Spectacor Films Corporation v. Spectacor
Group c/o Lore Kurtzman
Claim
Number: FA0504000468973
Complainant is Spectacor Films Corporation (“Complainant”),
represented by Andrew Grosso, of Andrew Grosso & Associates, 2121 K Street NW, Suite 800, Washington, DC 20037. Respondent is Spectacor Group c/o Lore Kurtzman (“Respondent”), 429
Santa Monica Blvd., Santa Monica, CA 90405.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <spectacor.com>, registered with Register.com.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
27, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 3, 2005.
On
April 28, 2005, Register.com confirmed by e-mail to the National Arbitration
Forum that the domain name <spectacor.com> is registered with Register.com
and that Respondent is the current registrant of the name. Register.com has verified that Respondent is
bound by the Register.com 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
May 9, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 31, 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 postmaster@spectacor.com 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
June 2, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Louis E. Condon
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 <spectacor.com>
domain name is confusingly similar to Complainant’s SPECTACOR FILMS mark.
2. Respondent does not have any rights or
legitimate interests in the <spectacor.com> domain name.
3. Respondent registered and used the <spectacor.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office for the SPECTACOR FILMS mark (Reg. No.1,572,471 issued December 19,
1989) for entertainment services, namely production of motion pictures and
television programs.
Respondent
registered the <spectacor.com> domain name on February 15,
2001. Respondent is using the disputed domain
name to redirect Internet users to a website featuring links to third-party
websites not affiliated with Complainant.
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
established in this proceeding that it has rights in the SPECTACOR FILMS mark
through registration with the United States Patent and Trademark Office and by
continuous use in commerce. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. The respondent has the
burden of refuting this assumption.).
The <spectacor.com>
domain name registered by Respondent is confusingly similar to Complainant’s
mark because the disputed domain name incorporates the dominant features of
Complainant’s mark and merely omits the word “films” from the mark. The omission of the word “films” from the
mark does not negate the confusingly similar aspects of Respondent’s domain
name pursuant to Policy ¶ 4(a)(i) because Complainant’s mark continues to be
the dominant element of Respondent’s domain name. 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); see
also Wellness Int’l Network, LTD v.
Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the
domain name <wellness-international.com> is confusingly similar to the
complainant’s “Wellness International Network”); see also Hammond Suddards Edge v. Westwood Guardian
Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the domain name,
“hammondsuddards.net,” is essentially identical to the complainant's mark,
Hammond Suddards Edge, where the name “Hammond Suddards” identifies the
complainant independently of the word “Edge”).
Additionally,
Respondent’s <spectacor.com> domain name is confusingly similar to
Complainant’s SPECTACOR FILMS mark because the domain name incorporates the
dominant feature of Complainant’s mark and deviates with the addition of the
generic top-level domain “.com.” The
mere addition of a generic top-level domain does not negate the confusing similarity
between Respondent’s domain name and Complainant’s mark pursuant to Policy ¶
4(a)(i). See Fed’n of
Gay Games, Inc. v. Hodgson,
D2000-0432 (WIPO June 28, 2000) (finding that the domain name
<gaygames.com> is identical to the complainant's registered trademark GAY
GAMES); see also Little Six,
Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding
that <mysticlake.net> is plainly identical to the complainant’s MYSTIC
LAKE trademark and service mark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the <spectacor.com>
domain name that contains the dominant feature of Complainant’s SPECTACOR FILMS
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, the Panel assumes that Respondent has no rights to or legitimate
interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where the complainant has asserted that the respondent has no
rights or legitimate interests with respect to the domain name it is incumbent on
the 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 the complainant asserts that the
respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to the 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 the complainant that the
respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name).
Because
Respondent has not submitted a response, the Panel accepts all reasonable
allegations and inferences in the Complaint as true. See 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.”); see also Bayerische Motoren Werke AG v. Bavarian AG,
FA110830 (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).
Nothing in the
record establishes that Respondent is commonly known by the <spectacor.com>
domain name, despite listing its name as “Spectacor Group c/o Lore Kurtzman” in
the WHOIS contact information.
Respondent is not licensed or authorized to register or use a domain
name that incorporates the dominant features of Complainant’s mark. Therefore, the Panel concludes that
Respondent does not have rights or legitimate interests in the domain name
pursuant to Policy ¶ 4(c)(ii). See
Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was
not “commonly known by” the <shantiyogaworks.com> domain name
despite listing its name as “Shanti Yoga Works” in its WHOIS contact
information because there was “no
affirmative evidence before the panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”); see also Web House USA, Inc. v. eDollarShop
Hostmaster, FA 155180 (Nat. Arb. Forum
June 10, 2003) (finding that the respondent was not “commonly known by” the
<edollarshop.com> domain name, despite naming itself “eDollarShop,”
because the respondent’s website was almost identical to the complainant’s
“first in use” website and infringed on the complainant’s marks); see also
Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum Jan.
13, 2003) (noting that “Complainant has
established itself as the sole holder of all rights and legitimate interests in
the NEIMAN MARCUS mark,” in holding that the respondent was not commonly known
by the <neiman-marcus.net> name, despite naming itself “Neiman-Marcus”
in its WHOIS contact information).
Additionally,
the <spectacor.com> domain name is confusingly similar to
Complainant’s SPECTACOR FILMS mark and is used to redirect Internet users to a
website advertising links for a wide variety of third-party services and
products. The Panel finds that
Respondent’s use of the domain name that is confusingly similar to
Complainant’s mark to divert Internet users to a website that links to
third-party websites and for which Complainant presumably receives
click-through fees is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb.
Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the
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 the
respondent’s use of the disputed domain name to redirect Internet users to
commercial websites, unrelated to the 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered a domain name that incorporates the dominant features
of Complainant’s SPECTACOR FILMS mark for Respondent’s commercial gain. Respondent registered and used the <spectacor.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent
intentionally attempted to attract potential customers from Complainant to
Respondent’s website by taking advantage of Internet users who are searching
under Complainant’s SPECTACOR FILMS mark and diverting them to Respondent’s
commercial website. See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with the complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that the respondent intentionally attempted to attract
Internet users to his website for commercial gain by creating a likelihood of
confusion with the complainant’s mark and offering the same services as the
complainant via his website); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding bad faith where the respondent attracted users to a website
sponsored by the respondent and created confusion with the complainant’s mark
as to the source, sponsorship, or affiliation of that website).
Respondent
registered the <spectacor.com> domain name with actual or
constructive knowledge of Complainant’s rights in the SPECTACOR FILMS mark due
to Complainant’s registration of the mark with the United States Patent and
Trademark Office. Registration of a
domain name that is confusingly similar to a mark, despite actual or
constructive knowledge of another’s rights in the mark, is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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); see also
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <spectacor.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 14, 2005
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