Mrs. Fred Astaire v. Pingtjin Thum
Claim Number: FA0601000637404
PARTIES
Complainant is Mrs. Fred Astaire (“Complainant”), represented by Stephen J. Strauss, of Fulwider Patton LLP, 6060 Center Drive, Tenth Floor, Los Angeles, CA 90045. Respondent is Pingtjin Thum (“Respondent”), Hertford College, Catte Street, University of Oxford, Oxford, Oxfordshire OX1 #BW.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fredastaire.net>,
registered with Network Solutions, Inc.
PANEL
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.
Estella S. Gold as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 30, 2006; the National Arbitration Forum received a
hard copy of the Complaint on February 1, 2006.
On February 3, 2006, Network Solutions, Inc. confirmed by e-mail to the
National Arbitration Forum that the <fredastaire.net>
domain name is registered with Network Solutions, Inc. and that the Respondent
is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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 February 7, 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@fredastaire.net by
e-mail.
A timely Response was received and determined to be complete on February
27, 2006.
A timely Additional Submission was filed by Complainant, received and
determined to be complete on March 3, 2006.
Additional submission was received in a timely fashion, and it was
considered with all other submissions to the Panelist.
On March 8, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Estella S. Gold as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contents that Respondent has used its identical trademark
without authorization, and the registration of the disputed domain name <fredastaire.net>. Complainant asserts that she has standing to
bring the claim for the transfer of the domain name. Complainant alleges that Respondent has no legitimate interest in
the disputed domain name; that Respondent’s website is commercial as defined
under the Policy; and that operation of a fan website does not confer rights and
legitimate interest in the use of the infringing domain name.
B. Respondent
Respondent does not dispute that Complainant has a legitimate interest
in the name “Fred Astaire.” Respondent
does not dispute Complainant’s standing.
Respondent claims rights or legitimate interest in his use of the domain
name, and that the domain name has been registered and is being used in good
faith.
C. Additional Submissions
The Complainant has submitted documentary evidence showing linkages
from the disputed website name to other commercial entities; evidence of
Respondent’s commercial sales using Complainant’s alleged name; evidence of
actual copies of the disputed website’s contents.
FINDINGS
The Panelist finds that the Complainant has
standing for its assertion of claim to the “Fred Astaire name” and that the
Complainant has a right and legitimate interest in that name and its use. Furthermore, the Panelist finds, because of
the submissions of the Complainant showing ongoing use of the “Fred Astaire
name” with associated various rights, that Complainant has shown sufficient
secondary association with the mark.
The Panel finds that although it is within
the rights of an individual to operate a fan website, such use does not confer
rights and legitimate interest in the use of an infringing domain name for
purposes of Policy ¶ 4(a)(ii). See Marino v. Video Images Prods., D2000-0598 (WIPO Aug. 2, 2000) (“In
fact, in light of the uniqueness of the name [<danmarino.com>], which is
virtually identical to the Complainant’s personal name and common law
trademark, it would be extremely difficult to foresee any justifiable use that
the Respondent could claim. On the
contrary, selecting this name gives rise to the impression of an association
with Complainant, which is not based in fact.”); see also Apple Corps Ltd.
v. LOVEARTH.net, FA 98812 (Nat. Arb. Forum Sept. 25, 2001) (stating that
fans have legitimate interests in websites “devoted to their enthusiasm,” but
the domain name itself must distinguish between the “admirer and the admiree”).
REGISTRATION AND BAD FAITH
Respondent is using the disputed domain name to operate a website that
allows Internet users to purchase products that feature unauthorized
reproductions of the FRED ASTAIRE mark and related images. The Panelist finds that such competing use
disrupts the business of Complainant and constitutes bad faith registration and
use pursuant to Policy ¶ 4(b)(iii). See
S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
(finding the respondent acted in bad faith by attracting Internet users to a
website that competes with the complainant’s business); see also G.D. Searle
& Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16,
2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s
products represents bad faith use under Policy ¶ 4(b)(iii).”).
Furthermore, Complainant contends that Respondent’s use of the disputed
domain name will likely cause confusion among Internet users as to
Complainant’s sponsorship of or affiliation with the resulting website. The Panelist finds this to be further
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629
(Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.”); see
also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that the complainant is the source of
or is sponsoring the services offered at the site).
Respondent’s registration of the <fredastaire.net>
domain name for the purpose of operating a fan website creates a false
association with the domain name and Complainant’s mark for purposes of Policy
¶ 4(a)(iii). See Gilmour v.
Cenicolla, D2000-1459 (WIPO Dec. 15, 2000) (finding bad faith registration
of the <davidgilmour.com> domain name where the respondent knew of the
complainant’s fame long before the registration of the domain name and
registered the name in order to “trade off that reputation by creating a false
association between that domain name and the Complainant’s trademark”); see
also Harrison v. LOVEARTH.net, FA 97085 (Nat. Arb. Forum June 4, 2001)
(“This Panel is persuaded . . . that the greater weight of
authority and the better rule is to the effect that ‘fan sites’ . . . do cause
confusion as to their source, sponsorship, affiliation, or endorsement
vis-à-vis the celebrity.”).
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.
The Panelist finds that the Respondent’s use
of the name in dispute is identical and/or confusingly similar.
The Panelist finds that the Complainant has
rights and legitimate interest in the domain name in dispute and that the
Respondent had no rights or legitimate interest in that domain name, although
the Respondent has a right to run a fan website.
Based on the foregoing, the Panelist finds
that this registration was a 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 <fredastaire.net>
domain name be TRANSFERRED from Respondent to Complainant.
___________________________________________________
Estella S. Gold, Panelist
Dated: March 21, 2006
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