Weaver v. Stephen Gregory a/k/a 'THIS DOMAIN NAME IS FOR
Claim Number: FA0904001256394
Complainant is Sigourney
Weaver (“Complainant”), represented by Charles
J. Harder, of Wolf, Rifkin, Shapiro, Schulman &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sigourneyweaver.com>, registered with Godaddy.com, Inc.
The undersigned, Daniel B. Banks, Jr., certifies that he and the other panelists, Professor David E. Sorkin and Anne M. Wallace, have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 6, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 8, 2009.
On April 7, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sigourneyweaver.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 April 15, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 5, 2009 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 12, 2009, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., Professor David E. Sorkin and Anne M. Wallace as Panelists.
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.
Complainant is a major motion picture actor and has used the common law trademark and service mark SIGOURNEY WEAVER throughout her acting career. Since 1979, she has starred in numerous motion pictures and has received acting awards and nominations including Academy Award Nominations for Best Actress on several occasions, Golden Globe Awards and Nominations on several occasions, Emmy Nominee for Best Actress and Screen Actor’s Guild Nominee for Best Actress. Complainant has been awarded a Star on the Hollywood Walk of Fame.
Complainant has received numerous other awards for her acting and is a highly sought after and successful voice-over actress and narrator. She is also an outspoken advocate for many important charitable organizations.
Respondent registered the disputed domain name on March 1, 1999 using Complainant’s personal name, Sigourney Weaver, followed by “.com.” Respondent’s registration of the domain name identifies Respondent’s name as “Stephen Gregory ‘THIS DOMAIN NAME IS FOR SALE,’” thus indicating Respondent’s intent to sell the domain name for profit. Respondent has been using the domain name for profit by having it automatically forward to a hardcore pornographic website, <clubpink.com>, which takes the user to the website <nymphogirls.com> which contains explicit pornographic images. Respondent presumably receives a click-through revenue stream by directing traffic to the pornographic site using the domain name.
On March 30, 2009, Complainant’s legal representative sent a letter to Respondent requesting the immediate transfer of the domain name to Complainant. Respondent did not reply but de-linked the domain name from the pornographic site within 24 hours after the demand letter was transmitted.
Respondent has engaged in acts of cybersquatting against famous individuals and has been a Respondent in at least three prior domain name arbitrations filed by famous persons, after Respondent registered a domain name consisting of the famous person’s first and last name followed by “.com.” In most of those cases, Respondent pointed the domain name to a hardcore pornographic website. In each of those other cases, Respondent was ordered to transfer the domain name to the Complainant.
Complainant makes the following assertions:
<![if !supportLists]>1. <![endif]>Respondent’s <sigourneyweaver.com> domain name is identical to Complainant’s SIGOURNEY WEAVER mark.
<![if !supportLists]>2. <![endif]>Respondent does not have any rights or legitimate interests in the <sigourneyweaver.com> domain name.
<![if !supportLists]>3. <![endif]>Respondent registered and used the <sigourneyweaver.com> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
<![if !supportLists]>1. <![endif]>Respondent’s <sigourneyweaver.com> domain name is identical to Complainant’s SIGOURNEY WEAVER mark.
<![if !supportLists]>2. <![endif]> Respondent does not have any rights or legitimate interests in the disputed domain name.
<![if !supportLists]>3. <![endif]>Respondent registered and used the disputed domain name 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 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:
<![if !supportLists]>(1) <![endif]>the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
<![if !supportLists]>(2) <![endif]>Respondent has no rights or legitimate interests in respect of the domain name; and
<![if !supportLists]>(3) <![endif]>the domain name has been registered and is being used in bad faith.
Complainant does not assert a trademark registration for her SIGOURNEY WEAVER mark with any governmental trademark authority. However, the Panel finds that Complainant does not need to demonstrate such registrations in order to have rights in the mark under Policy ¶ 4(a)(i) provided Complainant can demonstrate her common law rights in the mark through sufficient secondary meaning. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
rights in the SIGOURNEY WEAVER mark through her career as a major motion
picture actress since 1979. Complainant
has become famous and well-known through this career, and has received numerous
awards and accolades. Moreover,
Complainant has utilized her name recognition to promote various charitable
causes. Complainant has demonstrated
sufficient secondary meaning in her SIGOURNEY WEAVER mark under Policy ¶ 4(a)(i) to establish common law rights in the mark. See Barnes v. Old Barn Studios Ltd., D2001‑0121
(WIPO Mar. 26, 2001) (finding that all that is required for a famous or very
well-known person to establish a common law trademark in their name is
likelihood of success in an action against a third party who has engaged in
passing off as the famous person in trade without authority); see also James v. Demand Domains, FA 1106240
(Nat. Arb. Forum Dec. 27, 2007) (“The AMI JAMES mark has become distinct
through Complainant’s use and exposure of the mark in the marketplace and
through use of the mark in connection with Complainant’s television show,
clothing line, and tattoo shop for over seventeen years.”); see also Iacocca v.
Complainant argues that the <sigourneyweaver.com> domain name is identical to Complainant’s SIGOURNEY WEAVER mark despite the omission of the space in the mark and the addition of the generic top-level domain “.com.” The Panel finds that neither alteration has created sufficient distinction in the disputed domain name and that the disputed domain name is identical to the mark under Policy ¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden of production shifts to Respondent to come forward with evidence of rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant’s prima facie case consists of evidence that Respondent is not commonly known by the disputed domain name. The WHOIS information lists Respondent as “Stephen Gregory a/k/a ‘THIS DOMAIN NAME IS FOR SALE.’” The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Also, Respondent previously linked the disputed domain name to a website containing pornographic material. Complainant has submitted evidence documenting this usage. However, Respondent ceased linking the disputed domain name to such a website only after receiving a cease-and-desist letter from Complainant. No other usage has been put forth by either party. The Panel finds that Respondent has not made either an actual use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Boch, FA 209902 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent uses <aol-x.com> in connection with pornographic material, which is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶¶ 4(c)(i) [and] (iii).”); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant also asserts that Respondent has offered the disputed domain name for sale to the public, based on its WHOIS listing’s notation of such an offer, and Complainant’s evidence of Respondent’s practice of selling other domain names. Respondent’s offer to sell the disputed domain name further demonstrates Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
Respondent has been the
respondent in other analogous UDRP proceedings wherein the disputed domain
names were transferred from Respondent to the respective complainants in those
cases. See, e.g., Faxon, Jr. v. Stephen Gregory a/k/a ‘THIS DOMAIN IS FOR
Also, the disputed domain name previously resolved to an adult-oriented pornographic website. The Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the 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 Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sigourneyweaver.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: May 22, 2009
Daniel B. Banks, Jr., Panel Chair
Professor David E. Sorkin, Panelist
Anne M. Wallace, Panelist