Tom Leykis v. Damian Macafee d/b/a QTK Internet/Name Proxy
Claim Number: FA0601000636552
Complainant is Tom Leykis (“Complainant”), represented by Jill M. Pietrini, of Manatt, Phelps & Phillips LLP, 11355 W. Olympic Blvd., Los Angeles, CA 90064. Respondent is Damian Macafee d/b/a QTK Internet/Name Proxy (“Respondent”), BCM Box 1768, London WC1N 3XX, UK.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <tomleykis.com>, registered with Bulkregister, Llc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 30, 2006.
On January 30, 2006, Bulkregister, Llc. confirmed by e-mail to the National Arbitration Forum that the <tomleykis.com> domain name is registered with Bulkregister, Llc. and that Respondent is the current registrant of the name. Bulkregister, Llc. has verified that Respondent is bound by the Bulkregister, Llc. 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 6, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 27, 2006 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@tomleykis.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <tomleykis.com> domain name is identical to Complainant’s TOM LEYKIS mark.
2. Respondent does not have any rights or legitimate interests in the <tomleykis.com> domain name.
3. Respondent registered and used the <tomleykis.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has been a radio talk show host since 1979. In 1981, Complainant began hosting “The Tom Leykis Show,” a daily radio program. From 1981-1993, Complainant’s radio program aired in a number of different cities throughout the United States, including Boston, Miami, New York, and Los Angeles. By 1994, Complainant’s radio program began broadcasting in national syndication, and Complainant is now working on an additional radio program, “The Tasting Room with Tom Leykis,” which will also be syndicated nationally. Newspaper and Magazine articles about Complainant have been published in such media as USA Today, Time Magazine, the Los Angeles Times, and the Chicago Sun-Times. Complainant has registered the TOM LEYKIS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,878,986 issued August 31, 2004).
Complainant registered the <tomleykis.com> domain name on August 9, 2000. At that time, Internet users who accessed the domain name were directed to another website, which promoted Complainant’s radio program and was owned by the company that distributed the program. However, in 2002, Complainant allowed this registration to lapse.
Respondent registered the <tomleykis.com> domain name soon after Complainant’s regsitration of the domain name expired in 2002. Currently, Internet users who access this domain name are taken to a website featuring a banner which reads that the domain name has been reserved and that a website “may be coming soon.”
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. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 that the TOM LEYKIS mark has acquired sufficient secondary meaning to establish common law rights based on Complainant’s use of the mark in connection with its business. Complainant has used the TOM LEYKIS mark in connection with its national radio show since 1981, and is still using the mark for the same purpose. The Panel determines that Complainant has established secondary meaning in the TOM LEYKIS mark for the purpose of demonstrating common law rights in the mark pursuant to Policy ¶ 4(a)(i). 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 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). Furthermore, the fact that Complainant had previously registered the disputed domain name, which he used in connection his promoting his radio show, attests to Complainant’s rights in the mark. Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (“[T]he fact that Complainant previously held registrations for the [disputed] domain names attests to the fact that it has rights in its marks.”); see also Marty Taylor Homes, Inc. v. JNPR Mgmt., FA 366170 (Nat. Arb. Forum Jan. 5, 2005) (finding that the complainant’s prior use of the disputed domain name, which was identical to the asserted trademark, was evidence of its rights in the mark).
Respondent’s <tomleykis.com> domain name is identical to Complainant’s TOM LEYKIS mark in that it incorporates the mark in its entirety without the space between the terms. Because spaces are not allowed in domain names, the removal of the space between the terms in Complainant’s mark does not distinguish the disputed domain name from Complainant’s mark. 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”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name, the burden shifts to Respondent to prove that it does have rights or legitimate interests under Policy ¶ 4(a)(ii). Because Complainant has presented a prima facie case, and Respondent has not responded to the Complaint, the Panel will consider whether the evaluation of the evidence demonstrates rights or legitimate interests under Policy ¶ 4(c). Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s <tomleykis.com> domain name is identical to Complainant’s TOM LEYKIS mark. Internet users who access this domain name are directed to a website featuring a message stating that the domain name is reserved and a website is forthcoming, and Complainant asserts that this has been the case for three years. The Panel finds that such nonuse of the disputed domain name is neither a use in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
There is no evidence on record that Respondent is commonly known by the <tomleykis.com> domain name, and the WHOIS database lists the administrative, technical, and billing contacts for the <tomleykis.com> domain name as “Damian Macafee”. Thus, Respondent has not established rights or legitimate interests in the <tomleykis.com> domain name pursuant to Policy ¶ 4(c)(ii). Tercent Inc. v. Lee 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Internet users who access Respondent’s <tomleykis.com> domain name are directed to a website featuring a message that the website is under construction. Such nonuse of a domain name that is identical to Complainant’s mark for three years constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 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 Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).
Complainant asserts that Respondent has registered many domain names that incorporate other parties’ trademarks. Additionally, Respondent has been involved in several more disputes in which Respondent’s domain names were transferred to third parties because the domain names infringed on the parties’ trademark rights. E.g., Polaroid Corp. v Macafee, FA 96660 (Nat. Arb. Forum Mar. 26, 2001) (ordering the transfer of the <polaroid.net> domain name, which incorporated the complainant’s POLAROID mark, from Respondent to the complainant); Archer-Daniels-Midland Co. v. Macafee, D2003-0198 (WIPO Apr. 23, 2003) (ordering the transfer of the <adm.org> domain name, which incorporated the complainant’s ADM mark, from Respondent to the complainant); Resicom Corp. Inc. v. Macafee, D2001-0988(WIPO Sep. 25, 2001) (ordering the transfer of the <resicom.com> domain name, which incorporated the complainant’s RESICOM mark, from Respondent to the complainant.). The Panel finds that this pattern of behavior also indicates that Respondent’s registration of the <tomleykis.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(ii). Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 16, 2000) (finding a bad faith pattern of conduct where the respondent registered many domain names unrelated to its business which infringe on famous marks and websites).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tomleykis.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 17, 2006
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