Elenie Reese v. Eddie Morgan
Claim Number: FA0702000917029
Complainant is Elenie Reese (“Complainant”), represented by Brett
E. Lewis, of Lewis & Hand, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lilpunk.com>, registered with First Instant, Inc.
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.
Hon. James A. Crary (Ret.), G. Gervaise Davis, III and the Hon. Bruce E. Meyerson (Ret.) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 14, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 16, 2007.
On February 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 8, 2007 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.
A timely Response was received electronically on
On March 22, 2007, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Hon. James A. Crary (Ret.), G. Gervaise Davis, III and the Hon. Bruce E. Meyerson (Ret.) as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant states that she (and a co-owner) began using the LIL PUNK mark in 2003 in connection with the Lil Punk line of children’s clothes and accessories. Complainant states that Respondent has never been known by the domain name nor has Respondent made use of the domain name in connection with a bona fide offering of goods or services. Complainant contends that Respondent is offering the domain name for sale for $125,000. Complainant states that Respondent has a practice of registering domain names of well known and famous trademarks and “pointing them to Web sites featuring pay-per-click advertising” with links of other commercial Web sites.
Complaint asserts that she previously had owned the domain name and that when she attempted to renew the registration, due to a systems error at Register.com, the renewal was not processed.
Respondent states that he purchased the domain name at an auction and at the time was not aware of Complainant’s mark. Respondent asserts that the domain name contains “common terms” and just because Complainant uses the term for baby clothes, that “does not confer to the complainant an enforceable monopoly in the underlying term itself.” Respondent denies that the mere offering of the name for sale for a large amount of money constitutes bad faith.
C. Additional Submissions
In a supplemental communication Respondent restated that he was unaware of Complainant and Complainant’s mark when the domain name was acquired. Respondent further states that he subsequently has taken steps to “insure any links relating to complainant do not show.”
Complainant (and a co-owner) began using the
LIL PUNK mark in 2003 in connection with the Lil Punk line of children’s
clothes and accessories. Complainant
holds a valid
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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;
(2) the 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.
Respondent does not contest that the domain name is
identical or confusingly similar to Complainant’s trademark. Indeed, Complainant has submitted evidence of
The record supports Complainant’s contention that Respondent is not commonly known by the <lilpunk.com> domain name, because Respondent registered the <lilpunk.com> domain name as “Eddie Morgan,” and there is no other evidence in the record suggesting that Respondent is commonly known by the disputed domain name. There is also nothing in the record to contradict Complainant’s assertion that it is the previous registrant of the disputed domain name and that it has not authorized or licensed Respondent to register or use a domain name incorporating its LIL PUNK mark. Thus, the Panel concludes that Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See The Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Furthermore, Complainant also asserts,
without contradiction by Respondent, that Respondent is attempting to sell the
disputed domain name registration on another website and that when Complainant
entered a $100 bid, Respondent demanded $125,000. The Panel finds that Respondent’s willingness
to sell the <lilpunk.com>
domain name for more than its out-of-pocket expenses provides additional
evidence that Respondent has no rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii).
See Wal-Mart Stores,
Inc. v. Stork, D2000-0628 (WIPO
Complainant’s allegation that
Respondent is using the disputed domain name to maintain a web page with links
to various third-party websites unrelated to Complainant, whereby Respondent
generates click-through fees, is unrefuted.
Thus, the Panel finds that Respondent is taking advantage of the
confusing similarity between the <lilpunk.com>
domain name and Complainant’s mark in order to profit from the goodwill
associated with the mark, which demonstrates bad faith registration and use
under Policy ¶ 4(b)(iv). See AOL
LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006)
(finding that the respondent took advantage of the confusing similarity between
the disputed domain names and the complainant’s AOL mark, which indicates bad
faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Association of Junior
Leagues Int’l Inc. v. This Domain Name My Be For
The Panel has considered Complainant’s claim that Respondent has registered domain names under various aliases in addition to the listed registrant, “Eddie Morgan.” Complainant has alleged that Respondent also uses the name “Mike Morgan” and submitted evidence of eleven adverse UDRP decisions against “Mike Morgan.” However, the record does not establish that “Eddie Morgan” and “Mike Morgan” are the same individual and Respondent has denied any affiliation with “Mike Morgan.”
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lilpunk.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. James A. Crary (Ret.), G. Gervaise Davis, III
and the Hon. Bruce E. Meyerson (Ret.), Panelists
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