Julie E. Gauthier p/k/a Juli Ashton v. Ed
Hodges
Claim Number: FA0509000554835
PARTIES
Complainant
is Julie E. Gauthier p/k/a Juli Ashton, (“Complainant”), 449 ½ Sycamore Ave.,
Los Angeles, CA 90036. Respondent is Ed Hodges, (“Respondent”), 2250
Eldridge Parkway #216, Houston, TX 77077.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <juliashton.us>,
registered with Go Daddy Software, Inc.
PANEL
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.
Sandra
Franklin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 7, 2005; the Forum received a hard copy of the
Complaint on September 7, 2005.
On
September 8, 2005, Go Daddy Software, Inc. confirmed by e-mail to the Forum
that the domain name <juliashton.us>
is registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with the U. S. Department of
Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On
September 9, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 9, 2005 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute
Resolution Policy (the “Rules”).
Having
received no Response from Respondent, the Forum transmitted to the parties a
Notification of Respondent Default.
On
October 5, 2005, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules. Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles
of law that the Panel deems applicable, without the benefit of any Response
from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
assertions:
1. The <juliashton.us>
domain name registered by Respondent is identical to Complainant’s JULI
ASHTON mark.
2.
Respondent
has no rights to or legitimate interests in the <juliashton.us> domain
name.
3.
Respondent registered or used the <juliashton.us> domain name in
bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Julie Gauthier p/k/a Juli
Ashton is a performer, actor, model and celebrity personality in the adult
entertainment industry. Complainant has
adopted the pseudonym “Juli Ashton” to use as her performing name and has
identified herself professionally as “Juli Ashton” for the past eleven years.
Complainant is one of the most well-known
media personalities in the adult entertainment industry. Complainant has hosted several television
and radio shows including the show “Night Calls” on Playboy TV for the past ten
years and a daily radio show on XM Satellite Radio. Complainant has also appeared in numerous publications, including
Time, Playboy, Variety, Gear and the Los Angeles
Times. Complainant has expended
substantial amounts of time and money promoting herself under the JULI ASHTON
mark. As a result, the public
associates the JULI ASHTON mark and Complainant’s likeness with Complainant.
Complainant has registered its JULI
ASHTON mark with the United States Patent and Trademark Office (“USPTO”) (Reg.
No. 2,618,320 issued September 10, 2002).
Respondent registered the <juliashton.us> domain name on June 15, 2004. Respondent’s domain name resolves to a
website that prominently displays Complainant’s mark and likeness and sells
products and services that feature with Complainant.
DISCUSSION
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 the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights; and
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision.
Complainant
established, with extrinsic proof in this proceeding that it has rights to the
JULI ASHTON mark as evidenced by its registration with the USPTO. See Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's
federal trademark registrations establish Complainant's rights in the BLIZZARD
mark.”); see
also Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of
the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Furthermore,
Respondent’s <juliashton.us>
domain name is identical to Complainant’s JULI ASHTON mark because the
domain name incorporates Complainant’s mark in its entirety and merely adds the
country-code “.us.” See Tropar Mfg.
Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since
the addition of the country-code “.us” fails to add any distinguishing
characteristic to the domain name, the <tropar.us> domain name is
identical to the complainant’s TROPAR mark); see also Gardline Surveys Ltd.
v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Respondent
does not have rights or legitimate interests in the <juliashton.us> domain name.
When a complainant establishes a prima
facie case, the burden shifts to the respondent to prove that it has rights
or legitimate interests. Due to
Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent does not have rights or legitimate interests in the disputed domain
name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once the complainant asserts that the respondent does not
have rights or legitimate interests with respect to the domain, the burden
shifts to the respondent to provide credible evidence that substantiates its
claim of rights or legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such rights or legitimate
interests do exist); see also Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a response, the respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Moreover,
Respondent is not the owner or beneficiary of a trade or service mark that is
identical to the <juliashton.us> domain
name and is not commonly known by the domain name. Thus, the Panel concludes that Respondent has not established
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(i) or Policy ¶ 4(c)(iii). See Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where respondent was not commonly known by the mark and never applied
for a license or permission from complainant to use the trademarked name); see
also Broadcom Corp. v. Intellifone
Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or
legitimate interests because respondent is not commonly known by the disputed
domain name or using the domain name in connection with a legitimate or fair
use); see also Hartford Fire Ins.
Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding
that the respondent has no rights or legitimate interests in the domain names
because it is not commonly known by the complainant’s marks and the respondent
has not used the domain names in connection with a bona fide offering of
goods and services or for a legitimate noncommercial or fair use).
Furthermore,
Respondent is using a domain name that is identical to Complainant’s JULI
ASHTON mark to operate a website that markets products and services in
competition with Complainant. Such competitive use is not a use in
connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with
complainant, was not a bona fide
offering of goods or services); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of UDRP ¶¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
has registered and used the <juliashton.us>
domain name in bad faith by using the domain name, which is identical to
Complainant’s JULI ASHTON mark, to market products and services that directly
compete with those of Complainant’s business.
Such use constitutes disruption and is evidence that Respondent
registered and used the domain name in bad faith pursuant to Policy ¶
4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
July 18, 2000) (finding respondent acted in bad faith by attracting Internet
users to a website that competes with complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited
Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that
the minor degree of variation from complainant's marks suggests that
respondent, complainant’s competitor, registered the names primarily for the
purpose of disrupting complainant's business).
Moreover,
Respondent registered and used the disputed domain name in bad faith under
Policy ¶ 4(b)(iv), as Respondent is using the <juliashton.us> domain name to intentionally attract, for
commercial gain, Internet users to its website, by creating a likelihood of
confusion with Complainant as to the source, sponsorship, affiliation or
endorsement of its website. See Fanuc Ltd v. Mach. Control Servs.,
FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated
UDRP ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's
mark by using a domain name identical to the complainant’s mark to sell the
complainant’s products); see also G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to UDRP ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website).
Furthermore,
Respondent has used the <juliashton.us>
domain name, which contains Complainant’s JULI ASHTON mark, to redirect
Internet users to Respondent’s website featuring goods and services that
compete with Complainant’s business.
This suggests that Respondent had actual knowledge of Complainant’s
rights in the mark when it registered the domain name and chose the disputed
domain name based on the goodwill Complainant has acquired in its JULI ASHTON
mark. Furthermore, Complainant’s
registration of the JULI ASHTON mark with the USPTO bestows upon Respondent
constructive notice of Complainant’s rights in the mark. Respondent’s registration of a domain name
containing Complainant’s mark in spite of Respondent’s actual or constructive
knowledge of Complainant’s rights in the mark is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see
also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the
complainant’s mark and the content advertised on the respondent’s website was
obvious, the respondent “must have known about the Complainant’s mark when it
registered the subject domain name”); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
The Panel finds that Policy ¶ 4(a)(iii) has been
satisfied.
DECISION
Having
established all three elements required under the usTLD Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the <juliashton.us>
domain name be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: October 18, 2005
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