The Ronald Reagan Presidential Foundation and Institute v. Megan Barth
Claim Number: FA1612001709658
Complainant is The Ronald Reagan Presidential Foundation and Institute (“Complainant”), represented by Linda M. Merritt of Norton Rose Fulbright US LLP, Texas, USA. Respondent is Megan Barth (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <reaganbaby.com>, registered with GoDaddy.com, LLC.
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 December 27, 2016; the Forum received payment on December 27, 2016.
On December 28, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <reaganbaby.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 December 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2017 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@reaganbaby.com. Also on December 29, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 30, 2017, 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.
1. Complainant is a foundation created to continue the legacy and principles of President Ronald Reagan. Complainant uses the REAGAN and RONALD REAGAN marks for the interstate commerce of goods and services related to the foundation and the Reagan Library museum store. Complainant possesses common law rights in Ronald Reagan’s name and variations thereof. Complainant registered the RONALD REAGAN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,933,461, registered Mar. 22, 2011). See Compl., at Attached Ex. 4. Respondent’s <reaganbaby.com> is confusingly similar to Complainant’s RONALD REAGAN mark because it uses REAGAN in its entirety, while omitting RONALD and adding the generic term “baby” and the “.com” generic top-level domain (“gTLD”).
2. Respondent does not have rights or legitimate interests in <reaganbaby.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the REAGAN or RONALD REAGAN mark in any regard. Respondent has not made a bona fide offering of goods or services, or a legitimate or fair use of the domain name. Respondent’s <reaganbaby.com> resolves to a political opinion website containing a link to an online store offering printed t-shirts unrelated to Complainant’s business. See Compl., at Attached Exs. 5–6.
3. Respondent has registered and is using <reaganbaby.com> in bad faith. The disputed domain name attracts Internet users to the site for Respondent’s commercial gain. Respondent attempted to register “REAGAN BABY” with USPTO for use on Respondent’s products, but the application was denied due to the similarity to the RONALD REAGAN mark. See Compl., at Attached Exs. 8–9. Respondent registered <reaganbaby.com> with actual knowledge of Complainant and its rights to the REAGAN and RONALD REAGAN marks.
1. Respondent has not submitted a Response.
1. Respondent’s <reaganbaby.com> domain name is confusingly similar to Complainant’s REAGAN and RONALD REAGAN marks.
2. Respondent does not have any rights or legitimate interests in the
< reaganbaby.com> domain name.
3. Respondent registered or used the <reaganbaby.com> domain name 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."
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(f), 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 (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 is a foundation created to continue the legacy and principles of President Ronald Reagan. Complainant uses the REAGAN and RONALD REAGAN marks for the interstate commerce of goods and services related to the foundation and the Reagan Library museum store. Complainant claims it registered the RONALD REAGAN mark with USPTO (e.g., Reg. No. 3,933,461, registered Mar. 22, 2011). See Compl., at Attached Ex. 4. The general consensus is that USPTO registrations are sufficient in conferring rights in a mark under Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore, the Panel deems Complainant’s evidence of USPTO registrations for the RONALD REAGAN mark to be sufficient in establishing rights under Policy ¶ 4(a)(i).
Complainant also asserts that it has common law rights in Ronald Reagan’s name and variations thereof dating back to the first use of the marks in commerce as early as 1992. Complainant states that it has continuously used the REAGAN and RONALD REAGAN marks since that date in affiliation with the foundation’s goods and services, along with its website <reaganfoundation.org>. See Compl., at Attached Ex. 3. “Complainant's use of his unique name and the widespread fame associated with Complainant's use of the name long preceded Respondent's registration of the domain name, which suggests only that Respondent registered the domain name because of Complainant's fame and not because of some right or interest of its own.” Garnett v. Trap Block Techs., FA 128073 (Forum Nov. 21, 2002). The Panel finds Complainant’s contentions to be sufficient, and concludes that Complainant has established common law rights by showing the REAGAN and RONALD REAGAN marks have taken on a secondary meaning in association with Complainant’s business. See 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.”). Therefore, the Panel finds that Complainant also has common law rights to the REAGAN and RONALD REAGAN marks.
Complainant argues that Respondent’s <reaganbaby.com> is confusingly similar to Complainant’s RONALD REAGAN mark because it uses REAGAN in its entirety, while omitting RONALD and adding the generic term “baby” and the “.com” gTLD. Panels have found that the omission of words, addition of generic terms, and inclusion of the “.com” gTLD do not sufficiently differentiate a disputed domain name from the original mark. See The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.); Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). In the instant case, the Panel finds that Respondent’s <reaganbaby.com> is confusingly similar to Complainant’s REAGAN and RONALD REAGAN marks.
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 (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 (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 maintains that Respondent does not have rights or legitimate interests in <reaganbaby.com>. In support of its argument, Complainant states that Respondent is not commonly known by the disputed domain name. WHOIS information associated with the case, along with Respondent’s USPTO application, identifies Respondent as “Megan Barth.” See Compl., at Attached Exs. 2, 8–9. “[N]othing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name,” determining that Policy ¶ 4(c)(ii) does not apply. Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003). Additionally, “it would be difficult for [a respondent] to demonstrate that it had rights or legitimate interests in the domain name given [a complainant's] long and substantial use of its unique and famous . . . mark.” Xerox Corp. v. Anti-Globalization Domains, FA 210224 (Forum Dec. 22, 2003). Based on available information, the Panel finds that Respondent is not commonly known by the disputed domain name.
Moreover, Complainant avers it has not authorized or licensed Respondent to use the REAGAN and RONALD REAGAN mark in any regard. Respondent has not made a bona fide offering of goods or services, or a legitimate or fair use of the domain name. Respondent’s <reaganbaby.com> resolves to a political opinion website containing a link to an online store offering printed t-shirts unrelated to Complainant’s business. See Compl., at Attached Exs. 5–6. “Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).” Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Forum Oct. 17, 2003). See also Vanderbilt Univ. v. U Inc., FA 893000 (Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant). Therefore, the Panel finds that Respondent’s use of <reaganbaby.com> does not represent a bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant contends that Respondent registered and is using <reaganbaby.com> in bad faith. To remind the Panel, the disputed domain name resolves to a political website that sells goods using Complainant’s mark. Complainant illustrates that <reaganbaby.com> attracts Internet users to the site by capitalizing on the fame of the REAGAN and RONALD REAGAN marks for Respondent’s commercial gain. Panels have found that a disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness. H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003). Similarly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant attests that Respondent registered <reaganbaby.com> with actual knowledge of Complainant and its rights to the REAGAN and RONALD REAGAN marks. To support its argument, Complainant shows that Respondent attempted to register “REAGAN BABY” with USPTO for use on Respondent’s products, but the application was denied due to the similarity to the RONALD REAGAN mark. See Compl., at Attached Exs. 8–9. Furthermore, the political content and goods offered on the site create an association to Complainant’s REAGAN and RONALD REAGAN marks. Thus, Complainant argues that it is inconceivable that Respondent could have registered the <reaganbaby.com> domain name without actual knowledge of Complainant and its rights to the marks. “Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s . . . mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).” Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012). The Panel agrees and finds that Respondent registered <reaganbaby.com> with actual knowledge of Complainant and its rights to the REAGAN and RONALD REAGAN marks.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <reaganbaby.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 9, 2017
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