Shana Hiatt v. personal fan
& official site builders : we build great sites c/o zero cost to you
contact to build
Claim Number: FA0701000881460
PARTIES
Complainant is Shana Hiatt (“Complainant”), represented by Evan N. Spiegel of Lavely & Singer P.C., 2049 Century Park East, Suite 2400, Los Angeles, CA, 90067. Respondent is personal fan & official site builders : we build great sites c/o zero cost to you contact to build (“Respondent”), represented by Binoj George, PO Box 410, Morrisville, NC, 275608.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shanahiatt.com>, registered with Enom, Inc.
PANEL
The undersigned certifies that she has acted independently and
impartially and that to the best of her knowledge she has no known conflict in
serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically January 4, 2007; the
National Arbitration Forum received a hard copy of the Complaint January 4, 2007.
On January 5, 2007, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <shanahiatt.com> domain name is
registered with Enom, Inc. and that the
Respondent is the current registrant of the name. Enom, Inc.
verified that Respondent is bound by the Enom,
Inc. registration agreement and thereby has 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 11, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 31, 2007, 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@shanahiatt.com by
e-mail.
A timely Response was received and determined to be complete on January 31, 2007.
An Additional Submission filed by Complainant pursuant to the Forum’s
Supplemental Rule 7 was received February 5, 2007, and considered.
A further Additional Submission that did not comply with the Forum’s
Supplemental Rule 7 was filed after the deadline for submissions and was not
considered.
On February 8, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
makes the following allegations in this proceeding:
1.
Respondent
registered a domain name, <shanahiatt.com>, that is identical to
and/or confusingly similar to a mark in which Complainant has protected rights.
2.
Respondent
has no rights to or legitimate interests in the domain name that contains in
its entirety Complainant’s protected mark.
3.
Respondent
registered and used the domain name in bad faith.
B.
Respondent
makes the following points in response, among many others:
1.
Complainant
failed to provide physical or documentary proof in the mark prior to the date
Respondent registered the disputed domain name in 2002.
2.
Complainant
is not sufficiently famous to have the right to protect her personal name.
3.
Respondent
has rights and legitimate interests in the domain name and ascertained that the
name was available at the time it registered the domain name.
4.
Complainant
has not shown bad faith by the Respondent.
5.
Several other interesting but irrelevant points, such as
Respondent’s contention that Complainant uses a law firm that engages in
harassment.
C.
Complainant’s
timely filed Additional Submission contains the following points:
1.
Complainant
has international fame as a
“popular and internationally known and recognized model, actress
and television show host.”
2.
Complainant
has trademark rights in the SHANA HIATT mark.
3.
Respondent
has no rights to or legitimate interests in the domain name contained within
the disputed domain name.
4.
Respondent
acted in bad faith.
D.
The
Additional Submission that was not timely filed pursuant to the Forum’s
Supplemental Rule 7 was not considered.
FINDINGS
Complainant does not hold a trademark registration in the SHANA HIATT mark, but Complainant produced evidence to support her claim that by virtue of her career she has gained secondary meaning through extensive commercial use of her name. Complainant established common law rights to the use of her own name.
Respondent registered Complainant’s name as a domain name in 2002 and contends here that Complainant’s fame was incidental until after the domain name registration. Respondent does not offer proof to support this contention and it would appear that Complainant was at least known to the Respondent by 2002.
Complainant
supported her claim that Respondent is using the disputed domain name, <shanahiatt.com>, to operate a website that features links to
various commercial websites from which Respondent presumably receives referral
fees.
Respondent maintained, without support, that the domain name registration, <shanahiatt.com>, is made up entirely of generic names and that Respondent uses this generic domain name for the purpose of operating a bona fide portal website featuring links to other websites.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution
Policy (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.”
Paragraph 4(a) of the Policy requires Complainant to 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(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.
Although Complainant does not hold
a trademark registration in the SHANA HIATT mark, registration with a trademark
authority is unnecessary under Policy ¶ 4(a)(i) in
instances where a mark has gained secondary meaning through extensive
commercial use and common law rights have been established. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that the complainant's trademark
or service mark be registered by a government authority or agency for such
rights to exist); see also British
Broad. Corp. v. Renteria,
D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish
between registered and unregistered trademarks and service marks in the context
of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”).
Complainant asserts common law rights in the SHANA HIATT mark through continuous use in commerce since 1994. In support of this contention, Complainant submitted evidence of her career as a model, actress, and television show host, dating back to 1994 when she was crowned “Miss Hawaiian Tropic USA.” Through her numerous features in magazine covers and articles, television shows, and movies, Complainant sufficiently established secondary meaning in the SHANA HIATT mark under Policy ¶ 4(a)(i). See Sade v. Quantum Computer Servs., Inc., D2000-0794 (WIPO Sept. 26, 2000) (finding that although the complainant did not register the word “SADE” either as a trademark or as a service mark the complainant adapted the word “SADE” as the complainant’s stage-name and as a trademark and service mark and therefore the complainant established that it had common law rights in the mark); see also Estate of Tupac 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 …”).
Complainant contends that
Respondent’s <shanahiatt.com> domain name is identical to Complainant’s mark
under Policy ¶ 4(a)(i). Complainant contends that Respondent’s domain
name features Complainant’s entire SHANA HIATT mark and merely omits the space
separating the two names while adding the generic top-level domain (“gTLD”)
“.com.” The omission of a space and the
addition of a gTLD fails to properly distinguish Respondent’s mark from
Complainant’s domain name for purposes of Policy ¶ 4(a)(i). See
Respondent disputes Complainant’s assertions of common law rights in the SHANA HIATT mark and contends that any publicity enjoyed by Complainant prior to 2002 was merely incidental. Respondent urges that Complainant did not start to use her name for product endorsement until late 2002. The Panel considered Respondent’s submission but finds nothing there that would require the Panel to find that Complainant lacked rights in her own name as a mark until after Respondent registered Complainant’s name as a domain name. Respondent’s argument fails.
The
Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(i).
Complainant established by extrinsic proof in this proceeding that Complainant has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant urges that Respondent has no such rights to or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that is does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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”); 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).
Complainant contends that Respondent is using the identical <shanahiatt.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees. Such diversionary use of the mark of another for commercial gain is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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); 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).
Furthermore,
Complainant contends that Respondent is neither commonly known by the disputed
domain name nor licensed to register domain names featuring Complainant’s mark. Additionally, Respondent’s WHOIS information
identifies Respondent as “Personal Fan & Official Site Builder.” The Panel finds that Respondent is not
commonly known by the disputed domain names for purposes of Policy ¶ 4(c)(ii). See 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); see
also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) the respondent is not a licensee of
the complainant; (2) the complainant’s prior rights in the domain name precede
the respondent’s registration; (3) the respondent is not commonly known by the
domain name in question) ; see also 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).
Respondent contends that the <shanahiatt.com> domain name is made up entirely of generic names and that use of a generic domain name for the purpose of operating a portal website featuring links to other websites is enough to establish rights and legitimate interests in the disputed domain name. Inasmuch as the Panel has found that Complainant established rights to and legitimate interests in the mark contained within the disputed domain name, Respondent’s argument fails.
Complainant
satisfied the requirements of ICANN Policy ¶ 4(a)(ii).
Complainant satisfied the
requirements of ICANN Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shanahiatt.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: February 21, 2007.
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