Vin Diesel v. LMN a/k/a L.M. Nordell
Claim Number: FA0609000804924
Complainant is Vin Diesel (“Complainant”), represented by Evan N. Spiegel, of Lavely & Singer P.C., 2049 Century Park East Suite 2400, Los Angeles, CA 90067. Respondent is LMN a/k/a L.M. Nordell (“Respondent”), P.O. Box 699, Stockholm 114 79, Sweden.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <vindiesel.com>, registered with Intercosmos Media Group, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 25, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 26, 2006.
On September 26, 2006, Intercosmos Media Group, Inc. confirmed by e-mail to the National Arbitration Forum that the <vindiesel.com> domain name is registered with Intercosmos Media Group, Inc. and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. has verified that Respondent is bound by the Intercosmos Media Group, 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 September 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 17, 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@vindiesel.com by e-mail.
A late Response was submitted by Respondent on October 25, 2006 and was determined to be deficient. The Panel has not chosen to consider this Response in its Decision.
On October 25, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <vindiesel.com> domain name is identical to Complainant’s VIN DIESEL mark.
2. Respondent does not have any rights or legitimate interests in the <vindiesel.com> domain name.
3. Respondent registered and used the <vindiesel.com> domain name in bad faith.
B. Respondent failed to submit a sufficient Response in this proceeding.
Complainant, Vin Diesel, is a well-known actor, producer and director. Complainant has appeared in many popular films since 1994, including Saving Private Ryan, The Fast and the Furious, Pitch Black, The Pacifier, The Chronicles of Riddick and xXx. Several of Complainant’s action films have been turned into video games that contain his name or likeness from the films. Complainant has also appeared on numerous television talk shows and has been featured in dozens of magazine articles in periodicals such as Vanity Fair, Entertainment Weekly, Rolling Stone and Glamour.
Respondent’s <vindiesel.com> domain name, which it registered on August 6, 2001, resolves to a commercial web directory featuring links to various content unrelated to Complainant.
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 sufficient 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) (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.
Although Complainant does not own a trademark registration for the VIN DIESEL mark, the Panel finds that, for purposes of satisfying Policy ¶ 4(a)(i), ownership of a trademark registration is not required in order for Complainant to demonstrate its rights in the mark. 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 Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the complainant have rights in a registered trademark and that it is sufficient to show common law rights in holding that the complainant has common law rights to her name).
Complainant has appeared in several blockbuster films since the mid-1990s and on numerous talk shows promoting his films. Several worldwide publications have also written stories about Complainant and his films. As a result, Complainant’s VIN DIESEL mark has acquired secondary meaning among the consuming public in reference to Complainant and his films. Therefore, the Panel concludes that Complainant has established common law rights in the VIN DIESEL 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 the complainant that common law trademark rights exist); see also Sade v. Quantum Computer Servs., Inc., D2000-0794 (WIPO Sept. 26, 2000) (finding that although the complainant did not register the word “SADE” either as a trademark or as a service mark the complainant adapted the word “SADE” as the complainant’s stage-name and as a trademark and service mark and therefore the complainant established that it had common law rights in the mark).
The Panel further finds that the <vindiesel.com>
domain name is identical to Complainant’s mark, for it contains the entire mark
and simply eliminates the space between terms and adds the generic top-level
domain (“gTLD”) “.com.” These
alterations are insufficient to differentiate the disputed domain name from
Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7,
2000) (finding <pomellato.com> identical to the complainant’s mark
because the generic top-level domain (gTLD) “.com” after the name POMELLATO is
not relevant); see also Planned Parenthood Fed’n of Am. v. Bucci, 42
U.S.P.Q. 2d 1430 (S.D.N.Y. 1997), cert. denied 525 U.S. 834 (1998)
(finding plaintiff’s PLANNED PARENTHOOD mark and defendant’s
<plannedparenthood.com> domain name nearly identical).
The Panel holds that Complainant has satisfied this element of the Policy.
Complainant maintains that Respondent does not have rights
to or legitimate interests in the disputed domain name. Complainant has the initial burden of proof
in establishing that Respondent has no rights or legitimate interests in the
<vindiesel.com> domain name.
Once Complainant makes a prima facie case in support of its
allegations, the burden then shifts to Respondent to show it does have rights
or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200
(Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie
showing that Respondent does not have rights or legitimate interest in the
subject domain names, which burden is light.
If Complainant satisfies its burden, then the burden shifts to
Respondent to show that it does have rights or legitimate interests in the
subject domain names.”); see also G.D. Searle v. Martin Mktg., FA 118277
(Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a
prima facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s failure to properly answer the Complaint raises
a presumption that Respondent has no rights or legitimate interests in the
disputed domain name. See Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’
failure to respond can be construed as an admission that they have no
legitimate interest in the domain names); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name). However, the Panel will now examine the record to determine
if Respondent has rights or legitimate interests under Policy ¶ 4(c).
The WHOIS information lists “LMN a/k/a L.M. Nordell” as the registrant of the <vindiesel.com> domain name, and no other evidence in the record suggests that Respondent is commonly known by the contested domain name. Consequently, Respondent has not established rights or 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 interest 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Furthermore, Respondent’s <vindiesel.com> domain name, which is identical to Complainant’s VIN DIESEL mark, resolves to a commercial website featuring links to various content unrelated to Complainant. In Elsevier B.V. v. Domain Deluxe, FA 237520 (Nat. Arb. Forum Mar. 24, 2004), the panel found the respondent’s use of the <sciencdirect.com> domain name, which was confusingly similar to the complainant’s SCIENCE DIRECT mark, to operate a “portal website” that generated revenue through advertisements was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. Because Respondent also presumably earns “click-through fees” from diverting Internet users seeking information on Complainant to third-party websites via links on Respondent’s website, the Panel holds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <vindiesel.com> domain name pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel holds that Complainant has satisfied this element of the Policy.
Respondent is using the <vindiesel.com> domain name, which is identical to Complainant’s VIN DIESEL mark, to redirect Internet users seeking information on Complainant or his films to an unrelated commercial website displaying links to various websites. Respondent likely receives referral fees for each consumer it diverts to third-party websites unrelated to Complainant. Therefore, Respondent is taking advantage of the confusing similarity between the <vindiesel.com> domain name and Complainant’s VIN DIESEL mark in order to profit from the goodwill associated with the mark. The Panel finds that use of the disputed domain name for this purpose is indicative of bad faith registration and use under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to third-party websites).
The Panel holds that Complainant has satisfied this element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vindiesel.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 7, 2006
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