Ryan O'Neal v. Ronald Garcia
Claim Number: FA1112001419531
Complainant is Ryan O'Neal (“Complainant”), represented by Howard H. Weller of Mitchell Silberberg & Knupp LLP, New York, USA. Respondent is Ronald Garcia (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ryanoneal.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 9, 2011; the National Arbitration Forum received payment on December 12, 2011.
On December 12, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ryanoneal.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 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 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@ryanoneal.com. Also on December 21, 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 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ryanoneal.com> domain name is identical to Complainant’s RYAN O’NEAL mark.
2. Respondent does not have any rights or legitimate interests in the <ryanoneal.com> domain name.
3. Respondent registered and used the <ryanoneal.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ryan O'Neal, is an Academy Award and Golden Globe Award nominated actor that has been featured in many films and television shows. Complainant first began using his name and mark in a television soap opera role in 1964.
Respondent, Ronald Garcia, registered the <ryanoneal.com> domain name on April 14, 2003. Respondent’s domain name resolves to Respondent’s website where he promotes a memoir that he wrote and seeks to publish, which is unrelated to Complainant.
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 has not presented the Panel with evidence of a trademark that it owns, but rather Complainant contends that common law rights are sufficient under Policy ¶ 4(a)(i). Several prior UDRP panels have determined that a complainant need not own a trademark registration to establish protectable rights under Policy ¶ 4(a)(i). 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)).
Complainant has presented overwhelming evidence to show that it has used its name in the public for television and movies since at least 1964. Complainant notes that its career began in 1964 with his first major television role on the soap opera, Peyton Place. Complainant further submits evidence that it was in the following movies: What’s Up Doc (1971) with Barbra Streisand; The Thief Who Came to Dinner (1973) with Jacqueline Bisset; Paper Moon (1973) with his daughter Tatum O’Neal; Faithful (1996) with Cher and Robert DeNiro; and many more films. Complainant has also submitted movie reviews spanning from the 1970s, as well as movie posters and advertisements bearing his RYAN O’NEAL name and mark. The Panel finds that Complainant has presented sufficient information for him to establish common law rights under Policy ¶ 4(a)(i) in his name and mark, RYAN O’NEAL. See James v. Demand Domains, FA 1106240 (Nat. Arb. Forum Dec. 27, 2007) (“The AMI JAMES mark has become distinct through Complainant’s use and exposure of the mark in the marketplace and through use of the mark in connection with Complainant’s television show, clothing line, and tattoo shop for over seventeen years.”); see also Iacocca v. Tex. Int’l Prop. Assocs., FA 1088017 (Nat. Arb. Forum Nov. 29, 2007) (“Media saturation of the Iacocca name and persona, as well as his high visibility in grassroots campaigns, philanthropic activities and educational institutions constitute credible evidence to establish that the LEE IACOCCA marks function 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.”).
Respondent’s <ryanoneal.com> domain name is identical to Complainant’s RYAN O’NEAL mark. The Panel notes that the only differences between the domain name and Complainant’s mark are the removal of the space between the terms and the removal of the apostrophe. The domain name also adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that these changes are not sufficient to create a domain name distinct from Complainant’s mark under Policy ¶ 4(a)(i). See 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 also Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have rights or legitimate interests in the <ryanoneal.com> domain name. Under Policy ¶ 4(a)(ii), Complainant is required to produce a prima facie case in support of its allegations and then the burden shifts to Respondent to prove it possesses rights or legitimate interests in the disputed domain name. The Panel finds Complainant has adequately established a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not possess rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 2, 2002) (“Because Complainant’s submissions constitute a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its right or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fan Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant alleges that it has not authorized Respondent to use its mark. The WHOIS information for the disputed domain name identifies “Ronald Garcia” as the registrant. Therefore, the Panel finds that based upon the WHOIS information and Complainant’s arguments, Respondent is not commonly known by the <ryanoneal.com> domain name under 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant submits evidence to show that the disputed domain name resolves to Respondent’s website at <ronaldgarcia.webstarts.com>, which advertises Respondent’s “childhood memoir” for which it is seeking a publisher. Complainant contends that such use does not constitute rights and legitimate interests in the domain name. The Panel agrees and finds that Respondent’s use of the disputed domain name for a purpose unrelated to Complainant as discussed above 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 Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Lastly, Complainant submits correspondence between it and Respondent showing that Respondent was willing to sell the domain name to Complainant. The Panel notes that in these emails Respondent does not request a certain price but states that if Complainant really is the actor RYAN O’NEAL, it should make an offer for the domain name. The Panel finds that this offer to sell the domain name to Complainant is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that the offer to sell the domain name to Complainant is also evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a panel should not “put much weight on the fact that it was the Complainant who contacted Respondent to see if it was interested in selling the domain name”).
Further, Respondent is using a domain name identical to Complainant’s mark to redirect Internet users to its own website with commercial intent. Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ryanoneal.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 25, 2012
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