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. Complainant’s 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.  Respondent’s domain name is identical to Complainant’s 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 Complainant’s 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 ICANN’’s 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 Respondent’’s 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 Complainant’’s 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 Forum’’s 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 Complainant’’s 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 Respondent’’s domain name is identical to the Complainant’’s mark. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that Respondent’’s domain name <charlesjourdan.com> is identical to Complainant’’s 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 Respondent’’s 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 Complainant’’s 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.