WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kevin Nealon v. Whois Protection
Case No. D2007-1225
1. The Parties
The Complainant is Kevin Nealon, Manhattan Beach, Califonia, United States of America, represented by Joel G. MacMull, United States of America.
The Respondent is Whois Protection, West Bay, Cayman Islands.
2. The Domain Name and Registrar
The disputed domain name is registered with R Services Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2007. On August 23, 2007, the Center transmitted by email to R Services Corp a request for registrar verification in connection with the domain name at issue. On August 23, 2007, R Services Corp transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint 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 August 31, 2007. In accordance with the Rules, Paragraph 5(a), the due date for Response was September 20, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2007.
The Center appointed Alistair Payne as the sole panelist in this matter on October 5, 2007. 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.
4. Factual Background
The Complainant is a well-known film and television actor and a writer and producer of motion pictures. The Complainant’s career began in the 1980s and has continued on to the present day. In particular the Complainant is famed for his work as a cast member on the hit American television show “Saturday Night Live”. The Complainant currently stars in a successful American televisions series called “Weeds”. At the date of the Complaint, the Complainant had over 100 personal credits to his name KEVIN NEALON.
The Complainant registered the domain name in September 1997. The website contained information relating to the Complainant’s services and accolades. No renewal notices were issued to the Complainant for the period of 2006-2007, and the domain name lapsed. The Respondent registered the Disputed Domain in February 2007. The website now contains links to various other websites under the title “Your online information and resource portal”.
The Complainant is seeking the transfer of the Respondent’s registration for the Disputed Domain Name .
5. Parties’ Contentions
A. Complainant
The Complainant asserts that he has a common law trademark in the name KEVIN NEALON and as such registration by the Respondents of the Disputed Domain Name is identical or misleadingly similar to a mark in which the Complainant has rights and that it serves to dilute the Complainant’s reputation in the mark. The Complainant also contends that the Respondent is not known, nor ever has been known, by the Disputed Domain Name and that the Complainant has not authorised the Respondent to use the mark nor is the Respondent affiliated with the Complainant in any other way.
It is also contended by the Complainant that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that it was registered in bad faith. The Complainant points to the fact that the Respondent receives financial benefit by providing links to sites of competitors of the Complainant, and is intentionally misleading the public in that they are led to believe that they will find a website that is associated with the Complainant at the Disputed Domain Name.
The Complainant contends that the Respondent was on notice of his reputation in the name KEVIN NEALON. As such, the registration and use of the Disputed Domain Name, amounts to bad faith by reason of the fact that the Respondent, by using the Disputed Domain Name attempts to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark. The Complainant relies on the case of PepsiCo, Inc. v. “null”, aka Alexander Zharoronkov,WIPO Case No. D2002-0562 to support the contention that the choice of a domain name corresponding to the Complainant’s professional name is indicative of registration in bad faith. Finally, the Complainant alleges that the use of links to redirect to websites that are in direct competition with him constitutes bad faith use under the Policy.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
If the Complainant is to succeed, it must prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:
i. the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
iii. the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in Paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Panel notes the evidence of the Complainant in this case demonstrating rights in KEVIN NEALON and the previous use of the domain name . The Panel also notes the fact that the Complainant has built up significant goodwill and reputation in relation to this mark, through his numerous television and movie roles and also through his work as a writer and movie producer, since the early 1980s. There are numerous previous UDRP decisions relating to common law trademarks in professional names, provided that the name has been used in commerce. See Pierce Brosnan v. Network Operations Center,WIPO Case No. D2003-0519 and Pamela Anderson v. Alberta Hot Rods,WIPO Case No. D2002-1104. As such, the Panel is satisfied that the Complainant has common law trademark rights in his name. The Disputed Domain Name is identical to the Complainant’s common law trademark KEVIN NEALON, save for the .com top level domain which does not serve to distinguish the Disputed Domain Name from the Complainant’s trademark.
Therefore, the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and that Paragraph 4(a)(i) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
As noted above the Panel accepts that the Complainant has developed considerable reputation in his name and as such has common law rights in the name KEVIN NEALON. The Respondent has not filed a Response to the Complaint and has not presented the Panel with any evidence concerning its rights or a legitimate interest in the Disputed Domain Name. No evidence of a connection between the Respondent and the Complainant has been presented to the Panel and the Respondent has not received consent from the Complainant to use the Disputed Domain Name. The website hosted at the Disputed Domain Name is a portal of various links. This website states that the linked sites are sponsored links. The Panel is, therefore, satisfied that the Respondent is using the Disputed Domain Name for commercial purposes without the Complainant’s authorisation and this is not in the circumstances of this case, an acceptable or legitimate use under the Policy. See Soci�te des Hotels M�ridien v LaPorte Holdings, Inc, WIPO Case No. D2004-0849. The Panel is not aware of any evidence to suggest that the Respondent is commonly known by the Disputed Domain Name or has any competing rights in the Disputed Domain Name. As such the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in .
Based on the record and in the absence of a rebuttal by the Respondent, the Panel finds that the Complainant fulfils Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel agrees with the Complainant’s contention that registration of a domain name based on another’s notoriety is evidence of opportunistic bad faith. See Veuve Clicquot Ponsardin, Maison Fond�e en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. This evidence of bad faith registration is further accentuated in this dispute by the timing of the registration of the Disputed Domain by the Respondent immediately after the Complainant’s registration lapsed.
The Panel infers that the Respondent has registered the Disputed Domain Name to deliberately redirect Internet users to his site by creating a likelihood of initial confusion with the Complainant’s trademark. This likelihood is particularly strong given that the Complainant was the registered owner of the Disputed Domain Name until very recently. Internet users looking for the Complainant’s site will be drawn to the Disputed Domain Name under the mistaken belief that is still linked to the Complainant’s trademark or it is sponsored, affiliated or, in some way, endorsed by the Complainant. It is likely that this will dilute the Complainant’s trademark and rights. Finally, the diversion of web traffic, using the Complainant’s trademark for the purpose of advertising sponsored websites is a bad faith use of the Disputed Domain Name. See Soci�t� des Hotels Meridien v. LaPorte Holdings, Inc, WIPO Case No. D2004-0849.
The Panel finds that the Complainant has satisfied the requirements of Paragraph 4(b)(iv) of the Policy. The Complainant has shown that the Disputed Domain Name was registered and used in bad faith. The Panel finds, therefore, that Paragraph 4(a)(iii) of the Policy has been fulfilled.
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 Disputed Domain Name be transferred to the Complainant.
Alistair Payne
Sole Panelist
Dated: October 19, 2007
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