The Estate of Dorothy Dandridge v. Dick Lobin
Claim Number: FA0605000702606
Complainant is The Estate of Dorothy Dandridge (“Complainant”), represented by Lawrence V. Molnar c/o CMG Worldwide, Inc., 10500 Crosspoint Blvd., Indianapolis, IN 46256. Respondent is Dick Lobin (“Respondent”), 12020 Chapman Avenue #125, Garden Grove, CA 92840-3746.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <dorothydandridge.com>, registered with Network Solutions, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 8, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 9, 2006.
On May 9, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <dorothydandridge.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 May 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 31, 2006 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@dorothydandridge.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 5, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is the owner of trademarks and copyrights in the name and likeness of the late actress and singer Dorothy Dandridge.
Dandridge acted in many movies during the 1930s to 1960s and was the first African-American to be nominated for an Academy Award for Best Actress.
Dandridge’s movie credits include Carmen Jones, Island in the Sun, and Porgy and Bess.
Dandridge was also a member of the music group “The Dandridge Sisters,” touring all over the world and performing in various musical venues.
Dandridge has a star on the Hollywood Walk of Fame and was inducted into the Black Film Hall of Fame in 1977.
In 1999, actress Halle Berry won an Emmy Award for her portrayal of Dorothy Dandridge in the film Introducing Dorothy Dandridge.
Complainant has filed a trademark registration application with the United States Patent and Trademark Office (“USPTO”) for the marks DOROTHY DANDRIDGE (Serial No. 78/837,653 filed March 15, 2006) and DOROTHY JEAN DANDRIDGE (Serial No. 78/837,678 filed March 15, 2006).
Respondent registered the <dorothydandridge.com> domain name on March 14, 1999.
The disputed domain name does not resolve to any content.
Respondent’s <dorothydandridge.com> domain name is identical to Complainant’s DOROTHY DANDRIDGE mark.
Respondent does not have any rights or legitimate interests in the domain name <dorothydandridge.com>.
Respondent registered and uses the <dorothydandridge.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant is not required to own a trademark registration in order to establish rights in the DOROTHY DANDRIDGE mark pursuant to Policy ¶ 4(a)(i). See 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.” See also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that a complainant's trademark or service mark be registered by a government authority or agency for rights in a mark to exist).
Respondent does not deny that Complainant has established
common law rights in the DOROTHY DANDRIDGE mark pursuant to Policy 4(a)(i),
because the DOROTHY DANDRDIGE mark is well-known in connection with the famous
actress under Policy ¶ 4(a)(i). See Sade v. Quantum Computer Servs., Inc., D2000-0794 (WIPO Sept. 26,
2000) (finding that although a complainant did not register the word “SADE”
either as a trademark or as a service mark, the complainant adopted the word
“SADE” as the complainant’s stage-name and as a trademark and service mark, so
that the complainant established that it had common law rights in the mark); see also MPL Commc’ns Ltd v. Hammerton, FA 95633 (Nat. Arb. Forum Oct. 25,
2000) (finding that a complainant owned common law rights to the name Paul
McCartney).
It is further undisputed that Respondent’s <dorothydandridge.com> domain name is identical to Complainant’s DOROTHY DANDRIDGE mark. The disputed domain name contains the entire mark and merely adds a generic top-level domain (“gTLD”). The mere addition of a gTLD to Complainant’s famous mark does not sufficiently distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to a complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); 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 purposes of determining whether it is identical or confusingly similar to a competing mark within the meaning of the Policy).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <dorothydandridge.com> domain name. Complainant must first make out a prima facie case in support of its allegations. The burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
See also Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding
that, where a complainant has asserted that a respondent has no rights or
legitimate interests with respect to a 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”).
Respondent’s failure to answer the Complaint thus raises a
presumption that Respondent has no rights or legitimate interests in the <dorothydandridge.com>
domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug.
21, 2000) (finding no rights or legitimate interests where the respondent fails
to respond); see also BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000): “By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”
However, the Panel will
nonetheless examine the record to determine if there is any evidence showing
that Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “Dick
Lobin,” and there is no evidence in the record suggesting that Respondent is
commonly known by the <dorothydandridge.com> domain name. Thus, Respondent has not established rights
or legitimate interests in the <dorothydandridge.com> domain name
pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that a respondent does not have rights in a domain name when
the respondent is not known by the mark); see also 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.”
Furthermore, Respondent’s <dorothydandridge.com>
domain name, which is identical to Complainant’s DOROTHY DANDRIDGE mark, does
not resolve to any web site content, and Respondent there is no evidence
indicating that it has made demonstrable preparations to use the disputed
domain name. Therefore, it appears that
Respondent has been passively holding the disputed domain name since
registering it in March 1999. In
Bloomberg L.P. v. SC Media Services and Information SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004), a
respondent registered but was not using the <bloomberg.ro> domain name
for any purpose. The Panel found that
the passive holding of a domain name identical to a complainant’s mark, here
the BLOOMBERG mark, was not a bona
fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
of the domain name pursuant to Policy ¶
4(c)(iii). Id. Because Respondent is also passively holding
a domain name identical to Complainant’s mark, Respondent’s non-employment of
the disputed domain name for over seven years does not constitute a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003): “Respondent's
passive holding of the <aolfact.com> domain name for over six months is
evidence that Respondent lacks rights and legitimate interests in the domain
name.”
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered the <dorothydandridge.com> domain name in 1999. Since then the disputed domain name has not resolved to any web site content. Such non-employment provides evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). As a panel observed in Phat Fashions, LLC v. Kruger, FA 9619 (Nat. Arb. Forum Dec. 29, 2000), “it makes no sense whatever to wait until … [a respondent] … actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy.” See also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Moreover, Complainant alleges, and Respondent does not deny, that Respondent registered and uses the <dorothydandridge.com> domain name in bad faith. Respondent’s failure to respond to the Complaint herein, denying such allegations, supports a finding of bad faith on its part under the Policy. See, for example, MC Enterprises v. Mark Segal (Namegiant.com), D2005-1270 (WIPO Jan. 27, 2006):
Although a respondent is not obliged to
participate in a domain name dispute, if it were to fail to do so, it would be
vulnerable to the inferences that flow naturally from a complainant’s not
unreasonable assertions of fact.
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <dorothydandridge.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 16, 2006
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