Estate of Hunter S. Thompson v. Mitchell
Moore
Claim
Number: FA0508000530332
Complainant is Estate of Hunter S. Thompson (“Complainant”),
represented by Miriam D. Trudell of Sheridan Ross P.C.,
1560 Broadway, Suite 1200, Denver, CO 80202.
Respondent is Mitchell Moore (“Respondent”),
13-H, One North Point Terrace, Cheung, Hong St., North Point, HKG.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <huntersthompson.com>, registered with Network
Solutions, 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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
3, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 4, 2005.
On
August 4, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the <huntersthompson.com> domain name is
registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network Solutions, Inc. has verified that Respondent is
bound by the Network Solutions, 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 5, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 25, 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@huntersthompson.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 1, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed the
Honorable Charles K. McCotter, Jr. (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 <huntersthompson.com>
domain name is identical to Complainant’s HUNTER S. THOMPSON mark.
2. Respondent does not have any rights or
legitimate interests in the <huntersthompson.com> domain name.
3. Respondent registered and used the <huntersthompson.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Estate of Hunter S. Thompson, is the current
owner of common law rights in the HUNTER S. THOMPSON mark, which were
previously held by the late author, Hunter S. Thompson who died on February 22,
2005. Mr. Thompson was a famous
journalist, author and freelance writer and has been a pop-culture figure for
at least the past four decades.
Mr. Thompson
wrote and contributed to a large number of published books and novels,
including many bestsellers. He is best
known for his book Fear and Loathing in Las Vegas, which was adapted
into a major motion picture, starring actor Johnny Depp, that was released in
1998 under the same name. Mr. Thompson
is also known for pioneering a style of reporting known as “gonzo journalism,”
which is described as highly suggestive and personal. Furthermore, at least three biographies have been written about
Mr. Thompson’s life, and the movie Where the Buffalo Roam, starring Bill
Murray, is based on the “legend” of Mr. Thompson.
Respondent registered the <huntersthompson.com> domain name on March 15, 1999. Respondent has not made any use of the
disputed domain name. In an article by
Matt Welch dated December 21, 2000 and posted on Online Journalism Review,
Respondent appears to admit knowledge of Mr. Thompson as well as an interest in
trading the domain name registration for signed paraphernalia from Mr.
Thompson.
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.
Complainant
asserts that the HUNTER S. THOMPSON mark has acquired sufficient secondary
meaning to establish common law rights based on Mr. Hunter’s fame and
reputation associated with his work.
The Panel finds that Complainant has proved that the HUNTER S. THOMPSON
mark has become sufficiently connected to Mr. Thompson’s work that the public
associates that work, including Mr. Thompson’s particular writing style, with
Mr. Thompson and his mark. Furthermore,
Mr. Thompson’s common law rights passed to Complainant following Mr. Thompson’s
death. 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 the complainant that common law trademark rights
exist); see also Estate of 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 …”); see also CMG Worldwide, Inc. v. Naughtya Page, FA 95641 (Nat. Arb. Forum
Nov. 8, 2000) (finding that Princess Diana had common law rights in her name at
her death and that those common law rights have since been transferred to the
complainant, the representative of Princess Diana’s estate).
The <huntersthompson.com>
domain name differs from Complainant’s HUNTER S. THOMPSON mark only with the
deletion of the period, the omission of spaces between words and the addition
of the generic top-level domain (“gTLD”) “.com.” All of these changes, separately and together, are irrelevant in
determining similarity under the Policy and, therefore, do not function as
distinguishing features. Thus, the
domain name is identical to Complainant’s mark under 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 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 Mrs. World Pageants,
Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding
that punctuation is not significant in determining the similarity of a domain
name and mark).
Consequently,
the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
It has been
established under the Policy that the complainant has the initial burden of
proving that the respondent lacks rights and legitimate interests in the
disputed domain name. In Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001), the panel held:
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.
Id.; see also 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”). Having found that Complainant has met its
initial burden by establishing a prima facie case, the Panel will now
analyze whether Respondent has met its burden to establish rights or legitimate
interests in the disputed domain name under Policy ¶ 4(c).
Complainant
argues that Respondent is not commonly known by the <huntersthompson.com>
domain name and that Complainant has not licensed or otherwise authorized
Respondent to use any version of Complainant’s HUNTER S. THOMPSON mark for any
purpose. The WHOIS information for the
disputed domain name lists Respondent as “Mitchell Moore” and identifies no
other connection between Respondent and the disputed domain name. Because Respondent has failed to respond to
any of Complainant’s contentions, the Panel is left with no evidence to rebut
Complainant’s assertions that Respondent is not commonly known by the disputed
domain name. Thus, the Panel finds that
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Wells Fargo & Co. v. Onlyne
Corp. Services11, Inc., FA 198969 (Nat.
Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
see also 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 Vanguard Group, Inc. v.
Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because
Respondent failed to submit a Response, “Complainant’s submission has gone
unopposed and its arguments undisputed.
In the absence of a Response, the Panel accepts as true all reasonable
allegations . . . unless clearly contradicted by the evidence.”).
Additionally,
Complainant asserts that Respondent has never used the <huntersthompson.com>
domain name for any purpose since registering the domain name more than six
years ago. Without a response from
Respondent, the Panel accepts as true Complainant’s assertion that Respondent
is passively holding the disputed domain name.
See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum
Dec. 1, 2004) (finding that because Respondent failed to submit a Response,
“Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel
accepts as true all reasonable allegations . . . unless clearly contradicted by
the evidence.”). The Panel holds that
Respondent’s passive holding of the <huntersthompson.com> domain
name is not a bona fide offering of goods or services or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19,
2001) (finding no rights or legitimate interests in the domain name
<solgarvitamins.com> where the respondent merely passively held the
domain name); see also Bloomberg
L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no
rights or legitimate interests can be found when the respondent fails to use
disputed domain names in any way).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant
alleges that Respondent acted in bad faith in registering the <huntersthompson.com>
domain name and holding it. Although
Policy ¶ 4(b) includes a list of four specific situations that constitute
evidence of bad faith registration and use, the Panel is not limited to this
list and may take into account additional evidence in making a finding under
Policy ¶ 4(a)(iii). See Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000)
(finding that in determining if a domain name has been registered in bad faith,
the Panel must look at the “totality of circumstances”); see also Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples
[of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”).
The <huntersthompson.com>
domain name includes Complainant’s HUNTER S. THOMPSON mark in its entirety
and Respondent has not provided any evidence that would suggest that Respondent
is holding the disputed domain name for any non-infringing purpose. Without any indication that Respondent
registered the identical domain name for a legitimate purpose, the Panel finds
that Respondent’s passive holding of the <huntersthompson.com> domain
name for more than six years constitutes evidence of bad faith registration and
use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive
holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the
Policy); see also Alitalia –Linee
Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000)
(finding bad faith where the respondent made no use of the domain name in
question and there are no other indications that the respondent could have
registered and used the domain name in question for any non-infringing
purpose); see also Caravan Club v.
Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the
respondent made no use of the domain name or website that connects with the
domain name, and that passive holding of a domain name permits an inference of
registration and use in bad faith).
Complainant’s
registration of a domain name that is identical to Complainant’s famous HUNTER
S. THOMPSON mark is evidence that Respondent knew of Complainant’s rights in
the mark when it registered the disputed domain name. Furthermore, Complainant has provided an article that includes a
quote from Respondent admitting knowledge of Mr. Thompson’s rights in the
mark. Moreover, the fame of
Complainant’s mark also indicates that Respondent had actual knowledge of
Complainant’s rights. Respondent’s
registration of the <huntersthompson.com> domain name with actual
or constructive knowledge of Complainant’s rights in the mark is evidence of
bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad
faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”); 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); see also
Ty Inc. v. Parvin, D2000-0688 (WIPO
Nov. 9, 2000) (finding that the respondent’s registration and use of an
identical and/or confusingly similar domain name was in bad faith where the
complainant’s BEANIE BABIES mark was famous and the respondent should have been
aware of it).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <huntersthompson.com> domain name be TRANSFERRED
from Respondent to Complainant.
Charles K. McCotter, Jr. (Ret.), Panelist
Dated:
September 15, 2005
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