national arbitration forum

DECISION

Paul G. Allen c/o Vulcan, Inc. and Mojave Aerospace Ventures v. Alex Mayer

Claim Number: FA0809001222962

PARTIES

Complainants are Paul G. Allen c/o Vulcan, Inc. and Mojave Aerospace Ventures (“Complainants”), represented by John C. Rawls, of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Alex Mayer (“Respondent”), Washington, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <paulallen.org>, registered with Domain People 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.

Houston Putnam Lowry, Chartered Arbitrator, as Panelist, Mark McCormick as Panelist, and Sandra J. Franklin as Panelist and Chairperson.

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum electronically on September 3, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 4, 2008.

On September 9, 2008, Domain People Inc. confirmed by e-mail to the National Arbitration Forum that the <paulallen.org> domain name is registered with Domain People Inc. and that Respondent is the current registrant of the name. Domain People Inc. has verified that Respondent is bound by the Domain People 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 September 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 7, 2008 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 postmaster@paulallen.org by e-mail.

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On October 16, 2008, pursuant to Complainants’ request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist, Mark McCormick as Panelist, and Sandra J. Franklin as Panelist and Chairperson.

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.

RELIEF SOUGHT

Complainants request that the domain name be transferred from Respondent to Complainant Paul Allen personally.

PARTIES' CONTENTIONS

A. Complainants make the following assertions:

1. Respondent’s <paulallen.org> domain name is confusingly similar to Complainants’ PAUL ALLEN mark.

2. Respondent does not have any rights or legitimate interests in the <paulallen.org> domain name.

3. Respondent registered and used the <paulallen.org> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Paul Allen is a well-known business figure and philanthropist, who has operated a website at <paulallen.com> since 1996. Paul Allen co-founded software giant Microsoft, Inc. with Bill Gates in 1975. He owns the NFL football team the Seattle Seahawks and the NBA basketball team the Portland Trail Blazers. His philanthropic activities include The Paul G. Allen Family Foundation, The Allen Institute for Brain Science and The Allen Telescope Array. Among many other business ventures, Mr. Allen funded the “SpaceShipOne: A Paul Allen Project”, for which he holds a U.S. Trademark, filed on September 15, 2004, and registered on April 19, 2005.

Respondent registered the <paulallen.org> domain name on September 20, 2005, and uses the domain name to publicize his films, including a film entitled “Paul Alien”. The website at <paulallen.org> very closely mimics the website of The Paul G. Allen Family Foundation website.

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 Complainants’ 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 Complainants 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 Complainants have 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 and/or Confusingly Similar

Complainant Paul Allen has not registered its PAUL ALLEN mark with any governmental authority. However, the UDRP does not require registration of a mark pursuant to Policy ¶4(a)(i), provided Complainant can establish common law rights in its mark. See 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); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).

Since 1996, Complainant Paul Allen has used his PAUL ALLEN mark in conjunction with its <paulallen.com> domain name, which features information about Complainant Paul Allen’s commercial and philanthropic activities in areas including technology, the arts, aerospace, science and sports. Complainant Paul Allen first became publicly known under the PAUL ALLEN mark when he co-founded Microsoft, Inc. with Bill Gates in 1975. Since then Complainant Paul Allen alleges he has continuously used the PAUL ALLEN mark in connection with his commercial and philanthropic activities. In 2004, Complainant Mojave Aerospace Ventures sent the first privately built spacecraft into sub-orbital space under SPACESHIPONE: A PAUL G. ALLEN PROJECT. Complainant Mojave Aerospace Ventures registered its SPACESHIPONE: A PAUL G. ALLEN PROJECT mark with the United States Patent and Trademark Office (“USPTO”) on April 19, 2005 (Reg. No. 2,942,215). Complainant Paul Allen has invested in several commercial ventures under its PAUL ALLEN mark including: The Experience Music Project in 2000, The Seattle Seahawks in 1997, the Portland Trail Blazers in 1988 and The Science Fiction Museum and Hall of Fame. In addition Complainant Paul Allen has used his PAUL ALLEN mark in conjunction with the following philanthropic activities: The Paul G. Allen Family Foundation established in 1986, The Allen Institute for Brain Science founded in 2001, The Allen Telescope Array initially funded in 2001 and the Seattle Seahawks Charitable Foundation. Furthermore, Complainant Paul Allen has been recognized for his philanthropic activities under the PAUL ALLEN mark by Business WEEK in 2005 and Fortune magazine in 1998. The Panel finds Complainants have sufficiently established common law rights in their PAUL ALLEN mark pursuant to Policy ¶4(a)(i). See Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (“A person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law …”); see also 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).

Respondent’s disputed domain name fully incorporates Complainants’ PAUL ALLEN mark with the deletion of the space between the words “paul” and “allen,” and the addition of the generic top-level domain name “.org.” The Panel finds Respondent’s disputed domain name is identical to Complainants’ mark pursuant to Policy ¶4(a)(i). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the respondent’s domain name <charlesjourdan.com> is identical to the complainant’s marks); see also Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark).

The Panel finds that Policy ¶4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainants must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). The burden then shifts to Respondent to show he 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); 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.”).

Complainants contend Respondent is not commonly known by the disputed domain name. Complainants have not authorized Respondent to use their mark in any manner. Additionally, the WHOIS information lists Respondent as “Alex Mayer.” The Panel therefore finds based that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

Complainants contend Respondent is using the disputed domain name to redirect Internet users to Respondent’s <galaxaco.com> and <doomedplanet.com> commercial websites. The Panel finds Respondent’s use of the disputed domain name to redirect Internet users to Respondent’s commercial websites 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). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”); see also Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).

The Panel finds that Policy ¶4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is using the identical disputed domain name to redirect Internet users to Respondent’s <galaxaco.com> and <doomedplanet.com> commercial websites. The Panel finds Respondent’s efforts to redirect Internet users may confuse Internet users as to Complainants’ affiliation with Respondent’s commercial websites. Thus, the Panel finds Respondent’s use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent).

The Panel finds further evidence of bad faith in Respondent’ s efforts to mimic the website of The Paul G. Allen Family Foundation at <paulallen.org>. A review of the two websites reveals an almost identical layout and color scheme, among other similar elements, increasing the likelihood of confusion among Internet visitors. See Amazon.com, Inc. v. MCL International Limited, WIPO Case No. D2000-1678 (March 12, 2001) (intentional use of <yuamazon.com> domain name as the address of a look-alike website to attract Internet users for commercial gain to its website by creating a likelihood of confusion with the AMAZON.COM mark constituted bad faith registration and use of domain name).

The Panel finds that Policy ¶4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <paulallen.org> domain name be TRANSFERRED from Respondent to Complainant Paul Allen.

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Mark McCormick, Panelist

Sandra J. Franklin, Panelist and Chairperson

Dated: October 27, 2008

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