HLC Properties, Ltd. and Bing Crosby Enterprises, Inc. v. Domain Adminstrator
Claim Number: FA0608000771813
Complainant is HLC Properties, Ltd. and Bing Crosby Enterprises, Inc. (“Complainant”), represented by Jill M. Pietrini, of Manatt, Phelps & Phillips, LLP, 11355 W. Olympic Blvd., Los Angeles, CA 90064. Respondent is Domain Administrator (“Respondent”), P.O. Box 533 WB, West Bay, II 000000, KY.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bingcrosby.com>, registered with Parava Networks Inc d/b/a Registrateya.com Naame.com.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 7, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 8, 2006.
On August 8, 2006, Parava Networks Inc d/b/a Registrateya.com Naame.com confirmed by e-mail to the National Arbitration Forum that the <bingcrosby.com> domain name is registered with Parava Networks Inc d/b/a Registrateya.com Naame.com and that Respondent is the current registrant of the name. Parava Networks Inc d/b/a Registrateya.com Naame.com has verified that Respondent is bound by the Parava Networks Inc d/b/a Registrateya.com Naame.com 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 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 5, 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@bingcrosby.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 11, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <bingcrosby.com> domain name is identical to Complainant’s BING CROSBY mark.
2. Respondent does not have any rights or legitimate interests in the <bingcrosby.com> domain name.
3. Respondent registered and used the <bingcrosby.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, HLC Properties, Ltd., obtained common law
rights in the name, persona, and likeness of Bing Crosby from the executor of
Bing Crosby’s estate and from Kathryn Crosby, the widow of Bing Crosby. HLC Properties, Ltd., allows Bing Crosby
Enterprises, Inc., to use these rights with respect to internet services. Bing Crosby was, and continues to be, well
known for both his musical recordings and his acting career. He recorded more than 1,700 songs between
1926 and 1977 and there are currently more than 100 different compact discs of
his recordings for sale worldwide. He
also made many movies in his lifetime, and achieved both box office and
critical success. Bing Crosby was
nominated for an Academy Award for his acting three times, winning once in
1944. Complainant has used the BING
CROSBY mark in connection with promotion of the late entertainer.
Respondent registered the <bingcrosby.com> domain name on June 1, 2006. Respondent’s disputed domain name resolves to a website that displays pop-up advertisements as well as links to third-party websites that are both related and unrelated to Complainant.
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 is not required to own a trademark registration to establish rights in the BING CROSBY mark under 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 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”).
Bing Crosby established rights in the BING CROSBY mark
through his extensive career in both the music and movie industries, and
Complainant now holds these rights. Bing
Crosby recorded more than 1,700 songs in his lifetime and appeared in many
films. The Panel finds that
Complainant’s BING CROSBY mark has acquired secondary meaning sufficient to
establish common law rights in the mark.
See Estate of Tupac 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 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).
Respondent’s <bingcrosby.com> domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i) as it consists of Complainant’s mark in its entirety with the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a gTLD to Complainant’s mark is irrelevant when examining Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also 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 . . . .").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <bingcrosby.com> domain name. Complainant has the initial burden of proof in establishing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“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.”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).
Respondent’s failure to answer the Complaint raises a presumption that Respondent lacks rights and legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”).
There is no evidence in the record suggest that Respondent
is commonly known by the <bingcrosby.com> domain name. Therefore, Respondent has not established
rights or legitimate interests in the disputed 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 the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
Respondent is using the disputed
domain name to divert Internet users to Respondent’s website that displays
pop-up advertisements as well as links to third-party websites that are both
related and unrelated to Complainant’s mark, presumably for Respondent’s
commercial benefit. Such use of the <bingcrosby.com>
domain name is neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the
disputed domain name pursuant according to Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Party Night
Inc. FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that the respondent’s use of “confusingly similar derivatives of
Complainant’s WELLS FARGO mark to divert Internet users to websites featuring
pop-up advertisements” was not a bona fide offering of goods or
services); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to
divert Internet users seeking Complainant's website to a website of Respondent
and for Respondent's benefit is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Respondent is using the <bingcrosby.com> domain
name, which is identical to Complainant’s BING CROSBY mark, to divert Internet
users to a website that displays pop-up advertisements as well as links to
third-party websites. The Panel infers
that Respondent receives commercial benefit for its use of the disputed domain
name. Therefore, Respondent is taking
advantage of the likelihood of confusion between Respondent’s <bingcrosby.com>
domain name and Complainant’s mark and capitalizing on the goodwill associated
with the mark. The Panel finds that
such use constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
respondent directed Internet users seeking the complainant’s site to its own
website for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v.
Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the
respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used
the complainant’s well-known mark to attract users to the respondent's website).
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 <bingcrosby.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: September 22, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page