Carnie Wilson v. Whois Privacy Protection Service, Inc. a/k/a Whois Agent
Claim Number: FA0502000417186
Complainant is Carnie Wilson (“Complainant”), represented by Steven M. Weinberg, of Greenberg Traurig, LLP, 2450 Colorado Avenue, Santa Monica, CA 90404. Respondent is Whois Privacy Protection Service, Inc. a/k/a Whois Agent (“Respondent”), PMB 368, 14150 NE 20th St. – F1, c/o Carniewilson.com, Bellevue, WA 98007.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carniewilson.com>, registered with Enombre Corporation.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2005; the National Arbitration Forum received a hard copy of the Complaint on February 10, 2005.
On February 8, 2005, Enombre Corporation confirmed by e-mail to the National Arbitration Forum that the domain name <carniewilson.com> is registered with Enombre Corporation and that Respondent is the current registrant of the name. Enombre Corporation has verified that Respondent is bound by the Enombre Corporation 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 16, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 8, 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 firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 15, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <carniewilson.com> domain name is identical to Complainant’s CARNIE WILSON mark.
2. Respondent does not have any rights or legitimate interests in the <carniewilson.com> domain name.
3. Respondent registered and used the <carniewilson.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is Carnie Wilson, a singer, songwriter, actress, and TV talk show host. Complainant was once a member of the band Wilson Phillips, which sold over ten million copies of their first album and over three million copies of their second album.
In 1996, Complainant hosted her own nationally syndicated TV talk show entitled “Carnie” and since then has continued her career in acting, TV, pictures, voice over artistry and songwriting. Complainant is currently an on-air correspondent for Entertainment Tonight.
Complainant’s personal story has been featured on major television talk shows, in major magazines including the cover story of People magazine, and Complainant has been the subject of two books entitled Gut Feelings and I’m Still Hungry.
Respondent registered the <carniewilson.com> domain name on October 11, 2004. Respondent currently links users to a website located at <geocities.com/marisad777/>. The resolved website contains news headlines from the Associated Press, as well as music news from Reuters. In addition, the website also contains other links to <mtv.com> and <style.com>.
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.
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 asserts rights to the CARNIE WILSON name, despite not having registered it with a government trademark authority. Yet, the Policy does not exclude unregistered marks from the sphere of protection. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding the Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).
In the instant case, Complainant is seeking protection of the CARNIE WILSON mark, which is Complainant’s personal name. Personal names or surnames may be protected as trademarks if such names have acquired distinctiveness, i.e. a complainant must demonstrate that, “in the minds of the public, the primary significance of [the mark] is to identify the source of the product rather than the product itself.” Inwood Labs. v. Ives Labs., 456 U.S. 844, 851, n.11 (1982). See McCarthy on Trademarks and Unfair Competition, § 13:1 (4th ed. 2002) (stating that the basic rules pertaining to the protection of personal names require actual proof of secondary meaning for protection); see also Riley v. so so domains, D2003-0600 (WIPO Sept. 24, 2003) (“[P]ersonal names may enjoy protection against identical or confusingly similar domain names if the name has sufficient notoriety and distinctive character in connection with the goods offered by complainant.).
Complainant has provided the Panel with several assertions, as observed in the findings above, that bolster the claim that the CARNIE WILSON mark is protectable. These assertions have gone unanswered. Complainant’s unchallenged assertions of success in the music industry and presence as a national TV syndicated host, among other assertions, leads the Panel to conclude that the public has come to identify the name “Carnie Wilson” as a celebrity and the source of Complainant’s services. Under the Policy, unregistered celebrity names have been protected. As stated in Luca Laurenti v. Director., FA 243460 (Nat. Arb. Forum May 7, 2004), “[u]nregistered celebrity names or marks used in conjunction with celebrity personalities have been consistently held to maintain common law trademark rights under the Policy.” Therefore, consistent with prior cases decided under the Policy, and in the absence of evidence to the contrary, the Panel finds that Complainant has established rights in the CARNIE WILSON mark pursuant to Policy ¶ 4(a)(i). See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association with Complainant that common law trademark rights exist); see also Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (Complainant held common law trademark rights in his famous name MICK JAGGER); see also Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (finding that 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”).
The disputed domain name, <carniewilson.com> is identical to Complainant’s CARNIE WILSON mark pursuant to Policy ¶ 4(a)(i) because the name incorporates the mark in its entirety without modification. The absence of a space or the addition of the generic top-level domain “.com” is immaterial under the Policy. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> 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”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Complainant has established Policy ¶ 4(a)(i).
Complainant has made the assertion that Respondent lacks rights and legitimate interests in the disputed domain name. It has been consistently held that it is incumbent upon respondents to advance concrete evidence pursuant to Policy ¶ 4(a)(ii) rebutting the latter assertion because this information is “uniquely within the knowledge and control of the respondent.” G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002). Respondent has failed to advance any evidence, let alone concrete evidence. Therefore, since Respondent has failed to respond to the Complaint, the Panel construes this omission as an implicit admission that Respondent lacks rights and legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interests in the domain names); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).
Complainant argues that Respondent was never authorized to use the CARNIE WILSON mark in the disputed domain name and thus is not using it in connection with a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, pursuant to Policy ¶¶ 4(c)(i) and (iii). Respondent has used the domain name to host not only music news headlines, but also to link directly to a popular music website, <mtv.com>. Without evidence to the contrary, these facts, in combination with Respondent’s unauthorized use of Complainant’s mark, leads the Panel to further conclude that Respondent’s purpose in selecting the domain name was to divert Internet users seeking Complainant. See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“[U]nauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).
Moreover, Respondent has advanced no evidence that would suggest Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Complainant has established Policy ¶ 4(a)(ii).
Respondent registered the disputed domain name in 2004, well after Complainant’s name and mark had been used in connection with the band Wilson Phillips and Complainant’s TV talk show. The fact that Respondent has used the domain name to host music headlines and to link Internet users to <mtv.com> supports the notion that Respondent not only had knowledge of Complainant’s mark prior to registering the domain name, but anticipated on capitalizing on the goodwill associated with the CARNIE WILSON mark as a means of attracting Internet users to its website. Such registration and use has been found to be evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
Furthermore, the fact that Respondent chose to register a domain name, which is identical to the name of a celebrity such as Complainant, and then use the name in connection with its music related content, creates a strong likelihood of initial interest confusion on the part of Internet users. This is further evidence of bad faith registration and use of the disputed domain name without evidence to the contrary. See Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated Complainant’s name); see also Harrods Ltd. v. Harrod’s Closet D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so obviously connected with well-known products, its very use by someone with no connection to these products can evidence opportunistic bad faith).
Moreover, the Panel infers that Respondent receives click-through fees for diverting Internet users to various music related websites. Since Respondent’s domain name is identical to Complainant’s mark, consumers accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, the Panel finds that Respondent’s commercial use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name 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 Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).
Complainant has established Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <carniewilson.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: March 29, 2005
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