Eva Longoria v. Momentum Technology Corporation c/o Paul Barbell
Claim Number: FA1103001380027
Complainant is Eva Longoria (“Complainant”), represented by Stephen J. Strauss of Fulwider Patton LLP, California, USA. Respondent is Momentum Technology Corporation c/o Paul Barbell (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <evalongoria.org>, registered with Wild West Domains, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 24, 2011; the National Arbitration Forum received payment on March 24, 2011.
On March 25, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <evalongoria.org> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@evalongoria.org. Also on March 29, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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:
Complainant is an internationally recognized and award winning actress in motion pictures and television and is the developer of a line of fragrances.
Complainant holds common law rights in the EVA LONGORIA trademark dating from 2001.
Complainant also owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the EVA BY EVA LONGORIA mark (Reg. No. 3,871,343, filed April 1, 2010, issued November 10, 2010).
Long after Complainant had achieved celebrity status, Respondent registered the <evalongoria.org> domain name on January 6, 2009.
The disputed domain name is not currently being used in connection with an active website.
Respondent’s <evalongoria.org> domain name is identical to Complainant’s EVA LONGORIA mark.
Respondent has no relationship with Complainant, and Complainant has not given Respondent permission or authorization to use the EVA LONGORIA mark in a domain name.
Respondent is not commonly known by the <evalongoria.org> domain name.
Respondent does not have any rights to or legitimate interests in the domain name <evalongoria.org>.
Respondent both registered and uses the <evalongoria.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Policy ¶ 4(a)(i) does not require a trademark registration with a trademark authority if Complainant can establish common law rights in its mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant asserts common law rights in the EVA LONGORIA mark because it is a personal name which has been continuously used since 2001 in connection with Complainant’s career as an actress and marketer of a line of fragrances. It is undisputed that Complainant is an internationally recognized and award-winning actress in motion pictures and television. The undenied continuous use of the EVA LONGORIA mark in connection with Complainant’s acting career and fragrance line has evidently created secondary meaning in the EVA LONGORIA trademark sufficient to establish common law rights in the mark for purposes of Policy ¶ 4(a)(i). See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary for purposes of Policy ¶ 4(a)(i) and that the name “Julia Roberts” had sufficient secondary association with a complainant that common law trademark rights existed under the Policy); see also Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000):
A person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law . . ..
The <evalongoria.org> domain name is substantively identical to Complainant’s EVA LONGORIA trademark because the omission of the space between terms and the addition of the generic top-level domain (“gTLD”) “.org” are inconsequential modifications which are irrelevant to a Policy ¶ 4(a)(i) analysis. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name was identical to a complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms of a complainant’s mark and the addition of a gTLD to form a domain name do not establish distinctiveness from the mark under Policy ¶ 4(a)(i).
The Panel therefore finds that Respondent’s <evalongoria.org> domain name is identical to Complainant’s EVA LONGORIA mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain name. Pursuant to Policy ¶ 4(a)(ii), once Complainant makes out a prima facie case on this point, the burden shifts to Respondent to demonstrate it has rights to or interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Complainant has adequately established a prima facie case under this head of the Complaint. Because Respondent has failed to respond to the allegations of the Complaint, we may presume that Respondent lacks any rights to and legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
Nonetheless, we will examine the evidence before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We first note that Complainant argues, and Respondent does not deny, that Respondent has no relationship with Complainant, that Complainant has not given Respondent authorization to use the EVA LONGORIA mark in a domain name, and that Respondent is not commonly known by the <evalongoria.org> domain name. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain only as “Momentum Technology Corporation c/o Paul Barbell,” which does not resemble the contested domain. On this record, we are constrained to conclude that Respondent is not commonly known by the <evalongoria.org> domain name so as to have acquired rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and therefore had no rights to or legitimate interests in a contested domain name, where there was no evidence in the record, including the WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent has made no demonstrable preparations to use the domain name <evalongoria.org> and that it is not currently in active use. The failure actively to use the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain under Policy ¶ 4(c)(iii). This is evidence that Respondent lacks rights to and legitimate interests in the domain according to Policy ¶ 4(a)(ii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where a respondent failed to submit a response to a complaint filed under the Policy and had made no use of the domain name there in question); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005):
The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
When conducting a Policy ¶ 4(a)(iii) analysis, we may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000):
[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.
See also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy are not an exhaustive list of bad faith evidence).
We first consider that Respondent does not use the <evalongoria.org> domain name in connection with an active website. This inactive use of the disputed domain name supports a finding of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that a respondent’s failure to make active use of its domain name in the three months after its registration indicated that that respondent registered the disputed domain name in bad faith); see also 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).
Furthermore, it is evident on this record that Respondent had knowledge of Complainant’s rights in the EVA LONGORIA mark when it registered the disputed <evalongoria.org> domain name. This is a further indication of Respondent’s bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002):
[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.
See also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that a respondent had actual or constructive knowledge of a complainant’s EXXON mark, so that that respondent must have registered a competing domain name in bad faith).
For these reasons, the Panel concludes that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <evalongoria.org> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 3, 2011
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