Bruno Senna Empreendimentos Ltda. v. Mark Vadnais
Claim Number: FA0606000741766
Complainant is Bruno Senna Empreendimentos Ltda. (“Complainant”), represented by Cristina Carvalho, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Mark Vadnais (“Respondent”), PO Box 473, Marco Island, FL 34146.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <brunosenna.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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 29, 2006.
On July 3, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <brunosenna.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 July 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 27, 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@brunosenna.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 3, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <brunosenna.com> domain name is identical to Complainant’s BRUNO SENNA mark.
2. Respondent does not have any rights or legitimate interests in the <brunosenna.com> domain name.
3. Respondent registered and used the <brunosenna.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bruno Senna Empreendimentos Ltda., represents Formula 3 race car driver Bruno Senna. Complainant utilizes the BRUNO SENNA mark as the name of Complainant’s company, racing team, and Formula racing car, as well as in connection with clothing, caps, and other racing gear products. Bruno Senna has achieved success on several racing circuits, especially in Europe, where he is currently racing in the Formula 3 racing championship. Bruno Senna and his racing achievements have been the subject of several articles and news reports in various worldwide publications, including Business F1, ICARO, and O GLOBO. Complainant also holds the domain name registration for the <brunosenna.net> domain name, which Complainant uses to operate a website featuring information about the Bruno Senna racing team and its sponsors, as well as information related to Bruno Senna’s history, accomplishments, and media.
Respondent, Mark Vadnais, registered the <brunosenna.com> domain name on March 2, 2004. Respondent’s disputed domain name resolves to a website offering links to third-party websites featuring articles and other information highlighting Complainant’s racing career and accomplishments.
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.
An individual may acquire common law trademark rights in his or her name by demonstrating secondary meaning for the name with actual evidence. See McCarthy on Trademarks and Unfair Competition, § 13:1 “Personal Names as Mark Introduction” (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 Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark). Complainant submitted evidence that it has been extensively using the BRUNO SERRA mark since 2004 as a part of the Bruno Serra racing team and to sponsor the goods and services of multinational corporations. Moreover, Complainant has provided several global publications indicating that Complainant’s mark has been recognized as associated with Complainant and Complainant’s racing team. Therefore, the Panel finds that Complainant has sufficiently demonstrated secondary meaning in its BRUNO SERRA mark, and thus has established common law rights in the mark. See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant had established common law rights in its STELLAR CALL CENTRES mark because the complainant had demonstrated secondary meaning for the mark); see also Marino v. Video Images Prods., D2000-0598 (WIPO Aug. 2, 2000) (finding that evidence of Dan Marino’s NFL career, sports commentary, and movie roles was sufficient to show that Dan Marino’s name had secondary meaning and qualified as a common law trademark).
Furthermore, the Panel finds that Respondent’s <brunosenna.com> domain name is identical to Complainant’s BRUNO SENNA mark pursuant to Policy ¶ 4(a)(i). The disputed domain name consists of Complainant’s mark in its entirety with the omission of the spaces between the words in the mark, and the addition of the generic top-level domain (“gTLD”) “.com.” Consequently, the Panel finds that Respondent’s alterations to Complainant’s mark in the <brunosenna.com> domain name do not differentiate the disputed domain name from the mark for purposes of Policy ¶ 4(a)(i). See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also Valeant Pharms. Int’l v. Carpela, D2005-0786 (WIPO Sept. 2, 2005) (finding that the <cesamet.com> domain name was identical to the complainant’s CESAMET mark because the addition of the gTLD “.com” did not sufficiently distinguish the disputed domain name from the mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant initially bears the burden of demonstrating that Respondent lacks rights or legitimate interests with respect to the disputed domain name. However, upon establishing a prima facie case, the burden of proof shifts from Complainant to Respondent, and Respondent must demonstrate that it has rights or legitimate interests in connection with the disputed domain name under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also 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).”). The Panel finds that Complainant has established a prima facie case and will examine the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶ 4(c).
The Panel finds that the evidence on record does not suggest that Respondent is commonly known by the <brunosenna.com> domain name pursuant to Policy ¶ 4(c)(ii). Complainant asserts that it has not licensed or authorized Respondent to use the BRUNO SERRA mark. Furthermore, Respondent’s WHOIS information fails to indicate that Respondent is not commonly known by the <brunosenna.com> domain name. Therefore, the Panel finds that the evidence on record does not sufficiently demonstrate that Respondent is commonly known by the <brunosenna.com> 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 the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); 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”).
Furthermore, based on the evidence on record, the Panel finds that Respondent’s <brunosenna.com> domain name resolves to a website offering links to third-party websites providing information about Bruno Senna without Complainant’s authorization. As a result, the Panel finds that Respondent’s use of the disputed domain name does not represent either 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 Marino v. Video Images Prods., D2000-0598 (WIPO Aug. 2, 2000) (“In fact, in light of the uniqueness of the name [<danmarino.com>], which is virtually identical to the Complainant’s personal name and common law trademark, it would be extremely difficult to foresee any justifiable use that the Respondent could claim. On the contrary, selecting this name gives rise to the impression of an association with Complainant, which is not based in fact.”); see also Nintendo of Am. Inc. v. Jones, D2000-0998 (WIPO Nov. 17, 2000) (finding that because a “Complainant has the right to decide how its mark will be used in the context of the product or products associated with the mark,” the unauthorized use of an identical domain name within that very context is not legitimate).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As previously stated, the Panel finds that the website
located at Respondent’s <brunosenna.com> domain name provides
links to third-party websites featuring information about Bruno Senna. In light of such use, the Panel finds that
Respondent registered and used the disputed domain name in bad faith pursuant
to Policy ¶ 4(a)(iii), as Internet users could easily mistake Respondent’s
website as one affiliated or authorized by Complainant. See Gilmour v. Cenicolla,
D2000-1459 (WIPO Dec. 15, 2000) (finding bad faith registration of the
<davidgilmour.com> domain name where the respondent knew of the
complainant’s fame long before the registration of the domain name and
registered the name in order to “trade off that reputation by creating a false
association between that domain name and the Complainant’s trademark”); see
also Anne of Green Gable Licensing
Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding
bad faith registration and use where the <anneofgreengables.com> domain
name resolved to an informational website that misled Internet users to believe
that the website was affiliated with the ANNE OF GREEN GABLES mark); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant
prove that domain names are being used in bad faith does not require that it
prove in every instance that a respondent is taking positive action. Use in bad
faith can be inferred from the totality of the circumstances even when the
registrant has done nothing more than register the names.”).
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 <brunosenna.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 17, 2006
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