Foundation To Be Named Later, Inc. v. Katie Adkins
Claim Number: FA1410001583302
Complainant is Foundation To Be Named Later, Inc. (“Complainant”), represented by Ben Wagner of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., California, USA. Respondent is Katie Adkins (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hotstovecoolmusic.com>, registered with GODADDY.COM, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 3, 2014; the National Arbitration Forum received payment on October 3, 2014.
On October 6, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <hotstovecoolmusic.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 October 6, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 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@hotstovecoolmusic.com. Also on October 6, 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 November 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <hotstovecoolmusic.com> domain name is identical to Complainant’s HOT STOVE COOL MUSIC mark.
2. Respondent does not have any rights or legitimate interests in the <hotstovecoolmusic.com> domain name.
3. Respondent registered and uses the <hotstovecoolmusic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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.”).
Complainant uses the HOT STOVE COOL MUSIC mark in connection with its non-profit fundraising and charity concerts, and for CDs and DVDs. Complainant claims to own the mark through common law rights dating back to at least 2001. The Panel notes that HOT STOVE, COOL MUSIC is a bi-annual charity concert that was created in December of 2000. Complainant provided proof that the events have been continued to the present and include prominent national venues and artists, and that the events are widely publicized, raising significant funds for various non-profit organizations. A complainant may demonstrate its rights in a mark without having trademark registrations. See 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.”). The Panel finds that Complainant has provided evidence to sufficiently demonstrate common law rights in its HOT STOVE COOL MUSIC mark pursuant to Policy ¶ 4(a)(i). See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
Respondent’s <hotstovecoolmusic.com> domain name is identical to Complainant’s HOT STOVE COOL MUSIC mark, but for the irrelevant gTLD “.com” and the missing spaces. Previous panels have held that a disputed domain name that is identical to the complainant’s mark is confusingly similar under Policy ¶ 4(a)(i). See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark). The Panel finds that Respondent’s <hotstovecoolmusic.com> domain name is identical to Complainant’s HOT STOVE COOL MUSIC mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 claims that Respondent lacks rights or legitimate interests in the disputed domain name and alleges that Respondent is not commonly known by the <hotstovecoolmusic.com> domain name. The WHOIS information identifies “Katie Adkins” as the registrant of the disputed domain name. Complainant states that Respondent is not licensed or authorized to use the HOT STOVE COOL MUSIC mark. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the <hotstovecoolmusic.com> domain name pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant demonstrates that the disputed domain name currently redirects Internet users to Respondent’s website which contains adult-oriented material. Previous panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a disputed domain name when it merely diverts Internet users to adult-oriented material. See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)). Thus, the Panel finds that Respondent’s 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 pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant also claims that Respondent uses the disputed domain name to redirect Internet users to its own website for commercial gain. Previous panels have held that such a use of a disputed domain name does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)). The Panel likewise finds that Respondent is not providing a bona fide offering of goods or services, or making a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the disputed domain name to redirect Internet users to its own website for commercial gain. Previous panels have found such use to be bad faith use of a disputed domain name pursuant to Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Thus, the Panel finds that Respondent’s use of the disputed domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent uses the disputed domain name to display adult-oriented material. Panels have consistently decided that such a use of a disputed domain name is in itself evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See 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 [an adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”). Thus, the Panel finds that further bad faith pursuant to Policy ¶ 4(a)(iii).
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 <hotstovecoolmusic.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 7, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page