TT Merchandising, Inc. v. Alberta Hot Rods
Claim Number: FA0212000139661
PARTIES
Complainant is TT Merchandising, Inc., New York, NY, USA (“Complainant”) represented by Michael S. Sherman of Jeffer, Mangels, Butler & Marmaro LLP. Respondent is Alberta Hot Rods, High Prairie, AB, CANADA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <travistritt.com>, registered with Core Internet Council Of Registrars.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically December 27, 2002; the Forum received a hard copy of the Complaint December 30, 2002.
On January 2, 2003, Core Internet Council Of Registrars confirmed by e-mail to the Forum that the domain name <travistritt.com> is registered with Core Internet Council Of Registrars and that Respondent is the current registrant of the name. Core Internet Council Of Registrars verified that Respondent is bound by the Core Internet Council Of Registrars 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 January 2, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 22, 2003, 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@travistritt.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On January 31, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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. The domain name registered by Respondent, <travistritt.com>, is identical to Complainant’s common law interests in its name TRAVIS TRITT.
2. Respondent has no rights or legitimate interests in the <travistritt.com> domain name.
3. Respondent registered and used the <travistritt.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an award-winning star of county music. Complainant has used his name, TRAVIS TRITT, in connection with the music he records and performs for more than 15 years. During that time Complainant has performed country music shows for some 500 million people. Complainant has also produced several multi-platinum albums.
Complainant reaches his audience with regular music tours. Complainant also has performed his music in events that enjoyed a broad audience, including events such as the 1993 Superbowl pre-game show, “Great American Music of the 20th Century” with Tina Turner and the 75th Birthday Celebration for the Grand Ole Opry. In addition, Complainant has raised the awareness of his name in the entertainment industry by appearing in films and television, including “The Cowboy Way,” “Touched by An Angel,” and “Arli$$.” As a result of Complainant’s music performances and film ventures, Complainant has developed substantial goodwill throughout the entertainment industry and with the general public for the name TRAVIS TRITT.
Respondent registered the <travistritt.com> domain name on November 26, 1996. Respondent uses the domain name to link to a website, <celebrity1000.com>, which provides information about various entertainers and contains multiple advertisements. Respondent previously registered other domain names using names of celebrities, including Michael Crichton and Kevin Spacey. Respondent has previously used some of these celebrity-related domain names to link to the <celebrity1000.com> website.
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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.
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’s
interests in the TRAVIS TRITT name as a service mark, given the longstanding
use of that mark to identify his music, evidences an interest in a mark
sufficient to state a claim against Respondent relative to the <travistritt.com>
domain name. A complainant need not
have a registered trademark in order to raise a claim against a domain name; a
domain name dispute may properly be filed when one demonstrates an interest in
a mark to which the disputed domain name is confusingly similar or
identical. See British
Broadcasting 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 Estate of Tupac Shakur v.
Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (finding that 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
domain name registered by Respondent, <travistritt.com>, wholly
incorporates Complainant’s TRAVIS TRITT service mark adding only the generic
top-level domain “.com.” Every domain
name requires a top-level domain and therefore addition of such identifiers
fails to differentiate a domain name from a mark when it represents the only
divergence from the mark. The focus of
the domain name under a Policy ¶4(a)(i) analysis lies on the second level,
which is “travistritt.” Therefore,
Respondent’s <travistritt.com> domain name is identical to
Complainant’s TRAVIS TRITT service mark.
See Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain (gTLD)
“.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
has established in this proceeding that it has rights to the TRAVIS TRITT
service mark. Complainant has alleged
that Respondent has no such rights or legitimate interests in the <travistritt.com>
domain name in order to satisfy Complainant’s burden to make a prima facie
showing in the Complaint. Absent a
response from Respondent, the Panel may accept all of Complainant’s allegations
as true and may draw all reasonable inferences in Complainant’s favor. See 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”); see also
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences
of fact in the allegations of Complainant to be deemed true).
Without
authorization from Complainant, Respondent uses the <travistritt.com>
domain name to divert Internet traffic to a website,
<celebrity1000.com>. This website
contains information about a variety of entertainers and contains numerous
advertisements. It may be presumed that
Respondent benefits commercially from the additional hits the
<celebrity1000.com> website receives from the traffic generated by the <travistritt.com>
domain name. Respondent’s use does not
represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)
and it does not constitute a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc.,
FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial
use of the domain name to confuse and divert Internet traffic is not a
legitimate use of the domain name); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck
surfers into a site sponsored by Respondent hardly seems legitimate”).
Respondent
is identified as Alberta Hot Rods, a party that has been in previous similar
domain name disputes over unauthorized use of names of celebrities. Respondent has not come forward to
demonstrate that it is commonly known by the <travistritt.com>
domain name and the fact that Respondent previously engaged in similar behavior
warrants a finding of lack of rights or legitimate interests in the domain name
pursuant to Policy ¶ 4(c)(ii). See
Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding Respondent does not have
rights in a domain name when Respondent is not known by the mark).
Accordingly,
the Panel finds that Respondent has no rights or legitimate interests in the <travistritt.com>
domain name and thus Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s
use of the <travistritt.com> domain name to link Internet users,
who type in the TRAVIS TRITT service mark in the web-browser followed by the
most common top-level domain “.com,” to the <celebrity1000.com> website,
likely causes source confusion.
Respondent is capitalizing on Complainant’s well-known name and
hard-earned goodwill that the public associates with the TRAVIS TRITT
name. Respondent’s diversionary use of
the <travistritt.com> domain name illustrates an example of bad
faith under Policy ¶ 4(b)(iv), which the Policy was designed to prevent. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding bad faith where the domain name in question is obviously
connected with Complainant’s well-known marks, thus creating a likelihood of
confusion strictly for commercial gain); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17,
2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked
<drmath.com>, which contains Complainant’s Dr. Math mark, to a website
run by the Respondent, creating confusion for Internet users regarding the
endorsement, sponsorship, of affiliation of the website).
The
facts permit the Panel to infer that Respondent knew of Complainant’s interest
in the TRAVIS TRITT service mark because Respondent registered domain name
using celebrities in the past. In
addition, Respondent uses the <travistritt.com> domain name, which
predominantly reflects the TRAVIS TRITT name, to link to an entertainment
related website. Since Complainant is in the entertainment industry as well, it
may be inferred that Respondent knew of the value that was represented by
Complainant’s name in the entertainment business. Therefore, Respondent’s registration of the <travistritt.com>
domain name, with knowledge of Complainant’s interests in the TRAVIS TRITT
service mark, constitutes bad faith under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Albrecht v. Natale, FA 95465 (Nat.
Arb. Forum Sept. 16, 2000) (finding registration in bad faith where no
reasonable possibility suggests and no evidence shows that the domain name that
entirely incorporates Complainant’s name was selected at random).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <travistritt.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 14, 2003.
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