Carnie Wilson v. Whois Privacy Protection
Service, Inc. a/k/a Whois Agent
Claim
Number: FA0502000417186
Complainant is Carnie Wilson (“Complainant”), represented
by Steven M. Weinberg, of Greenberg Traurig, LLP,
2450 Colorado Avenue, Santa Monica, CA 90404.
Respondent is Whois Privacy
Protection Service, Inc. a/k/a Whois Agent (“Respondent”), PMB 368, 14150 NE 20th St. – F1, c/o
Carniewilson.com, Bellevue, WA 98007.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <carniewilson.com>, registered with Enombre
Corporation.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
7, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 10, 2005.
On
February 8, 2005, Enombre Corporation confirmed by e-mail to the National
Arbitration Forum that the domain name <carniewilson.com> is
registered with Enombre Corporation and that Respondent is the current
registrant of the name. Enombre Corporation has verified that Respondent is
bound by the Enombre Corporation 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
February 16, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 8, 2005 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@carniewilson.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 15, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Louis E.
Condon as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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. Respondent’s <carniewilson.com>
domain name is identical to Complainant’s CARNIE WILSON mark.
2. Respondent does not have any rights or
legitimate interests in the <carniewilson.com> domain name.
3. Respondent registered and used the <carniewilson.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
is Carnie Wilson, a singer, songwriter, actress, and TV talk show host. Complainant was once a member of the band
Wilson Phillips, which sold over ten million copies of their first album and
over three million copies of their second album.
In 1996, Complainant
hosted her own nationally syndicated TV talk show entitled “Carnie” and since
then has continued her career in acting, TV, pictures, voice over artistry and
songwriting. Complainant is currently
an on-air correspondent for Entertainment Tonight.
Complainant’s
personal story has been featured on major television talk shows, in major
magazines including the cover story of People magazine, and Complainant
has been the subject of two books entitled Gut Feelings and I’m Still Hungry.
Respondent
registered the <carniewilson.com> domain name on October 11,
2004. Respondent currently links users
to a website located at <geocities.com/marisad777/>. The resolved website contains news headlines
from the Associated Press, as well as music news from Reuters. In addition, the website also contains other
links to <mtv.com> and <style.com>.
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
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Complainant
asserts rights to the CARNIE WILSON name, despite not having registered it with
a government trademark authority. Yet,
the Policy does not exclude unregistered marks from the sphere of
protection. 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 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”).
In the instant
case, Complainant is seeking protection of the CARNIE WILSON mark, which is
Complainant’s personal name. Personal
names or surnames may be protected as trademarks if such names have acquired
distinctiveness, i.e. a complainant must demonstrate that, “in the minds of the
public, the primary significance of [the mark] is to identify the source of the
product rather than the product itself.”
Inwood Labs. v. Ives Labs., 456 U.S. 844, 851, n.11 (1982). 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) (“[P]ersonal 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.).
Complainant
has provided the Panel with several assertions, as observed in the findings
above, that bolster the claim that the CARNIE WILSON mark is protectable. These assertions have gone unanswered. Complainant’s unchallenged assertions of
success in the music industry and presence as a national TV syndicated host,
among other assertions, leads the Panel to conclude that the public has come to
identify the name “Carnie Wilson” as a celebrity and the source of
Complainant’s services. Under the Policy, unregistered celebrity
names have been protected. As stated in
Luca Laurenti v. Director., FA 243460 (Nat. Arb. Forum May 7, 2004),
“[u]nregistered celebrity names or marks used in conjunction with celebrity
personalities have been consistently held to maintain common law trademark
rights under the Policy.” Therefore,
consistent with prior cases decided under the Policy, and in the absence of
evidence to the contrary, the Panel finds that Complainant has established
rights in the CARNIE WILSON mark pursuant to Policy ¶ 4(a)(i). 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 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”).
The
disputed domain name, <carniewilson.com> is identical to
Complainant’s CARNIE WILSON mark pursuant to Policy ¶ 4(a)(i) because the name
incorporates the mark in its entirety without modification. The absence of a space or the addition of
the generic top-level domain “.com” is immaterial under the Policy. See
Hannover
Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain
names”); 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).
Complainant has
established Policy ¶ 4(a)(i).
Complainant has
made the assertion that Respondent lacks rights and legitimate interests in the
disputed domain name. It has been
consistently held that it is incumbent upon respondents to advance concrete
evidence pursuant to Policy ¶ 4(a)(ii) rebutting the latter assertion because
this information is “uniquely within the knowledge and control of the
respondent.” G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002). Respondent has failed to advance any evidence, let alone concrete
evidence. Therefore, since Respondent
has failed to respond to the Complaint, the Panel construes this omission as an
implicit admission 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).
Complainant
argues that Respondent was never authorized to use the CARNIE WILSON mark in
the disputed domain name and thus is not using it in connection with a bona
fide offering of goods or services, nor a legitimate noncommercial or fair use,
pursuant to Policy ¶¶ 4(c)(i) and (iii).
Respondent has used the domain name to host not only music news
headlines, but also to link directly to a popular music website,
<mtv.com>. Without evidence to
the contrary, these facts, in combination with Respondent’s unauthorized use of
Complainant’s mark, leads the Panel to further conclude that Respondent’s
purpose in selecting the domain name was to divert Internet users seeking
Complainant. See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb.
Forum Sept. 27, 2000) (“[U]nauthorized providing of information and services
under a mark owned by a third party cannot be said to be the bona fide offering
of goods or services.”); 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).
Moreover,
Respondent has advanced no evidence that would suggest Respondent is commonly
known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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"); see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where Respondent was not commonly known by the mark and
never applied for a license or permission from Complainant to use the
trademarked name).
Complainant has
established Policy ¶ 4(a)(ii).
Respondent
registered the disputed domain name in 2004, well after Complainant’s name and
mark had been used in connection with the band Wilson Phillips and
Complainant’s TV talk show. The fact
that Respondent has used the domain name to host music headlines and to link
Internet users to <mtv.com> supports the notion that Respondent not only
had knowledge of Complainant’s mark prior to registering the domain name, but
anticipated on capitalizing on the goodwill associated with the CARNIE WILSON
mark as a means of attracting Internet users to its website. Such registration and use has been found to
be evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith,
279
F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse."); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration).
Furthermore, the
fact that Respondent chose to register a domain name, which is identical to the
name of a celebrity such as Complainant, and then use the name in connection
with its music related content, creates a strong likelihood of initial interest
confusion on the part of Internet users.
This is further evidence of bad faith registration and use of the
disputed domain name without evidence to the contrary. See
Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding
registration in bad faith based where there is no reasonable possibility, and
no evidence from which to infer that the domain name was selected at random
since it entirely incorporated Complainant’s name); see also Harrods Ltd. v.
Harrod’s Closet D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark
is so obviously connected with well-known products, its very use by someone
with no connection to these products can evidence opportunistic bad faith).
Moreover, the
Panel infers that Respondent receives click-through fees for diverting Internet
users to various music related websites.
Since Respondent’s domain name is identical to Complainant’s mark,
consumers accessing Respondent’s domain name may become confused as to Complainant’s
affiliation with the resulting website.
Thus, the Panel finds that Respondent’s commercial use of the disputed
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See 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)); see also Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where Respondent directed Internet users seeking
Complainant’s site to its own website for commercial gain).
Complainant has
established Policy ¶ 4(a)(iii).
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <carniewilson.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
March 29, 2005
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