WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kathryn Bridget Moynahan v. Fantastic Sites, Inc.
Case No. D2000-1083
1. The Parties
Complainant is Kathryn Bridget Moynahan ("Moynahan") whose mailing address is c/o Robinson Silverman Pearce Aronsohn & Berman, LLP, 290 Avenue of the Americas, New York, New York 10104 USA. SA
Respondent is Fantastic Sites, Inc. located at 581 Main Street, Lincoln, Nebraska 68588 USA.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is "" (the "Domain Name"). The registrar is Network Solutions, Inc. (the "Registrar") 505 Huntmar Park Drive, Herndon, Virginia 20170 USA.
3. Procedural History
On August 17, 2000, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On August 18, 2000, the Center received hardcopy of the Complaint. On August 21, 2000, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.
On August 24, 2000 after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.
The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On August 25, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On September 14, 2000, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.
On October 4, 2000 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist "), the Center notified the parties of the appointment of a
single-arbitrator panel consisting of the Sole Panelist.
4. Factual Background
Complainant, born Kathryn Bridget Moynahan, adopted the public name "Bridget Moynahan" sometime in 1989. Complainant is movie actress who was most recently featured in Touchstone Picture�s film "Coyote Ugly," a Jerry Buckheimer film that was directed by David McNally. "Coyote Ugly" was released to theaters in the United States on August 4, 2000. Moynahan is also to star in the soon to be released movie "Serendipity" with John Cusack.
The film "Coyote Ugly" has gathered widespread publicity and has been featured frequently in the entertainment press. Moynahan appeared on the front cover of the August 2000 edition of "MAXIM" magazine promoting the movie, as well as excerpts from the official "Coyote Ugly" website located at . Moynahan�s other notable professional achievements include the recurring role of Big�s girlfriend Natasha on HBO�s acclaimed series "Sex & The City," as well as several other motion picture films and television commercials.
On June 19, 2000, Respondent registered the Domain Name. The website to which the Domain Name resolves states that it is "under construction." No content has been posted on the website.
Respondent has registered over fifty other domain names of movie stars, models and other famous people. When Respondent was contacted by Moynahan�s business manager, Respondent offered to sell the Domain Name to Moynahan for $10,000.
5. Parties� Contentions
Complainant contends that she has a common law trademark in BRIDGET MOYNAHAN. Complainant further contends that the Domain Name is identical with and confusingly similar to the BRIDGET MOYNAHAN trademark pursuant to the Policy paragraph 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
Respondent does not contest Complainant�s assertion that she has a common law trademark in BRIDGET MOYNAHAN or that the Domain Name is identical with and confusingly similar to the trademark.
Respondent failed to contest Complainant�s assertion that Respondent has no rights or legitimate interest in the Domain Name.
Respondent failed to contest Complainant�s assertion that Respondent registered and used the Domain Name in bad faith.
6. Discussion and Findings
Even though Respondent has failed to file a Response or to contest Complainant�s assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Identity or Confusing Similarity.
Moynahan asserts a common law trademark in BRIDGET MOYNAHAN. Such trademarks have been recognized provided that the Complainant can establish secondary association. See, Julia Roberts v. Russell Boyd (WIPO Case No.
D2000-0210). In addition, the existence of the common law trademark has not been contested by Respondent.
The Domain Name includes the exact phrase "Bridget Moynahan", which is identical to the common law mark. See, e.g., Blue Sky Software Corp. v. Digital Sierra Inc., WIPO Case No. D2000-0165 (holding that the domain name ROBOHELP.COM is identical to complainant�s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 ("the addition of the generic top-level domain (gTLD) name �.com� is likewise without legal significance since use of a gTLD is required of domain name registrants"); InfoS v. Tenenbaum Ofer, WIPO Case No. D2000-0075 ("The domain name "info-s" is identical to Complainant�s INFOSPACE trademark. The addition of a hypen and .com are not distinguishing features").
Therefore, the Sole Panelist finds that the Domain Name is identical with the mark BRIDGET MOYNAHAN pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest.
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Respondent has no relationship with or permission from Complainant for the use of the BRIDGET MOYNAHAN mark.
The Policy paragraph 4(c) allows three non-exclusive methods for Respondent to demonstrate that it has rights or a legitimate interest in the Domain Name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent has offered no evidence that the use of the Domain Name meets the elements for any of the non-exclusive methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Bad Faith.
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four non-exclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.
Complainant alleges that Respondent has registered over fifty other domain names of movie stars, models and other famous people. When Respondent was contacted by Moynahan�s business manager, Respondent offered to sell the Domain Name to Moynahan for $10,000.
The Sole Panelist finds that these allegations support the elements of the Policy paragraphs 4(c)(i) and (ii).
Therefore, the Sole Panelist finds that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).
7. Decision
The Sole Panelist concludes (a) that the Domain Name "" is identical with or confusingly similar to Complainant�s common law trademark BRIDGET MOYNAHAN, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name be transferred to Kathryn Bridget Moynahan.
Richard W. Page
Sole Panelist
Dated: October 22, 2000
Full & Egal Universal Law Academy