Robert Downey Jr. v Shashank Agarwal
Claim Number: FA1409001581490
Complainant is Robert Downey Jr. (“Complainant”), represented by Stephen J. Strauss of Fulwider Patton LLP, California, USA. Respondent is Shashank Agarwal (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <robertdowneyjr.actor>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Linda M. Byrne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 24, 2014; the National Arbitration Forum received payment on September 24, 2014.
On September 25, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <robertdowneyjr.actor> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC 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 September 26, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 2014 by which Respondent could file a Response to the Complaint. The Response was filed via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@robertdowneyjr.actor. Also on September 26, 2014, 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.
A timely Response was received and determined to be complete on October 16, 2014.
Complainant entered an Additional Submission which was received as complete and compliant on October 17, 2014.
On October 27, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Linda M. Byrne 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.
Complainant requests that the <robertdowneyjr.actor> domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant argues that he owns the name and trademark rights for “ROBERT DOWNEY JR.,” and that the disputed domain name <robertdowneyjr.actor> is confusing similar to his ROBERT DOWNEY JR. name and trademark.
Complainant maintains that Respondent has no rights or legitimate interest in <robertdowneyjr.actor>. Complainant notes that Respondent has not been commonly known as <robertdowneyjr.actor> and that Respondent owns no rights corresponding to the domain name. Complainant also argues that Respondent is acting in bad faith in view of the fact that Respondent collects pay-per-click fees from the website corresponding to <robertdowneyjr.actor>.
B. Respondent
Respondent makes no contentions with regard to Policy ¶4(a)(i), but states that he is “publicly known by ‘Robert Downey Jr’ as a screen name in order to pursue his career in the indian [sic] cinema more popularly known as ‘Bollywood’…Respondent purchased [<robertdowneyjr.actor>]… in order to publish [his] web portfolio” to gain exposure. Respondent claims to have “no knowledge of the American Hollywood actor Mr. Robert Downey Junior prior to the fact of this arbitration, belonging to a third world country and having a native language other than English.” Respondent noted that his “portfolio website is still in development phase…”
C. Additional Submissions
On October 16, 2014, Complainant submitted an Additional Submission in which Complainant argued that Respondent must be aware of Complainant in view of his worldwide fame. In addition, Complainant noted that Respondent had sent an email that to Complainant’s attorney that stated, “I purchase this domain name few days back as I am the big fan of Mr. robert downey jr.”
Complainant is an internationally recognized and award-winning actor with a film career spanning several decades. Complainant owns several trademark registrations in the U.S. and other countries for ROBERT DOWNEY JR. For example, Complainant owns U.S. Reg. No. 3,705,201 for ROBERT DOWNEY JR. for acting services, etc., which claims a 1972 date of first use.
Respondent registered the <robertdowneyjr.actor> domain name on August 31, 2014.
As of the date of the Complaint, Respondent’s <robertdowneyjr.actor> website featured the “GoDaddy” logo above several lines of text which were links to third-party websites. The text consists of statements such as “Get a Lump Sum of Cash,” “Watch Movies Now,” “Home Depot® Appliances,” etc.
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.
Complainant has been using his name and trademark ROBERT DOWNEY JR. in association with acting services, etc. since 1972, according to the evidence submitted by Complainant and at least one U.S. trademark registration for ROBERT DOWNEY JR. The Complainant’s evidence supports a finding that Complainant owns ¶4(a)(i) rights in the name and mark. See, e.g., W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (“Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent does not contest Complainant’s assertion that he has used the name and trademark ROBERT DOWNEY JR. for many decades, and does not dispute Complainant’s rights. Respondent also does not contest that the disputed domain name is confusingly similar to the ROBERT DOWNEY JR name and trademark.
The <robertdowneyjr.actor> domain name is Complainant’s entire mark with the addition of the “.actor” top-level domain. The addition of the generic word “actor” enhances the confusion in this situation in view of the fact that Complainant is a notable actor. Cf., e.g., Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a TLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis).
For the foregoing reasons, the Panel holds that the disputed domain name is confusingly similar to Complainant’s name and trademark, and that Complainant has satisfied the requirements of Policy ¶4(a)(i).
The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii), and then the burden shifts to Respondent to demonstrate his 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 its rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arg. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”)
In this case, the Panel notes that the WHOIS information identifies Respondent as “Shashank Agarwal,” which suggests that Respondent is not known by the name ROBERT DOWNEY JR. nor the domain name <robertdowneyjr.actor>. Previous panels have held that a respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, to indicate otherwise. See, e.g., M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent uses the <robertdowneyjr.actor> domain name to resolve to a generic web page that is parked by GoDaddy.com, LLC and that hosts advertisements. Such a use is not protectable under Policy ¶4(c)(i) or ¶4(c)(iii) when as here Respondent appears to be profiting off of the mark through advertising revenues with no other unique or creative use of the domain name that is acceptable under the applicable rules. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its owns website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
In his response, Respondent stated that he is “publicly known by ‘Robert Downey Jr’ as a screen name in order to pursue his career in the indian [sic] cinema more popularly known as ‘Bollywood’…Respondent purchased [<robertdowneyjr.actor>]… in order to publish the web portfolio” to gain exposure. Respondent claims to have “no knowledge of the American Hollywood actor Mr. Robert Downey Junior prior to the fact of this arbitration, belonging to a third world country and having a native language other than English.” Respondent noted that his “portfolio website is still in development phase…”
Respondent has not submitted any evidence to support the claim that he is commonly known as “ROBERT DOWNEY JR. or the <robertdowneyjr.actor> domain name. In addition, Respondent has not submitted any evidence regarding the development of his “portfolio website.” Respondent’s claim that he performs as an actor under the ROBERT DOWNEY JR. name is unsupported by the evidence, and the Panel therefore concludes that Respondent has not demonstrated rights or legitimate interests in <robertdowneyjr.actor>. See Sumner v. Urvan, D2000-0596 (WIPO July 24, 2000) (finding that the respondent’s evidence that he used the name “Sting” as a login name at a gaming site was “at the weaker end of the spectrum of such evidence” and thus did “not establish that he has been commonly known’ by the domain name as contemplated by” the Policy).
In view of the above, the Panel holds that Respondent’s use of the <robertdowneyjr.actor> domain name to promote links to third-party websites is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Accordingly, the Panel holds that Respondent has failed to prove rights or legitimate interests pursuant to Policy ¶4(c)(ii).
Complainant alleges that Respondent registered the disputed domain name with actual notice of Complainant’s rights in the ROBERT DOWNEY JR name and mark, which evidences Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶4(a)(iii). The Panel notes that previous panels have held that a respondent demonstrates bad faith under Policy ¶4(a)(iii) by registering the disputed domain name with actual notice of the complainant’s rights in the appropriated mark. See 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).
In the Additional Submission, Complainant noted Respondent’s statement that he was unaware of an actor named ROBERT DOWNEY JR. The Panel concludes that this statement must be untrue in view of Respondent’s earlier email to Complainant’s attorney stating that Respondent is a “big fan” of Complainant.
In addition, Respondent states that his website’s “monetization was done by godaddy and [Respondent] has no part in placing advertisements or promotions.” However, this Panel concludes that Respondent cannot claim ignorance as to the presence of pay-per-click advertising by GoDaddy, because Respondent ought to be held accountable for his domain names, not a third-party domain name registrar. See State Farm Mut. Auto Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”).
The Panel concludes that Respondent is capitalizing on the likelihood that Internet users would expect the <robertdowneyjr.actor> domain name to resolve to ROBERT DOWNEY JR.-related content, but are instead left with generic content hosted by GoDaddy.com, LLC. Instead, the domain name resolves to general advertisements by GoDaddy, and such advertisements show Respondent’s intent to profit via advertising revenue from the likelihood of confusion. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Polity ¶4(b)(iv) because the respondent was commercially gaining form the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved form the disputed domain name).
In view of the above, the Panel holds that Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy 4(b)(i).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <robertdowneyjr.actor> domain name be TRANSFERRED from Respondent to Complainant.
Linda M. Byrne, Panelist
Dated: November 10, 2014
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