Dr. Robin Cook v. Alberta Hot Rods
Claim Number: FA1105001391337
Complainant is Dr. Robin Cook (“Complainant”), represented by Allan R. Pearlman of Law Office of Allan R. Pearlman, New York, USA. Respondent is Alberta Hot Rods (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <robincook.com>, registered with GoDaddy.com, Inc.
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.
Honorable Carolyn M. Johnson (Ret.), G. Gervaise Davis III, as Panelists and Beatrice Onica Jarka as Presiding Panelist
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 31, 2011; the National Arbitration Forum received payment on June 1, 2011.
On June 1, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <robincook.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 June 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 2011 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@robincook.com. Also on June 2, 2011, 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 June 29, 2011, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Carolyn M. Johnson (Ret.), G. Gervaise Davis III, as Panelists and Beatrice Onica Jarka as Presiding 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel issues 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:
· He has established common law rights to his name and mark ROBIN COOK by his thirty five year career as a well known, best-selling author of medical thrillers,
· Respondent’s <robincook.com> domain name is identical to Complainant’s ROBIN COOK mark.
· Respondent does not have any rights or legitimate interests in the <robincook.com> domain name, as he is not known or has not been known by the disputed domain name which resolves to a non active website.
· Respondent registered and used the <robincook.com> domain name in bad faith, as
- The Respondent has engaged in a pattern of cybersquatting in order to prevent the owner of the mark to reflect it in a corresponding domain name,
- The Respondent had used the disputed domain name to intentionally attract Internet users to the Respondent’s commercial website <celebrity1000.com>,
- The disputed domain name is currently passively held with no connection to an active website.
B. Respondent failed to submit a Response in this proceeding.
The Complainant has acquired common law rights in the ROBIN COOK trademark which is fully incorporated in the disputed domain name by the Respondent in the absence of any rights or legitimate interests of the latter.
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 contends that it has established common law rights in the ROBIN COOK mark, which also happens to be Complainant’s proper name, through continuous use of the mark in conjunction with Complainant’s publishing and books. Complainant asserts that it has written many New York Times Bestselling novels; the first of which, entitled Coma, was published in 1977. Complainant has offered screen shots from both Wikipedia and Amazon which illustrate the popularity of the books and the prominent use of the ROBIN COOK mark on the cover of said books. Complainant indicates that he has published 31 novels under the ROBIN COOK mark and that all but his first novel have made the New York Times Bestseller list. Additionally, Complainant states that many of his novels have been made into major motion pictures for theatrical release as well as television shows, television movies, and mini-series on broadcast and cable television. Complainant argues that it has published 31 novels dating back to 1971 and thus has met the threshold determined by previous panels to attain secondary meaning.
The Panel finds that a trademark registration is not necessary so long as Complainant provides evidence of acquired secondary meaning in the mark so as to establish common law rights under Policy ¶ 4(a)(i). 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 Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Moreover, the Panel is persuaded of the evidence provided by the Complainant to establish secondary meaning in the ROBIN COOK mark and thus the Complainant has common law rights in the mark dating back to at least 1977. See 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.”); see also Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years).
Complainant also contends that Respondent’s disputed domain name is identical to its own ROBIN COOK mark. Complainant alleges that the disputed domain name includes the entire mark while only adding the generic top-level domain (“gTLD”) “.com” and removing the space between the terms of the mark. The Panel finds that these two minor changes fail to sufficiently differentiate the disputed domain name from Complainant’s mark making the two identical under 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 Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
Therefore, the Panel considers that the Complainant has proved the first element under Policy ¶ 4(a)(i).
The Panel considers that the Complainant first made 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 it does have rights or legitimate interests. 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.”).
Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant indicates that Respondent has offered no evidence to show that it is commonly known by the disputed domain name and the WHOIS information identifies the registrant as “Alberta Hot Rods.”
The Respondent failed to submit a Response under the Policy and failed to rebut the Complainant’s assertions. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and the lack of other evidence on the record. 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant also argues that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. Complainant contends that Respondent’s disputed domain name resolves to a site that is inactive. The Panel finds that Respondent’s failure to make an active use of the disputed domain name does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Panel considers that the Complainant has proven also the second element under Policy ¶ 4(a)(ii).
According to the Complainant’s provided evidences, between 1999 and 2006, the disputed domain name was redirected to a commercial website called <celebrity1000.com>. This represents, in the opinion of the Panel, registration with knowledge of the Complainant’s trademarks rights in ROBIN COOK.
Moreover, the Respondent’s failure to make an active use of the disputed domain name for the last five years represents in the opinion of the Panel, also bad faith registration and use. Previous panels have found that resolving a disputed domain name to an inactive site is affirmative evidence of bad faith registration and use. See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
Complainant has submitted evidence to show that Respondent has been a Respondent in past UDRP proceedings, and was ordered to transfer the disputed domain name in those cases to the respective complainant. The Panel finds that it is likely to consider that the Respondent has engaged in a pattern of bad faith registration of domain names and as such has registered and used the disputed domain name in this case in bad faith under 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).
Therefore, it is the Panel opinion that the totality of the case circumstances evidence of bad faith registration and use pursuant to 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 <robincook.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Carolyn M. Johnson (Ret.), G. Gervaise Davis III, as Panelists
Beatrice Onica Jarka as Presiding Panelist
Dated: July 12, 2011
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