Liesel Pritzker v. E Registration c/o DNS
Administration
Claim
Number: FA0506000506761
Complainant is Liesel Pritzker (“Complainant”), represented
by James E. Griffith, of McDermott, Will & Emery LLP, 227 West Monroe Street, Chicago, IL 60606. Respondent is E Registration c/o DNS Administration (“Respondent”), PO
Box 3360, Saratoga, CA 95070.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <lieselpritzker.com>, registered with Enom,
Inc.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
30, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 5, 2005.
On
June 30, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum
that the domain name <lieselpritzker.com> is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, 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
July 8, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 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 postmaster@lieselpritzker.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
August 4, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., 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 <lieselpritzker.com>
domain name is identical to Complainant’s LIESEL PRITZKER mark.
2. Respondent does not have any rights or
legitimate interests in the <lieselpritzker.com> domain name.
3. Respondent registered and used the <lieselpritzker.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Liesel Pritzker, is an actress who has appeared in several movies and theater
productions using the LIESEL PRITZKER mark.
Complainant’s motion picture experiences include roles in A Little
Princess, Air Force One, and Blast. Complainant recently appeared in the acclaimed Broadway
production of Vincent in Brixton.
Respondent
registered the <lieselpritzker.com> domain name on May 31,
2004. The disputed domain name resolves
to a website that features a generic search engine and displays links to
various products and services unrelated to Complainant. Respondent presumably earns click-through
fees for diverting Internet users to third-party websites via Respondents
website.
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. 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.”).
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
asserts that she is an actress who has appeared in several major motion
pictures and theater productions.
Complainant further contends that due to her entertainment services
offered under the LIESEL PRITZKER mark, Complainant’s mark has acquired
secondary meaning under the Policy.
Without a response from Respondent, to challenge Complainant’s
contentions, the Panel accepts Complainant’s assertion of common law rights as
true. Thus, for the purposes of Policy
¶ 4(a)(i), the Panel finds that Complainant has established common law rights
in the mark. See Winterson v. Hogarth, D2000-0235 (WIPO
May 22, 2000) (finding that ICANN Policy does not require that the complainant
have rights in a registered trademark and that it is sufficient to show common
law rights in holding that the complainant has common law rights to her name); see
also 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 the
complainant that common law trademark rights exist); see also Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(finding that the complainant had provided evidence that it had valuable
goodwill in the <minorleaguebaseball.com> domain name, establishing
common law rights in the MINOR LEAGUE BASEBALL mark); see also S.A.
Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13,
2003) (holding that the complainant established rights in the descriptive
RESTORATION GLASS mark through proof of secondary meaning associated with the
mark); see also Charles Jourdan
Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate
for the panel to draw adverse inferences from the respondent’s failure to reply
to the complaint).
The <lieselpritzker.com>
domain name registered by Respondent includes Complainant’s LIESEL PRITZKER
mark in its entirety, adding only the generic top-level domain (“gTLD”)
“.com.” It has been widely held under
the Policy that the mere addition of a gTLD to a complainant’s mark is irrelevant
in making a determination of similarity under Policy ¶ 4(a)(i). See Blue Sky Software Corp. v.
Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the
domain name <robohelp.com> is identical to the complainant’s registered
ROBOHELP trademark, and that the "addition of .com is not a distinguishing
difference"); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal
significance since use of a gTLD is required of domain name
registrants"). The Panel concludes
that the disputed domain name is identical to Complainant’s mark pursuant to
Policy ¶ 4(a)(i). See Albrecht v. Natale, FA 95465 (Nat. Arb.
Forum Sept. 16, 2000) (finding the respondent’s domain name,
<karlalbrecht.com>, identical to the complainant’s common law mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
It has been
established under the Policy that the complainant has the initial burden of
proving that the respondent lacks rights and legitimate interests in the
disputed domain name. In Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001), the panel held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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”). Having found that
Complainant has met its initial burden by establishing a prima facie
case, the Panel will now analyze whether Respondent has met its burden to
establish rights or legitimate interests in the disputed domain name under Policy
¶ 4(c).
Complainant
asserts that Respondent is not commonly known by the <lieselpritzker.com>
domain name. According to the WHOIS
information for the domain name, Respondent is known as “E Registration” and
“DNS Administration.” Because this
information is the only evidence of Respondent’s identity, the Panel does not
have any evidence that Respondent is commonly known by the disputed domain
name. Without a response from
Respondent to rebut Complainant’s evidence, the Panel finds that Respondent has
failed to establish rights or legitmate interests in the domain name under
Policy ¶ 4(c)(ii). See Am.
Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb.
Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com>
or <aolcameras.com> because the respondent was doing business as “Sunset
Camera” and “World Photo Video & Imaging Corp.”); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”).
Complainant
argues that the <lieselpritzker.com> domain name diverts Internet
users searching for information regarding Complainant to a commercial website
that features a generic search engine and links to various products and
services unrelated to Complainant.
Numerous Panels have held that use of a complainant’s mark in a domain
name to attract Internet users to a respondent’s commercial website does not
constitute a bona fide offering of goods or services or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to
divert Internet users seeking Complainant's website to a website of Respondent
and for Respondent's 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).”); see also WeddingChannel.com Inc.
v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the
respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy).
Furthermore, in failing to submit a response to Complainant’s
allegations, Respondent has neglected to provide any evidence that would
challenge Complainant’s prima facie case. Thus, the Panel finds that Respondent has not established rights
or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) or
(iii). See 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); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
The <lieselpritzker.com>
domain name resolves to a website that features a generic search engine and
links to a variety of products and services.
The Panel infers that Respondent receives a commission for diverting
Internet users to third-party websites via the search engine and links located
at Respondent’s website. Additionally,
by using Complainant’s LIESEL PRITZKER mark in the domain name, Respondent is
creating a likelihood of confusion and attempting to attract Internet users to
Respondent’s website for Respondent’s commercial gain. Respondent’s activities are evidence of bad
faith registration and use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA
123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum
Sept. 12, 2000) (finding bad faith where the respondent registered the domain
name <bigtex.net> to infringe on the complainant’s goodwill and attract
Internet users to the respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
respondent directed Internet users seeking the complainant’s site to its own
website for commercial gain).
Furthermore,
based on the uniqueness of the LIESEL PRITZKER mark, Respondent’s use of the
mark within the domain name implies to Internet users that Respondent has some
association with Complainant. Moreover,
Respondent’s registration of the <lieselpritzker.com> domain name,
which contains Complainant’s LIESEL PRITZKER mark in its entirety, suggests
that Respondent knew of Complainant’s rights in the mark and intended to take
advantage of Complainant’s goodwill in the mark. These circumstances constitute opportunistic bad faith and amount
to evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with the
complainant and its products that the use of the domain names by the
respondent, who has no connection with the complainant, suggests opportunistic
bad faith); see also Albrecht v.
Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in
bad faith based where there is no reasonable possibility, and no evidence from
which to infer that the domain name was selected at random since it entirely incorporated
the complainant’s name); see also Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad
faith registration and use where it is “inconceivable that the respondent could
make any active use of the disputed domain names without creating a false
impression of association with the Complainant”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <lieselpritzker.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
August 15, 2005
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