Angela C. Watson v. ZJ
Claim Number: FA0601000624501
Complainant is Angela C. Watson (“Complainant”), represented by Rod S. Berman, of Jeffer, Mangels, Butler & Marmaro LLP, 1900 Avenue of the Stars, Seventh Floor, Los Angeles, CA 90067. Respondent is ZJ (“Respondent”), zhangyang 1661-2304, Shanghai, Shanghai 200001, CN.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <angelawatson.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 10, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 13, 2006.
On January 11, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <angelawatson.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 January 18, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 7, 2006 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@angelawatson.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 13, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole 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:
Complainant is a professional actress and an activist for charitable organizations.
From 1991 to 1998, Complainant appeared on two television sitcoms, Davis Rules and Step By Step.
Complainant now participates in a musical ensemble and appears regularly in staged theatrical performances.
Complainant is also the national spokesperson for HugsAmerica, a nonprofit organization dedicated to child abuse care and prevention.
Complainant filed an application to register the ANGELA WATSON trademark with the United States Patent and Trademark Office (“USPTO”) on April 25, 2005.
Complainant has continuously used the ANGELA WATSON name and mark in connection with entertainment services and celebrity appearances since 1991.
Respondent registered the <angelawatson.com> domain name on May 19, 2002.
Respondent is using the disputed domain name to divert Internet users to a web directory featuring links to goods and services unrelated to Complainant’s ANGELA WATSON name and mark.
Respondent’s <angelawatson.com> domain name is identical to Complainant’s ANGELA WATSON mark.
Respondent does not have any rights or legitimate interests in the <angelawatson.com> domain name.
Respondent registered and uses the <angelawatson.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant asserts common law rights in the ANGELA WATSON mark through continuous use of the mark in connection with her entertainment services and charitable causes since 1991. Respondent does not dispute Complaint’s claim to such rights. See Estate of Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000): “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 Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (finding that a complainant held common law trademark rights in his famous name MICK JAGGER). See further Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that a complainant have a registered trademark, and that it is sufficient that a complainant has common law rights to her name).
Complainant has also filed an application to
register the mark with the USPTO. Rights sufficient for purposes of the Policy
accrue from this fact. See Planetary
Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the
effective date of Complainant’s trademark rights date back to the application’s
filing date); see also Nat’l Abortion
Fed’n v. Dom 4 Sale, Inc., FA
170643 (Nat. Arb. Forum Sept. 9, 2003): “As Complainant's filing date for its
valid registration of the NAF NATIONAL ABORTION FEDERATION mark on the
Principal Register of the U.S. Patent and Trademark Office predates Respondent's
registration of the disputed domain name by over a year, this registration is
additional evidence of Complainant's rights in the mark.”
Complainant’s rights in its mark having been established, the panel may turn to the question of identity-similarity as between the mark and the disputed domain name.
Complainant alleges, without contest from Respondent, that
Respondent’s domain name <angelawatson.com> is confusingly
similar, to Complainant’s name and mark pursuant to Policy ¶ 4(a)(i). We agree, inasmuch as Respondent’s domain
name incorporates Complainant’s entire name, eliminates the space between the
components of Complainant’s name, and merely adds the generic top-level domain
name, “.com.” Panels have many times
held that the addition of “.com” to a complainant’s mark and the elimination of
a space between words in a mark are irrelevant for purposes of Policy ¶
4(a)(i). See, for example, Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000): "[T]he 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 . . .
."); see also 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"); further see Tech. Props., Inc. v. Burris, FA 94424 (Nat. Arb.
Forum May 9, 2000) (finding that the domain name <radioshack.net> is
identical to the complainant’s mark, RADIO SHACK); and Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO
June 27, 2000) (finding that a respondent’s domain name
<charlesjourdan.com> is identical to a competing complainant’s
marks).
Complainant alleges that Respondent does not have rights or legitimate interests in the <angelawatson.com> domain name. Complainant has the initial burden of proof in establishing that Respondent has no rights or legitimate interests in the domain name. However, once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to show that it has such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, as here, the assertion by a complainant that a 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 exists; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent’s failure to answer the Complaint thus raises a presumption that Respondent has no rights or legitimate interests in the <angelawatson.com>domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.” 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 a respondent’s failure to reply to the complaint).
On a related point, there is no evidence in the record
suggesting that Respondent is commonly known by the <angelawatson.com>
domain name. Therefore, Respondent has
not established rights or legitimate interests in the <angelawatson.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003): “Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”
Moreover, it is undisputed from Complainant’s allegations that Respondent is using the <angelawatson.com> domain name, which is confusingly similar to Complainant’s mark, for the sole purpose of diverting Internet users to a web directory containing links to third-party websites wholly unrelated to Complainant’s mark. Such use of the disputed domain name for 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 of the domain name pursuant to Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that a respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to a complainant’s mark, websites from which 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); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that a respondent’s diversionary use of a 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).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As noted above, it is not disputed that Respondent is using
the <angelawatson.com> domain name, which is confusingly similar
to Complainant’s ANGELA WATSON mark, to divert Internet users to a web
directory containing links to third-party websites unrelated to Complainant’s
name and mark. The Panel is entitled to
and does infer from these facts that Respondent receives click-through fees for
diverting consumers to these websites, and is thus taking advantage of the
likelihood of confusion between Respondent’s domain name and Complainant’s mark
to capitalize on the goodwill associated with the mark. The Panel finds that such use constitutes
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb.
Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain
entire versions of Complainant’s marks and are used for something completely
unrelated to their descriptive quality, a consumer searching for Complainant
would become confused as to Complainant’s affiliation with the resulting search
engine website” in holding that the domain names were registered and used in
bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where a respondent
directed Internet users seeking a complainant’s site to its own website for
commercial gain).
Finally, the Panel agrees with the panelist in LCIA (London court of International Arbitration) v. Wellsbuck Corp., D2005-0084 (WIPO Apr. 2, 2005), who concluded, as have others before him, that:
The
fact that the Respondent has chosen not to submit a Response is particularly
relevant to the issue of whether the Respondent has registered and is using the
domain name in bad faith.
For these reasons, the Panel concludes that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <angelawatson.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 24, 2006
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