Danette Haworth v. Jack Leeds
Claim Number: FA1411001591257
Complainant is Danette Haworth (“Complainant”), represented by Stephen Haworth, Florida, USA. Respondent is Jack Leeds (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <danettehaworth.com>, registered with Domain.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.
Jaime Delgado as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 20, 2014; the National Arbitration Forum received payment on November 20, 2014. An amended Complaint was filed on November 21, 2014
On November 21, 2014, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <danettehaworth.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 November 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 15, 2014 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@danettehaworth.com. Also on November 24, 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 December 9, 2014.
On December 16, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jaime Delgado 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims she is an author who has owned the <danettehaworth.com> domain name about four years. The <danettehaworth.com> domain name was used to promote her website. Complainant has been using danettahaworth.com as a trademark and has filed a trademark application at the USPTO for such name.
Respondent registered the <danettehaworth.com> domain name when there was a lapse in registration and Complainant was unable to re-register. The <danettehaworth.com> domain name was sold through a public auction held by the registrar. Respondent acquired the domain name through that auction. Because Complainant is an author of books for young readers, and Complainant’s name is the entirety of the mark and of this domain name, it is clear that Respondent has something unfair in mind with holding onto this domain name.
Respondent’s Contentions
Respondent acquired this domain name before Complainant filed a trademark application. The <danettehaworth.com> domain name is being used for private and non-commercial purposes, and not for use to sell products or services. No advertisements appear on the domain name’s website. The domain name was acquired legally and fairly through an auction and is not to be used in an unfair manner or to capitalize on the resale of the domain name.
C. Additional Submissions
There are no additional submissions.
Complainant´s name is Danette Haworth and has a pending trademark applications at the USPTO Ser. No. 86,445,222, for the name DANETTEHAWORTH.COM, claiming April 15, 2008 as date of first use and June 1, 2008 as date of first commercial use.
Respondent’s domain name <danettehaworth.com> is identical to Complainant’s trademark application and similar to her personal name.
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.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant claims she is an author who has owned the <danettehaworth.com> domain name about four years. Complainant claims that the <danettehaworth.com> domain name was used to promote her website. Complainant has USPTO filings related to this proceeding. The Panel notes that attached to the Complaint is a copy of USPTO application Ser. No. 86,445,222, filed Nov. 5, 2014, for DANETTEHAWORTH.COM. The Panel agrees the record here is scant of evidence of trademark rights via registration. However, Complainant has claimed April 15, 2008 as date of first use and June 1, 2008 as date of first use in commerce and consequently has common law trademark rights in this mark. The public would associate DANETTEHAWORTH.COM with the writings of Complainant. See, e.g., 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.”); McCarthy on Trademarks and Unfair Competition, § 13:2 (4th ed. 2002) (“Secondary meaning grows out of long association of the name with the business, and thereby becomes the name of the business as such; is acquired when the name and the business become synonymous in the public mind; and submerges the primary meaning of the name as a word identifying a person, in favor of its meaning as a word identifying that business.”).
The <danettehaworth.com> domain name is evidently identical to the DANETTEHAWORTH.COM mark under Policy ¶ 4(a)(i) in every way. See Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the panel should resolve whether a mark is identical or confusingly similar “by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used”).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
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 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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 interests in the subject domain names.”).
Complainant argues that Respondent registered the <danettehaworth.com> domain name when there was a lapse in registration and Complainant was unable to re-register. Complainant claims that the <danettehaworth.com> domain name was sold through a public auction held by the registrar, the Panel finds Respondent has no right or legitimate interests in this domain name because it merely holds the website with no bona fide offering or legitimate noncommercial or fair use. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the complainant’s prior registration of the same domain name is a factor in considering the respondent’s rights or legitimate interests in the domain name); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
The Panel agrees Complainant’s failure to argue under Policy ¶ 4(b) is not detrimental so long as bad faith both at registration and through use can be evidenced in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant claims that Respondent acquired the domain name through an auction. Because Complainant is an author of books for young readers, and Complainant’s name is the entirety of the mark and of this domain name, it is clear that Respondent has something unfair in mind with holding onto this domain name. This Panel may trace Respondent’s bad faith to the doctrine of opportunistic bad faith—namely, that Respondent capitalized on Complainant’s failure to re-register its long held <danettehaworth.com> domain name in order to profit from Complainant’s error. See, e.g., Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <danettehaworth.com> domain name be TRANSFERRED from Respondent to Complainant.
Jaime Delgdo, Panelist
Dated: December 30, 2014
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