Anthony Hopkins and The Trustees of The Samson Holding Trust, dated December 12, 2005 v. Private Whois Service c/o anthonyhopkins.com
Claim Number: FA1007001337181
Complainant is Anthony
Hopkins and The
Trustees of The Samson Holding Trust, dated December 12, 2005 (“Complainant”),
represented by Stephen J. Strauss, of Fulwider Patton LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <anthonyhopkins.com>, registered with Internet.bs Corp.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 23, 2010.
On July 23, 2010, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <anthonyhopkins.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 July 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 2010 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@anthonyhopkins.com. Also on July 27, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 25, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
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" through submission of a Written Notice, as defined in Rule 1. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <anthonyhopkins.com> domain name is identical to Complainant’s ANTHONY HOPKINS mark.
2. Respondent does not have any rights or legitimate interests in the <anthonyhopkins.com> domain name.
3. Respondent registered and used the <anthonyhopkins.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Anthony Hopkins, is an actor, writer, and producer of motion pictures, television, and theater. Complainant assigned his rights in his name, likeness and image to Complainant, The Trustees of The Samson Holding Trust, dated December 12, 2005. Hereinafter these two Complainants will be collectively referred to as “Complainant.”
Respondent, Private Whois Service c/o anthonyhopkins.com, registered the <anthonyhopkins.com> domain name on April 13, 2003. The disputed domain name resolves to a directory website that features links to third-party websites that provide information and services relating to the entertainment industry.
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 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 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 domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant, Anthony Hopkins, and Complainant, The Trustees of The Samson Holding Trust, dated December 12, 2005, contend they may jointly filed the instant Complaint regarding the <anthonyhopkins.com> domain name. Complainant, Anthony Hopkins, asserts he assigned his rights in his name, likeness and image to Complainant, The Trustees of The Samson Holding Trust, dated December 12, 2005.
Prior panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It
has been accepted that it is permissible for two complainants to submit a
single complaint if they can demonstrate a link between the two entities such
as a relationship involving a license, a partnership or an affiliation that
would establish the reason for the parties bringing the complaint as one
entity.
In addition, in American Family Health Services Group, LLC v. Logan, FA 220049
(Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link
between the complainants where there was a license between the parties
regarding use of the TOUGHLOVE mark.
Therefore, based on precedent and evidence in the record, the Panel
finds there is a sufficient nexus or link between the Complainants and,
accordingly, it will treat them as a single entity in this proceeding.
Complainant does not hold a trademark registration for the
ANTHONY HOPKINS mark. However, federal
trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Previous panels
have found that a governmental registration is not required so long as the
Complainant can establish common law rights through proof of sufficient
secondary meaning associated with the 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 Artistic
Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8,
2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration
if a complainant can establish common law rights in its mark).
Complainant argues it has acquired common law rights in the ANTHONY HOPKINS mark through establishment of sufficient secondary meaning associated with the mark. Complainant states “Anthony Hopkins” is Complainant’s personal name and that Complainant has used this name in connection with Complainant’s work as an actor, writer, and producer of motion pictures, television, and theater. In support of this claim, Complainant provides evidence of over 50 motion picture films over the last 40 years that have involved Complainant in some way. These films include: A Lion In Winter (1968), Young Winston (1971), QB VII (1974), A Bridge Too Far (1977), Magic (1978), The Elephant Man (1980), The Silence of the Lambs (1991), Howards End (1992), Chaplin (1992), The Remains of the Day (1993), Legends of the Fall (1994), Nixon (1995), Amistad (1997), Hannibal (2001), The Human Stain (2003), The World's Fastest Indian (2005), Bobby (2006), Slipstream (2007) and Fracture (2007). Furthermore, Complainant has received numerous awards for Complainant’s work in the film industry. Complainant received an Academy Award for Best Actor in 1991 for Complainant’s role in The Silence of the Lambs and was nominated for roles in The Remains of the Day (1993), Nixon (1995), and Amistad (1997). Complainant also received six Golden Globe nominations for roles in Magic (1979), The Tenth Man (1989), The Silence of the Lambs (1992), The Remains of the Day (1994), Nixon (1996), and Amistad (1998). In addition, Complainant has won two Emmy Awards for Outstanding Lead Actor in The Lindbergh Kidnapping Case (1976) as well as The Bunker (1981) and was nominated for roles in Hallmark Hall of Fame: The Hunchback of Notre Dame (1982) and Great Expectations (1990). Based on the record, the Panel finds Complainant has provided sufficient evidence to establish the ANTHONY HOPKINS mark has acquired secondary meaning through continuous and extensive commercial use. Therefore, the Panel finds Complainant has acquired common law rights in the ANTHONY HOPKINS mark that predate Respondent’s registration of the disputed domain name under Policy ¶ 4(a)(i). See Bayless v. Cayman Trademark Trust, FA 648245 (Nat. Arb. Forum Apr. 3, 2006) (“The Panel concludes Complainant has proved that the RICK BAYLESS mark has become sufficiently connected to Complainant’s career as a chef and the public associates that career with Richard L. Bayless and the RICK BAYLESS mark.”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name).
Complainant avers Respondent’s <anthonyhopkins.com>
domain name is identical to its ANTHONY HOPKINS mark. Prior panels have consistently held that the
deletion of spaces between the words in a complainant’s mark and the addition
of a generic top-level domain (“gTLD”) do not distinguish a domain name from a
complainant’s mark. See
Bond
& Co. Jewelers, Inc. v.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant establishes a prima facie case demonstrating that Respondent lacks rights and legitimate interests in the <anthonyhopkins.com> domain name, the burden shifts to Respondent to show it possesses rights or legitimate interests. In the past, panels have interpreted a respondent’s failure to submit a response as evidence that the respondent lacks rights and legitimate interest. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Although Respondent has failed to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts it has not given permission or authorized Respondent to use its mark. Although the WHOIS information lists “Private Whois Service c/o anthonyhopkins.com” as the registrant of the <anthonyhopkins.com> domain name, the Panel does not need to conclude Respondent was ever commonly known by the disputed domain name. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name). Therefore, the Panel finds Complainant’s assertions combined with the record as a whole indicate Respondent is not commonly known by the <anthonyhopkins.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends the disputed domain name resolves to a directory website that lists links to third-party websites relating or referring to motion pictures and DVDs. Complainant further contends Respondent profits from its use of the disputed domain name through the receipt of click-through fees. The Panel finds Respondent uses a domain name that is identical to Complainant’s mark in order to redirect Internet users to its directory website so that it can profit from click-through fees. Accordingly, the Panel finds Respondent’s use of the <anthonyhopkins.com> domain name does not constitute 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. As previously discussed, Respondent uses a domain name that is identical to Complainant’s ANTHONY HOPKINS mark in order to redirect Internet users to its website so that it can generate click-through revenue. Therefore, the Panel finds this behavior qualifies as registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <anthonyhopkins.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 26, 2010
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