Lions Gate Entertainment Inc. v. Petronila DeJesus
Claim Number: FA0607000773238
Complainant is Lions Gate Entertainment Inc. (“Complainant”), represented by Stephen J. Jeffries, of Holland & Knight LLP, 2099 Pennsylvania Ave. NW, Suite 100, Washington, DC 20006-6801. Respondent is Petronila DeJesus (“Respondent”), Calle Frey Vincente Beltran, Residencial G-25 Apt. H-02, Santo Domingo, DO.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <dirtydancing.com>, registered with Moniker Online Services, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 14, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 14, 2006.
On August 15, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <dirtydancing.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 August 16, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 5, 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@dirtydancing.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 11, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 <dirtydancing.com> domain name is identical to Complainant’s DIRTY DANCING mark.
2. Respondent does not have any rights or legitimate interests in the <dirtydancing.com> domain name.
3. Respondent registered and used the <dirtydancing.com> domain name domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Lions Gate Entertainment Inc, provides motion picture films, video cassettes and digital versatile discs of its motion picture films, audio cassettes and compact discs featuring music from its motion picture films, and a variety of merchandise related to its motion picture films. Complainant’s predecessor in interest, Vestron Pictures Inc., released the dramatic motion picture “Dirty Dancing” on August 21, 1987, which produced box office revenues of $64 million in the United States and $170 million worldwide. Complainant’s motion picture film under the DIRTY DANCING mark has also been used in connection with the film’s soundtrack, as well as other motion picture films. Complainant registered the DIRTY DANCING mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,379,813 issued August 22, 2000, filed November 30, 1995), as well in numerous other jurisdictions throughout the world.
Respondent, Petronila DeJesus, registered the <dirtydancing.com> domain name on November 4, 1998. Respondent’s disputed domain name resolves to a website that provides links to third party websites unrelated to Complainant’s motion picture business and features pop-up advertisements.
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.
The Panel finds that Complainant’s trademark registration for the DIRTY DANCING mark with the USPTO establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i), in light of the filing date for Complainant’s trademark registration preceding Respondent’s registration of the <dirtydancing.com> domain name. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (“Complainant has submitted evidence of its registration of the AOL mark with the USPTO. The Panel finds that such evidence establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”); see also 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).
Furthermore, the Panel finds that Respondent’s <dirtydancing.com> domain name is identical to Complainant’s DIRTY DANCING mark under Policy ¶ 4(a)(i). The disputed domain name consists of Complainant’s mark, with the omission of spaces and the addition of the generic top-level domain (“gTLD”) “.com.” In Valeant Pharms. Int’l v. Carpela, D2005-0786 (WIPO Sept. 2, 2005), the panel concluded that the <cesamet.com> domain name was identical to the complainant’s CESAMET mark because the addition of the gTLD “.com” did not sufficiently distinguish the disputed domain name from the mark. Moreover, in Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), the panel found the <hannoverre.com> domain name to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names.” Therefore, the Panel in the instant case concludes that the <dirtydancing.com> domain name is identical to Complainant’s DIRTY DANCING mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must initially establish that Respondent lacks rights and legitimate interests with respect to the disputed domain name. However, once Complainant demonstrates a prima facie case, the burden then shifts, and Respondent must establish that it possesses rights or legitimate interests in the disputed domain name in accord with Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“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.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding 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 “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has established a prima facie case and will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests in connection with the <dirtydancing.com> domain name under Policy ¶ 4(c).
The Panel finds that Respondent’s <dirtydancing.com> domain name resolves to a website featuring third party links unrelated to Complainant or Complainant’s motion picture film. Additionally, the Panel finds that Respondent’s disputed domain name features pop-up advertisements, through which Respondent presumably achieves commercial gain. Consequently, the Panel finds that Respondent’s use does not constitute either 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(a)(i)); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements).
The evidence on record does not suggest that Respondent is commonly known by the <dirtydancing.com> domain name under Policy ¶ 4(c)(ii). According to the WHOIS information for the <dirtydancing.com> domain name, Respondent is known as “Petronila DeJesus.” Furthermore, there is nothing in the evidence on record indicating that Respondent is a licensee of Complainant, or an authorized user of Complainant’s DIRTY DANCING mark. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <dirtydancing.com> domain name to operate a website featuring links to third party websites unrelated to Complainant’s motion picture film business or Complainant’s motion picture film “Dirty Dancing.” In light of the pop-up advertisements featured on Respondent’s website, the Panel infers that Respondent commercially benefits from the diversion of Internet users to its website at the disputed domain name. Therefore, the Panel finds that Respondent is taking advantage of the likelihood of confusion between Respondent’s <dirtydancing.com> domain name and Complainant’s DIRTY DANCING mark and attempting to capitalize on the goodwill established by Complainant in the mark. The Panel finds that such use constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also State Fair of Tex. 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).
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 <dirtydancing.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: September 22, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum