national arbitration forum

 

DECISION

 

Cameron Diaz v. Network Operations Center c/o Alberta Hot Rods

Claim Number: FA0904001259470

 

PARTIES

Complainant is Cameron Diaz (“Complainant”), represented by Charles J. Harder of Wolf, Rifkin, Shapiro, Schulman & Rabkin, LLP, California, USA.  Respondent is Network Operations Center c/o Alberta Hot Rods (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <camerondiaz.com>, registered with Core Internet Council of Registrars.

 

PANEL

The undersigned certify that they acted independently and impartially and that to the best of their knowledge they have no known conflict in serving as Panelists in this proceeding. Sally M. Abel, Esq., Alan L. Limbury, Esq. and Hon. Carolyn Marks Johnson, Chair, sit as panelists. 

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically April 24, 2009; the National Arbitration Forum received a hard copy of the Complaint April 28, 2009.

 

On April 27, 2009, Core Internet Council of Registrars confirmed by e-mail to the National Arbitration Forum that the <camerondiaz.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 verified that Respondent is bound by the Core Internet Council of Registrars registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On May 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 26, 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 postmaster@camerondiaz.com by e-mail.

 

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

 

On June 3, 2009, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Sally M. Abel, Esq., Alan L. Limbury, Esq., and Hon. Carolyn Marks Johnson, Chair, as Panelists.

 

Having reviewed the communications record, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 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

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain name that Respondent registered, <camerondiaz.com>, is identical to Complainant’s CAMERON DIAZ mark.

 

2.      Respondent has no rights to or legitimate interests in the <camerondiaz.com> domain name.

 

3.      Respondent registered and used the <camerondiaz.com> domain name in bad faith.

 

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

 

FINDINGS

 

Complainant established common law rights in the CAMERON DIAZ mark.

 

Complainant established that the disputed <camerondiaz.com> domain name is identical to Complainant’s CAMERON DIAZ mark. 

 

Complainant established that Respondent has no rights to or legitimate interests in the domain name containing Complainant’s protective mark.

 

Complainant established that Respondent has used the disputed domain name in an attempt to trade off the good will associated with the CAMERON DIAZ mark.

 

Complainant established that Respondent registered and used the disputed domain name in bad faith.

 

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."

 

Given 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 will draw such inferences as the Panel determines to be 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 Complainant to 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 to 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 to and/or Confusingly Similar

 

Registration of a trademark is not necessary to establish that Complainant has rights in the mark, provided Complainant can demonstrate common law rights through sufficient secondary meaning that attaches to the mark.  See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy); 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.”).

 

Complainant claims common law rights in the CAMERON DIAZ mark because the mark is Complainant’s name and Complainant contends that the name has acquired secondary meaning due to the fame and repute of Complainant as an actress.  Complainant has appeared in more than 30 movies, beginning with The Mask in 1994.  Prior to Respondent’s registration of the <camerondiaz.com> domain name in 1996, Complainant appeared in The Mask, The Last Supper, She’s the One, Feeling Minnesota, and Head Above Water.  Absent evidence to the contrary, and recognizing Complainant’s fame and repute as an actress, the Panel finds that pursuant to Policy ¶ 4(a)(i) Complainant established common law rights in the CAMERON DIAZ mark.  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 asserts that the <camerondiaz.com> domain name is identical to Complainant’s CAMERON DIAZ mark.  The disputed domain name omits the space between the two words in the mark and adds the generic top-level domain “.com.”  The Panel agrees; the <camerondiaz.com> domain name is identical to Complainant’s CAMERON DIAZ mark pursuant to Policy ¶ 4(a)(i).  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)).

 

Respondent did not submit a response in this case and therefore made no arguments under Policy ¶ 4(a)(i).  Nonetheless, the Panel examined the record and found no evidence contrary to Complainant’s allegations.

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to and Legitimate Interests:

 

After establishing its rights, Complainant asserts that it has not granted Respondent any license to use the CAMERON DIAZ mark.  The WHOIS information associated with the disputed domain names lists Respondent as “Network Operations Center c/o Alberta Hot Rods.”  The Panel has before it no evidence from Respondent or otherwise that suggests that Respondent has any rights to or legitimate interests in the mark or disputed domain name under Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

 

According to Complainant, Respondent is using the <camerondiaz.com> domain name to resolve to a website displaying links to third-party websites, including adult-oriented websites.  The Panel finds that this 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 Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).

 

Respondent failed to submit a response in this case and therefore makes no arguments under Policy ¶ 4(a)(ii).  The Panel examined the record and found no evidence from Respondent or otherwise to contradict Complainant’s allegations.

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith:

 

Complainant argues that Respondent has been the respondent in prior UDRP disputes wherein the disputed domain names in those cases were transferred to the respective complainants.  See, e.g., Amber Smith v. Network Operations Center c/o Alberta Hot Rods, FA 371622 (Nat. Arb. Forum Jan. 13, 2005); see also H-D Michigan Inc. v Network Operations Center c/o Alberta Hot Rods, FA 671212 (Nat. Arb. Forum May 22, 2006).  In keeping with ICANN Policy, the Panel finds that this evidence supports findings of a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).

 

According to Complainant, Respondent is using the <camerondiaz.com> domain name to link to third-party websites, some of which feature adult-oriented content.  Such evidence supports an inference that Respondent is attempting to profit by hosting links on the resolving website.  The Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)); see also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).

 

Complainant argues that by linking to adult-oriented websites Respondent is attempting to tarnish Complainant’s CAMERON DIAZ mark.  The Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the diversion of the domain name to a [adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”).

 

Respondent did not submit a response in this case and therefore makes no arguments under Policy ¶ 4(a)(iii).  However, the Panel reviewed the submission and found no evidence from Respondent or otherwise to counter Complainant’s allegations.

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

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 <camerondiaz.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson

Chair

Sally M. Abel, Esq.

Alan L. Limbury, Esq.

        

Dated: June 17, 2009

 

 

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