Turner Entertainment Co. v. David Fagle
Claim Number: FA0503000440216
PARTIES
Complainant
is Turner Entertainment Co. (“Complainant”),
represented by Wendy L. Robertson, of Alston and Bird, LLP,
1201 West Peachtree Street, Atlanta, GA 30309.
Respondent is David Fagle (“Respondent”),
11085 Mexican Canary Ave., Brooksville, FL 34614.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <therealgilligansisland.com>,
registered with Register.com.
PANEL
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict in serving as Panelist in this
proceeding.
Linda
M. Byrne as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
14, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 16, 2005.
On
March 15, 2005, Register.com confirmed by e-mail to the National Arbitration
Forum that the domain name <therealgilligansisland.com>
is registered with Register.com and that the Respondent is the current
registrant of the name. Register.com
has verified that Respondent is bound by the Register.com 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 21, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 11,
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@therealgilligansisland.com by e-mail.
A
timely Response was received and determined to be complete on April 11, 2005.
Complainant
timely filed an Additional Submission on April 13, 2005. Complainant's Additional Submission
addresses issues raised in Respondent's Submission.
Respondent
timely filed an Additional Submission on April 18, 2005. Respondent’s Additional Submission addresses
issues raised in Complainant’s Additional Submission.
On April 18, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Linda M. Byrne as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that Respondent's domain name <therealgilligansisland.com>
is confusingly similar to its marks GILLIGAN’S ISLAND and THE REAL GILLIGAN’S
ISLAND; that Respondent does not have any rights or legitimate interests with
respect to the disputed domain name; and that the infringing disputed domain
name was registered and is being used by Respondent in bad faith.
B.
Respondent
Respondent
contends that the domain name <ThereAlGilligansisLand.com>
is not confusingly similar to Complainant's GILLIGAN’S ISLAND and THE REAL
GILLIGAN’S ISLAND marks; the disputed
domain name <therealgilligansisland.com>
was registered in connection with a bona fide business opportunity, the
writing of a children’s book; and that the disputed domain name was not
registered and used in bad faith.
C.
Additional Submissions
Complainant’s
Additional Submission relates to Respondent’s alleged justification for
registering the domain name, specifically, inconsistencies with respect to the
surname of the book’s main character (“Gilligani” or “Gilligansi”), and the
Additional Submission attached screen shots of the Respondent’s website showing
that the title bar previously read “TheRealGilligansIsland.com Domain Name For
Sale $2000. 1-866-242-9226.”
Respondent’s
Additional Submission discusses typos in both parties’ submissions; states that
the title bar of the disputed domain name may be changed easily and that the
title bar discussed in Complainant’s Additional Submission was an act of
retaliation to emails received; and alleges that Complainant’s use of
www.webarchive.org is in violation of the web site’s “terms of use”
agreement.
FINDINGS
Complainant is the owner of all right,
title and interest in the famous television series Gilligan’s Island, which premiered in 1964. Complainant owns trademarks for GILLIGAN’S
ISLAND, which it has registered in the United States in connection with a
variety of merchandise. Complainant has
also created a reality television series titled The Real Gilligan’s Island and publicly announced this new reality
series as early as April 22, 2004.
Complainant alleges that it has been using the GILLIGAN’S ISLAND
trademarks continuously since 1964 and the THE REAL GILLIGAN’S ISLAND mark at
least since April 22, 2004.
On June 24, 2004, Respondent registered
the domain name <therealgilligansisland.com>. Entering this
domain name in the address bar directs the viewer to Respondent’s web site <gaZabo.com>, a pay-per-click
advertising web site.
On November 12, 2004, Complainant’s
counsel sent a cease and desist letter to Respondent via e-mail and certified
mail. Respondent replied via e-mail the
same day by stating “The domain name is for sale, if interested the price is
$1,000.00 US Thanks David Fagle Owner:
TheRealGilligansIsland.com.”
After receiving the hard copy of Complainant’s letter, Respondent
telephoned Complainant’s in-house counsel and again offered the domain name for
sale at a price of $1,000, which offer was refused. On December 1, 2004, after the premier of The Real Gilligan’s Island television program, Respondent e-mailed
Complainant’s in-house counsel again and stated, “Maybe, because of your show
premiering on tv last night we experienced a larger volume of website traffic
than usual. This may be because our
domain name http://ThereAlGilligansisLand.com
We have expenses totaling right at $1000.00 in this domain name and would be
interested in selling it, if we can recover all of our expenses.”
Complainant
sent a follow-up cease and desist letter to Respondent via e-mail and certified
mail on December 23, 2004. Respondent
replied to Complainant’s outside counsel via e-mail on January 3, 2005 by
reiterating that Respondent had been interested in selling the domain name to
Complainant for a fee in excess of the registration costs and asserting that
the domain name Respondent registered was
<ThereAlGilligansisLand.com>.
Respondent alleged that the disputed domain name was registered as a
result of Respondent’s authorship of a children’s book in which the main
character is named “Al Gilligani.”
Respondent also expressly refused to transfer the domain name.
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.
Complainant asserts that it has established
rights in the GILLIGAN’S ISLAND mark through registration of the mark with the
United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,536,926 issued
February 5, 2002; Reg. No. 2,536,927 issued February 5, 2002; and Reg. No.
2,693,590 issued March 4, 2003). See
Am. Online, Inc. v. Thomas P. Culver Enters.,
D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration
with the United States Patent and Trademark Office creates a presumption of
rights in a mark); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under U.S. trademark law, registered marks hold a presumption that they
are inherently distinctive and have acquired secondary meaning.”). In addition, Complainant has established
common law rights in the mark THE REAL GILLIGAN’S ISLAND, which is identical to
the domain name in dispute.
Respondent’s <therealgilligansisland.com>
domain name is confusingly similar to Complainant’s GILLIGAN’S ISLAND and THE
REAL GILLIGAN’S ISLAND marks, because the domain name incorporates the marks in
their entirety. The addition of generic
terms such as “the” and “real” are not sufficient to negate the confusing
similarity between Respondent’s domain name and Complainant’s GILLIGAN’S ISLAND
mark pursuant to Policy ¶ 4(a)(i). See
Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Complainant has
established common law rights in the THE REAL GILLIGAN’S ISLAND mark due to
Complainant’s aggressive promotion of the mark in commerce since April 22,
2004. See 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 BroadcastAmerica.com, Inc. v. Quo,
DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law
rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify
the complainant as the source of broadcast services over the Internet, and
evidence that there is wide recognition with the BROADCASTAMERICA.COM mark
among Internet users as to the source of broadcast services); see also Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said
name [<keppelbank.com>] in connection with its banking business, it has
acquired rights under the common law.”).
The
addition of the generic top-level domain “.com” coupled with the omission of
the apostrophe in Complainant’s mark as well as the omission of the space
between the terms of Complainant’s THE REAL GILLIGAN’S ISLAND mark are not
enough to distinguish Respondent’s domain name from Complainant’s mark pursuant
to Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition
of a top-level domain is irrelevant when establishing whether or not a mark is
identical or confusingly similar, because top-level domains are a required
element of every domain name.”); see also Isleworth
Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002)
(finding it is a “well
established principle that generic top-level domains are irrelevant when
conducting a Policy ¶ 4(a)(i) analysis”); see also Chi-Chi’s, Inc. v. Rest. Commentary,
D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to
be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe
and hyphen from the mark). Moreover,
Respondent’s alternate version of the disputed domain name, <ThereAlGilligansisLand.com>, merely
shifts the capitalization of letters and when entered in the address bar,
immediately reverts to <therealgilligansisland.com>. Thus, the alternate capitalization of the
disputed domain name has no effect on the domain name, as registered, and does
not affect this Panel’s finding that the disputed domain name is identical or
confusingly similar to Complainant’s marks.
Complainant asserts that Respondent is using the <therealgilligansisland.com>
domain name, which is identical to Complainant’s THE REAL GILLIGAN’S ISLAND
mark and confusingly similar to Complainant’s GILLIGAN’S ISLAND mark, to
operate a website that features links to various unrelated commercial
websites. This diversionary use of the
disputed domain name is not a use in connection with 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 WeddingChannel.com
Inc. v. Vasiliev,
FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to the
complainant’s mark, websites where the respondent presumably receives a
referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as
contemplated by the Policy); see also Disney
Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003)
(finding that the respondent’s diversionary use of the complainant’s mark to
attract Internet users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of
goods or services nor a legitimate noncommercial or fair use of the disputed
domain names).
Furthermore,
Complainant correctly asserts that Respondent is neither commonly known by the <therealgilligansisland.com>
domain name nor authorized to register domain names featuring Complainant’s
famous marks. This Panel concludes that
Respondent’s claim that the domain name reflects the title of a forthcoming
children’s novel is without merit.
Thus, Respondent lacks rights and legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interests where the respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name); see also Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in the respondent’s WHOIS
information implies that the respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply).
Moreover, Respondent’s offer to sell the domain
name registration for $1000 is evidence that Respondent lacks rights and
legitimate interests in the <therealgilligansisland.com> domain
name pursuant to Policy ¶ 4(a)(ii). See
Mothers Against Drunk
Driving v. Hyun-Jun Shin,
FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances,
the respondent’s apparent willingness to dispose of its rights in the disputed
domain name suggested that it lacked rights or legitimate interests in the
domain name); see also Am. Nat’l Red
Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003)
(“Respondent’s lack of
rights and legitimate interests in the domain name is further evidenced by
Respondent’s attempt to sell its domain name registration to Complainant, the
rightful holder of the RED CROSS mark.”).
Complainant
asserts that Respondent’s offer to sell the disputed domain name registration
for $1000, and the offer (in the title bar) to sell the domain name
registration for $2000, both prices far exceeding any reasonable out-of-pocket
expenses, constitute evidence that Respondent registered and used the <therealgilligansisland.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26,
2000) (finding that the respondent demonstrated bad faith when he requested
monetary compensation beyond out-of-pocket costs in exchange for the registered
domain name); see also Little Six,
Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding
the respondent’s offer to sell the domain name at issue to the complainant was
evidence of bad faith).
Complainant
asserts that Respondent receives click-through fees for diverting Internet
users to unrelated commercial websites.
Since Respondent’s <therealgilligansisland.com> domain name
is identical to Complainant’s THE REAL GILLIGAN’S ISLAND mark and is confusingly
similar to Complainant’s GILLIGAN’S ISLAND mark, consumers accessing
Respondent’s domain name may become confused as to Complainant’s affiliation
with the resulting website. Thus,
Respondent’s commercial use of the disputed domain name constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Qwest
Communications Int’l Inc. v. Ling Shun Shing,
FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent's attempt to commercially benefit from the misleading
domain name is evidence of 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 the respondent
directed Internet users seeking the complainant’s site to its own website for
commercial gain).
Respondent
registered the <therealgilligansisland.com> domain name with
actual or constructive knowledge of Complainant’s rights in the GILLIGAN’S
ISLAND mark due to Complainant’s registration of the mark with the USPTO and to
the immense fame that Complainant’s mark has acquired. Registration of a domain name that is
identical or confusingly similar to another’s mark despite actual or
constructive knowledge of the mark holder’s rights is tantamount to bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See 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); see also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“[T]he complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”); see also Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000)
(finding that the respondent, at the time of registration, had notice of the
complainant’s famous POKÉMON and PIKACHU trademarks given
their extreme popularity).
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 <therealgilligansisland.com>
domain name be TRANSFERRED from Respondent to Complainant.
Linda M. Byrne, Panelist
Dated: May 2, 2005
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