My Fist Productions, Inc v. Portfolio Admin / Old Mill Sites
Claim Number: FA2004001891154
Complainant is My Fist Productions, Inc. (“Complainant”), represented by Stephen J. Strauss of BUCHALTER, A PROFESSIONAL CORPORATION, California, USA. Respondent is Portfolio Admin / Old Mill Sites (“Respondent”), Grenada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <patriciaarquette.com> (the “disputed domain name”), registered with Rebel Ltd.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 6, 2020; the Forum received payment on April 6, 2020.
On April 9, 2020, Rebel Ltd confirmed by e-mail to the Forum that the <patriciaarquette.com> disputed domain name is registered with Rebel Ltd and that Respondent is the current registrant of the name. Rebel Ltd has verified that Respondent is bound by the Rebel Ltd registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@patriciaarquette.com. Also on April 10, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 5, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, My Fist Productions, Inc., is a production company that holds all intellectual property and publicity rights for Patricia Arquette, an internationally-recognized and award-winning actor, producer and director of motion pictures and television shows and a music artist. Complainant has common law rights in the PATRICIA ARQUETTE mark through its use in commerce in connection with motion pictures, video and sound recordings, and entertainment services since 1987. Complainant also has a pending trademark application for the PATRICIA ARQUETTE mark with the United States Patent and Trademark Office (“USPTO”) (serial no. 88/798617, filing date February 14, 2020) (collectively, the “PATRICIA ARQUETTE Mark”).
The disputed domain name is identical to Complainant’s PATRICIA ARQUETTE Mark as it incorporates the mark in its entirety, merely appending a “.com” generic Top-Level Domain (“gTLD”).
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s PATRICIA ARQUETTE Mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to resolve to a website which displays pay-per-click links to third-party websites relating to Ms. Arquette and motion pictures. Respondent additionally uses the resolving website to offer the disputed domain name for sale.
Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to attract Internet users to its website for commercial gain via third-party pay-per-click links and to offer the disputed domain name for sale to the general public. Respondent engages in passive holding of the disputed domain name. Additionally, Respondent had constructive or actual knowledge of Complainant’s rights in the PATRICIA ARQUETTE Mark due to Respondent’s use of the disputed domain name to link to third-party websites relating to Ms. Arquette or the motion pictures in which she was involved.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant holds trademark rights in the PATRIACIA ARQUETTE Mark. Moreover, the Panel finds that the disputed domain name is confusingly similar to Complainant’s PATRICIA ARQUETTE Mark, that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using 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."
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 disputed 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 disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has established rights in the PATRICIA ARQUETTE mark under Policy ¶ 4(a)(i). Registration with the USPTO is sufficient to establish rights in a trademark pursuant to Policy ¶4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides screenshots of internet sources such as a Wikipedia listing for Patricia Arquette, showing her filmography with billing for movies going back to 1987. Policy ¶ 4(a)(i) does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”).
A complainant can establish common law rights in a mark by showing evidence that the mark has acquired secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). The Panel finds that the PATRICIA ARQUETTE mark has acquired secondary meaning related to entertainment goods and services. Complainant provides news articles and online encyclopedia entries describing Patricia Arquette’s entertainment career and accolades, including, among other awards, an Academy Award and several Golden Globe Awards. Thus, the Panel concludes that Complainant has established common law trademark rights in the PATRICIA ARQUETTE Mark.
Complainant has applied for registration of the PATRICIA ARQUETTE mark with the USPTO (serial no. 88/798617, filing date February 14, 2020). While the filing of a trademark may not be sufficient to establish trademark rights, the Panel finds that the common law rights referenced above plus a pending trademark application satisfies the establishment of a trademark in this case.
Respondent’s disputed domain name is identical or confusingly similar to the PATRICIA ARQUETTE Mark, as the name incorporates the mark in its entirety, and merely appends a “.com” gTLD to the mark. Use of a complainant’s mark as a disputed domain name fails to distinguish the mark for the purposes of a Policy ¶ 4(a)(i) analysis and the addition of a gTLD may not be sufficient to distinguish the disputed domain name from the mark. See Cards Against Humanity, LLC v. sri winarti, FA 1736823 (Forum July 31, 2017) (“The Panel therefore finds Respondent’s <cardsagainsthumanity.us> to be identical to Complainant’s CARDS AGAINST HUMANITY mark.”); see also Tupelo Honey Hospitality Corp. v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Therefore, the disputed domain name is identical or confusingly similar to the PATRICIA ARQUETTE Mark per Policy ¶ 4(a)(i).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Rights or Legitimate Interests
In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (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.”). Here, the Panel holds that Complainant has made out a prima facie case.
Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the PATRICIA ARQUETTE Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain name to resolve to a landing page containing sponsored pay-per-click links and also offers the disputed domain name for sale. Where a respondent’s use of a disputed domain name is to offer it for sale, the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
First, Respondent registered and is using the disputed domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iii) can be found where a respondent uses a confusingly similar domain name to disrupt the Complainant’s business by diverting users to a disputed domain name that resolves to a website with pay-per-click links. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Furthermore, bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with the Complainant. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Here, Respondent created a likelihood of confusion with Complainant and its PATRICIA ARQUETTE Mark by registering a disputed domain name that incorporates in its entirety Complainant’s PATRICIA ARQUETTE Mark. Respondent’s use of the disputed domain name resolves to a website that displays hyperlinks that resolve to third-party websites related to the actor Patricia Arquette.
Second, Respondent registered and is using the disputed domain name in bad faith because Respondent made a general offer to sell the domain name. A general offer for sale can evince bad faith under Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). Here, Complainant provides a screenshot of the disputed domain name’s resolving website which displays the message “This domain may be for sale. Click here for more info.” Therefore, the Panel finds that the offer to sell the disputed domain name indicates bad faith registration and use under Policy ¶ 4(b)(i).
Third, in light of the fame of PATRICIA ARQUETTE, the actor, and the PATRICIA ARQUETTE Mark, it is inconceivable that Respondent registered the disputed domain name without actual knowledge of Complainant’s rights in the mark. Registering a domain name with knowledge of another’s rights may be indicative of bad faith under Policy ¶4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). Here, the use of the disputed domain name’s resolving website to display pay-per-click links related to Patricia Arquette and motion pictures indicates that Respondent had actual knowledge of Complainant’s rights in the PATRICIA ARQUETTE Mark and therefore registered the PATRICIA ARQUETTE Mark in bad faith under Policy ¶ 4(a)(iii).
Finally, since Respondent fails to make active use of the disputed domain name, the use of the disputed domain name passively indicates bad faith per Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <patriciaarquette.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: May 10, 2020
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