as early as 2001 in the United States and since as early as the late 1970s in Europe and throughout the rest of the world. Complainant has received several Emmy award nominations and a Grammy award nomination. Complainant received the 2007 Governor’s Award and the 2011 International Emmy “Founder’s Award” for television work. Complainant’s work in connection with the NIGEL LYTHGOE mark includes direction and production work in connection with shows such as “Pop Idol,” “American Idol,” and “So You Think You Can Dance.” Complainant contends that the viewership for shows it is involved with frequently ranks in the tens of millions, and its shows are frequently in the top three shows in each network broadcast season shortly after debuting. Complainant claims that its success has been cited as a primary reason for Fox Television’s rise to become the top-rated network in key demographics and for increasing ratings of shows preceding and succeeding Complainant’s shows. Complainant argues that its work has impacted the music industry, as well, as the contestants on some of Complainant’s shows launch music careers as a result. Complainant asserts that its most successful show, “American Idol,” is responsible for generating television advertising revenue of over $6 billion dollar plus revenue from album sales. The Panel therefore finds that Complainant’s NIGEL LYTHGOE mark has acquired secondary meaning and that Complainant has rights in the mark pursuant to Policy ¶ 4(a)(i). 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 and that it is sufficient to show common law rights in holding that the complainant has common law rights to her name); see also Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (the complainant held common law trademark rights in his famous name MICK JAGGER).
Complainant argues that the <nigellythgoe.com> domain name is identical to Complainant’s NIGEL LYTHGOE mark. Panels have found that when a Respondent makes no changes beyond the deletion of spaces between words and the addition of a generic top-level domain (“gTLD”) that the disputed 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 Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark). The <nigellythgoe.com> domain name is constructed of Complainant’s mark without the spaces between the two words and with the gTLD “.com” attached. Respondent makes no alterations to Complainant’s mark beyond these changes. Therefore, the Panel finds that Respondent’s <nigellythgoe.com> domain name is identical to Complainant’s NIGEL LYTHGOE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant argues that Respondent has neither rights nor legitimate interests in the disputed domain name. Once a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to provide evidence to the contrary. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); 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 that Complainant has made a prima facie case in support of its assertions. Respondent thus bears the burden of disproving the claims which Complainant has made against it. Respondent, however, has failed to submit a Response to the Complaint. Given this silence, the Panel will proceed, making all reasonable inferences from the available information. 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) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). As such, the Panel will review the record for any circumstances which may confer rights or legitimate interests on Respondent.
Complainant argues that Respondent is not commonly known by the disputed domain name. The WHOIS record for the <nigellythgoe.com> domain name lists “None” as the domain name registrant. The Panel finds that the domain name registrant listing does not reflect the disputed domain name or visa versa. Complainant argues that Respondent is not a licensee of Complainant, related to Complainant, or otherwise authorized to use the NIGEL LYTHGOE mark. The Panel finds that Complainant’s contentions and the WHOIS listing for the <nigellythgoe.com> domain name demonstrate that Respondent is not commonly known by the <nigellythgoe.com> domain name pursuant to Policy ¶ 4(c)(ii). 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 Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent was not commonly known by the disputed domain names where it maintained the domain name registrations on the complainant’s behalf and then appropriated the disputed domain names for itself, without permission from the complainant).
Complainant next asserts that the use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant alleges that the disputed domain name resolves to a website which features a variety of goods and services, some of which compete with the Complainant’s goods and services. Screenshots demonstrate that these links and services are advertised via links with headings such as “You Think You Can Dance,” “Total Body Conditioning,” and “Brave Heart Women.” Panels have held in ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), and Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), that a respondent that uses a disputed domain name to display links to various goods and services does not have rights or legitimate interests in the domain name. The Panel finds that Respondent’s display of links on the <nigellythgoe.com> domain name is neither a Policy ¶¶ 4(c)(i) and 4(c)(iii) bona fide offering of goods or services nor a legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant contends that Respondent’s registration and use of the disputed domain name was done in bad faith as evidenced by its intent to disrupt Complainant’s business. Respondent displays a variety of links on the resolving website of the <nigellythgoe.com> domain name such as “K Shoes” and “You Think You Can Dance.” Some of these links promote goods or services which Complainant provides in connection with its mark. Additionally, the <nigellythgoe.com> domain name is identical to Complainant’s mark, and there is a strong likelihood that Internet users will be diverted from Complainant and arrive instead at Respondent’s <nigellythgoe.com> domain name. Panels have found that the display of links to competing goods and services on a disputed domain name is disruptive to a complainant. See 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)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). Therefore, the Panel finds that Respondent’s registration and use of the disputed domain name is disruptive to Complainant under Policy ¶ 4(b)(iii).
Complainant claims that Respondent’s registration and use of the disputed domain name was also a product of Respondent’s desire to cause confusion as to the source or sponsorship of the <nigellythgoe.com> domain name. The <nigellythgoe.com> domain name is identical to Complainant’s NIGEL LYTHGOE mark. Internet users searching for Complainant are therefore likely to instead happen upon the disputed domain name. Given that the resolving website simply promotes links such as “$.09/pcs Poly Shoe Covers” and “Kim Kardashian’s Shoes,” the Internet users will become confused as to whether Complainant is associated with the disputed domain name. However, because the list of links includes headings such as “Learn to Ballroom Dance” and “You Think You Can Dance,” which are competing with those services Complainant uses its mark in connection with, the Internet users will defer to these links and form a belief that Complainant is the sponsor of the disputed domain name and may click through the links displayed. The Panel infers that Respondent is compensated for the Internet traffic which clicks through these links. Therefore, the Panel finds that Respondent’s registration and use of the disputed domain name was done in order to attract and confuse Internet users as to the source of the disputed domain name and to commercially benefit from this confusion pursuant to Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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).”).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the NIGEL LYTHGOE mark. Complainant asserts that Respondent’s motivation for registering and using the disputed domain name, to disrupt Complainant’s business and to take advantage of Internet users’ mistakes, demonstrates that Respondent knew of Complainant and its rights in the NIGEL LYTHGOE mark because Respondent chose a domain name which may actually be sought out by Internet users. While constructive notice has not generally been held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nigellythgoe.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 11, 2012
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