Jaclyn Smith and Jaclyn Smith International Inc. v. Baldemia c/o Chris Baldwin
Claim Number: FA1208001458049
Complainant is Jaclyn Smith and Jaclyn Smith International Inc. (“Complainant”), represented by Stephen J. Strauss of Fulwider Patton LLP, California, USA. Respondent is Baldemia c/o Chris Baldwin (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jaclynsmith.net> and <jaclynsmith.org>, registered with Godaddy.Com, Llc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 14, 2012; the National Arbitration Forum received payment on August 14, 2012.
On August 16, 2012, Godaddy.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <jaclynsmith.net> and <jaclynsmith.org> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, Llc 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 August 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 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@jaclynsmith.net and postmaster@jaclynsmith.org. Also on August 16, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants: Jaclyn Smith and Jaclyn Smith International Inc. Complainant Jaclyn Smith assigned rights in her name and likeness to Complainant Jaclyn Smith International Inc., which owns trademark registrations for the JACLYN SMITH mark. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny 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.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep 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 Complaint is sufficient to establish a sufficient nexus or link between the Complainants. Therefore, the Panel shall treat them as a single entity in this proceeding. Throughout the Decision, the Complainants will be collectively referred to as “Complainant.”
A. Complainant
Complainant Jaclyn Smith is a globally famous figure in the television and motion picture industry, as well as a clothing and domestic product designer. Complainant has appeared in over fifty movies and television programs and her career has spanned over forty years. Complainant Jaclyn Smith operates a website at the domain name <jaclynsmith.com>, which promotes her clothing line, skin care line, and home furnishings business. Complainant Jaclyn Smith assigned rights in her name, likeness, and image to Complainant Jaclyn Smith International, Inc., which uses the JACLYN SMITH mark in connection with clothing, skin care, and home furnishings. Complainants have used the JACLYN SMITH mark since 1985 and own rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,382,436 registered February 11, 1996). Complainants also own trademark registrations with other global agencies such as the European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 003861218 registered September 27, 2005).
Respondent registered the <jaclynsmith.net> domain name on January 23, 2009, and the <jaclynsmith.org> domain name on April 24, 2010. The <jaclynsmith.net> domain name resolves to a commercial website that uses the JACLYN SMITH mark and hosts advertisements that provide links to websites that offer unrelated goods or services. The <jaclynsmith.org> domain name resolves to a website that uses a generic search engine and links to websites selling furniture in competition with Complainant’s home furnishings products. Respondent has registered multiple other domain names incorporating names of famous personalities such as <alberteinstein.us>, <katewalsh.net>, and <andygriffith.org.>. Respondent does not have any rights or legitimate interests in the <jaclynsmith.net> and <jaclynsmith.org> domain names or the JACLYN SMITH mark. The disputed domain names are identical to Complainant’s JACLYN SMITH mark. Complainant has no relationship with Respondent and has not authorized Respondent to use its mark to register a domain name. Respondent is not commonly known by either of the disputed domain names. Respondent’s use of the disputed domain names is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, and demonstrates Respondent’s bad faith. Respondent makes a commercial profit by receiving “click-through” fees for redirecting Internet users to the hyperlinked websites on the resolving page. Respondent registered the disputed domain names to prevent Complainant from using its mark in a domain name. Respondent passively holds the <jaclynsmith.org> domain name, which is evidence of bad faith registration and use. Respondent had actual and constructive knowledge of Complainant’s rights in its JACLYN SMITH mark prior to registering the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant Jaclyn Smith is a globally famous figure in the television and motion picture industry, as well as a clothing and domestic product designer. Complainants has used the JACLYN SMITH mark since 1985 and own rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,382,436 registered February 11, 1996) and other global agencies such as the European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 003861218 registered September 27, 2005).
Respondent registered the <jaclynsmith.net> domain name on January 23, 2009, and the <jaclynsmith.org> domain name on April 24, 2010. The <jaclynsmith.net> domain name resolves to a commercial website that uses the JACLYN SMITH mark and hosts advertisements that provide links to websites that offer unrelated goods or services. The <jaclynsmith.org> domain name resolves to a website that uses a generic search engine and links to websites selling furniture in competition with Complainant’s home furnishings products.
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."
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.
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.”).
Complainant owns rights in its JACLYN SMITH mark pursuant to Policy ¶ 4(a)(i) through its numerous trademark registrations, including registrations with the USPTO (e.g., Reg. No. 1,382,436 registered February 11, 1996) and OHIM (Reg. No. 003861218 registered September 27, 2005). JACLYN SMITH mark See Direct Mktg. Co. S.p.A. v. Morelli, D2010-1335 (WIPO Sept. 6, 2010) (finding Complainant’s European Union Office for the Harmonization of the Internal Market (“OHIM”) trademark registration sufficient to establish complainant’s rights in its GIORNO NOTTE mark under Policy ¶ 4(a)(i)); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
The <jaclynsmith.net> and <jaclynsmith.org> domain names are identical to the JACLYN SMITH mark. The disputed domain names both incorporate the entire JACLYN SMITH mark. The disputed domain names do not include the space between the words of the mark and each includes the generic top-level domain (“gTLD”) “.net” and “.org,” respectively. The Panel finds that the disputed domain names are identical to Complainant’s JACLYN SMITH mark despite the removal of the space in the mark and the addition of a gTLD, for the purposes of Policy ¶ 4(a)(i). 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”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Respondent is not commonly known by either of the <jaclynsmith.net> and <jaclynsmith.org> domain names and Respondent does not have permission to use Complainant’s mark. The WHOIS information for each of the domain names identifies “Baldemia / Chris Baldwin” as the registrant. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel stated that because the complainant did not authorize the respondent’s use of its mark in a domain name, and the WHOIS information identified the registrant with a different name, the respondent was not commonly known by the disputed domain name.
Complainant argues that Respondent’s use of the <jaclynsmith.net> domain name to host a commercial website with hyperlinks to entities offering unrelated goods and services is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. The Panel finds that featuring hyperlinks to unrelated businesses at the resolving website is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)). The Panel finds that Respondent is not commonly known by the <jaclynsmith.net> and <jaclynsmith.org> domain names for the purposes of Policy ¶ 4(c)(ii).
Respondent uses the <jaclynsmith.org> domain name to host an inactive website that displays a generic search engine and links to third-party websites whose products compete with Complainant’s home furnishing products. By hosting hyperlinks to competing products at the resolving website, Respondent is not making 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant asserts that Respondent has a history of registering domain names using marks belonging to third parties, and identifies five other domain names incorporating the names of celebrity that it alleges Respondent registered. Complainant argues that Respondent’s unauthorized registration of the disputed domain names in the present case blocks Complainant’s ability to use its mark in a domain name, demonstrating bad faith registration and use pursuant to Policy ¶ 4(b)(ii). In Kabushiki Kaisha Toshiba v. Tel. Island, D2004-0711 (WIPO Nov. 15, 2004), the panel held that the respondent registered and used the disputed domain name in bad faith because the respondent registered the domain name to prevent the complainant from reflecting its marks in a domain name. The Panel finds that Respondent’s registration of two disputed domain names in the present case and registration of multiple other domain names using celebrities’ names provides sufficient evidence that Respondent registered and uses the disputed domain names in a pattern of bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant contends that Respondent’s registration and use of the <jaclynsmith.org> domain name to purposely attract and mislead Internet users for its own commercial benefit thereby is evidence of Respondent’s bad faith registration and use. Complainant asserts that Respondent derives commercial benefit from the <jaclynsmith.org> domain name by redirecting Internet users to the competing hyperlinked websites. The Panel finds that by commercially benefiting as a result of confusing and misleading Internet traffic to the resolving website at the <jaclynsmith.org> domain name, Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant argues that Respondent registered the <jaclynsmith.net> domain name in bad faith to intentionally attract and mislead Internet consumers. The domain name includes hyperlinks to unrelated websites that may generate income for Respondent. The panel in Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007), stated that Internet users would likely be confused as to the sponsorship of the disputed domain name because the respondent diverted Internet traffic to a website with unrelated hyperlinks and was likely receiving click-through fees. The finds that Respondent demonstrates bad faith registration and use of the <jaclynsmith.net> domain name under Policy ¶ 4(b)(iv) by misleading Internet users to its website using a confusingly similar domain name in order to make a profit.
Complainant argues that Respondent’s passive holding of the <jaclynsmith.org> domain name constitutes bad faith registration and use. The Panel notes that the disputed domain name resolves to a website that contains hyperlinks to competing businesses and therefore concludes that displaying hyperlinks is not a passive use. Therefore, Complainant has failed to show bad faith due to inactive use under Policy ¶ 4(a)(iii).
Complainant alleges that Respondent had knowledge of Complainant’s rights in the JACLYN SMITH mark due to Complainant’s numerous trademark registrations of the mark. The Panel observes that the <jaclynsmith.net> domain name uses Complainant’s mark and provides information about Complainant, and that the <jaclynsmith.org> domain name contains hyperlinks to websites whose businesses compete with Complainant’s business, both of which provide evidence that Respondent had actual knowledge of Complainant’s rights in the JACLYN SMITH mark. The Panel concludes that Respondent’s actual knowledge of Complainant’s mark prior to the time Respondent registered the <jaclynsmith.net> and <jaclynsmith.org> domain names demonstrates Respondent’s bad faith registration pursuant to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jaclynsmith.net> and <jaclynsmith.org> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 25, 2012
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