[Indexed as: Michelle Barry v. For Sale]
[Indexed as: BRITTANYANDREWS.com]
National Arbitration Forum Decision
Administrative Panel Decision
Claim Number: FA0007000095110
Commenced: 07/11/2000
Judgment:08/17/2000
Presiding Panelist: Hon. Carolyn Marks Johnson
Domain name - Domain name dispute resolution policy - U.S. Service mark - U.S. Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use - common law mark - valuable consideration.
Complainant is an internationally known actress, model, public speaker, and feature entertainer known as Brittany Andrews. Complainant has a common law mark in her name. Respondent registered the domain name "BRITTANYANDREWS.com" and offered to transfer the domain name to the Complainant for $1,245.
HELD, Name Transferred to Complainant.
Complainant holds a common law trademark in the name BRITTANY ANDREWS. Complainants exclusive use of the mark in addition to its wide public dissemination, has caused the name to acquire a secondary meaning. A significant portion of the public associates the name and mark with the Complainant. Respondents domain name is identical to Complainants mark. Respondent has made no claim that it is using the domain name in connection with a bona fide offering of goods and services or is making a legitimate noncommercial or fair use of the site.
Respondent registered and is using the name in question for the purpose of selling it to Complainant or Complainants competitors, for valuable consideration in excess of out-of-pocket costs.
Policies referred to
ICANN Uniform Domain Name Dispute Policy
Panel decisions referred to
BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20,
2000).
Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000).
EAuto, Inc. v. Available-Domain-Names.com, d/b/a Intellectual-Assets.com,
Inc., D2000-0120 (WIPO April 13, 2000).
Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000).
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Hon. Carolyn Marks Johnson, Panelist: -
PARTIES
The Complainant is Michelle Barry, Los Angeles, CA, USA ("Complainant").
The Respondent is For Sale, Philippines, ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is "BRITTANYANDREWS.com", registered with
Network Solutions Inc ("NSI").
PANELIST
The Panelist certifies that she has acted independently and impartially
and to the best of her knowledge, has no known conflict in serving as the
panelist in this proceeding.
Honorable Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
("The Forum") electronically on 07/06/2000; The Forum received a hard copy
of the Complaint on 07/05/2000.
On 07/14/2000, NSI confirmed by e-mail to The Forum that the domain
name "BRITTANYANDREWS.com" is registered with NSI and that the Respondent
is the current registrant of the name. NSI has verified that Respondent
is bound by the Network Solutions Service Agreement Version 5.0 and has
thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANNs UDRP.
On 07/11/2000, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of 07/31/2000
by which Respondent could file a Response to the Complaint, was transmitted
to Respondent via e-mail, post and fax, and to all entities and persons
listed on Respondents registration as technical, administrative and billing
contacts by e-mail.
On 08/02/2000, 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 08/03/2000, pursuant to Complainants request to have the dispute
decided by a Single Member panel, The Forum appointed Honorable 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 Uniform 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 Forums Supplemental Rules and
any rules and principles of law that the panel deems applicable, without
the benefit of any Response from the Respondent.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the
Respondent to the Complainant.
PARTIES CONTENTIONS
A. Complainant
The Complainant contends that the Respondent has registered a domain
name that is identical to its common law mark in use by the Complainant.
Further, the Complainant contends that the Respondent has no rights or
legitimate interests to the domain name, and that the respondent has registered
and is using the domain name in bad faith.
A. Respondent
The Respondent submitted no response in this matter. As a result, all
reasonable inferences of fact in the allegation of the Complainant will
be deemed true.
FINDINGS
The Complainant is an internationally known actress, model, public
speaker, and feature entertainer known as Brittany Andrews.
The Respondent registered the domain name on March 01, 1999. On March
14, 2000, the Respondent offered to transfer the domain name for $1, 245.
The Complainant refused this offer. Both parties agreed to transfer the
domain name for $1,125 but could not agree on the method of transferring
the money. The Respondent insisted on a wire transfer whereas the Complainant
wanted to use an on-line escrow service to insure that the domain name
would be transferred before the Respondent received any money.
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy")
requires that the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
The Complainant holds a common law trademark in the name BRITTANY ANDREWS.
The Complainants exclusive use of the mark in addition to its wide public
dissemination, has caused the name to acquire a secondary meaning. A significant
portion of the public associates the name and mark with the Complainant.
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).
The Respondents domain name is identical to the Complainants mark.
See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding that Respondents domain name <charlesjourdan.com> is identical
to Complainants marks).
Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate
interests in the domain names in question. The Respondent has not denied
that assertion.
The domain name in question is not a mark by which the Respondent is
commonly known. Policy 4(c)(ii). The Respondent has made no claim
that it is using the domain name in connection with a bona fide offering
of goods and services or is making a legitimate noncommercial or fair use
of the site. Policy 4(c)(i), (iii). Therefore, the Respondent has no rights
or legitimate interests in the domain name in question. See BIC Deutschland
GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) ("By not submitting
a response, Respondent has failed to invoke any circumstance which could
demonstrate, pursuant to 4(c) of the Policy, any rights or legitimate interests
in the domain name").
Registration and Use in Bad Faith
The Complainant asserts that the Respondent acted and is acting in
bad faith. The Respondent has not denied that assertion.
Correspondence by the Respondent shows Respondents intent to sell
the domain name for $1,245. The Respondent registered and is using the
name in question for the purpose of selling it to the Complainant or the
Complainants competitors, for valuable consideration in excess of out-of-pocket
costs. Policy 4(b)(i). See EAuto, Inc. v. Available-Domain-Names.com,
d/b/a Intellectual-Assets.com, Inc., D2000-0120 (WIPO April 13, 2000).
Based on the preceding facts, the panel finds that the Respondent registered
and is using the domain name in bad faith.
DECISION
Having established all three elements required by the ICANN Policy
Rule 4(a), it is the decision of the panel that the requested relief be
granted.
Accordingly, for all of the foregoing reasons, it is ordered that the
domain name, "BRITTANYANDREWS.com" be transferred from the Respondent to
the Complainant.