Joel Pickford v. Frances Dunn
Claim Number: FA1802001772362
Complainant is Joel Pickford (“Complainant”), represented by Steven L. Rinehart of Registered Patent Attorney, Utah, USA. Respondent is Frances Dunn (“Respondent”), Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <joelpickford.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 16, 2018; the Forum received payment on February 16, 2018.
On February 20, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <joelpickford.com> domain name is 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 February 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 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@joelpickford.com. Also on February 21, 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 Darryl C. Wilson, 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 is a prominent American photographer, artist, filmmaker and author with worldwide recognition since the 1970s. Complainant has common law rights in the JOEL PICKFORD mark since 1977 as the mark is Complainant’s personal name and the mark has acquired secondary meaning. Respondent’s <joelpickford.com> domain name is confusingly similar to Complainant’s mark as Respondent only attaches a “.com” generic top level domain (“gTLD”) to Complainant’s mark.
Respondent has no rights or legitimate interests in the <joelpickford.com> domain name as Respondent is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent merely diverts users to the disputed domain name and features a photograph and unrelated content.
Respondent attempts to divert users to the <joelpickford.com> domain name merely attract users and this constitutes bad faith registration and use. Additionally, Respondent’s registration of the disputed domain name just after its expiration constitutes opportunistic bad faith. Furthermore, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the JOEL PICKFORD mark and this indicates bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Joel Pickford, of Fresno CA, USA. Complainant claims common law rights in the disputed domain based on the fact that it is his personal name, which he has used continuously since the 1970’s in connection with his role as a prominent artist, filmmaker, and author of national and global renown. Complainant previously owned the disputed domain name, which resolved to an authorized website showcasing his works at the time.
Respondent is Frances Dunn, of Harrodsburg, Kentucky, USA. The Respondent’s Registrar’s address is listed as Scottsdale, AZ, USA.
The Panel notes the <joelpickford.com> domain name was first registered on or about November 4, 2002.
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 to have common law rights in the JOEL PICKFORD mark as the mark is Complainant’s personal name and has acquired secondary meaning. Personal names in connection with a showing of secondary meaning are sufficient to demonstrate common law rights in a mark per Policy ¶ 4(a)(i). See John G. Balestriere v. Simon Mills / Emancipation Media, FA 1618353 (Forum June 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 Jan. 1, 2005.). As argued, Complainant’s JOEL PICKFORD mark has been used in commerce since 1977 and Complainant provides examples which include books, magazines, newspapers, events, and other sources. The Panel here finds Complainant has sufficiently demonstrated common law rights in the JOEL PICKFORD mark per Policy ¶ 4(a)(i).
Complainant contends Respondent’s <joelpickford.com> domain name is confusingly similar to Complainant’s JOEL PICKFORD mark as Respondent adds a gTLD to Complainant’s mark. Adding a gTLD to a mark is an insufficient change to differentiate a disputed domain name from a mark per Policy ¶ 4(a)(i). See David Duchovny v. Alberta Hot Rods c/o Jeff Burgar, FA 1734414 (Forum July 4, 2017) (“Respondent arrives at the disputed domain name by simply taking Complainant’s mark in its entirety and adding the g TLD “.com”. This is insufficient to distinguish the disputed domain name from Complainant’s common law trademark.”); see also Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Here, Respondent fully incorporates Complainant’s mark and adds a “.com” gTLD. The Panel here finds that Respondent’s <joelpickford.com> domain name is identical to Complainant’s JOEL PICKFORD mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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 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 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). The Complainant has made a prima facie case.
Complainant claims Respondent has no rights or legitimate interests in the <joelpickford.com> domain name as Respondent is not commonly known by the disputed domain name. When a respondent fails to submit a response, WHOIS may be used to determine whether a respondent is commonly known by the disputed domain name when respondent fails to submit a response per Policy ¶ 4(c)(ii). See The Toronto-Dominion Bank v. RD BANK /-, FA1404001554468 (Forum May 13, 2014) (“WHOIS information for the <rdbank.com> domain name lists ‘RD BANK /-‘ as the domain name’s registrant. However, there is nothing in the record that corroborates the WHOIS data’s suggestion that Respondent may be commonly known by the <rdbank.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Complainant contends WHOIS information for the disputed domain name in this proceeding identifies Respondent as “Frances Dunn.” Based on the WHOIS data, and lack of written response, the Panel here finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant argues Respondent diverts users to the <joelpickford.com> domain name and features a photograph in connection to unrelated content and this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Redirecting users to a disputed domain name that contains unrelated content is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”). Here, Respondent features a photograph similar to those produced by Complainant and content related to “escape rooms,” which is wholly unrelated to Complainant. As such, the Panel finds Respondent’s use of the disputed domain name to divert users to a page with unrelated content is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues Respondent attempts to divert users seeking Complainant’s business to the <joelpickford.com> domain name and this demonstrates bad faith registration and use. Redirecting users to attract them to a disputed domain name that is confusingly similar to a complainant’s mark may constitutes bad faith registration and use per Policy ¶ 4(b)(iv). See Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”). Complainant contends, and provides evidence, that Respondent’s disputed domain name incorporates Complainant’s JOEL PICKFORD mark and displays unrelated content at the disputed domain name. The Panel here finds that Respondent’s attempts to attract users to the confusingly similar domain name constitutes bad faith registration and use per Policy ¶ 4(b)(iv).
Additionally, Complainant contends Respondent registered the <joelpickford.com> domain name soon after the disputed domain name had expired and this should be considered bad faith registration and use. Registering a disputed domain name immediately after its expiration may demonstrate opportunistic bad faith per Policy ¶ 4(a)(iii). See Avocent Huntsville Corp. v. Taro Yamada / Personal, FA1409001582613 (Forum Nov. 25, 2014) (holding that the respondent had engaged in opportunistic bad faith pursuant to policy ¶ 4(a)(iii), when it registered the disputed domain name immediately after the complainant mistakenly allowed it to expire). Complainant indicates that Respondent registered the disputed domain name soon after Complainant’s domain name registration had lapsed as indicated in the WHOIS records. The Panel here finds that Respondent’s registration of the disputed domain name immediately after it lapsed constitutes bad faith registration and use per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <joelpickford.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 30, 2018
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