Dovetail Ventures, LLC v. Klayton Thorpe
Claim Number: FA1506001625786
Complainant is Dovetail Ventures, LLC (“Complainant”), represented by Susan E. Hollander of K&L Gates LLP, California, USA. Respondent is Klayton Thorpe (“Respondent”), Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue is <kevinspaceyfowler.com>, <kevinspaceyfowler.org>, <kevinspaceyfowler.net>, <kevinspaceyfowler.info> and <kevinspaceyfowler.biz>, 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 Forum electronically on June 23, 2015; the Forum received payment on June 23, 2015.
On June 24, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kevinspaceyfowler.com>, <kevinspaceyfowler.org>, <kevinspaceyfowler.net>, <kevinspaceyfowler.info> and <kevinspaceyfowler.biz> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 July 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 2015 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@kevinspaceyfowler.com, postmaster@kevinspaceyfowler.org, postmaster@kevinspaceyfowler.net, postmaster@kevinspaceyfowler.info, postmaster@kevinspaceyfowler.biz. Also on July 1, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 names be transferred from Respondent to Complainant.
A. Complainant
i. Complainant owns the KEVIN SPACEY mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,924,016, registered February 1, 2005). See Compl., at Attached Ex. D.
ii. Complainant uses the KEVIN SPACEY mark in connection with its affiliation with Kevin Spacey, who is a highly acclaimed award-winning actor, renowned film director, writer, producer, and comedian.
i. Policy ¶ 4(a)(i)
1. Respondent’s disputed domain names are confusingly similar to Complainant’s KEVIN SPACEY mark, as each domain name fully incorporates the mark, eliminates the space between words, and adds the descriptive term “fowler.” Each disputed domain name also differs from the KEVIN SPACEY mark by the addition of a different generic top-level domain (“gTLD”).
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights and legitimate interests in the disputed domain names.
2. Respondent is not commonly known by the disputed domain names, as demonstrated by the relevant WHOIS information. Additionally, Respondent has neither been licensed nor authorized to use the KEVIN SPACEY mark.
3. Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names.
4. Respondent has simply used the disputed domain names to redirect Internet users to parked websites that also offer hyperlinks to third-party websites unrelated to Complainant. See Compl., at Attached Ex. F.
iii. Policy ¶ 4(a)(iii)
1. Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
2. Respondent uses the confusingly similar disputed domain names to attract Internet users to its own parked websites in which it offers unrelated sponsored hyperlinks, presumably for commercial gain.
3. Due to the worldwide fame of the KEVIN SPACEY mark, Respondent must have had constructive and/or actual knowledge of Complainant and its rights in the KEVIN SPACEY mark.
B. Respondent
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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.”).
Complainant uses the KEVIN SPACEY mark in connection with its affiliation with Kevin Spacey, who is a highly acclaimed award winning actor, renowned film director, writer, producer, and comedian. Complainant claims to own the KEVIN SPACEY mark through its trademark registrations with the USPTO (e.g., Reg. No. 2,924,016, registered February 1, 2005). The Panel agrees that Complainant’s trademark registrations are sufficient to establish rights in the mark according to Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO).
Complainant argues that the disputed domain names are confusingly similar to the KEVIN SPACEY mark, because each domain name fully incorporates the mark, eliminates the space between words, and adds the descriptive term “fowler.” Complainant notes that the term “fowler” is actually Kevin Spacey’s legal surname, thus by using this term, confusing similarity is actually enhanced. Additionally, the Panel may note that each disputed domain name differs from the KEVIN SPACEY mark by the addition of a different gTLD. Previous panels have found that small changes, such as the addition of a gTLD and removal of spaces are irrelevant to Policy ¶ 4(a)(i) analysis. 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)). Further, previous panels have also found that the addition of descriptive terms to a mark do not allow a respondent to avoid the realm of confusing similarity under Policy ¶ 4(a)(i). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). As such, the Panel finds that the disputed domain names are confusingly similar to the KEVIN SPACEY mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 contends that Respondent lacks rights and legitimate interests in the disputed domain names. In so arguing, Complainant asserts that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). Further, Complainant notes that Respondent has been neither licensed nor authorized to use the KEVIN SPACEY mark. The Panel notes that the WHOIS information lists “Klayton Thorpe” as registrant of the disputed domain names. The Panel recalls that Respondent has failed to submit a response to refute any of Complainant’s contentions. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Next, Complainant urges that Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Instead, Complainant states that Respondent uses all of the disputed domain names to redirect Internet users, confused by the confusing similarity between the disputed domain names and the KEVIN SPACEY mark, to parked web pages that offer sponsored advertisements unrelated to Complainant. Complainant believes that such behavior is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. Many past panels have agreed with this argument. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). As the Panel agrees with Complainant’s argument here, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii), respectively.
It is Complainant’s position that Respondent has registered and is using the disputed domain names in bad faith according to Policy ¶ 4(a)(iii). To start, Complainant argues that Respondent is capitalizing on the confusing similarity between the disputed domain names and the KEVIN SPACEY mark. Specifically, Complainant believes that Respondent intentionally redirects confused Internet users to its own parked web pages, in which it has placed numerous unrelated sponsored hyperlinks for which Respondent presumably commercially gains. The Panel notes Complainant has supplied screenshots of each disputed domain name for the Panel’s consideration. Generally, panels have found such behavior to constitute bad faith under Policy ¶ 4(b)(iv). 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)). Consequently, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant insists that due to worldwide fame and prominence of Complainant and the KEVIN SPACEY mark, Respondent must have had constructive and/or actual knowledge when registering the disputed domain names. The Panel also considers Respondent’s use of Kevin Spacey’s legal surname as additional evidence that Respondent must have knew enough about Complainant and the KEVIN SPACEY mark to choose such a descriptive term. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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 <kevinspaceyfowler.com>, <kevinspaceyfowler.org>, <kevinspaceyfowler.net>, <kevinspaceyfowler.info> and <kevinspaceyfowler.biz> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 2, 2015
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