The Atlantic Paranormal Society and Pilgrim Films and Television, Inc. v. Xerium Technologies
Claim Number: FA0510000575661
Complainants are The Atlantic Paranormal Society and Pilgrim Films and Television, Inc. (collectively, “Complainant”), represented by Stephen J. Strauss, of Fulwider Patton Lee & Utecht, LLP, 6060 Center Drive, Tenth Floor, Los Angeles, CA 90045. Respondent is Xerium Technologies (“Respondent”), P.O. Box 512, Elmwood Park, NJ 07407.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <theatlanticparanormalsociety.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 11, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 13, 2005.
On October 12, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <theatlanticparanormalsociety.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. 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 October 13, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 2, 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@theatlanticparanormalsociety.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 9, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard 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:
Respondent’s <theatlanticparanormalsociety.com> domain name is identical to Complainant’s THE ATLANTIC PARANORMAL SOCIETY mark.
Respondent does not have any rights or legitimate interests in the domain name <theatlanticparanormalsociety.com>.
Respondent has registered and is using the <theatlanticparanormalsociety.com> domain name in bad faith.
Complainant Pilgrim Films and Television, Inc. is the exclusive licensee of Complainant The Atlantic Paranormal Society for its marks in relation to a television series and related merchandise.
Complainant is a paranormal research society founded in 1990 that investigates haunted houses throughout the United States using state-of-the-art scientific techniques and equipment.
Complainant is one of the leading paranormal research groups in the United States.
Complainant has operated a website at the <the-atlantic-paranormal-society.com> domain name since as early as 2000 in connection with its paranormal research.
Respondent registered the <theatlanticparanormalsociety.com> domain name on November 25, 2004.
Respondent is redirecting Internet users to a website that sometimes functions as a commercial website, where Respondent sells various books on the subjects of the supernatural, ghost stories and paranormal investigation, and at other times is completely inactive.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical, and therefore confusingly similar, to a trademark and service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name has been registered and is being used in bad faith.
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. 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 (Nat. Arb. Forum July 31, 2000); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000).
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.
Under Policy ¶ 4(a)(i), a complainant need not hold a registered trademark in order to establish rights in a mark. Complainant’s THE ATLANTIC PARANORMAL SOCIETY mark has acquired secondary meaning through Complainant’s use of the mark in commerce since 1990 in connection with Complainant’s research services and the marketing of related merchandise. The Panel therefore finds that Complainant has established common law rights in its THE ATLANTIC PARANORMAL SOCIETY mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000).
Respondent’s <theatlanticparanormalsociety.com> domain name is substantively identical to Complainant’s THE ATLANTIC PARANORMAL SOCIETY because the domain name incorporates Complainant’s mark in its entirety and merely omits the spaces between the words “the,” “atlantic,” “paranormal” and “society.” The Panel finds that such minor omissions do not distinguish the domain name from Complainant’s THE ATLANTIC PARANORMAL SOCIETY mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000).
Furthermore, the addition of the generic top-level domain name “.com” does not negate the confusingly similar character of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <theatlanticparanormalsociety.com> domain name. Once Complainant makes a prima facie case in support of its allegations, as it has here, the burden shifts to Respondent to prove that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because Respondent has failed to respond to the Complaint, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Moreover, Complainant asserts, and Respondent does not deny, that, on some occasions, Respondent’s domain name directs Internet users to a commercial website, where Respondent sells various books on the subjects of the supernatural, ghost stories and paranormal investigations. The Panel finds that Respondent’s commercial use of a domain name that is identical to Complainant’s mark in the manner just described 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003); see also Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000).
Complainant likewise alleges, without objection from Respondent, that Respondent’s website is often completely inactive and contains no substantive content. The Panel finds that such inactive use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000); see also AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000).
Moreover, Respondent has offered no evidence suggesting that
Respondent is commonly known by the disputed domain name. Thus, Respondent has not established rights
or legitimate interests in the <theatlanticparanormalsociety.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000); see also Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001).
The Panel therefore determines that Policy ¶ 4(a)(ii) has been satisfied.
Respondent does not contend against Complainant’s assertion to the effect that Respondent uses the disputed domain name to redirect Internet users to a commercial website, where Respondent sells various books on the subjects of the supernatural, ghost stories and paranormal investigation. The Panel thus finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv) in that Respondent is using the <theatlanticparanormalsociety.com> domain name to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its website. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002).
Additionally, Respondent’s use of the disputed domain name, which contains Complainant’s complete THE ATLANTIC PARANORMAL SOCIETY mark, to redirect Internet users to a website where Respondent offers and sells various books on the subject of the supernatural, ghost stories and paranormal investigation strongly suggests that Respondent had actual knowledge of Complainant’s rights in the mark when it registered the subject domain name, and that Respondent deliberately chose that domain name in order to exploit the goodwill Complainant has acquired in its mark. Respondent’s registration of a domain name containing Complainant’s mark with actual knowledge of Complainant’s rights in the mark is evidence of 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); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <theatlanticparanormalsociety.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 23, 2005
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