Willard C. Smith, II v Barney Rubble
Claim Number: FA0510000587480
Complainant is Willard C. Smith, II (“Complainant”), represented by Allen B. Grodsky, 2001 Wilshire Blvd., Suite 210, Santa Monica, CA 90403. Respondent is Barney Rubble (“Respondent”), 12 Milkyway, Vancouver, British Columbia CANADA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <willsmith.tv>, registered with WildWest Domains.
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 October 26, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 31, 2005.
On October 26, 2005, WildWest Domains confirmed by e-mail to the National Arbitration Forum that the <willsmith.tv> domain name is registered with WildWest Domains and that Respondent is the current registrant of the name. WildWest Domains has verified that Respondent is bound by the WildWest Domains 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 November 2, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 22, 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@willsmith.tv by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 29, 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 <willsmith.tv> domain name is identical to Complainant’s WILL SMITH mark.
2. Respondent does not have any rights or legitimate interests in the <willsmith.tv> domain name.
3. Respondent registered and used the <willsmith.tv> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Willard C. Smith, II, is the owner of the WILL SMITH mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,542,182, issued February 26, 2002) for musical and sound recordings including entertainment services, namely live entertainment comprising musical performances, dramatic performances and comedic performances.
Respondent registered the <willsmith.tv> domain name on November 3, 2004. Respondent has offered to sell the disputed domain name registration to Complainant and is also using the disputed domain name to advertise products and services relating to the cultivation of marijuana.
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 has established rights in the WILL SMITH mark
through registration with the USPTO. See
Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Complainant asserts that the <willsmith.tv>
domain name is identical to Complainant’s WILL SMITH mark pursuant to Policy ¶
4(a)(i), as the domain name incorporates Complainant’s mark in its
entirety. The addition of the country
code top-level domain “.tv” does not sufficiently distinguish Respondent’s
domain name from Complainant’s WILL SMITH mark. See World Wrestling Fed'n
Entm't, Inc. v. Rapuano,
DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level
domain (ccTLD) designation <.tv> does not serve to distinguish [the
disputed domain] names from the complainant’s marks since ‘.tv’ is a common
Internet address identifier that is not specifically associated with
Respondent.”); see also Clairol Inc. v. Fux, DTV2001-0006 (WIPO May 7,
2001) (finding that the domain name <clairol.tv> is identical to the
complainant’s CLAIROL marks).
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent does not have rights or
legitimate interests in the <willsmith.tv> domain name. When a complainant establishes a prima
facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the
respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to the
Complaint, the Panel infers that Respondent does not have rights or legitimate
interests in the disputed domain name. 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.”).
Additionally, Respondent is not commonly known by the <willsmith.tv> domain name. Thus, the Panel concludes that respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Moreover, Respondent is using the <willsmith.tv> domain name to advertise products and services relating to the cultivation of marijuana. The Panel finds that Respondent’s commercial use of a domain name that is identical to Complainant’s mark for Respondent’s own commercial gain does not constitute 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 MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website); see also Am. Online, Inc. v. Tencent Communicatins Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate”).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Respondent intentionally registered a domain name that
contains, in its entirety, Complainant’s well-known mark and did so for
Respondent’s commercial gain.
Respondent’s domain name diverts Internet users seeking Complainant’s
WILL SMITH mark to Respondent’s commercial website through the use of a domain
name that is identical to Complainant’s mark.
Furthermore, Respondent is unfairly and opportunistically benefiting
from the goodwill associated with Complainant’s WILL SMITH mark. Respondent’s practice of diversion, motivated
by commercial gain, constitutes 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 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 Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that
if the respondent profits from its diversionary use of the complainant's mark
when the domain name resolves to commercial websites and the respondent fails
to contest the complaint, it may be concluded that the respondent is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Moreover, Respondent’s offer to
sell the disputed domain name registration to Complainant evidences
Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
general offer of the disputed domain name registration for sale establishes
that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see
also Am. Online, Inc. v.
Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16,
2000) (finding bad faith where the respondent offered domain names for sale); see
also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”).
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 <willsmith.tv> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 8, 2005
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