Leonardo DiCaprio v. sandi monkey
Claim Number: FA2301002026351
Complainant is Leonardo DiCaprio (“Complainant”), represented by Monica B. Ricjman of Dentons US LLP, Illinois, US. Respondent is sandi monkey (“Respondent”), ID.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leonardodicaprio.org>, registered with GoDaddy.com, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on January 4, 2023; Forum received payment on January 4, 2023.
On January 5, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <leonardodicaprio.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 January 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2023 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@leonardodicaprio.org. Also on January 5, 2023, 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.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On January 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that 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, 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
Complainant is a world famous actor, producer and activist. Complainant has rights in the trademark LEONARDO DICAPRIO through its use in commerce since 1998 and registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,987,171 registered August 23, 2005). The <leonardodicaprio.org> domain name was formerly owned by Complainant since 1998 but it inadvertently expired on August 22, 2022 and was purchased at auction by Respondent on September 6, 2022. The disputed domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the LEONARDO DICAPRIO mark in its entirety and adds the “.org” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <leonardodicaprio.org> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the LEONARDO DICAPRIO mark.
Respondent registered and uses the <leonardodicaprio.org> domain name in bad faith. Respondent registered the disputed domain name in order to disrupt Complainant’s business and divert customers for commercial gain. Additionally, Respondent attempted to change the domain name into a fan site but this effort is disingenuous. Finally, Respondent registered the disputed domain with opportunistic bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant has demonstrated rights in the trademark LEONARDO DICAPRIO and that the <leonardodicaprio.org> domain name is confusingly similar to the mark;
- Respondent has no rights or legitimate interests in the disputed domain name where it is used to variously resolve to a gambling site, a pay-per-click site, and a site disingenuously claiming to be a blog about philosophy, books, and Complainant; and
- The disputed domain name was registered and used in bad faith where it consists almost entirely of Complainant’s globally famous mark and is used for the website resolutions noted above.
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the LEONARDO DICAPRIO mark based upon its use in commerce and its registration with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant submits a copy of its USPTO Registration certificate for the LEONARDO DICAPRIO mark, the Panel finds that rights in the mark under Policy ¶ 4(a)(i) have been proven.
Next, Complainant argues that Respondent’s <leonardodicaprio.org> domain name is identical or confusingly similar to Complainant’s LEONARDO DICAPRIO mark as it contains the mark in its entirety and merely adds the “.org” gTLD. The deletion of spaces between the words of a complainant’s mark and the addition of a gTLD fails to sufficiently distinguish a disputed domain name from an asserted mark per Policy ¶ 4(a)(i). See KW KONA INVESTORS, LLC v. Privacy.co.com / Privacy.co.com, Inc Privacy ID# 923815, FA 1784456 (Forum June 11, 2018) (“[T]he omission of spacing and addition of a gTLD are irrelevant in determining whether the disputed domain name is confusingly similar.”). Here, as the disputed domain name contains the identical LEONARDO DICAPRIO trademark without the space between the two words and adds only the “.org” gTLD, the Panel finds that it is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent lacks rights or legitimate interests in the <leonardodicaprio.org> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the LEONARDO DICAPRIO mark. WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding that a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted that it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated that the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name, as revealed in the Registrar verification to Forum, lists the registrant as “sandi monkey,” and Respondent has not filed a response or made any other submission in this case to indicate that it is known otherwise. Further, Complainant states that Respondent “has no explicit or implicit authorization to use Mr. DiCaprio’s Mark” and there is no evidence to rebut this. Therefore, the Panel finds no basis upon which to hold that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Further, the Panel will examine whether Respondent is using the disputed domain name to make a bona fide offering of goods or services and whether it is making a legitimate noncommercial or fair use thereof under Policy ¶¶ 4(c)(i) and (iii). Complainant asserts that Respondent has used the <leonardodicaprio.org> domain name for a gambling website, a pay-per-click site, and most recently, a site purporting to be a blog and containing photographs of Complainant and some unrelated text. Use of a well-known mark for gambling or pay-per-click pages has most typically been held not to be a bona fide offering of goods or services or a legitimate noncommercial or fair use. See e.g., Articulate Global, LLC v. chen JinRong, FA 2022194 (Forum Jan. 2, 2023) (“The Respondent has also used the Domain Name for a commercial gambling and pornography site which is not a bona fide offering of goods and services or a legitimate noncommercial or fair use.”); LF, LLC v. Waseem Hassan, FA 2025476 (Forum Jan. 25, 2023) (“Previous panels have declined to find a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name when a respondent diverts traffic to a site that hosts competing hyperlinks.”). Here, Complainant submits screenshots of websites that formerly resolved from the <leonardodicaprio.org> domain name but after Respondent’s acquisition of the disputed domain name. The first shows graphics and links for online slot machines and other games of chance along with extensive text in the Indonesian language.[i] The second shows a pay-per-click page with links to categories such as “Famous Actors”, “Celebrity Scandals”, and “Box Office”. The Panel finds that these uses do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as they seem calculated to draw in traffic to these commercial sites based on Complainant’s name alone.
Complainant also submits more recent screenshots of Respondent’s website which show the title “Mindblown: a blog about philosophy. Got any book recommendations?” followed by text claiming that the site is “the unofficial fan site of Leonardo DiCaprio!”, a few photographs of Complainant, and the footer “Proudly powered by WordPress”. Complainant asserts that “[i]t is unlikely that any genuine fan of Mr. DiCaprio would spend nearly $20,0000 to secure <leonardodicaprio.org> in order to launch a noncommercial fan site. There are many less expensive alternatives for hosting a fan website.” It goes on to claim that this most recent iteration is, in fact, not a genuine fan site. The Panel is cognizant of the fact that a genuine fan site may constitute a legitimate noncommercial or fair use of a disputed domain name. However, a site with fan content cannot be primarily a pretext for cybersquatting or commercial activity. Sofia Vergara v. Domain Administrator, Fundacion Private Whois / Domain Admin, Whois Privacy Corp. / Guy Bouchard, D2014-2008 (WIPO Sep. 28, 2014) (“the Panel rejects the proferred justification that the disputed domain name [sofiavergara.org] is legitimately being used as a fan site.”). Also instructive here is the fact that “panels have tended to find that a general right to operate a fan site (even one that is supportive of the mark owner) does not necessarily extend to registering or using a domain name that is identical to the complainant’s trademark, particularly as the domain name may be misunderstood by Internet users as being somehow sponsored or endorsed by the trademark owner.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, (“WIPO Overview 3.0) § 2.7.2 (3d ed. 2017). See also Paris Saint-Germain Football v. Relativ Hosting, D2020-2356 (WIPO Oct. 30, 2020) (the disputed domain name “essentially comprises the mark plus an additional descriptive term and a gTLD related to the Complainant’s area of business. Here, such composition cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant”). Further, in Paris Saint-Germain Football v. Relativ Hosting, supra the Panel noted that Respondent’s primary line of business is web hosting and “no explanation is given as to why a sole proprietor business whose registration indicates that its primary activity is in web hosting, presumably a wholly commercial or for-profit venture, would be interested in creating an entirely noncommercial fan site for a football club. Is the sole proprietor a genuine fan of the club concerned? The Panel does not know and there is no evidence before it to this effect.” The Registrar WHOIS verification for the <leonardodicaprio.org> domain name reflects Respondent’s email address as “seoprofesi@[domain]” thus suggesting that Respondent is an SEO professional. Thus, in the present case, the Panel is presented with what appears to be a fan site created by an SEO professional but which was preceded by a gambling site and a pay-per-click site focused on celebrities, neither of which was the resolution of the site during the time that Complainant owned the disputed domain name. It may be possible that the pay-per-click resolution was posted by Respondent’s Registrar or hosting provider, but the gambling resolution seems more troubling. In any event, despite Forum providing notice of the Complaint, notice of default, and notice of the panel appointment to Respondent at the email and postal addresses which it listed with its Registrar in the WHOIS record, Respondent has chosen not to participate in these proceedings to offer any evidence or argument concerning its use of the disputed domain name.
As Complainant has made out a prima facie case that has not been rebutted by Respondent, by a preponderance of the evidence before it the Panel determines that Respondent does not have any rights or legitimate interests in the disputed domain name under the examples set out in Policy ¶ 4(c) or otherwise.
Complainant asserts that Respondent registered the <leonardodicaprio.org> domain name with actual knowledge of Complainant’s mark and in bad faith. Registration with knowledge of a complainant’s mark can form the foundation upon which a finding of bad faith may be built per 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”). As Complainant has submitted screenshots from its former activism website and noted that as a motion picture actor, “Mr. DiCaprio clearly is one of the most famous and recognizable people in the world”, the Panel finds it highly likely that Respondent had actual knowledge of Complainant and its mark at the time that it acquired the disputed domain name.
Furthermore, fame of an asserted mark also plays a role in examining the bad faith element of the Policy. Complainant argues that Respondent registered the <leonardodicaprio.org> domain name to create confusion with Complainant’s globally famous mark in bad faith per 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”). Here, Complainant provides evidence that its mark is famous and of Respondent using the disputed name to trade off Complainant’s reputation in pursuit of commercial gain. The Panel is particularly persuaded by the fact that the <leonardodicaprio.org> domain name consists entirely of Complainant’s mark and a gTLD thus giving no indication that it does not originate with Complainant. As such, these circumstances provide support to the assertion that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Next, Complainant argues that Respondent registered and uses the <leonardodicaprio.org> domain name in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Use of a disputed domain name to redirect consumers to competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain based on confusion under Policy ¶ 4(b)(iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA 1615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Here, Complainant provides screenshots of the disputed domain name’s former resolution to a pay-per-click page offering third party links titled “Famous Actors”, “Celebrity Scandals”, and “Box Office”. Presumably, some of these link to Complainant’s competitors in the entertainment industry. As for the gambling resolution of Respondent’s website, this is a rather obvious attempt at commercial gain from drawing users to the site based on a likelihood of confusion with Complainant’s famous mark. With regard to the more recent iteration of Respondent’s website – the content regarding a blog, philosophy, and images of Complainant – this does not appear to be a genuine fan page for the reasons stated earlier in this decision and Respondent has not appeared in this case to provide any evidence or argument on this point. The Panel is left with little choice but to find, upon a preponderance of the evidence presented, that Respondent registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Finally, a complainant’s prior ownership of a disputed domain name can indicate an act of opportunistic bad faith where it is shown that the respondent knew of the asserted mark. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (“Complainant previous[ly] owned and used the <frburger.com> domain name in connection with its business. Respondent only acquired <frburger.com> when Complainant inadvertently allowed its registration to lapse. Respondent’s opportunistic registration of the <frbuger.com> domain name, absent evidence to the contrary, further indicates bad faith registration and use of the at-issue domain name.”). Here, Complainant provides evidence of its longstanding previous ownership of the disputed domain name which is based on its famous mark and mentions that it “inadvertently expired”, though it does not provide further details on how this happened. Viewed against all of the other circumstances of this case, the Panel here finds further support for its conclusion that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <leonardodicaprio.org> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: February 3, 2023
[i] The Panel notes that Respondent is a resident of Indonesia and so it finds this evidence particularly persuasive.
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