Sara Rue v. GoochOnline.net c/o John Gallucci
Claim Number: FA0804001180666
Complainant is Sara Rue (“Complainant”), represented by Stephen
J. Strauss, of Fulwider Patton LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sararue.com>, registered with Dotster.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 22, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 24, 2008.
On April 23, 2008, Dotster confirmed by e-mail to the National Arbitration Forum that the <sararue.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April
30, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 20, 2008
by which Respondent could file a
response to the Complaint, was transmitted to Respondent via e-mail, post and
fax, to all entities and persons listed on Respondent's registration as
technical, administrative and billing contacts, and to postmaster@sararue.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 27, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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." 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:
Complainant is an internationally recognized actress of motion pictures and television.
Complainant has used the SARA RUE common law mark in connection with Complainant’s acting career since 1988.
Complainant has starred in the television series “Less Than Perfect” and “Popular.”
In addition, Complainant has acted in the motion pictures
“Rocket Gibralter,” “A Map of the World,” “
Respondent is not commonly known by the <sararue.com> domain name and is not authorized to register domain names using the SARA RUE mark.
Respondent registered the <sararue.com> domain name on October 7,
2002.
Respondent’s disputed domain name resolves to the <goochthecolumn.blogspot.com> domain name which is a personal blog entitled “GoochOnline,” and features content unrelated to Complainant.
Respondent’s domain name is identical to Complainant’s SARA RUE mark.
Respondent does not have any rights to or legitimate interests in the <sararue.com> domain name.
Respondent registered and uses the <sararue.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant does not have a trademark registration for the
SARA RUE mark. However, trademark
registration is not required under Policy ¶ 4(a)(i) where common law rights in
a mark are acquired through a long-standing use of the mark. See, for example, Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding common law rights in a mark sufficient for purposes of the Policy where
its use was continuous and ongoing, and secondary meaning was established). See
also Winterson v. Hogarth, D2000-0235
(WIPO May 22, 2000) (finding that the ICANN Policy does not require that a
complainant have rights in a registered trademark, and that it is sufficient to
show common law rights).
From the allegations of
the Complaint, we conclude that Complainant has established common law rights
in the SARA RUE mark by use of the mark since 1988 in connection with
Complainant’s acting career.
Complainant asserts that Respondent’s <sararue.com> domain name is identical to Complainanat’s SARA RUE mark
pursuant to Policy ¶ 4(a)(i). Respondent
does not deny this allegation, nor could it.
The domain name contains Complainant’s mark in its entirety, and merely omits
one space and adds the generic top-level domain “.com.” These variations do not avoid a finding of
identity undere the Policy. See
As a result, we conclude, pursuant to Policy ¶ 4(a)(i), that
Respondent’s <sararue.com> domain name is identical to
Complainant’s SARA RUE mark.
Complainant alleges that Respondent does not have rights to or legitimate interests in the <sararue.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights to or legitimate interests in its domain name pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant has established a prima facie case, and Respondent’s failure to respond to the Complaint permits us to assume that Respondent does not have rights to or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Respondent’s failure to respond means that
Respondent has not presented any circumstances that would promote its rights or
legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).
We will nonetheless examine the record to determine whether there is any basis in the evidence to justify the conclusion that Respondent has rights to or legitimate interests in its domain name under Policy ¶ 4(c).
We begin by observing that Complainant contends that Respondent is not commonly known by the <sararue.com> domain name, and is not authorized to register domain names using the SARA RUE mark. Respondent does not deny this assertion. Indeed Respondent’s WHOIS information identifies Respondent as “John Gallucci.” Thus Respondent’s WHOIS information fails to provide any support for the proposition that Respondent is commonly known by the disputed domain name. We therefore conclude that Respondent lacks rights to and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003): “Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”
We also note that Respondent’s undenied use of the disputed domain name to divert Internet traffic interested in Complainant and her career to a website featuring content unrelated to Complainant is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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).” See also Wells Fargo & Co. v. Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that a respondent’s use of a complainant’s WELLS FARGO mark to redirect Internet users to a web site featuring magazine subscriptions was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the disputed domain name as alleged creates a likelihood of confusion among Internet users to divert them to a personal blog is evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv). See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that a respondent came within the parameters of Policy ¶ 4(b)(iv) where that respondent used a complainant’s well-known mark to attract users to that respondent's website); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that a respondent registered a domain name in bad faith where that respondent intended to use a complainant’s marks to attract the public to a web site without permission from that complainant).
The Panel thus finds that Policy ¶ 4(a)(iii) has been
satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <sararue.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 5, 2008
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