Robert Downey Jr. v. Joseph Beeson / The Beeson Group IP
Claim Number: FA1703001724169
Complainant is Robert Downey Jr. (“Complainant”), represented by Stephen J. Strauss of BUCHALTER NEMER, California, USA. Respondent is Joseph Beeson / The Beeson Group IP (“Respondent”), California.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <robertdowneyjr.pictures>, <robertdowneyjr.digital>, and <robertdowneyjr.media>, registered with Network Solutions, 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.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 28, 2017; the Forum received payment on March 28, 2017.
On March 29, 2017, Network Solutions, LLC confirmed by e-mail to the Forum that the <robertdowneyjr.pictures>, <robertdowneyjr.digital>, and <robertdowneyjr.media> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 2017 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@robertdowneyjr.pictures, postmaster@robertdowneyjr.digital, postmaster@robertdowneyjr.media. Also on March 29, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on April 17, 2017.
Complainant entered an Additional Submission which was received on April 19, 2017.
On April 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luiz Edgard Montaury Pimenta 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is an internationally recognized and award winning actor, as well as producer of motion pictures, television shows, and music artist.
Complainant claims to own the name and trademark rights for ROBERT DOWNEY JR., which he uses in connection to various goods and services and that the disputed domain names <robertdowneyjr.pictures>, <robertdowneyjr.digital>, and <robertdowneyjr.media>, incorporate, in their entireties, Complainant’s trademark.
Complainant maintains that Respondent has no rights or legitimate interest in the disputed domains names. Complainant notes that Respondent is not commonly known by the disputed domain names, nor has Complainant given permission or authorized Respondent to use the ROBERT DOWNEY JR. mark for any reason or use.
Also, Complainant argues that Respondent is acting in bad faith in view of the fact that Respondent’s use of the disputed domain names does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use, rather one of the domains redirects to Respondent’s company website and the other two domain names resolve to a landing page featuring links to various third party websites, in a Pay Per Click type of page, thereof indicating a pattern of bad faith registration and use.
B. Respondent
Basically, Respondent argues that the disputed domain names were acquired in good faith by a former employee for a customer that ended up not purchasing them. Also, Respondent states that the three disputed domain names are “not propagating” nor are they being used for any purpose or financial gain.
Finally, Respondent denotes that it consents to transfer the domain names upon reimbursement for the costs incurred in the registration and transfer service in the total amount of $ 1,175. Alternatively, Respondent offers to refrain from renewing the registration for names in exchange for $675 in reimbursement for costs paid with the domain.
C. Additional Submissions
On its Additional Submission, Complainant basically states that Respondent’s arguments fail to contradict Complainant’s assertions under the Policy, supporting, in fact, some of the issues raised.
Complainant argues that Respondent’s contentions that the disputed domain names were registered in good faith by an ex-employee are invalid, as the names were registered in Respondent’s name.
In addition, Complainant notes that Respondent’s assertion that the disputed domain names are not being used for financial gain is untrue, considering that one of the domain names redirects to Respondent’s own website, and the other two resolve to websites featuring Pay Per Click links.
Complainant is an internationally recognized and award-winning actor and producer of motion pictures and television shows, as well as a music artist. His career remarkably spans over 40 years. Complainant owns several trademark registrations for the ROBERT DOWNEY JR mark in various countries, including in the U.S. with the USPTO, e.g., registration No. 3,705,201, registered on Nov. 3, 2009, which claims a 1972 date of first use.
Respondent registered the disputed domain names, <robertdowneyjr.pictures>, <robertdowneyjr.digital>, and <robertdowneyjr.media> on August, 16, 2016.
As of the date of the Complaint, Respondent’s domain name <robertdowneyjr.digital> redirected internet users to its own company website and the other two disputed domain names featured Pay Per Click hyperlinks.
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."
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.
According to evidence submitted, Complainant has been using his name and trademark ROBERT DOWNEY JR., in association with acting services, etc, since 1972.
The Panel finds that Complainant’s evidence supports the fact that Complainant owns rights in the name and mark ROBERT DOWNEY JR., especially by proving the existence of registrations with the USPTO, which is sufficient to establish rights in that mark. See Paisley Park Enters v. Lawson, FA 384834 (Forum, Feb. 1, 2005).
Respondent does not contest Complainant’s rights to the ROBERT DOWNEY JR. mark. Also, Respondent does not contest that the disputed domain names are identical or confusingly similar to the Complainant’s name and trademark.
All three of the disputed domain names entirely incorporate Complainant’s name and trademark — less the spaces and punctuation — with the addition of the gTLDs: “.pictures”; “.digital”; and, “.media”. Omission of spaces and punctuation are irrelevant to a Policy ¶4(a)(i) analysis (See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089, Forum, July 7, 2015), also the addition of a potentially relevant gTLD to a mark only adds to the potential confusion (See Avaya Inc. v. Robert Bird, FA 1603045, Forum Mar. 12, 2015).
Thus, Complainant has satisfied the requirements of Policy ¶4(a)(i).
It is well established that Complainant must first make a prima facie that Respondent lacks rights and legitimate interests in the disputed domains names under Policy ¶4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests (See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828, Forum Aug. 18, 2006).
In the present case, the Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(i) Respondent has no rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the ROBERT DOWNEY JR. mark in any way;
(ii) A WHOIS search regarding Respondent proves that Respondent is not commonly known by any of the disputed domain names, which identifies Respondent as “Joseph Beeson” with “The Beeson Group IP”. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name);
(iii) Respondent’s lack of rights or legitimate interests in the disputed domains names is evidenced by their failure to use the names for a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, domain name <robertdowneyjr.digital> redirects to Respondent’s company website and domain names <robertdowneyjr.pictures> and <robertdowneyjr.media> resolve to a landing page featuring links to various third party websites relating to Complainant, in a Pay Per Click system.
On the other hand, the Panel verifies that Respondent has failed to prove rights or legitimate interests pursuant to Policy ¶4(a)(ii).
Thus, the Panel finds that Complainant has satisfied the requirements of Policy ¶4(a)(ii).
Complainant alleges that Respondent registered the disputed domain name with actual notice of Complainant’s rights in the ROBERT DOWNEY JR. name and mark, which evidences Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶4(a)(iii). The Panel notes that in some circumstances previous panels have held that a respondent demonstrates bad faith under Policy ¶4(a)(iii) by registering the disputed domain name with actual notice of the complainant’s rights in the appropriated mark. See Yahoo! Inc. v. Butler, FA 744444 (Forum, Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Also, Complainant contends that Respondent’s registration and use of multiple domain names infringing Complainant’s trademark rights is evidence of a pattern of bad faith registration. The Panel agrees that this behavior is evidence of bad faith in the registration of the disputed domain names. See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum November 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)).
Furthermore, Complainant has shown evidence that one of the disputed domain names redirects internet users to Respondent’s company website, as well as the other two disputed domain names resolve to parked pages with links to related third-party webpages, which, in both cases, demonstrates Respondent’s bad faith. In fact, the use of a disputed domain name to link to unrelated and competing third party websites is evidence of a respondent’s bad faith per Policy ¶ 4(b)(iv). See Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy).
In view of the above, on the basis of the statements and documents submitted, the Panel holds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain names pursuant to 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 <robertdowneyjr.pictures>, <robertdowneyjr.digital>, and <robertdowneyjr.media> domain names be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist
Dated: May 8, 2017
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