Megan Dey-Toth v. Domain Name c/o Blue
White Group
Claim
Number: FA0505000473868
Complainant is Megan Dey-Toth (“Complainant”),
represented by Randall Dey-Toth, 333 Ewing St., Princeton, NJ 08540. Respondent is Domain Name c/o Blue White Group (“Respondent”),
Goleta Florencia 571, UA, Ushuaia, Argentina 9410.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <megandeytoth.com>, registered with Onlinenic,
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
9, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 16, 2005.
On
May 11, 2005, Onlinenic, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <megandeytoth.com> is registered with Onlinenic,
Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc.
has verified that Respondent is bound by the Onlinenic, 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
May 18, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 7, 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 postmaster@megandeytoth.com 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
June 14, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed John J.
Upchurch 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 <megandeytoth.com>
domain name is confusingly similar to Complainant’s MEGAN DEY-TOTH mark.
2. Respondent does not have any rights or
legitimate interests in the <megandeytoth.com> domain name.
3. Respondent registered and used the <megandeytoth.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Megan Dey-Toth, is a widely known opera singer and has been using this name for
both personal and professional use since 1995.
Complainant previously owned the <megandeytoth.com> domain
name, but its registration expired due to a miscommunication with the web
hosting company.
Respondent
purchased the <megandeytoth.com> domain name from an entity which
buys expired domain names and sells them to buyers who hope to profit from the
domain name by diverting Internet users to commercial websites.
Respondent
registered the <megandeytoth.com> domain name on August 6,
2004. Respondent’s website resolves to
a pornographic website featuring links to other pornographic websites.
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
alleges that it has common law rights in the MEGAN DEY-TOTH mark.
Under Policy ¶
4(a)(i), a complainant need not hold a registered trademark to establish rights
in a mark. Common law rights are
sufficient when a complainant demonstrates secondary meaning associated with a
mark. 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 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”).
In determining
whether or not Complainant has common law rights in the MEGAN DEY-TOTH mark,
the Panel notes that Respondent failed to contest the allegations and the
evidence contained within the Complaint.
Due to Respondent’s failure to submit a response, the Panel has chosen
to view the Complaint in a light most favorable to Complainant, and will accept
all reasonable allegations and inferences in the Complaint as true. See Bayerische Motoren Werke AG v.
Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that
in the absence of a Response the Panel is free to make inferences from the very
failure to respond and assign greater weight to certain circumstances than it might
otherwise do); see also Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that
failing to respond allows a presumption that complainant’s allegations are true
unless clearly contradicted by the evidence).
The Panel finds
that Complainant’s uncontested allegations establish common law rights in the
MEGAN DEY-TOTH mark sufficient to grant standing under the UDRP. Complainant alleges that the MEGAN DEY-TOTH
mark has become distinctive through Complainant’s use and exposure of the mark
in the marketplace and through use of the mark in connection with Complainant’s
activities, as a successful opera singer.
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 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”); see also Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that
ICANN Policy does not require that complainant have rights in a registered
trademark and that it is sufficient to show common law rights in holding that
complainant has common law rights to her name); see also Barnes v. Old Barn Studios Ltd., D2001‑0121
(WIPO Mar. 26, 2001) (all that is required for a famous or very well-known
person to establish a common law trademark is the likelihood of success in an
action for passing off in the event of use in trade without authority); see
also Sade v. Quantum Computer Serv.,
Inc., D2000-0794 (WIPO Sept. 26, 2000) (“Although the Complainant has not
registered the word ‘SADE’ either as a trademark or as a service mark in any
jurisdiction, the Complainant has adapted the word ‘SADE’ as her stage-name and
as a trademark and service mark and this Administrative Panel …is further
satisfied that the Complainant has established that she has common law rights
in the said mark”).
Respondent’s <megandeytoth.com>
domain name is confusingly similar to Complainant’s MEGAN DEY-TOTH
mark. Respondent’s <megandeytoth.com>
domain name incorporates Complainant’s MEGAN DEYTOTH mark in its entirety and
merely removes the hyphen from Complainant’s last name, Dey-Toth. Such a change is not enough to overcome a
finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Nat’l Cable Satellite Corp. v.
Black Sun Surf Co., FA 94738
(Nat. Arb. Forum June 19, 2000) (holding that the domain name
<cspan.net>, which omitted the hyphen from the trademark spelling,
C-SPAN, is confusingly similar to Complainant's mark); see also Ritz-Carlton Hotel Co. v. Club Car Executive
Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in
the domain names is not sufficient to differentiate the domain names from the
mark); see also BIC Deutschland
GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that
the domain name, <tippex.com> is confusingly similar to Complainant’s
mark, TIPP-EX and that use of a hyphen does not negate likelihood of
confusion).
Furthermore, the
addition of the generic top-level domain “.com” is insufficient to negate the
confusing similarity between Respondent’s domain name and Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See 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 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <megandeytoth.com> domain
name pursuant to Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where complainant has asserted that respondent has no rights or
legitimate interests with respect to the domain name it is incumbent on
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 Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (finding that once complainant asserts that respondent has
no rights or legitimate interests with respect to the domain, the burden shifts
to respondent to provide credible evidence that substantiates its claim of
rights and legitimate interests in the domain name); 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 complainant that respondent has no
right or legitimate interest is sufficient to shift the burden of proof to
respondent to demonstrate that such a right or legitimate interest does exist);
see also 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 interest in the domain names).
Respondent is
using the <megandeytoth.com> domain name and the goodwill
associated with Complainant’s MEGAN DEY-TOTH mark to direct Internet users to a
pornographic website featuring links to other pornographic websites. See Isleworth Land Co. v. Lost In Space,
SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that Respondent’s
use of its domain name to link unsuspecting Internet traffic to an adult
orientated website, containing images of scantily clad women in provocative
poses, did not constitute a connection with a bona fide offering of goods or
services or a noncommercial or fair use); see also McClatchy Mgmt. Serv.,
Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that
Respondent’s use of the disputed domain names to divert Internet users
to a website that features pornographic material, had been “consistently held”
to be neither a bona fide offering of goods or services . . . nor a legitimate
noncommercial or fair use); see also Nat’l
Football League Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr.
17, 2000) (finding that Respondent had no rights or legitimate interests in the
domain names <chargergirls.com> and <chargergirls.net> where Respondent
linked these domain names to its pornographic website).
Respondent has
offered no evidence and no proof in the record suggests that Respondent is
commonly known by the <megandeytoth.com> domain name. Thus, Respondent has not established rights
or legitimate interests in the disputed domain name pursuant to 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 respondent was
not commonly known by the mark and never applied for a license or permission
from complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because respondent is not commonly known by the disputed domain name or using
the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc.,
FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that respondent has no rights
or legitimate interests in domain names because it is not commonly known by
complainant’s marks and respondent has not used the domain names in connection
with a bona fide offering of goods and services or for a legitimate
noncommercial or fair use).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(ii).
Respondent has
registered and used the <megandeytoth.com> domain name in bad
faith pursuant to Policy ¶ 4(a)(iii) by using the domain name, which contains a
confusingly similar version of Complainant’s MEGAN DEY-TOTH mark, to market
pornographic material. Such use
constitutes dilution and is evidence that Respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night
Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to
adult-oriented websites was evidence that the domain names were being used in
bad faith); see also Six Continents Hotels, Inc. v. Nowak,
D2003-0022 (WIPO Mar. 4, 2003) (stating that “whatever the motivation of
Respondent, the diversion of the domain name to a pornographic site is itself
certainly consistent with the finding that the Domain Name was registered and
is being used in bad faith”); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding
that absent contrary evidence, linking the domain names in question to graphic,
adult-oriented websites is evidence of bad faith).
Respondent’s
domain name diverts Internet users wishing to search under Complainant’s
well-known mark to a website providing adult-oriented and pornographic
material, which results in Internet user confusion. The Panel infers that Respondent commercially benefits from its
use of the disputed domain name by receiving click-through fees from its
diversion of Internet users to pornographic websites. Respondent’s practice of diversion, motivated by commercial gain,
through the use of a confusingly similar domain name evidences bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Entrepreneur Media,
Inc. v. Smith, 279 F.3d 1135, 1148 (9th
Cir. 2002) (“While an intent to confuse consumers is not required for a finding
of trademark infringement, intent to deceive is strong evidence of a likelihood
of confusion.”); see also Perot Sys.
Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad
faith under Policy ¶ 4(b)(iv) where the domain name in question was obviously
connected with the complainant’s well-known marks, thus creating a likelihood
of confusion strictly for commercial gain).
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 <megandeytoth.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: June 28, 2005
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