Claim Number: FA0906001269834
Complainant is Sandra
Bullock (“Complainant”), represented by Charles J. Harder, of Wolf, Rifkin, Shapiro, Schulman &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sandrabullock.com>, (the "Domain Name") registered with Core Internet Council of Registrars.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Judge Robert T. Pfeuffer, Sally M.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 22, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 24, 2009.
On June 24, 2009, Core Internet Council of Registrars confirmed by e-mail to the National Arbitration Forum that the <sandrabullock.com> domain name is registered with Core Internet Council of Registrars and that Respondent is the current registrant of the name. Core Internet Council of Registrars has verified that Respondent is bound by the Core Internet Council of Registrars 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 June 26, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 16, 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 30 July 2009, pursuant to
Complainant's request to have the dispute decided by a three-member Panel, the
National Arbitration Forum appointed Judge Robert T. Pfeuffer, Sally M. Abel
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.
Sandra Bullock is a well known and successful television and motion picture actress. Complainant first starred in the national television series, Working Girl in 1990. Since then she has gone on to star in several major motion pictures. Details of Complainant's films, and other noteworthy career accomplishments were provided. It is said that in addition to her acting career, Complainant also is a supporter and advocate for important charitable causes.
As a major motion picture actress, Complainant has used the common law trademark and service mark Sandra Bullock (the SANDRA BULLOCK mark). Respondent registered the Domain Name on November 6, 1996. It comprises Complainant's personal name, Sandra Bullock, followed by ".com."
Complainant asserts that the Domain Name is identical to and/or confusingly similar to the SANDRA BULLOCK mark which comprises a common law trademark in her name.
Complainant further asserts that Respondent has used the Domain Name for profit by placing a website at <www.SandraBullock.com> in the form of an aggregation of third party commercial websites. It is submitted that Respondent is likely to receive click-through revenue from these websites by directing traffic to one or more third party commercial sites.
Complainant contends that Respondent’s website is not a "fan" site dedicated to Complainant and points out that there is no legitimate "fan" content at the site. Instead, it contains a variety of third party commercial websites with the obvious purpose of generating click-through revenue fees for the Respondent.
Complainant contends that Respondent has a long history of cybersquatting against famous people and has provided details of twenty-one NAF and WIPO decisions entered against Respondent, in which transfer of the respective disputed domain name was ordered.
It is submitted that Respondents' use of the Domain Name and the SANDRA BULLOCK mark, to drive traffic to Respondent’s and/or other websites, has the effect or potential effect of interfering with Complainant's acting career and charitable work.
Accordingly, Complainant asserts that:
a. The Domain Name is identical to the SANDRA BULLOCK mark.
b. Respondent does not have any rights or legitimate interests in the Domain Name.
c. Respondent registered and used the Domain Name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Having considered the evidence and submissions as filed, the Panel finds that the Domain Name is identical to the SANDRA BULLOCK mark, Respondent does not have any rights or legitimate interests in the Domain Name and Respondent registered and used the 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:
(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.
Identical or Confusingly Similar
Complainant claims common law rights in the SANDRA BULLOCK mark. Prior to Respondent’s registration of the Domain Name in 1996, Complainant starred in a number of feature films. Since then, Complainant has appeared in a large number of movies and films and has received various awards and career recognitions. Absent evidence to the contrary, the Panel finds that Complainant established common law rights in the SANDRA BULLOCK mark pursuant to Policy ¶ 4(a)(i). 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 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.”).
Complainant contends that the Domain Name is identical to its SANDRA BULLOCK mark. The Panel accepts that this is the case. 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)).
Rights and Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii). If it does so, then the burden shifts to Respondent to show it does have rights or legitimate interests in the disputed domain name. 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).
Complainant contends that Respondent is using the Domain Name to resolve to a website featuring click-through links that further resolve to competing third-party celebrity gossip and entertainment news websites. The Panel accepts the argument that this is likely to be for financial gain and that it does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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 also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Registration and Use in Bad Faith:
Complainant contends that Respondent has a longstanding
history of cybersquatting which constitutes a pattern of bad faith registration
and use under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v.
The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant alleges that Respondent is using a domain name,
which is identical to Complainant’s SANDRA BULLOCK mark, to attract Internet
users to its website containing links to various entertainment websites that
compete with Complainant’s acting career.
The Panel concludes that Respondent has misappropriated Complainant’s
SANDRA BULLOCK mark to divert Internet users to competing websites, and that
such use constitutes bad faith registration and use under Policy ¶
4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business); see also David Hall Rare Coins v.
Thus, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(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 Domain Name be TRANSFERRED from Respondent to Complainant.
Judge Robert T. Pfeuffer,
Sally M. Abel
Dated: 10 August 2009
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