Hillary Rodham Clinton v. Michele Dinoia a/k/a SZK.com
Claim Number: FA0502000414641
Complainant is Hillary Rodham Clinton (“Complainant”), represented by James Lamb of Ryan, Phillips, Utrecht and MacKinnon, 1133 Connecticut Avenue, N.W., Ste. 300, Washington, DC 20036. Respondent is Michele Dinoia a/k/a SZK.com (“Respondent”), Via Trilussa 11, Pineto, TE, Italy 64025.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hillaryclinton.com>, registered with OnlineNIC, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2005; the National Arbitration Forum received a hard copy of the Complaint on February 3, 2005.
On February 3, 2005, OnlineNIC, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <hillaryclinton.com> is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, Inc. registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 7, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 28, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 4, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <hillaryclinton.com> domain name is identical to Complainant’s HILLARY CLINTON mark.
2. Respondent does not have any rights or legitimate interests in the <hillaryclinton.com> domain name.
3. Respondent registered and used the <hillaryclinton.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hillary Rodham Clinton, is an internationally known political figure who has received world-wide press coverage since at least 1992 when her husband was elected President of the United States. Complainant is a best-selling author and has written four novels including, “It Takes a Village: and Other Lessons Children Teach Us,” which was published in 1996 and has sold 622,000 copies, and “Living History,” which has sold 1.68 million hard copies and 525,000 paperbacks since its 2003 publication. On November 7, 2000, the people of New York elected Complainant to the United States Senate. Complainant’s campaign began in 1999 and received substantial media coverage as the top senate race in the country.
Respondent registered the <hillaryclinton.com> domain name on October 22, 2001. Respondent is using the disputed domain name to direct Internet users to a website that displays a generic search engine, links to commercial websites, and exposes users to pop-up ads and pay-per-click search results. In addition, the disputed domain name bookmarks itself as the visitor’s homepage each time they open their Internet browser.
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."
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.
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 avers that it has common law rights in the HILLARY CLINTON mark.
Under Policy ¶ 4(a)(i), a complainant need not hold a registered trademark to establish rights in a mark. Common law rights are sufficient when a complainant demonstrates secondary meaning associated with a mark. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
In determining whether or not Complainant has common law rights in the HILLARY CLINTON mark, the Panel notes that Respondent failed to contest the allegations and the evidence contained within the Complaint. Due to Respondent’s failure to submit a response, the Panel has chosen to view the Complaint in a light most favorable to Complainant, and will accept all reasonable allegations and inferences in the Complaint as true. See Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that complainant’s allegations are true unless clearly contradicted by the evidence).
The Panel finds that Complainant’s uncontested allegations establish common law rights in the HILLARY CLINTON mark sufficient to grant standing under the UDRP. Complainant alleges that the HILLARY CLINTON mark has become distinctive through Complainant’s use and exposure of the mark in the marketplace and through use of the mark in connection with Complainant’s political activities, including a successful Senate campaign. See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association with complainant that common law trademark rights exist); see also Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (finding that a “person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law”); see also Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that complainant have rights in a registered trademark and that it is sufficient to show common law rights in holding that complainant has common law rights to her name); see also Barnes v. Old Barn Studios Ltd., D2001‑0121 (WIPO Mar. 26, 2001) (all that is required for a famous or very well-known person to establish a common law trademark is the likelihood of success in an action for passing off in the event of use in trade without authority); see also Calvert v. Domain Strategy, Inc., FA 162075 (Nat. Arb. Forum Aug. 1, 2003) (transferring the <kencalvert.com> domain name to Complainant, a U.S. Congressman).
The domain name registered by Respondent, <hillaryclinton.com>, is identical to Complainant’s HILLARY CLINTON mark because the only difference between the two is the addition of the generic top-level domain (“gTLD”) “.com,” which is irrelevant under the Policy. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Sporty's Farm L.L.C. v. Sportsman's Mkt., Inc., 202 F.3d 489 (2d Cir. 2000), cert. denied, 530 U.S. 1262 (2000) ("For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com"); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. 2002) (“Internet users searching for a company’s Web site often assume, as a rule of thumb, that the domain name of a particular company will be the company name or trademark followed by ‘.com.’”).
The Panel finds that Complainant fulfilled Policy ¶ 4(a)(i).
Complainant has alleged that Respondent has no rights or legitimate interests in the domain name that contains in its entirety Complainant’s mark. The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where complainant has asserted that respondent has no rights or legitimate interests with respect to the domain name it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once complainant asserts that respondent has no rights or legitimate interests with respect to the domain, the burden shifts to respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by complainant that respondent has no right or legitimate interest is sufficient to shift the burden of proof to respondent to demonstrate that such a right or legitimate interest does exist); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Respondent is using the <hillaryclinton.com> domain name and the goodwill associated with Complainant’s HILLARY CLINTON mark to direct Internet users to a website that provides links to commercial websites, displays pop-up advertisements and offers a generic search engine. Respondent’s use of a domain name is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that respondent’s diversionary use of complainant’s mark to attract Internet users to its own 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); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (finding that respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain name).
Respondent has offered no evidence and no proof in the record suggests that Respondent is commonly known by the <hillaryclinton.com> domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that respondent has no rights or legitimate interests in domain names because it is not commonly known by complainant’s marks and respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
The Panel finds that Complainant fulfilled Policy ¶ 4(a)(ii).
Respondent is using the <hillaryclinton.com> domain name in an attempt to purposely attract Internet users seeking Complainant online to Respondent’s website. Internet users interested in Complainant’s products and services are likely to type in Complainant’s mark followed by the common gTLD “.com.” Additionally, Respondent presumably derives commercial benefit by receiving click-through fees for redirecting Internet users to other commercial websites. The Panel concludes that Respondent’s attempts to divert Internet users for commercial gain by attracting these users to Respondent’s website through a likelihood of confusion with Complainant’s mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if respondent profits from its diversionary use of complainant's mark when the domain name resolves to commercial websites and respondent fails to contest the Complaint, it may be concluded that respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that respondent registered the domain name <statefarmnews.com> in bad faith because respondent intended to use complainant’s marks to attract the public to the website without permission from Complainant).
Complainant has established that its HILLARY CLINTON mark is famous worldwide. This is evidence that Respondent registered a domain name identical to Complainant’s mark based on the goodwill associated with Complainant’s mark. Registration of a domain name that incorporates Complainant’s mark, despite knowledge of Complainant’s rights in the mark, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively;”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that respondent had actual and constructive knowledge of complainant’s EXXON mark given the worldwide prominence of the mark and thus respondent registered the domain name in bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
The Panel finds that Complainant fulfilled Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hillaryclinton.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: March 18, 2005
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