Carl Cartee v. Stanley Bell
Claim Number: FA1703001724616
Complainant is Carl Cartee (“Complainant”), represented by John Berryhill, Pennsylvania, USA. Respondent is Stanley Bell (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carlcartee.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 30, 2017; the Forum received payment on March 30, 2017.
On March 31, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <carlcartee.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 4, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 2017 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@carlcartee.com. Also on April 4, 2017, 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 May 1, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 name be transferred from Respondent to Complainant.
A. Complainant
I. Identical or Confusing Similarity
Complainant, Carl Cartee, is a Christian recording artist, performer and minister who is the principal of Carl Cartee Ministries. Apart from his personal name, Complainant has used "Carl Cartee" as the name of his ministry, publications, in live performances and recorded works. Complainant derives significant revenue from the sale of musical albums and individual songs through a variety of retail channels, including Amazon.com and Apple Itunes. Complainant's albums are identified by title and each bear the prominent indication, "Carl Cartee", which identifies such albums as "Carl Cartee" recordings, and thus functions as a trademark apart from Complainant's personal name.
As discussed in further detail below, Complainant was until recently the registrant of the disputed domain name CarlCartee.com. The website was used by Complainant to promote sales of Complainant's recordings, and to provide news and information about Complainant's live performances, tour dates, and inspirational articles. Complainant's web site prominently included "CARL CARTEE" as a mark, as can be seen in the Annexes to the Complaint. Significantly, as has been appropriated by the Respondent, previous versions of the website included a prominent logo banner, also visible in the Annexes to the Complaint.
As noted in Complainant’s discography and biographical information, Complainant has continuously used the "CARL CARTEE" mark in commerce since at least 2003 upon the release of Complainant's first album. Complainant is further credited as a composer of recordings released by other gospel and folk artists including The Crabb Family, Bill Gaither, the Gaither Vocal Band, and The Oak Ridge Boys. Complainant is also frequently featured as a performer and minister at live events such as, for example, the recent Cove Men's Retreat at the Billy Graham Training Center in March 2017, which prominently features "CARL CARTEE" as a promoted speaker and performer.
Based on Complainant's longstanding use, for more than fifteen years of exclusive publication of recordings, articles, and musical compositions under the "CARL CARTEE" mark; and indeed, the longstanding operation of CarlCartee.com itself; Complainant submits that the domain name carlcartee.com is confusingly similar to trade or service marks in which Complainant has rights.
III. Legitimate Rights Or Interests
The second criterion of the Policy requires a showing of lack of legitimate rights or interests in the domain name by Respondent. Respondent has seized control of the domain name CarlCartee.com after an inadvertent lapse of renewal payment by Complainant in October 2016. The mere re-registration of a lapsed domain name is ordinarily not an issue. However, the manner in which Respondent has and is using the domain name is deliberately intended to create confusion as to the sponsorship of the website, and deliberately intended to trade on Complainant's reputation.
A print-out of the website as it exists at the time of filing this dispute, and as it has existed since shortly after Respondent acquired the domain name appears in the Annexes to the Complaint. Respondent has deliberately copied the logo, likeness, and previous blog posting text of Complainant.
The appearance of Complainant's logo, likeness, and writings at the corresponding web page is no accident. Respondent had to deliberately select and compose these elements from archival copies of Complainant's work in order to further the actual purpose here, described below.
The Panel will note that while Complainant's logo, likeness and copyrighted material are prominent at the corresponding site, Respondent has placed the text "Residential and Commercial Contractors in San Diego" as the leading text of the site (which causes it to appear in search 'squibs' produced by Google), and Respondent has further included blog postings that can be seen in the extended printout of the page entitled "How to hire a mobile windshield replacement contractor" with an outbound link to a San Diego windshield repair shop; "Companies That Give Free Estimates For Leaky Faucet And Toilets" with an outbound link to a San Diego plumber; and "Why SEO And Local Search Is Important For Businesses" with an outbound link to a San Diego so-called SEO (search engine optimization) service. All of these articles are falsely stated on the site to be "by: Carl Cartee".
The SEO link is the key to understanding what Respondent is up to here. Among the ways that Google ranks search results is to analyze whether a page is linked-into by other high- traffic sites with substantial traffic and "dwell time" (i.e. the time that users spend on the page). As discussed below, the WHOIS data for the domain name is fictitious, but there is no mystery as to the identity of the real party in interest in the operation of the page - i.e. the "SEO" service itself, which is using Complainant's name, image and goodwill to increase the search ranking of his or her clients (the plumber and windshield replacer, who likely have no idea they are linked from a site which purports to be that of Complainant). Complainant will address other issues arising from the activities of this SEO company in the time and manner of Complainant's choosing. For the purpose of this Proceeding, however, it is clear that Respondent has deliberately chosen to use Complainant's name, likeness and copyrighted material in order to pass off as Complainant long enough to sustain traffic to the site, and thus benefit Respondent's SEO clients in exchange for whatever fee Respondent charges for such services.
Respondent had to go out of his or her way to make "enough" of the page appear to be that of Complainant. This type of deliberate use of Complainant's goodwill and use of the domain name to resolve to Complainant's content is effectively an admission by Respondent that any rights or interests in use of the domain name belong to Complainant. The sole reason Respondent, and possibly others acting in concert, have maintained this use of the domain name is to deceive Complainant and avoid, for as long as possible, Complainant's detection that the domain name had, in fact, been stolen from Complainant in the first place.
Accordingly, Respondent cannot have legitimate interests in passing itself off as Complainant for the purpose of commercial gain. See Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also American Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
IV. Bad Faith
As this is a case in which the "legitimate interest" and "bad faith" considerations overlap, the circumstances constituting bad faith registration and use of the domain name are obvious as noted in Crow, supra. While the domain name became available due to an inadvertent non- renewal, Complainant has not abandoned its mark, or the domain name, and is promptly seeking its return. Additionally, Respondent has deliberately appropriated Complainant's logo, likeness and copyrighted content to carry out the scheme at hand. The distinction between the circumstances here, and permissible "re-registration" cases, is noted in Mutineer Restaurant v Ultimate Search, Inc., FA0205000114434 (Forum Sept. 27, 2010).
In this case, Complainant claims that Respondent has intentionally attempted to divert Internet users to competitors and that Respondent's registration of the disputed domain name capitalized on an error on Complainant's part in failing to renew registration of the domain name, which Complainant had originally registered in 1997. Respondent waits for domain names incorporating common words, generic terms, short terms and useful phrases to be released after their registration has lapsed. Then Respondent immediately registers those names and uses each of them to host a generic portal web site, presumably gaining revenue from banner advertisements and affiliate links. This activity has not been found to be bad faith registration or use under the UDRP unless the selection of the domain name and the manner in which it is used are related to its correspondence to Complainant's trademark.
Here, the entire reason for Respondent's registration and use of the domain name is clearly to deliberately use Complainant's name, logo, likeness, and goodwill for commercial gain attributable directly to Complainant's goodwill in its mark. Certainly, if another person named "Carl Cartee" had registered the domain name, such re-registration would be permissible. But in these circumstances, the objective of re-registration is to pass off the site as a legitimate site belonging to Complainant in order to increase the search ranking of the other sites linked by the articles posted to the site.
Additionally, the WHOIS data for the domain name is false. While Respondent's address is listed as "958 Heavner Court" in New York 10013, there is no such address. There is no "Heavner Court" or any street named "Heavner" in New York. Likewise, undersigned counsel has confirmed the San Diego telephone number listed in the WHOIS data is inoperative. The use of fictitious WHOIS data is yet another indication that the party in interest in the domain name is attempting to conceal his or her identity.
There is no question that Respondent's deliberate appropriation of Complainant's name, logo, likeness and original content for the purpose of exploiting Complainant's goodwill, while obscuring his or her contact information, cannot have been done in good faith. Furthermore, Respondent's association with Complainant's identity with subject matter such as windshield repairs, plumbing and search engine optimization services impairs and tarnishes Complainant's reputation as a recording artist, composer and minister.
Accordingly, it is manifestly clear in the manner that the domain name has been registered and used that it has been done in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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(f), 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 (Forum July 31, 2000) (holding that 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.”).
Registration of a trademark is not necessary to establish rights to a mark under Policy ¶4(a)(i). See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum Jul. 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”).
Complainant claims common law rights in the CARL CARTEE mark based upon the secondary meaning the mark has acquired. A Secondary meaning given to a mark can substantiate a finding of common law rights pursuant to Policy ¶4(a)(i). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum Jul. 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards). Complainant has used its mark in the oil and gas industry since 1997. Complainant has used its mark in the real estate industry since 2004. Complainant’s rights were previously recognized in Klabzuba Oil & Gas, Inc. v. ross micheal, Claim Number: FA1505001619813.”); see also John G. Balestriere v. Simon Mills / Emancipation Media, FA 1618353 (Forum Jun. 11, 2015) (finding Complainant’s JOHN G. BALESTRIERE mark is Complainant’s personal name, and Complainant showed secondary meaning by demonstrating that the mark has been used as a marketable commodity, or for direct commercial purposes in marketing goods and services by providing evidence of use in the legal services business and attorney advertising dating back to January 1, 2005). Complainant’s first use of the mark in commerce was in 2003 in connection with his first album release, with subsequent releases using the same CARL CARTEE mark. Complainant has music on iTunes (and has been selling music there for years). Complainant registered the <carlcartee.com> domain name in connection with his music in 1999 to publicize his activities. There is adequate evidence of a secondary meaning for the CARL CARTEE mark. Complainant has common law rights in the mark pursuant to Policy ¶4(a)(i).
Complainant claims Respondent’s domain name, <carlcartee.com>, is identical to Complainant’s CARL CARTEE mark because it contains the mark in its entirety—less the space—and appends the gTLD “.com” to the end. Omission of a space in a mark is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits spaces. Likewise, a TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum Jul. 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). The <carlcartee.com> domain name is identical to Complainant’s CARL CARTEE mark under to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that 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 (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 Respondent lacks rights and legitimate interests in the <carlcartee.com> domain name. Respondent was not authorized by Complainant to register a domain name containing Complainant’s mark. Where there is no response, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum Jul. 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information lists “Stanley Bell” as the registrant of the domain name, which bears no obvious relationship to the disputed domain name. Respondent is not commonly known by <carlcartee.com> under Policy ¶4(c)(ii).
Complainant claims Respondent has failed to use <carlcartee.com> in connection with a bona fide offering of goods or services, or a legitimate noncommercial or otherwise fair use. Respondent uses the resolving website to pass off as Complainant for Respondent’s commercial gain. Using a disputed domain name to pass off as a complainant is behavior indicating of a lack of rights and legitimate interests under Policy ¶¶4(c)(i) & (iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Respondent’s resolving webpage uses significant elements from Complainant’s previous webpage to make it appear as if the domain name was still owned by Complainant. Respondent’s behavior constitutes passing off, which is evidence of Respondent’s lack of rights or legitimate interests in the <carlcartee.com> domain name under Policy ¶4(c)(i) & (iii).
Complainant claims it was the previous registrant of the domain name and inadvertently allowed the registration to lapse. Respondent opportunistically registered it once it lapsed. While no documentary evidence was submitted on this point, Respondent has not contested it. Opportunistic registration supports a finding a respondent lacks rights and legitimate interests in a disputed domain name under Policy ¶4(a)(ii) as long as Respondent has not used the domain name in furtherance of a bona fide business purpose. See Clark v. HiNet, Inc., FA 405057 (Forum Mar. 4, 2005) (finding that the respondent lacked rights and legitimate interests in the domain name because it failed to respond to the complaint and it “opportunistically” registered the domain name when the complainant inadvertently allowed the registration to lapse). Respondent registered the domain name a short time after Complainant’s registration expired on October 4, 2016. It seems clear Respondent’s registration was opportunistic, and supports a finding Respondent has no rights and legitimate interests in the <carlcartee.com> name under Policy ¶4(a)(ii).
Finally, Respondent used fictitious information to register the domain name. This means Respondent has acquired no rights to the domain name by registering it because Respondent has not publicly associated himself with the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent impersonates Complainant through its use of the domain and resolving website in an attempt to commercially benefit from the confusion created. Intentionally attracting Internet users through the creation of confusion about who operates a domain indicates bad faith registration and use. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum Jun. 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶4(b)(iv)). Internet users seeking Complainant would instead find Respondent’s identical domain and resolving website. Given the similarity between Complainant’s web site and Respondent’s web site, it is easy to see how a visitor would be confused. Respondent registered and used <carlcartee.com> in bad faith pursuant to Policy ¶4(b)(iv).
Finally, Respondent registered the domain name using fictitious contact information. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <carlcartee.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, May 8, 2017
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