DECISION

 

Hugh Jackman v. Peter Sun

Claim Number: FA0403000248716

 

PARTIES

Complainant is Hugh Jackman (“Complainant”), represented by Michael L. Gannon, of Fish & Richardson P.C., P.A., 3300 Dain Rauscher Plaza, 60 South Sixth Street, Minneapolis, MN 55402.  Respondent is Peter Sun (“Respondent”), 525 W. Hawthorne Pl. Apt. 3101, Chicago, IL 60657.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <hughjackman.com>, <hughjackman.net> and <hughjackman.org>, registered with Go Daddy Software, Inc.

 

PANEL

The undersigned, Daniel B. Banks, Jr., Panelist, 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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 19, 2004; the Forum received a hard copy of the Complaint on March 22, 2004.

 

On March 19, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <hughjackman.com>, <hughjackman.net> and <hughjackman.org> are registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the names.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby 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 25, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 14, 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@hughjackman.com, postmaster@hughjackman.net and postmaster@hughjackman.org by e-mail.

 

A timely Response was received and determined to be complete on April 13, 2004.

 

A timely Additional Submission was received from Complainant and was determined to be complete on April 19, 2004.

 

A timely Additional Submission was received from Respondent and was determined to be complete on April 16, 2004.

 

On April 26, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr., as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant;

Complainant, Hugh Jackman, is a world famous professional actor and entertainer.  He has starred and appeared in numerous feature films, television series, made for TV movies and Broadway productions.  In 2002, Mr. Jackman received the Golden Globe nomination for Best Actor in a Musical or Comedy and has been named “One of the 50 Most Beautiful People in the World” by People Magazine for the past three years.  Complainant has become internationally recognized and famous and his name serves as his trademark.  To that end, Complainant has applied to register his name as a U.S. trademark.  Complainant claims common law trademark rights to his name.  Complainant makes the following claims:

 

1.      The domain names at issues are identical to Complainant’s name in which he has    rights. 

 

2.      Respondent has no rights or legitimate interests in the domain names for the following reasons:

a.       Respondent has not used or demonstrably prepared to use the domain names in connection with a bona fide offering of goods or services.

b.      Respondent has never been commonly known by the domain names.

c.       Respondent is not making a legitimate noncommercial or fair use of the domain names.

 

3.      The domain names should be considered as having been registered and being used in bad faith for the following reasons:

a.       Respondent’s registration and use of the three disputed domain names with full knowledge of Complainant’s rights is evidence of bad faith.

b.      Respondent’s failure to establish a website in connection with the domain names is evidence of bad faith.

c.       Respondent has registered the domain names in order to prevent Complainant from reflecting his mark in a corresponding domain name and Respondent has engaged in a pattern of such conduct.

           

B. Respondent:

Respondent admits that the disputed domain names are similar to the mark “HUGH JACKMAN” and that Complainant has a common law trademark interest in that mark.  Respondent also concedes that he has never been known or referred to as HUGH JACKMAN.  He registered the domain names with the purpose of establishing an independent celebrity fan website.  He asserts that he plans to make a legitimate noncommercial use of the domain names without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.  He states that the domain names have not been registered and are not being used in bad faith.  Respondent alleges that the delay in establishing a website in connection with the domain names is not sufficient evidence of bad faith.  He also asserts that he did not register the domain names in order to prevent Complainant from reflecting its mark in a corresponding domain name and he has not engaged in a pattern of conduct sufficient to constitute bad faith. 

 

C. Additional Submissions:

In Complainant’s Additional Submission, Complainant asserts that Respondent has conceded (1) Complainant’s common law trademark rights in the disputed domain name and (2) that Respondent has no rights or legitimate interests in the disputed domain names.  He further asserts that Respondent’s claim that he intends to form a fan website is not sufficient to establish rights in the trademark and his passive holding of the domain names for 1 to 4 years is sufficient evidence of bad faith.  Also, Respondent’s registration of several different domain names, which are infringing of the same trademark constitutes a “pattern of conduct” under the UDRP.  Complainant also adds allegations that Respondent has attempted to deceive the Panel by asserting the he is a “non-commercial amateur.”  Complainant alleges that Respondent has been in the domain name business quite some time, registering many domain names using a variety of different addresses, telephone numbers and e-mail addresses. 

 

In Respondent’s Additional Submission he says that Complainant is mistaken about the registration periods of the disputed domain names and the he has not been in the domain name registration business.  Respondent also asks the Panel to sanction Complainant under Code of Procedure Rule 46 because Complainant’s allegations of Respondent’s previous domain name activities were malicious in nature and were not supported by any evidence.  

 

FINDINGS

1.      The disputed domain names are identical to a trademark or service mark in which Complainant has rights.

2.      Respondent has no rights or legitimate interests in respect of the domain names.

3.      The domain names were registered and are being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the 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.

 

Identical and/or Confusingly Similar

 

Basically, Respondent has conceded that the disputed domain names are identical to the mark HUGH JACKMAN and that Complainant has established a common law trademark interest therein.  Additionally, Complainant applied to register the HUGH JACKMAN mark with the U.S. Patent and Trademark Office (“USPTO”) on September 30, 2003 (Application Number 78,307,587).  Complainant asserted that he has established rights in the mark via the application.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications).

 

This Panel finds that Complainant has established common law rights in the HUGH JACKMAN mark.  This is supported by the fact that it is Complainant’s name, he has been in numerous film, television, Broadway performances, and has been nominated for performance awards.  Moreover, Complainant has been named as “One of the 50 Most Beautiful People in the World” by People Magazine for the past three years.  As a result of Mr. Jackman’s fame, the name Hugh Jackman has become internationally recognized and famous and serves as Mr. Jackman’s trademark to identify his performance and entertainment services.  See 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 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 Jaggger); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that Complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).

 

The disputed domain names are identical to the HUGH JACKMAN mark because they fully incorporate the mark and merely add the generic top-level domains “.com,” “.net,” and “.org.”  Generic top-level domains are irrelevant in determining whether a domain name is identical to another’s mark.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); 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 Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to Complainant’s mark).

 

Rights or Legitimate Interests

 

Respondent lacks rights and legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii) because Respondent is not commonly known by the domain names.  Moreover, Complainant did not authorize or license Respondent to register or use domain names that incorporate the HUGH JACKMAN mark.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

 

Furthermore, Respondent lacks rights and legitimate interests in the domain names because Respondent has failed to develop a website for the domain names.  The evidence indicates that the disputed domain name <hughjackman.com> was registered on September 14, 1999.  The disputed domain name <hughjackman.net> was registered on July 21, 2000.  The disputed domain name <hughjackman.org> was registered on July 22, 2000.  The evidence indicates that Respondent has passively held the domain names since their registration and has not made any preparations to use the names.   In addition, there is no evidence to corroborate Respondent’s claim that its purported website was in development prior to notice of the dispute.  Passive holding of a domain name does not constitute 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).  See Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, Respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name).

 

Registration and Use in Bad Faith

 

The Panel finds and Respondent concedes that, due to his celebrity status, Respondent had actual or constructive knowledge of Complainant’s rights in the HUGH JACKMAN mark.  Indeed, Respondent’s claimed rights in the domain names were to open a fan website for Mr. Jackman.  Registration of a domain name that is confusingly similar to a mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Paws, Inc. v. Odie, FA 96206 (Nat. Arb. Forum Jan. 8, 2001) ("Given the uniqueness and the extreme international popularity of the [ODIE] mark, Respondent knew or should have known that registering the domain name in question would infringe upon the Complainant's goodwill."); see also Stam v. Cohen, D2000-1061 (WIPO Nov. 4, 2000) (finding that Respondent’s registration of the <jaapstam.com> domain name was in bad faith because  he “would have been aware of Complainant and his reputation as an international football player at the time when Respondent registered the said domain name”).

 

Furthermore, Respondent has passively held the domain names.  The Panel finds, under the circumstances presented in this case, that such conduct constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Garnett v. Trap Block Techs., FA 128073 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent’s passive holding of the <kevingarnett.com> domain name constituted bad faith registration and use).

 

It also appears that Respondent could not possibly use the domain names in a manner that would not infringe upon Complainant’s rights in the HUGH JACKMAN mark.  Complainant asserts that this would be true even if the domain names resolved to a fan website.   See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose).

 

Finally, the Panel finds that Respondent has registered and used the domain names in bad faith pursuant to Policy ¶ 4(b)(ii) because Respondent registered multiple domain names identical to Complainant’s mark.  If Respondent merely wanted to establish a fan website, he could do so with one domain name instead of three.  Moreover, in Complainant’s Additional Submission, it appears that Respondent has registered two domain names that incorporate the television star of Showtime’s acclaimed series Queer as Folk, Scott Lowell.  See YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Gamesville.com, Inc. v. Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent engaged in a pattern of conduct of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which is evidence of registration and use in bad faith).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <hughjackman.com>, <hughjackman.net> and <hughjackman.org> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Daniel B. Banks, Jr., Panelist
Dated: May 10, 2004