Claim
Number: FA0402000243460
Complainant is Luca Laurenti (“Complainant”), represented
by Luca Sandri, P.zza Castello, 26, Milano, Italy. Respondent is Director. d/b/a Webhosting Service, The Lake Building, Tortola, 0000 VG
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <lucalaurenti.tv>, registered with Network
Solutions, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically February 27, 2004; the Forum received a hard copy of the
Complaint March 2, 2004.
On
March 4, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <lucalaurenti.tv> is registered with Network
Solutions, Inc. and that Respondent is the current registrant of the name. Network
Solutions, Inc. verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and thereby has agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN's Uniform Domain
Name Dispute Resolution Policy (the "Policy").
On
March 8, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 29, 2004, by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@lucalaurenti.tv by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
April 9, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum 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."
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 makes the following assertions:
1. The domain name registered by Respondent,
<lucalaurenti.tv>, is identical to Complainant’s LUCA LAURENTI
name, which through secondary meaning, distinctive to Complainant, constitutes
a protected mark.
2. Respondent has no rights or legitimate
interests in the <lucalaurenti.tv> domain name.
3. Respondent registered and used the <lucalaurenti.tv>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
an actor from Italy who has appeared in a series of television commercials on
various Italian broadcast channels for the Italian coffee blend known as
“Lavazza.” Complainant has also been a
co-host in a variety of Italian prime time television programs such as
“Dibattito,” “Urka,” “Il Gioco Dei Nove,” “Tira & Molla,” “Buona Domenica,”
“Striscia La Notizia,” “Ciao Darwin,” “I Cervelloni,” “Beato Tra Le Donne,” and
“Chi Ha Incastrato Peter Pan.” Complainant has also starred in various motion
pictures that include Don Luca, I Fobici, Body Guards –
Guardie del Corpo, Stuart Little 1, and Stuart Little 2. Complainant urges that his name, LUCA
LAURENTI has acquired secondary meaning as a result of his fame and that he is
entitled to protection of the name as a mark.
Respondent is a
business entity that registered the disputed domain name January 25, 2002. Respondent has used the domain name to
direct Internet users to Respondent’s <casino.tv> domain name, which
provides online casino activities.
Respondent did not support a right to use Complainant’s name.
The Panel finds
that Complainant made the necessary showings to prevail in this proceeding for
the reasons set out below.
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."
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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 to or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Under Policy ¶
4(a)(i), a complainant must prove that the disputed domain name is identical to
or confusingly similar to a trademark or service mark in which the complainant
has rights.
In this case,
Complainant claims rights to the LUCA LAURENTI name but concedes that he has
not registered LUCA LAURENTI with any governmental authority. Nonetheless, he seeks protection under ICANN
cases, which hold that unregistered marks may be afforded protection under the
Policy in certain circumstances. See McCarthy on Trademarks and Unfair
Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy
is “broad in scope” in that “the reference to a trademark or service mark ‘in
which the complainant has rights’ means that ownership of a registered mark is
not required–unregistered or common law trademark or service mark rights will
suffice” to support a domain name Complaint under the Policy); see also
British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting
that the Policy “does not distinguish between registered and unregistered
trademarks and service marks in the context of abusive registration of domain
names” and applying the Policy to “unregistered trademarks and service marks”);
see also Great Plains Metromall,
LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding the Policy
does not require “that a trademark be registered by a governmental authority
for such rights to exist”).
Complainant
shows by sufficient proof that LUCA LAURENTI is Complainant’s personal name and
that the name has acquired fame as a result of Complainant’s extensive activity
in the entertainment media.
Unregistered celebrity names or marks used in conjunction with celebrity
personalities have been consistently held to maintain common law trademark
rights under the Policy. In the instant case, the LUCA LAURENTI mark is the
personal name of an Italian celebrity. See
McCarthy on Trademarks and Unfair Competition, § 13:1 (4th ed. 2002)
(stating that the basic rules pertaining to the protection of personal names
require actual proof of secondary meaning for protection); see also Riley v. so so
domains,
D2003-0600 (WIPO Sept. 24, 2003) (stating, “personal names may enjoy protection
against identical or confusingly similar domain names if the name has
sufficient notoriety and distinctive character in connection with the goods
offered by complainant”); see also Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding
that trademark registration was not necessary and that the name “Julia Roberts”
has sufficient secondary association with Complainant that common law trademark
rights exist); see also Jagger v.
Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (Complainant held
common law trademark rights in his famous name MICK JAGGER); see also Estate of Tupac Shakur v. Shakur Info Page,
AF-0346 (eResolution Sept. 28, 2000) (finding that a “person may acquire such a
reputation in his or her own name as to give rise to trademark rights in that
name at common law”).
Complainant
asserts he is entitled to the same protection given common law marks for the
LUCA LAURENTI mark. While the record suggests that Complainant’s use of the
LUCA LAURENTI mark occurred almost exclusively within the country of Italy, a
civil law jurisdiction, Complainant’s appearances and work in such movies as Stuart
Little suggests world-wide distribution and recognition in common law
jurisdictions such as the United States.
ICANN
Policy is international. Compliance
with ICANN Policy and Rules is voluntarily agreed to by those who register
domain names governed by ICANN. Cases
suggest that ICANN Policy protects unregistered trademarks and service marks in
domain name disputes to prevent wrongful and abusive registrations of domain
names. British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting
that the Policy “does not distinguish between registered and unregistered
trademarks and service marks in the context of abusive registration of domain
names” and applying the Policy to “unregistered trademarks and service
marks”). Complainant established with sufficient
extrinsic proof that LUCA LARENTI has secondary meaning distinctive to
Complainant. The fact that Complainant
comes from a civil law jurisdiction that might not recognize common law rights,
should not deny Complainant protection under ICANN Policy and Rules, with which
Respondent voluntarily agreed to comply, where Complainant shows substantial
secondary meaning associated with a trade name or service mark. The Policy recognizes that an individual’s
name can acquire secondary association that gives rise to a right to
protection. Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding
that trademark registration was not necessary and that the name “Julia Roberts”
has sufficient secondary association with Complainant that common law trademark
rights exist). The fact that the
Panel is unable to determine to a legal certainty that Complainant’s mark falls
within a particular jurisdiction’s common law protection should not prevent
Complainant from having protection under ICANN Policy and Rules from what has
been shown to be Respondent’s wrongful and opportunistic use of Complainant’s
name to attract Internet users to Respondent’s website for commercial gain to
Respondent. Complainant has alleged
such rights and offered proof to satisfy the Panel. Respondent has not favored
the Panel with a Response, has not contested Complainant’s allegations that
LUCA LAURENTI is Complainant’s name, has not challenged Complainant’s
allegations and proof that the name has acquired secondary meaning, has not
challenged Complainant’s allegations that Complainant has rights in the name
and that Respondent has no rights to nor legitimate interests in the name, and
has not shown rights in the name or domain name. Further, the facts suggest that Respondent could not show that it
is LUCA LAURENTI and that Respondent could not show that it is commonly known
as LUCA LAURENTI or by the disputed domain name.
The
Panel finds that Complainant’s use of the LUCA LAURENTI mark in connection with
a variety of movies and other aspects of the entertainment industry transcended
local boundaries and acquired secondary meaning distinctive to Complainant.
The
Internet has joined the community of nations electronically and ICANN Policy
and the Rules are an international structure for protecting rights on the
Internet. Respondent accepted the ICANN rules and regulations when registering
the disputed domain name. The Panel
concludes that Complainant established secondary meaning in LUCA LAURENTI as a
trade name or service mark in which Complainant has rights. Complainant’s extensive use, the fame
associated with Complainant, and the quantity of television and motion picture
appearances by Complainant are sufficient to meet the standard required by the
ICANN Policy to show secondary meaning. See Desktop Media, Inc. v.
Desktop Media, Inc., FA
96815 (Nat. Arb. Forum Apr. 12, 2001) (“[F]or the limited purposes of the
domain name dispute resolution process[,] a low threshold of proof is all that
is required to meet the first element ….”); see also Jagger v. Hammerton, FA 95261 (Nat. Arb.
Forum Sept. 11, 2000) (Complainant held common law trademark rights in his
famous name MICK JAGGER); see also Estate
of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000)
(finding that a “person may acquire such a reputation in his or her own name as
to give rise to trademark rights in that name at common law”); see also Garnett
v. Trap Block Technologies, FA 128073 (Nat. Arb. Forum Nov. 21, 2002)
(holding that Complainant accrued common law rights in the KEVIN GARNETT mark).
The disputed domain name, <lucalaurenti.tv>, is identical to
Complainant’s LUCA LAURENTI mark because the name incorporates the mark in its
entirety and merely affixes a top-level domain, which is irrelevant under the
Policy. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the
fact that a domain name incorporates a Complainant’s registered mark is
sufficient to establish identical or confusing similarity for purposes of the
Policy”); see also Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb.
26, 2000) (holding that confusing similarity under the Policy is decided upon
the inclusion of a trademark in the domain name); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level
domain is without legal significance).
Complainant
established rights in the use of the LUCA LAURENTI mark pursuant to Policy ¶
4(a)(i).
Complainant
established in this proceeding that he has rights in the LUCA LAURENTI
mark. Complainant alleges that
Respondent has no such rights to and legitimate interests in the disputed
domain name that contains in its entirety Complainant’s LUCA LAURENTI
mark. Complainant established with
extrinsic proof in this proceeding that it has made prominent use of the mark. Respondent did not rebut any of
Complainant’s assertions and the Panel finds that Respondent lacks rights and
legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interests
in the domain names); see also Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where Respondent fails to respond); see also
Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure
of a respondent to come forward to [contest complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertion in this regard.”).
Furthermore, no
evidence before the Panel suggests that Respondent is commonly known by the <lucalaurenti.tv>
domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS
information, and its failure to imply that Respondent is commonly known by the
disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does
not apply); see also Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail").
A domain name
that is identical to or confusingly similar to another’s famous personal name
and that seeks to take advantage of the fame or recognition associated with the
name for purposes of commercial gain has been found not to be a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). In this case, Respondent used a domain name identical to
Complainant’s personal name to direct Internet users to an online casino
website that is completely unrelated to Complainant’s personal name. See Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8,
2002) (finding no rights or legitimate interest where Respondent used the
disputed domain name to redirect Internet users to an online casino); see
also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting
the domain names was to cause confusion with Complainant's website and marks,
its use of the names was not in connection with the offering of goods or
services or any other fair use); see also Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat.
Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal
to suck surfers into a site sponsored by Respondent hardly seems legitimate”).
The Panel finds
that Respondent lacks rights and legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii).
Registration of
a domain name that is identical or confusingly similar to a third-party’s mark
for the opportunistic purpose of attracting Internet users to a commercial
business that is actually unrelated to the third-party supports findings of bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). In this case, the disputed domain name is
identical to Complainant’s LUCA LAURENTI mark.
Respondent uses the fame associated with Complainant to direct Internet
users to an unrelated website that offers casino services for commercial
gain. Therefore, the Panel finds that
Respondent intentionally attempted to attract, for commercial gain, Internet
users to its website by creating a likelihood of confusion with Complainant as
to the source, sponsor, affiliate, or endorser of the website, pursuant to
Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA
123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and
used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because
Respondent used the confusingly similar domain name to attract Internet users
to its commercial website); see also Am.
Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding bad faith where Respondent registered and used an infringing
domain name to attract users to a website sponsored by Respondent); see also
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)).
Therefore,
Complainant established that Respondent registered and used the disputed domain
name in bad pursuant to 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 <lucalaurenti.tv> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 7, 2004
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page