Eliot Spitzer v. Eliot Spitzer
Claim Number: FA0702000919828
Complainant is Eliot Spitzer (“Complainant”), represented by Scott
D. Brown, of Skadden, Arps, Slate, Meagher & Flom
LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <eliotspitzer.com> and <eliotspitzer.org>, registered with Go Daddy Software, 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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 16, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 19, 2007.
On February 19, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <eliotspitzer.com> and <eliotspitzer.org> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 February 22, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 14, 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@eliotspitzer.com and postmaster@eliotspitzer.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 20, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <eliotspitzer.com> and <eliotspitzer.org> domain names are identical to Complainant’s ELIOT SPITZER mark.
2. Respondent does not have any rights or legitimate interests in the <eliotspitzer.com> and <eliotspitzer.org> domain names.
3. Respondent registered and used the <eliotspitzer.com> and <eliotspitzer.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Eliot Spitzer, is the current Governor of New York and a prominent public figure. Complainant asserts common law rights in the ELIOT SPITZER mark through the national notoriety associated with the mark, as well as the continuous use of the mark in the public domain.
Respondent registered the <eliotspitzer.com> domain name on April 18, 2001 and the <eliotspitzer.org> domain name on May 3, 2001. Currently, both disputed domain names resolve to no content.
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.
Although Complainant does not have a federal trademark registration associated with the ELIOT SPITZER mark, the Panel finds that a federal registration is unnecessary to establish rights in the mark pursuant to Policy ¶ 4(a)(i). 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 Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant asserts common law rights in the ELIOT SPITZER mark through the continuous and ongoing use of the mark as Governor of New York and as a prominent public figure, establishing secondary meaning in the mark. The Panel finds that Complainant’s continuous and ongoing use of the mark is sufficient to establish secondary meaning in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); 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).
Complainant contends that Respondent’s <eliotspitzer.com> and <eliotspitzer.org> disputed domain names are identical to Complainant’s protected mark. The disputed domain names contain Complainant’s mark in its entirety and merely add the generic top-level domains (“gTLDs”) “.com” and “.org.” The Panel finds that the addition of a gTLD to an otherwise identical mark fails to sufficiently distinguish the domain names from the mark pursuant to Policy ¶ 4(a)(i). See BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding that there is “no doubt” that the domain name <bmw.org> is identical to the complainant’s well-known and registered BMW trademarks); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In instances where Complainant has made a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights or legitimate interests in the disputed domain name. See 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); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).
Respondent is not currently using the disputed domain names to resolve to any content. The Panel finds that Respondent’s failure to associate any content with its disputed domain names evinces a lack of right or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (Finding that the respondent cannot simply do nothing and effectively “sit on his rights” for an extended period of time when that the respondent might be capable of doing otherwise); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”).
Respondent has not proffered any evidence to suggest that it is commonly known by the disputed domain names, or that it is licensed or permitted to use or own any domain name registrations that are identical to Complainant’s mark. Although Respondent’s WHOIS information lists “Eliot Spitzer” as the registrant of the disputed domain name, the Panel finds that there is no evidence showing that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Currently, Respondent is not attaching content in association with its disputed domain names. The Panel finds that Respondent’s failure to resolve its disputed domain names to any content evinces registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in 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 <eliotspitzer.com> and <eliotspitzer.org> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 30, 2007
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