Claim
Number:
FA0402000243460
Complainant is
Luca Laurenti (“Complainant”),
represented by Luca Sandri, P.zza Castello, 26, Milano,
Italy. Respondent is Director. d/b/a Webhosting Service, The Lake Building, Tortola, 0000 VG
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is
<lucalaurenti.tv>, registered with Network Solutions,
Inc.
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 February 27, 2004; the
Forum received a hard copy of the Complaint March 2, 2004.
On March 4, 2004, Network Solutions, Inc.
confirmed by e-mail to the Forum that the domain name
<lucalaurenti.tv> is registered with Network Solutions, Inc. and
that Respondent is the current registrant of the name. Network Solutions, Inc.
verified that Respondent is bound by the Network Solutions, Inc. registration
agreement and thereby has agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On March 8, 2004, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of March 29, 2004, 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@lucalaurenti.tv 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 April 9, 2004, 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 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, <lucalaurenti.tv>, is identical to
Complainant’s LUCA LAURENTI name, which through secondary meaning, distinctive
to Complainant, constitutes a protected mark.
2.
Respondent
has no rights or legitimate interests in the <lucalaurenti.tv>
domain name.
3.
Respondent
registered and used the <lucalaurenti.tv> domain name in bad
faith.
B.
Respondent failed to submit a Response in this
proceeding.
Complainant is
an actor from Italy who has appeared in a series of television commercials on
various Italian broadcast channels for the Italian coffee blend known as
“Lavazza.” Complainant has also
been a co-host in a variety of Italian prime time television programs such as
“Dibattito,” “Urka,” “Il Gioco Dei Nove,” “Tira & Molla,” “Buona Domenica,”
“Striscia La Notizia,” “Ciao Darwin,” “I Cervelloni,” “Beato Tra Le Donne,” and
“Chi Ha Incastrato Peter Pan.” Complainant has also starred in various motion
pictures that include Don Luca, I Fobici, Body Guards – Guardie
del Corpo, Stuart Little 1, and Stuart Little 2. Complainant urges that his name, LUCA
LAURENTI has acquired secondary meaning as a result of his fame and that he is
entitled to protection of the name as a mark.
Respondent is a
business entity that registered the disputed domain name January 25, 2002. Respondent has used the domain name to
direct Internet users to Respondent’s <casino.tv> domain name, which
provides online casino activities.
Respondent did not support a right to use Complainant’s
name.
The Panel finds
that Complainant made the necessary showings to prevail in this proceeding for
the reasons set out below.
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 Complainant to 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 to or legitimate interests in respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
Under Policy ¶
4(a)(i), a complainant must prove that the disputed domain name is identical to
or confusingly similar to a trademark or service mark in which the complainant
has rights.
In this case,
Complainant claims rights to the LUCA LAURENTI name but concedes that he has not
registered LUCA LAURENTI with any governmental authority. Nonetheless, he seeks protection under
ICANN cases, which hold that unregistered marks may be afforded protection under
the Policy in certain circumstances. See McCarthy on Trademarks and Unfair
Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy
is “broad in scope” in that “the reference to a trademark or service mark ‘in
which the complainant has rights’ means that ownership of a registered mark is
not required–unregistered or common law trademark or service mark rights will
suffice” to support a domain name Complaint under the Policy); see also
British Broad. 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 Great Plains Metromall,
LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding the Policy
does not require “that a trademark be registered by a governmental authority for
such rights to exist”).
Complainant
shows by sufficient proof that LUCA LAURENTI is Complainant’s personal name and
that the name has acquired fame as a result of Complainant’s extensive activity
in the entertainment media.
Unregistered celebrity names or marks used in conjunction with celebrity
personalities have been consistently held to maintain common law trademark
rights under the Policy. In the instant case, the LUCA LAURENTI mark is the
personal name of an Italian celebrity.
See McCarthy on Trademarks and Unfair Competition, § 13:1 (4th ed.
2002) (stating that the basic rules pertaining to the protection of personal
names require actual proof of secondary meaning for protection); see also
Riley v. so
so domains, D2003-0600
(WIPO Sept. 24, 2003) (stating, “personal names may enjoy protection against
identical or confusingly similar domain names if the name has sufficient
notoriety and distinctive character in connection with the goods offered by
complainant”); see also 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 Complainant that common law trademark
rights exist); see also Jagger v.
Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (Complainant held
common law trademark rights in his famous name MICK JAGGER); 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”).
Complainant
asserts he is entitled to the same protection given common law marks for the
LUCA LAURENTI mark. While the record suggests that Complainant’s use of the LUCA
LAURENTI mark occurred almost exclusively within the country of Italy, a civil
law jurisdiction, Complainant’s appearances and work in such movies as Stuart
Little suggests world-wide distribution and recognition in common law
jurisdictions such as the United States.
ICANN Policy
is international. Compliance with
ICANN Policy and Rules is voluntarily agreed to by those who register domain
names governed by ICANN. Cases
suggest that ICANN Policy protects unregistered trademarks and service marks in
domain name disputes to prevent wrongful and abusive registrations of domain
names. British Broad. 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”).
Complainant
established with sufficient extrinsic proof that LUCA LARENTI has secondary
meaning distinctive to Complainant.
The fact that Complainant comes from a civil law jurisdiction that might
not recognize common law rights, should not deny Complainant protection under
ICANN Policy and Rules, with which Respondent voluntarily agreed to comply,
where Complainant shows substantial secondary meaning associated with a trade
name or service mark. The Policy
recognizes that an individual’s name can acquire secondary association that
gives rise to a right to protection.
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 Complainant that common law trademark
rights exist). The fact that the
Panel is unable to determine to a legal certainty that Complainant’s mark falls
within a particular jurisdiction’s common law protection should not prevent
Complainant from having protection under ICANN Policy and Rules from what has
been shown to be Respondent’s wrongful and opportunistic use of Complainant’s
name to attract Internet users to Respondent’s website for commercial gain to
Respondent. Complainant has alleged
such rights and offered proof to satisfy the Panel. Respondent has not favored
the Panel with a Response, has not contested Complainant’s allegations that LUCA
LAURENTI is Complainant’s name, has not challenged Complainant’s allegations and
proof that the name has acquired secondary meaning, has not challenged
Complainant’s allegations that Complainant has rights in the name and that
Respondent has no rights to nor legitimate interests in the name, and has not
shown rights in the name or domain name.
Further, the facts suggest that Respondent could not show that it is LUCA
LAURENTI and that Respondent could not show that it is commonly known as LUCA
LAURENTI or by the disputed domain name.
The Panel
finds that Complainant’s use of the LUCA LAURENTI mark in connection with a
variety of movies and other aspects of the entertainment industry transcended
local boundaries and acquired secondary meaning distinctive to Complainant.
The Internet
has joined the community of nations electronically and ICANN Policy and the
Rules are an international structure for protecting rights on the Internet.
Respondent accepted the ICANN rules and regulations when registering the
disputed domain name. The Panel
concludes that Complainant established secondary meaning in LUCA LAURENTI as a
trade name or service mark in which Complainant has rights. Complainant’s extensive use, the fame
associated with Complainant, and the quantity of television and motion picture
appearances by Complainant are sufficient to meet the standard required by the
ICANN Policy to show secondary meaning. See Desktop Media, Inc. v. Desktop Media,
Inc., FA 96815 (Nat.
Arb. Forum Apr. 12, 2001) (“[F]or the limited purposes of the domain name
dispute resolution process[,] a low threshold of proof is all that is required
to meet the first element ….”); see also Jagger v. Hammerton, FA 95261 (Nat. Arb.
Forum Sept. 11, 2000) (Complainant held common law trademark rights in his
famous name MICK JAGGER); 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”); see also Garnett v. Trap Block
Technologies, FA 128073 (Nat. Arb. Forum Nov. 21, 2002) (holding that
Complainant accrued common law rights in the KEVIN GARNETT mark).
The disputed
domain name, <lucalaurenti.tv>, is identical to Complainant’s LUCA
LAURENTI mark because the name incorporates the mark in its entirety and merely
affixes a top-level domain, which is irrelevant under the Policy. See Oki Data Americas, Inc. v. ASD
Inc., D2001-0903 (WIPO
Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s
registered mark is sufficient to establish identical or confusing similarity for
purposes of the Policy”); see also Nikon, Inc. v. Technilab, Inc.,
D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the
Policy is decided upon the inclusion of a trademark in the domain name); 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); see
also Busy Body, Inc. v. Fitness
Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a
top-level domain is without legal significance).
Complainant
established rights in the use of the LUCA LAURENTI mark pursuant to Policy ¶
4(a)(i).
Complainant
established in this proceeding that he has rights in the LUCA LAURENTI
mark. Complainant alleges that
Respondent has no such rights to and legitimate interests in the disputed domain
name that contains in its entirety Complainant’s LUCA LAURENTI mark. Complainant established with extrinsic
proof in this proceeding that it has made prominent use of the mark. Respondent did not rebut any of
Complainant’s assertions and the Panel finds that Respondent lacks rights and
legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interests
in the domain names); see also Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where Respondent fails to respond); see also
Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure
of a respondent to come forward to [contest complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertion in this
regard.”).
Furthermore, no
evidence before the Panel suggests that Respondent is commonly known by the
<lucalaurenti.tv> domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent
Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its
failure to imply that Respondent is commonly known by the disputed domain name,
is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see
also RMO, Inc. v.
Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a
showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail").
A domain name
that is identical to or confusingly similar to another’s famous personal name
and that seeks to take advantage of the fame or recognition associated with the
name for purposes of commercial gain has been found not to be a bona fide
offering of goods or services under Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). In this case, Respondent used a domain
name identical to Complainant’s personal name to direct Internet users to an
online casino website that is completely unrelated to Complainant’s personal
name. See
Imation Corp. v.
Streut, FA 125759 (Nat.
Arb. Forum Nov. 8, 2002) (finding no rights or legitimate interest where
Respondent used the disputed domain name to redirect Internet users to an online
casino); see also Toronto-Dominion Bank v.
Karpachev, 188 F.Supp.2d 110,
114 (D. Mass. 2002) (finding that, because
Respondent's sole purpose in selecting the domain names was to cause confusion
with Complainant's website and marks, its use of the names was not in connection
with the offering of goods or services or any other fair use); see also
Am. Online, Inc. v. Tencent
Communications 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”).
The Panel finds
that Respondent lacks rights and legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii).
Registration of
a domain name that is identical or confusingly similar to a third-party’s mark
for the opportunistic purpose of attracting Internet users to a commercial
business that is actually unrelated to the third-party supports findings of bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). In this case, the disputed domain name
is identical to Complainant’s LUCA LAURENTI mark. Respondent uses the fame associated with
Complainant to direct Internet users to an unrelated website that offers casino
services for commercial gain.
Therefore, the Panel finds that Respondent intentionally attempted to
attract, for commercial gain, Internet users to its website by creating a
likelihood of confusion with Complainant as to the source, sponsor, affiliate,
or endorser of the website, pursuant to Policy ¶ 4(b)(iv). See G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because Respondent used the confusingly similar
domain name to attract Internet users to its commercial website); see also
Am. Online, Inc. v. Tencent Comm.
Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where
Respondent registered and used an infringing domain name to attract users to a
website sponsored by Respondent); see also Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its
diversionary use of Complainant's mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)).
Therefore,
Complainant established that Respondent registered and used the disputed domain
name in bad pursuant to 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 <lucalaurenti.tv> domain name be
TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: May 7,
2004
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