Dolly Parton v. Domain Hostmaster, Customer ID : 48322845028233 / Whois Privacy Services Pty Ltd
Claim Number: FA1802001772180
Complainant is Dolly Parton (“Complainant”), represented by Philip Nulud of Buchalter, California, USA. Respondent is Domain Hostmaster, Customer ID : 48322845028233 / Whois Privacy Services Pty Ltd (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dollypartondixiestampede.com>, registered with Fabulous.com Pty Ltd.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 15, 2018; the Forum received payment on February 15, 2018.
On February 16, 2018, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <dollypartondixiestampede.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 February 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 2018 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@dollypartondixiestampede.com. Also on February 19, 2018, 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 March 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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
Complainant, international celebrity Dolly Parton, is a singer, songwriter, multi-instrumentalist, record producer, actress, author, businesswoman, and philanthropist, known primarily for her work in country music. Complainant owns numerous registrations for its DOLLY PARTON mark through the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,367,078 registered Oct. 22, 1985), and owns international registrations as well, such as with the European Union Intellectual Property Office (“EUIPO”) (Reg. No. 006324198, registered Aug. 9, 2008). Furthermore, since 1998 Complainant has run and starred in a dinner attraction entitled DOLLY PARTON’S DIXIE STAMPEDE, which was recently renamed in 2018 to DOLLY PARTON’S STAMPEDE. Complainant owns the website dpstampede.com in connection with the aforementioned dinner attraction. Notably, Complainant has common law rights to the trademarks DOLLY PARTON, DOLLY PARTON’S DIXIE STAMPEDE, DOLLY PARTON’S STAMPEDE, DIXIE STAMPEDE, and STAMPEDE. Respondent’s <dollypartondixiestampede.com> domain name is identical or confusingly similar to Complainant’s rightful marks as the domain name incorporates Complainant’s marks and merely adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <dollypartondixiestampede.com> domain name. Complainant has never authorized Respondent to use its marks therefore Respondent is not commonly known by the disputed domain name. Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a website that does not have any information on it other than links to various sites related to Complainant.
Respondent’s registration and use of the <dollypartondixiestampede.com> domain name is in bad faith as Respondent prevents Complainant from reflecting its mark in corresponding domain names. Further, Respondent’s bad faith is further demonstrated through its attempt to gain commercially from hyperlinks and click-through revenue associated with the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <dollypartondixiestampede.com> domain name.
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 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 claims rights to its DOLLY PARTON mark through numerous registrations with the USPTO (e.g., Reg. No. 1,367,078, registered Oct. 22, 1985), and through international registrations, such as with the EUIPO (Reg. No. 006324198, registered Aug. 9, 2008). Registration with the USPTO and EUIPO is sufficient to demonstrate rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”); see also Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.). Therefore, the Panel finds Complainant has rights in the DOLLY PARTON mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts common law rights in the DOLLY PARTON, DOLLY PARTON’S DIXIE STAMPEDE, DOLLY PARTON’S STAMPEDE, DIXIE STAMPEDE, and STAMPEDE marks. Common law rights are established through evidence of secondary meaning instilled within the mark based upon association with a celebrity or through longstanding use, evidence of holding an identical domain name, media recognition, and promotional material/advertising. See David Duchovny v. Alberta Hot Rods c/o Jeff Burgar, FA 1734414 (Forum July 4, 2017) (holding that David Duchovny held common law rights in the DAVID DUCHOVNY mark because of his status as a celebrity); see also Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant indicates the DOLLY PARTON mark is associated with Complainant’s international celebrity name Dolly Parton. Complainant has appeared in movies, television, the Grammy’s, concert venues, and has sold millions of records and even has a theme park. Complainant alleges that since 1998 she has run and starred in a dinner attraction entitled DOLLY PARTON’S DIXIE STAMPEDE. Recently, in 2018, Complainant changed the name of the attraction to DOLLY PARTON’S STAMPEDE. Complaint’s services have been known since 1998 under the DOLLY PARTON’S DIXIE STAMPEDE and DIXIE STAMPEDE trademarks and have additionally been known under the DOLLY PARTON’S STAMPEDE and STAMPEDE marks. Complainant further states that Complainant has spent substantial amounts of time, energy and expense in the design, development, marketing, promotion and sale of goods and services under its marks. The Panel agrees with Complainant and finds from Complaint’s uncontested allegations and evidence that Complainant has common law rights to the DOLLY PARTON, DOLLY PARTON’S DIXIE STAMPEDE, DOLLY PARTON’S STAMPEDE, DIXIE STAMPEDE, and STAMPEDE marks per Policy ¶ 4(a)(i).
Complainant argues the <dollypartondixiestampede.com> domain name is identical or confusingly similar to its marks because Complainant’s marks are incorporated entirely and only add the gTLD “.com.” Incorporating a complainant’s rightful marks to a domain name while adding a gTLD do not usually distinguish the two for purposes of Policy ¶ 4(a)(i). See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”). The Panel finds Respondent’s incorporation of Complainant’s marks and the addition of the gTLD do not distinguish the domain name at issue for purposes of Policy ¶ 4(a)(i).
Complainant has proved this element.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends Respondent has no rights or legitimate interests in the <dollypartondixiestampede.com> domain name as Respondent is not commonly known by the domain name. WHOIS information and the absence of a complainant’s authorization to use said complainant’s mark in a domain name can indicate a respondent is not commonly known by a disputed domain name pursuant to Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Respondent was never authorized to use Complainant’s marks in the disputed domain name. The WHOIS information of record names “Domain Hostmaster, Customer ID: 48322845028233 / Whois Privacy Services Pty Ltd” as the registrant. The Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant asserts Respondent’s use of the <dollypartondixiestampede.com> domain name is not in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Disputed domain names that contain links redirecting to websites related to a complainant can be a violation of Policy ¶¶ 4(c)(i) and (iii). See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”). Complainant avers Respondent’s disputed domain name resolves to a website with no information other than links to various sites related to Complainant. The Panel agrees with Complainant and finds Respondent’s use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
Complainant has proved this element.
Complainant argues Respondent acts in bad faith by preventing Complainant from reflecting its DOLLY PARTON marks in domain names via registration of the <dollypartondixiestampede.com> domain name. Preventing a complainant from reflecting its mark in domain names through a pattern of bad faith registration can evince a finding of bad faith per Policy ¶ 4(b)(ii). See Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”). Complainant indicates Respondent has registered the disputed domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name. The Panel finds Respondent’s registration and use prevent Complainant from reflecting its marks in corresponding domain names, which is bad faith per Policy ¶ 4(b)(ii).
Complainant asserts Respondent’s registration and use is in bad faith per Policy ¶ 4(b)(iv). Using a domain name for commercial gain can be indicative of bad faith per Policy ¶ 4(b)(iv). See The Dress Barn, Inc. v. Pham Dinh Nhut, FA1503001611220 (Forum May 15, 2015) (“The Panel agrees that Respondent’s inclusion of various hyperlinks; some of which direct Internet users to competing websites of Complainant, some which direct Internet users to Complainant’s own website, and some of which are unrelated to Complainant’s business; evince bad faith attraction for commercial gain.”). Here, Complainant argues Respondent’s domain name attempts to generate income through hyperlinks and click-through/referral revenue. The Panel finds Respondent’s registration and use of the disputed domain name is for commercial gain which is bad faith per Policy ¶ 4(b)(iv).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <dollypartondixiestampede.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: March 19, 2018
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