Make Him Smile, Inc. v. Private Whois Service
Claim Number: FA1106001392314
Complainant is Make Him Smile, Inc. (“Complainant”), represented by David Piechocki of CMG Worldwide, Indiana, USA. Respondent is Private Whois Service (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chrisfarley.com>, registered with Internet.bs Corp.
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 electronically June 6, 2011; the National Arbitration Forum received payment June 6, 2011.
On June 7, 2011, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <chrisfarley.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. verified that Respondent is bound by the Internet.bs Corp. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 2011, 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 firstname.lastname@example.org. Also on June 8, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 30, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" 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, the National Arbitration 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 that Respondent registered, <chrisfarley.com> is identical to Complainant’s CHRIS FARLEY mark.
2. Respondent has no rights to or legitimate interests in the <chrisfarley.com> domain name.
3. Respondent registered and used the <chrisfarley.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Make Him Smile, Inc., alleges that it owns rights in the CHRIS FARLEY mark. Chris Farley was an actor on Saturday Night Live and appeared in numerous movies, such as Black Sheep, Tommy Boy, and Beverly Hills Ninja. Mr. Farley died on December 18, 1997. Complainant claims that it received Mr. Farley’s intellectual property rights from Mr. Farley’s family, and that it uses the mark to sell t-shirts, wall art, product skins, and prints of photos.
Respondent registered the <chrisfarley.com> domain name April 13, 2004. The disputed domain name resolves to a website that features hyperlinks unrelated to Complainant’s business.
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."
Given 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant does not allege any trademark registrations for its CHRIS FARLEY mark, but the Panel concludes that governmental trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant provides records of Mr. Farley’s movies that show Mr. Farley’s first acted on Saturday Night Live in 1990. Complainant further provides evidence of the actor’s continuous TV and movie presence, all under the CHRIS FARLEY name, from 1990 until Mr. Farley’s death in 1997. Complainant asserts that after Mr. Farley’s death, his family transferred all of Mr. Farley’s intellectual property rights to Complainant, including the common law rights to CHRIS FARLEY.
Complainant claims that it has continuously used the CHRIS FARLEY mark since that time to market t-shirts, wall art, product skins, and prints of photos. However, the Panel determines that Complainant has failed to provide sufficient evidence that Mr. Farley’s family agreed to transfer Mr. Farley’s intellectual property rights to Complainant and the Panel further finds that Complainant has provided no proof that it has used the CHRIS FARLEY mark with its business.
Therefore, the Panel finds that while the proof provided by Complainant establishes that the late Chris Farley would have had common law rights to use the Chris Farley mark; however, no proof establishes that the family transferred these rights to Complainant or that Complainant’s use is sufficient to establish common law rights for Complainant in the CHRIS FARLEY mark under a Policy ¶ 4(a)(i) analysis. See CMG Worldwide, Inc. v. Pitanguy Plastic Surgical Clinic, FA 155888 (Nat. Arb. Forum June 3, 2003) (holding that as the complainant provided no evidence to the panel that it has any arrangement to represent the actual trademark holder, or that any rights in the relevant trademark had been assigned or licensed to the complainant, the complainant did not have standing to bring a claim under the UDRP); see also Interactive Television Corp. v. Noname.com, D2000-0358 (WIPO June 26, 2000) (finding that “serious questions as to whether Complainant has any proprietary rights require us to reject Complainant’s claim” and “[t]he ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal”).
This Panel does not find that Complainant cannot do so with appropriate proof; but just that Complainant has not done so in this proceeding.
The Panel finds that Complainant failed to establish the elements of ICANN Policy ¶ 4(a)(i).
Complainant has alleged that Respondent has no rights to or legitimate interests in the mark and disputed domain name. Based on the above ruling, the Panel makes no determination under this element. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
Complainant has also alleged that Respondent registered and used the disputed domain name in bad faith. Based on the above ruling, the Panel makes no determination under this element. See Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having failed to establish the first element required under the ICANN Policy, the Panel concludes that the requested relief shall be DENIED. This proceeding is DISMISSED, WITHOUT PREJUDICE TO REFILING. The Panel makes no affirmative finding with regard to Respondent; however, by virtue of the above ruling, the Panel finds that the domain name remains with Respondent.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 14, 2011.
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