Mrs. Fred Astaire v. Naoki Muro
Claim Number: FA1503001611575
Complainant is Mrs. Fred Astaire (“Complainant”), represented by Stephen J Strauss of Fulwider Patton LLP, United States of America. Respondent is Naoki Muro (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <astaire.tokyo>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 26, 2015; the Forum received payment on March 26, 2015. The Complaint was submitted in both Japanese and English.
On March 29, 2015, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <astaire.tokyo> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 April 6, 2015, the Forum served the Japanese language Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of April 27, 2015 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@astaire.tokyo. Also on April 6, 2015, the Japanese language 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 6, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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’s Contentions
1. Complainant uses the FRED ASTAIRE mark in connection with motion picture films. Complainant has registered the FRED ASTAIRE mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,882,244, registered November 30, 2010), evincing rights in the mark. Respondent’s <astaire.tokyo> domain name is confusingly similar to the FRED ASTAIRE mark as it simply eliminates the word FRED and adds the country-code top-level domain (“ccTLD”) “.tokyo.”
2. Respondent has no rights or legitimate interests in the <astaire.tokyo> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use any variation of the FRED ASTAIRE mark in relation to domain name registrations. Further, Respondent is not using the <astaire.tokyo> domain name in connection with any bona fide offering of goods or services, or for any legitimate noncommercial or fair use. Rather, the site appropriates the image of Fred Astaire in connection with a commercial website to promote the sale of its women’s clothing. See Compl., at Attached Annex 9.
3. Respondent has registered and used the <astaire.tokyo> domain name in bad faith. Respondent has attempted to profit from Internet user confusion as to the source, sponsorship, or affiliation with Complainant as to the nature of the <astaire.tokyo> domain name per Policy ¶ 4(b)(iv). Finally, Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s mark and the rights associated with the FRED ASTAIRE mark.
B. Respondent’s Contentions
1. Respondent did not submit a response to the complaint.
1. Respondent’s <astaire.tokyo> domain name is confusingly similar to Complainant’s FRED ASTAIRE mark.
2. Respondent does not have any rights or legitimate interests in the <astaire.tokyo> domain name.
3. Respondent registered and used the <astaire.tokyo> domain name in bad faith.
LANGUAGE OF THE PROCEEDINGS:
The Panel notes that the Registration Agreement is written in Japanese, thereby making Japanese the language of the proceedings.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
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 uses the FRED ASTAIRE mark in connection with motion picture films. Complainant purports to have registered the FRED ASTAIRE mark with the USPTO (e.g., Reg. No. 3,882,244, registered November 30, 2010), arguing such registrations evince rights in the mark. Panels have agreed where a USPTO registration exists, Policy ¶ 4(a)(i) rights exist, even where complainant and respondent operate in different countries. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the 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.”). Accordingly, the Panel finds that Complainant has rights in the FRED ASTAIRE mark under Policy ¶ 4(a)(i).
Next, the Panel notes that Respondent’s <astaire.tokyo> domain name may be seen as confusingly similar to the FRED ASTAIRE mark as it simply eliminates the word “FRED” and adds the gTLD “.tokyo.” Past panels have found where such alterations are present in a disputed domain name, confusing similarity under Policy ¶ 4(a)(i) cannot be overcome. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks. Therefore, this Panel agrees that Respondent’s <astaire.tokyo> domain name is confusingly similar to Complainant’s FRED ASTAIRE mark under Policy ¶ 4(a)(i).
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 posits that Respondent has no rights or legitimate interests in the <astaire.tokyo> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use any variation of the FRED ASTAIRE mark in relation to domain name registrations. Pursuant to the relevant WHOIS information and the fact that Respondent has not added any evidence to the record for the Panel’s consideration, there is no basis to find Respondent commonly known by the <astaire.tokyo> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant argues that Respondent is not using the <astaire.tokyo> domain name in connection with any bona fide offering of goods or services, or for any legitimate noncommercial or fair use. Rather, Complainant alleges that the site appropriates the image of Fred Astaire in connection with a commercial website to promote the sale of its women’s clothing. See Compl., at Attached Annex 9. The Panel notes as relevant the panel’s decision in Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003), where the panel found that “[d]iverting 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).” Thus, this Panel finds no bona fide offering of goods or services, or any legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and (iii).
Respondent is alleged by Complainant to have attempted to profit from Internet user confusion as to the source, sponsorship, or affiliation with Complainant as to the nature of the <astaire.tokyo> domain name per Policy ¶ 4(b)(iv). Respondent appears to be trading off Complainant’s goodwill by incorporating a picture of Fred Astaire on one of its resolving pages. See Compl., at Attached Annex 9. The Panel agrees that Respondent’s use of Fred Astaire’s likeness within the disputed domain name’s resolving page evinces intent to confuse Internet users to commercially profit under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
Finally, Complainant contends that in light of the fame and notoriety of Complainant's FRED ASTAIRE mark, it is inconceivable that Respondent could have registered the <astaire.tokyo> domain name without actual or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <astaire.tokyo> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 18, 2015
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