Suzy Amis Cameron v. Thomas Charles / Secret Language LLC
Complainant is Suzy Amis Cameron (“Complainant”), represented by Jessica Bromall Sparkman of Jeffer Mangels Butler & Mitchell LLP, California, USA. Respondent is Thomas Charles / Secret Language LLC (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <suzyamiscameron.com>, registered with GoDaddy.com, LLC.
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.
Ho-Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2014; the National Arbitration Forum received payment on April 10, 2014.
On April 9, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <suzyamiscameron.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 2014 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@suzyamiscameron.com. Also on April 14, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 May 8, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, 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 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
a) Complainant is a model, actor, activist, philanthropist, and educator. Complainant began modeling in the early 1980’s, and she has appeared in over twenty films, including, Fandango, Twister, Titanic, and The Usual Suspects. Complainant also lends her name to a variety of fundraising and charitable enterprises, including fundraising for the MUSE School, her Red Carpet Green Dress initiative, as well as fundraising or cystic fibrosis research. Complainant is regularly recognized publically for her work as a model and actress, as well as for her community and philanthropic activities. See Complainant’s Exhibit D-T.
b) Complainant asserts common law trademark rights in her personal name, SUZY AMIS CAMERON. Complainant’s widespread recognition as an actress, model, educator, and philanthropist are sufficient to establish common law rights in Complainant’s personal name, SUZY AMIS CAMERON.
c) Respondent’s <suzyamiscameron.com> domain name is identical to Complainant’s SUZY AMIS CAMERON mark. The disputed domain name completely incorporates Complainant’s mark while only adding the generic top-level domain (“gTLD”) “.com.”
d) Respondent does not have rights or legitimate interests in the <suzyamiscameron.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its SUZY AMIS CAMERON mark in any way. Respondent is identified in the WHOIS record for the disputed domain name as “Thomas Charles” and the registrant organization as “Secret Language LLC.”
b. Respondent is not currently using or preparing to use the <suzyamiscameron.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
e) Respondent registered and is using the <suzyamiscameron.com> domain name in bad faith.
a. Respondent registered the <suzyamiscameron.com> domain name with the express intent of using it to threaten Complainant. Respondent and Complainant have had an ongoing dispute for several years stemming from the MUSE School. In February 2012, Respondent sent an email to the head of MUSE school, stating “Now that I own suzyamiscameron.com you can watch as I expose her to the world for who she really is – an egotistical bully.” See Complainant’s Exhibit U.
b. Respondent has knowledge of Complainant’s SUZY AMIS CAMERON mark prior to registering the <suzyamiscameron.com> domain name because the parties were personally acquainted prior to Respondent’s registration of the disputed domain name.
B. Respondent
a) Respondent did not submit a Response in this proceeding.
b) The Panel notes that Respondent registered the <suzyamiscameron.com> domain name on February 21, 2012.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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."
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.
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.”).
The Panel agrees that Complainant’s lack of a registration mark is not detrimental to its complaint, so long as there is some evidence of secondary meaning of the mark. See 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)).
Complainant asserts common law trademark rights in her personal name, SUZY AMIS CAMERON. Complainant believes that its widespread recognition as an actress, model, educator, and philanthropist are sufficient to establish common law rights in Complainant’s personal name, SUZY AMIS CAMERON. In Rachel Aldana v. net tech, FA 1202934 (Nat. Arb. Forum July 24, 2008), the panel stated that a personal name is protectable under common law rights when that name acquires a secondary meaning. The panel went on to explain that “Secondary meaning is established when a complainant uses his or her name over a period of years for entertainment and commercial purposes.” See also 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.”). In this case, Complainant is a model, actor, activist, philanthropist, and educator. Complainant began modeling in the early 1980’s, and she has appeared in over twenty films, including, Fandango, Twister, Titanic, and The Usual Suspects. Complainant also lends her name to a variety of fundraising and charitable enterprises, including fundraising for the MUSE School, her Red Carpet Green Dress initiative, as well as fundraising or cystic fibrosis research. Complainant is regularly recognized publically for her work as a model and actress, as well as for her community and philanthropic activities. See Complainant’s Exhibit D–T. Therefore, as the Panel determines that Complainant’s SUZY AMIS CAMERON mark has established a secondary meaning attached to Complainant’s career, the Panel finds that Complainant has established common law rights in its personal name as a trademark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <suzyamiscameron.com> domain name is identical to Complainant’s SUZY AMIS CAMERON mark. Complainant notes that the disputed domain name completely incorporates Complainant’s mark while only adding the gTLD “.com.” The Panel notes that the disputed domain name also removes that spaces that exist between the words in Complainant’s mark. Past panels have found that neither removing spaces from a trademark in a disputed domain name or adding a gTLD negate a finding that a disputed domain name is otherwise identical to a trademark. See 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 finds that Respondent’s <suzyamiscameron.com> domain name is identical to Complainant’s SUZY AMIS CAMERON mark pursuant to Policy ¶ 4(a)(i).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Complainant must first make 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 alleges that Respondent does not have rights or legitimate interests in the <suzyamiscameron.com> domain name. Complainant states that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its SUZY AMIS CAMERON mark in any way. Complainant observes that Respondent is identified in the WHOIS record for the disputed domain name as “Thomas Charles” and the registrant organization as “Secret Language LLC.” Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. 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). Therefore, because Respondent was not authorized by Complainant to use the SUZY AMIS CAMERON mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <suzyamiscameron.com> domain name under Policy ¶ 4(c)(ii).
Complainant claims Respondent is not currently using or preparing to use the <suzyamiscameron.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Complainant’s Exhibit C. Past panels have found that a failure to make an demonstrable preparations to use a disputed domain name fails the tests of Policy ¶¶ 4(c)(i) and 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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).”). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii) because Respondent has failed to make an active use of the <suzyamiscameron.com> domain name.
The Panel is of the view that the list of illustrations of bad faith listed in Policy ¶ 4(b) is not exhaustive. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). See also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence). Therefore, although Complainant’s contentions fall outside Policy ¶ 4(b), the Panel finds bad faith under Policy ¶ 4(a)(iii) as the Panel determines that Complainant’s contentions have merit.
Complainant contends that Respondent registered and is using the <suzyamiscameron.com> domain name in bad faith. Complainant states that Respondent registered the <suzyamiscameron.com> domain name with the express intent of using it to threaten Complainant. Complainant explains that Respondent and Complainant have had an ongoing dispute for several years stemming from the MUSE School. Complainant states that, in February 2012, Respondent sent an email to the head of MUSE school, stating “Now that I own suzyamiscameron.com you can watch as I expose her to the world for who she really is – an egotistical bully.” See Complainant’s Exhibit U. Past panels have found such threats to be evidence of bad faith under Policy ¶ 4(a)(iii). See Gryphon Internet, LLC v. thank you corp. / Jon Shakur, FA 1405610 (Nat. Arb. Forum Oct. 11, 2011) (threatening to feature damaging information on website at the domain name is considered use in bad faith). Therefore, the Panel finds that Respondent’s threats to use <suzyamiscameron.com> domain name to “expose” Complainant constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant claims Respondent has knowledge of Complainant’s SUZY AMIS CAMERON mark prior to registering the <suzyamiscameron.com> domain name because the parties were personally acquainted prior to Respondent’s registration of the disputed domain name. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, as the Panel determines Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <suzyamiscameron.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: May 22, 2014
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