David Duchovny v. Alberta Hot Rods c/o Jeff Burgar
Claim Number: FA1706001734414
Complainant is David Duchovny (ďComplainantĒ), represented by Steven L. Rinehart, Utah, U.S.A.† Respondent is Alberta Hot Rods c/o Jeff Burgar (ďRespondentĒ), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <davidduchovny.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.
††††††††††† Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 3, 2017; the Forum received payment on June 3, 2017.
On June 5, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <davidduchovny.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 ICANNís Uniform Domain Name Dispute Resolution Policy (the ďPolicyĒ).
On June 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 26, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondentís registration as technical, administrative, and billing contacts, and to email@example.com.† Also on June 6, 2017, 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 Respondentís 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 July 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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.
Complainant is a prominent Hollywood actor and has established common law rights in the DAVID DUCHOVNY mark because that name has acquired an extensive secondary meaning as a result of Complainantís widespread fame as an actor. Respondentís <davidduchovny.com> domain name is identical to Complainantís DAVID DUCHOVNY mark because the domain name incorporates the mark and merely adds a generic top-level domain (ďgTLD"), ď.comĒ.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is neither commonly known by the disputed domain name nor has Complainant authorized Respondent to use its DAVID DUCHOVNY mark. Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent is using the domain name to divert Internet users searching for content associated with Complainant.
Respondent has registered and is using the disputed domain name in bad faith. Respondent is not actively using the disputed domain name as it resolves to a blank page. See Compl., at Attached Annex O (ďThis site canít be reachedĒ).† Respondent is attempting to confuse Internet users and divert traffic intended for Complainant. Respondentís use is likely to damage Complainant through loss of profits, business and goodwill. Furthermore, Respondent registered the domain name with actual notice of Complainantís rights in the DAVID DUCHOVNY mark. Finally, Respondent has a history of cybersquatting on domain names and therefore is likely engaging in cybersquatting through its registration of the disputed domain name of the current proceeding.
Respondent failed to submit a Response in this proceeding.† The disputed domain name, <davidduchovny.com>, was registered on November 6, 1996.
The Panel finds that the disputed domain name is confusingly similar to Complainantís common law trademark; that Respondent has no rights or legitimate interests in or to the dispute domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain 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.
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 respondentís 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) (ďIn the absence of a response, it is appropriate to accept as true all allegations of the Complaint.Ē).
The Panel finds that the disputed domain name is confusingly similar to Complainantís valid and subsisting common law trademark.† Complainant has adequately pled its rights and interests in and the common law mark DAVID DUCHOVNY dating to on or before 1990, prior to Respondentís registration of the dispute domain name, <davidduchovny.com>.† Respondent arrives at the disputed domain name by simply taking Complainantís mark in its entirety and adding the g TLD ď.comĒ.† This is insufficient to distinguish the disputed domain name from Complainantís common law trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainantís common law trademark.
Further, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name. †Respondent has no license or other permission to register the disputed domain name.† Respondent is not commonly known by the disputed domain name.
Respondent also fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use but, instead, is using the disputed domain to divert Internet users seeking online content associated with Complainant. †A general intent to divert Internet users by using the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (ďRespondentís demonstrated intent to divert Internet users seeking Complainantís website to a website of Respondent and for Respondentís 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).Ē). Complainant offers no specific evidence of Respondentís attempt to divert Internet users, but the Panel infers such an intent from Respondentís use of a domain name which is identical to Complainantís mark. See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondentís use of the complainantís entire mark in domain names makes it difficult to infer a legitimate use).
Therefore, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel also finds that Respondent engaged in bad faith use and registration of the disputed domain name, apparently for 21 years. †This Panel lacks equitable powers; therefore, even a delay of 21 years does not implicate laches.† It appears that several domain names originally registered by Respondent have been ordered transferred. †Complainant claims that this is evidence of Respondentís further bad faith.† When a respondent has been involved in past UDRP disputes involving decisions against a respondent, the Panel may find that the disputed domain name of the current proceeding was registered and is being used in bad faith. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ∂ 4(b)(ii)). Complainant lists a number of past UDRP decisions adverse to Respondent. See Compl., at 11.
Therefore, the Panel finds that this past conduct does contribute to a finding that Respondent has registered and is using the disputed domain name in bad faith.
Complainant argues that Respondent is attempting to confuse Internet users and divert traffic intended for Complainant and that Respondentís use is likely to damage Complainant through loss of profits, business and goodwill. When the disputed domain name is obviously connected with Complainantís well-known mark, there is a likelihood of creating confusion for the purpose of commercial gain and in such a case, the Panel may infer that Respondent has registered and is using the disputed domain name in bad faith. See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainantís well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Complainant does not adduce any specific evidence of Respondentís alleged intent or behavior, and it waited 21 years to bring this case against Respondent.† As such, it is hard to believe that Complainant has been harmed at all by the disputed domain name.† If, in fact, it had been harmed, one would think that such a complainant would not wait 21 years to demand the cessation of such use.†
As such, the Panel finds that the record does not support a finding that registration alone of the disputed domain name for 21 years caused any Internet users to be confused as to the source or origin of any goods or services and there were certainly no lost profits or loss of business or goodwill.†
Next, Complainant asserts that Respondent had actual notice of Complainantís rights in the DAVID DUCHOVNY mark due to the widespread fame of Complainant as a Hollywood actor. †A Complainantís mark may be sufficiently famous to infer that Respondent had actual notice of Complainantís rights. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (ďThis Panel makes that inference; Respondent has actual knowledge of Complainantís mark at the time of domain name registration based on the fame of Complainantís GOOGLE mark and Respondentís use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.Ē).
Although no one would claim that the DAVID DUCHOVNY mark, in 1996, was as famous as GOOGLE is today, given the demonstrated notoriety of David Duchovny in 1996 and the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainantís mark prior to the registration of the disputed domain name.
Furthermore, Respondent is not making an active use of the disputed domain name.† Failure to make an active use of a domain name supports a finding of bad faith. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (ďFailure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ∂ 4(a)(iii).Ē). The <davidduchovny.com> domain name resolves to a website that says ďThis site canít be reachedĒ and is otherwise devoid of content. See Compl., at Attached Annex O.
As such, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <davidduchovny.com> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated:† July 4, 2017
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