WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lewis Black v. Burke Advertising, LLC
Case No. D2006-1128
1. The Parties
The Complainant is Lewis Black, Santa Monica, California, United States of America, represented by Del, Shaw, Moonves, Tanaka & Finkelstein.
The Respondent is Burke Advertising, Merrimack, New Hampshire, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August�31,�2006. On September�5,�2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint and any amendments satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September�15,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October�5,�2006. The Response was filed with the Center on October�5,�2006.
The Center appointed Mark V.B. Partridge as the sole panelist in this matter on October�17,�2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel issued a Procedural Order on November�5,�2006, for Respondent to produce additional evidence in support of its claims. Respondent failed to comply with the Order.
4. Factual Background
Complainant is a national known entertainer, actor and author. His credits include “Comedy Central Presents: Lewis Black,” and “Lewis Black: Red, White and Screwed.”
Respondent registered the domain name on January�5,�2000. Initially, the domain name led to a page stating the site was under construction. In 2005, the domain name led to a website that featured ads by Google, a Google search tool, and links. The site also included a link to solicited sponsored advertising. Links appearing on the site included links in competition with Complainant as well as links relating to Complainant. The links on the site appear to be commercial links used for the purpose of generating pay-per-click fees for the Respondent.
Respondent claims that:
“The domain was registered on 5 January of 2000 as a brand name for one of our client’s food products. Although the client has not yet launched the product we continued to register the domain each year and note on the website that it was the future home for the client’s cheese product. Investments have been made for over six years to utilize the name.”
The Response did not include the Certification of truthfulness required under the Policy. The Panel issued a Procedural Order stating:
In accordance with Rules for Uniform Domain Name Dispute Resolution Policy, Rule�12, the Respondent is requested by the Panel to submit documentation and other evidence demonstrating:
1. Respondent’s alleged preparations and plans to use the name Lewis Black “as a brand name for one of our client’s food products.”
2. Respondent’s “investments . . . made for over six years to utilize the name” in connection with a cheese product.
3. Respondent or its client’s operation of a bona fide food products business.
The evidence should be supported by a declaration or affidavit affirming under penalty of perjury that the documents are true and correct copies of material prepared or received in the ordinary course of business.
The response to this order shall be forwarded to the Center by November�13,�2006. Complainant may have until November 20, 2006, to submit a response to any such evidence. The due date for decision is extended to November�27,�2006.
Respondent failed to respond to the order.
5. Parties’ Contentions
A. Complainant
Complainant contends that he has common law rights in the name and mark LEWIS BLACK and that the domain name is identical to that name and was registered and used in bad faith without any rights or legitimate interest in the name.
B. Respondent
Respondent claims it registered the domain name before Complainant established rights in his name, and that it did so for the bona fide purpose of using the name as a brand name for a cheese product for one of its clients.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has provided evidence to demonstrate common law trademark rights in the name LEWIS BLACK in connection with entertainment services that predate registration of the domain name. Respondent’s domain name is identical in salient part to Complainant’s common law trademark. Therefore, the Panel finds that the first element of Complainant’s claim is satisfied.
B. Rights or Legitimate Interests
Complainant has made a prima facie showing that Respondent lacks any right or legitimate interest in the name. The domain name has not been used in connection with a bona fide offering of goods or services. Respondent is not known by the name and does not own any trademark registration to the name. Finally, Respondent is not making non-commercial fair use of the name.
Respondent has asserted that it registered the domain name as a potential brand name for cheese on behalf of a client. However, Respondent did not certify the truthfulness of that claim and has failed to respond to the Panel’s order to support the claim with evidence. Therefore, the Panel concludes that Respondent’s defense is not credible and finds in favor of Complainant on this element of the claim.
C. Registered and Used in Bad Faith
Respondent appears to be using the domain name in a deliberate attempt to trade on Complainant’s name to obtain commercial gain from pay-per-click sponsored links. Respondent provides no justification for its use. Nothing in the nature of the use at the time of the Complainant supports Respondent’s claim that it registered the domain name as a brand name for cheese. Again, Respondent’s failure to certify the truth of its claim or to provide evidence under the Panel’s Procedural Order undermines the credibility of Respondent’s position. Moreover, Respondent’s position is not supported by the nature of the domain name or the content provided on its site. For these reasons, the Panel concludes that Respondent has registered and used the domain name in bad faith in violation of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Mark V.B. Partridge
Sole Panelist
Dated: December�11,�2006
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