Anthony Hopkins and The Trustees of The Samson Holding Trust, dated December 12, 2005 v. Pablo Palermo
Claim Number: FA1108001402710
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, California, USA. Respondent is Pablo Palermo (“Respondent”), Peru.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <siranthonyhopkins.com>, registered with Backslap Domains, 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 Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 10, 2011; the National Arbitration Forum received payment on August 10, 2011.
On August 10, 2011, Backslap Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <siranthonyhopkins.com> domain name is registered with Backslap Domains, Inc. and that Respondent is the current registrant of the name. Backslap Domains, Inc. has verified that Respondent is bound by the Backslap Domains, 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 August 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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@siranthonyhopkins.com. Also on August 11, 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 September 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 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 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 <siranthonyhopkins.com> domain name is confusingly similar to Complainant’s ANTHONY HOPKINS mark.
2. Respondent does not have any rights or legitimate interests in the <siranthonyhopkins.com> domain name.
3. Respondent registered and used the <siranthonyhopkins.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Anthony Hopkins, is an actor who, on December 12, 2005, assigned his rights in his name, likeness, and image to Complainant, The Trustees of The Samson Holding Trust, dated December 12, 2005. Complainant, The Trustees of The Samson Holding Trust, dated December 12, 2005, owns the ANTHONY HOPKINS mark used in connection with Complainant, Anthony Hopkins, and his work in the entertainment industry. Complainant has twice registered the ANTHONY HOPKINS mark with the United State Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,783,752 registered May 4, 2010). Complainant has used its mark in connection with Anthony Hopkins’s work in a wide variety of feature films since as early as 1968 including The Silence of the Lambs, Magic, and Nixon.
Respondent, Pablo Palermo, registered the disputed domain on February 13, 2001. The <siranthonyhopkins.com> domain name resolves to a website which displays a general search engine and links to other third-party websites relating or referring to Complainant and his entertainment career.
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.
Preliminary Issue: Multiple Complainants
In the instant proceedings, Complainants, Anthony Hopkins and The Trustees of The Samson Holding Trust, dated December 12, 2005, are bringing this Complaint together. UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as “a single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Complainant, Anthony Hopkins, is a well-known actor and has assigned his rights to his name, likeliness, and image to Complainant, The Trustees of The Samson Holding Trust, dated December 12, 2005. The Panel finds that this relationship is sufficient to establish a sufficient nexus between the Complainants and will treat them as a single entity in this proceeding, collectively referring to Complainants as “Complainant.”
Complainant contends that it has rights in the ANTHONY HOPKINS mark. The Panel finds that registration of a mark is sufficient to establish rights in the mark regardless of the location of the parties. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel further finds that the a complainant’s rights in a trademark date back to the filing date. See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”). Complainant has provided the Panel with proof of its registration of the ANTHONY HOPKINS mark with the USPTO (e.g., Reg. No. 3,783,752 filed August 6, 2009; registered May 4, 2010). The Panel finds that Complainant has rights in the ANTHONY HOPKINS mark pursuant to Policy ¶ 4(a)(i), dating back to August 6, 2009.
Complainant contends that it had rights in its mark long before the registration of the mark with the USPTO by way of secondary meaning. Secondary meaning can be established by extensive use and commercial popularity of a mark. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature…is to identify the source of the product rather than the product itself.’”); see also Yarosh Brothers, LLC v. Junk My Cars, FA 1048718 (Nat. Arb. Forum Sept. 12, 2007) (“The Panel finds by virtue of the commercial popularity and success of the domain name Complainant operated under the JUNKMYCAR mark, that Complainant has established common law rights in the JUNKMYCAR mark pursuant to Policy ¶ 4(a)(i).”). Complainant used the ANTHONY HOPKINS mark in connection with Complainant’s acting career since its inception in 1968 in A Lion in Winter. Complainant provides a list of movies that Complainant has acted in since 1968, such asYoung 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). Complainant was awarded an Academy Award for Best Actor in 1991 for his role in The Silence of the Lambs. Complainant has also been nominated for six Golden Globe Awards. The commercial popularity of the mark is clearly evidence by the numerous nominations awards earned by Anthony Hopkins in connection with his acting career. The Panel finds that, given the success and familiarity of the ANTHONY HOPKINS mark, Complainant had common law rights in the mark under Policy ¶ 4(a)(i), dating as early as 1968.
Complainant contends that Respondent’s <siranthonyhopkins.com> domain name is confusingly similar to its ANTHONY HOPKINS mark. Previous panels have found that the deletion of spaces and the addition of a generic top-level domain (“gTLD”) fails to distinguish a domain name from the mark incorporated within it. See 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)); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Also, the addition of a descriptive term is insufficient. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)). Respondent removed the space between the words in Complainant’s mark and added the gTLD “.com” to the end of the mark. Respondent also added the descriptive term “sir,” Complainant’s official title, as a prefix. Therefore, the Panel finds that Respondent’s <siranthonyhopkins.com> domain name is confusingly similar to Complainant’s ANTHONY HOPKINS mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent does not have rights and legitimate interests in the disputed domain name. Once a complainant makes a prima facie case in support of its claim the burden shifts to the respondent to prove otherwise. 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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds that Complainant has made a prima facie case. The Panel, without the benefit of a response from Respondent, may accept as true all claims made by Complainant unless clearly contradicted. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will review the record for information suggesting that Respondent does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the disputed domain name. The Panel, guided by Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003), will look to the WHOIS record and Complainant’s assertions to determine whether Respondent is commonly known by the disputed domain name. Complainant claims that Respondent is not permitted to use the ANTHONY HOPKINS mark. The WHOIS record for the <siranthonyhopkins.com> domain name lists “Pablo Palermo” as the domain name registrant. The Panel infers from this that there is no connection between the disputed domain name and Respondent beyond the registration of the infringing domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant also argues that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <siranthonyhopkins.com> domain name resolves to a website which displays a general search engine and links to other third-party websites relating or referring to Complainant and his entertainment career. The Panel infers that the display of these links is a source of profit to Respondent. As such, the Panel finds that Respondent’s use of the disputed domain name to display related, but not competing, links is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 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 Complainant has satisfied Policy ¶ 4(a)(ii).
The disputed domain name resolves to a website which displays a generic search engine as well as third-party links to content relating to Complainant and Complainant’s career. The confusing similarity of the <siranthonyhopkins.com> domain name creates initial confusion for Internet users who reach the domain name as to the affiliation of the domain name to Complainant’s. Once entering the resolving website, Internet users will, incorrectly, become more concrete in the belief that there is some affiliation between the two because the links displayed contain content relating to Complainant. Internet users will click through these links for the related content. The Panel infers that Respondent receives compensation from these third-parties for each Internet users redirected through these links. Therefore, the Panel finds that Respondent registered and used the disputed domain name to take commercial advantage of Internet users’ confusion under Policy ¶ 4(b)(iv) by displaying related, but non-competing, website links. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv))
The Panel finds that 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 <siranthonyhopkins.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: September 19, 2011
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