The Complainant is Kerkor "Kirk" Kerkorian of California, United States of America, represented by Glaser Weil Fink Jacobs Howard Avchen & Shapiro LLP, United States of America.
The Respondent is Young-Millionaire Enterprises, Inc, Andranik Chibukchyan of California, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2012. On August 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 22, 2012, the Registrar 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” or “UDRP”), 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 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2012. An email communication was received on August 28, 2012 from an Andy Chibukchyan. Further email communications were received from Andy Chibukchyan on August 30, 2012, September 21, 2012 and September 26, 2012.
The Center appointed William R. Towns as the sole panelist in this matter on September 28, 2012. 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 public figure in the business and entertainment industry. A billionaire several times over, the Complainant has been an influential figure for some fifty (50) years in the Las Vegas, Nevada casino industry, as well as the owner of major movie studios such as MGM and United Artists. The Complainant also is known in the automobile industry, primarily in connection with this attempted takeover of Chrysler Corporation.
The disputed domain names and were registered by the Respondent on April 8, 2010 and April 11, 2012, according to information contained in the Registrar’s WhoIs database. The disputed domain name resolves to an active website containing content related to the Complainant copied from other websites as well click-through advertisements for various casinos and hotels. The disputed domain name currently resolves to a parking page, which also contains click-through advertising.
The Complainant became aware of the disputed domain names in July 2012. On or about July 19, 2012, the Complainant through his legal counsel sent a cease and desist letter to the Respondent, to which the Complainant received no reply. Subsequently, the Complainant commenced this administrative proceeding under the Policy seeking the transfer of the disputed domain names. 5. Parties’ Contentions A. Complainant
The Complainant asserts common law trademark rights in his personal name in connection with his business-related activities. The Complainant maintains that his name has acquired secondary meaning such that it “carries with it a distinct and highly regarded cachet that the public has associated with Mr. Kerkorian and his business exploits for decades”.
The Complainant maintains that under United States law personal names are entitled to trademark protection and are protected under the common law when acquire secondary meaning. The Complainant posits that his name and mark is so prolific that it is the only result of the first page of searches for “Kirk Kerkorian” using major Internet search engines such as Google, Yahoo and Bing. The Complainant submits that, based on his fame as one of the wealthiest people in the world and his extensive notoriety in the business world, the Complainant’s name has acquired secondary meaning and is a distinctive identifier of his business-related activities.
The Complainant urges that the disputed domain names are identical or confusingly similar to the Complainant’s mark. Further, the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names. According to the Complainant, the Respondent has not been authorized to use the Complainant’s mark, does not have trademark rights in the disputed domain names, and has never been commonly known by the disputed domain names.
In addition, the Complainant asserts that both of the disputed domain names resolve to websites providing advertising links to competing goods or services, which the Complainant submits does not constitute use of the disputed domain names with a bona fide offering of goods or services. According to the Complainant, the Respondent is seeking to exploit and profit from the goodwill associated with the Complainant’s mark and name. In light of the foregoing, the Complainant contends that the Respondent has registered and is using the disputed domain names in bad faith, in order to capitalize on or otherwise take advantage of the Complainant’s trademark rights, through the deliberate creation of Internet user confusion. B. Respondent
The Respondent did not reply to the statements and allegations in the Complainant, but in several email communications to the Center took issue with the method through which he was notified of commencement of proceedings and the time allotted for the submission of a response. 6. Preliminary Procedural Issues
The Respondent contacted the Center by email on four occasions between August 28, 2012 and September 26, 2012, complaining that he had received only written notification of the commencement of the proceedings, and that sufficient time had not been given for submission of a response.
The Panel upon review of the administrative record in this case confirms that the Center fulfilled its obligation to employ reasonably available means calculated to achieve actual notice to the Respondent, in accordance with the Policy and the Rules. In accordance with paragraph 2(a) and 4(a) of the Rules, the Center electronically provided the Respondent notice of the Complaint and of the commencement of the proceedings under the Policy, at the email address furnished by the Respondent to the Registrar for inclusion in the Registrar’s WhoIs information. The Center further provided written notification of the commencement of proceedings to the identified postal addresses for the Respondent, including the postal addresses in the WhoIs records. Accordingly, the Respondent was provided the requisite 20-day period for submitting a response in accordance with the Policy and Rules.
The Panel notes that the Respondent was obligated under the Registration Agreements for the disputed domain names to submit contact information that was accurate, current and complete, and to keep such information accurate, current and complete. Further, in his communications with the Center, the Respondent not only confirmed receipt of written notification but also indicated that the email address he had provided to the Registrar remained an active address. The Panel accordingly finds the Respondent’s objections to be without merit. 7. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 -177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170.
Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel initially addresses the question of whether the Complainant has established common law trademark or service mark rights in his personal name. Merely having a “famous” name is not sufficient to establish common law trademark or service mark rights in the name. The Policy itself inherently makes a distinction between the protection afforded to trademark rights and rights arising under the law of publicity, which has been discussed in further details in several UDRP cases. See Israel Harold Asper v. Communication X Inc.,WIPO Case No. D2001-0540. Because the fundamental objective of trademark law is the protection of the goodwill established in the minds of the public, a relevant segment of the public must have come to recognize the Complainant’s personal name as a symbol that distinguishes the Complainant’s goods or services from those of others.
The Panel is persuaded from the record that a sufficient showing has been made that the Complainant's personal name has acquired secondary meaning in the public's mind as it relates to his business activities, particularly in relation to the Las Vegas casino industry, with which he has been long associated. See, e.g., Chung, Mong Koo and Hyundai Motor Company v. Individual,WIPO Case No. D2005-1068; Monty and Pat Roberts, Inc. v. J. Bartell,WIPO Case No. D2000-0300; Steven Rattner v. BuyThisDomainName (John Pepin),WIPO Case No. D2000-0402. Accordingly, the Panel finds that the Complainant has established trademark or service mark rights in his personal name for purposes of the paragraph 4(a)(i) of the Policy.
Turning to the question of identity or confusing similarity under paragraph 4(a)(i), The Panel finds that the disputed domain names are either identical or confusingly similar to the Complainant’s mark. In considering this issue, the first element of the Policy stands essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain names, when directly compared, are identical or confusingly similar.
There are differing views as to what is meant by “confusingly similar” in this context. In Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662 the panel applied a test which expressly disavowed any call for a likelihood of Internet user confusion; by contrast in SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007-0648, the panel took a diametrically opposed view. The range of views is discussed in Apple Inc. v. Fred Bergstrom, Lotta Carlsson, Georges Chaloux and Marina Bianchi, WIPO Case No. D2011-1388.
In this case, each of the disputed domain names incorporates the Complainant’s mark in its entirety, The disputed domain name is identical to the Complainant’s mark, and the Panel finds that the disputed domain name , which differs only by the inclusion of the salutary term “Mr.”, is confusingly similar to the Complainant’s mark, whichever test discussed above is applied.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain names incorporate the Complainant’s mark in its entirety and are confusingly similar to the Complainant’s mark. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark, or commonly known by the disputed domain names. The Respondent notwithstanding is using the disputed domain names with websites that contain pay-per-click advertising.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain names, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record in this proceeding, it is beyond question that the Respondent was aware of the Complainant and had the Complainant’s name and mark in mind when registering the disputed domain names. The Panel finds that the Respondent most likely registered the disputed domain names in order to exploit and profit from the Complainant’s trademark rights through the creation of Internet user confusion. Internet users diverted to the Respondent’s active website could easily be confused whether they have arrived at the Complainant’s website, or another website that is affiliated with or has the endorsement or sponsorship of the Complainant. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774.
Conversely, the record before the Panel does not reflect the Respondent’s use of or preparations to use the disputed domain names in connection with a bona fide offering of goods or services. Nor, given the presence of pay-per-click advertisements on the websites to which the disputed domain names resolve, can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers. See The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC,WIPO Case No. D2009-0057. Further, there is no indication that the Respondent has been commonly known by the disputed domain names or authorized to use the Complainant’s mark. In the absence of any reply by the Respondent, the record reflects that the Respondent has no rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Respondent clearly was aware of the Complainant and had the Complainant’s mark in mind when registering the disputed domain names. In the absence of any reply by the Respondent, the record evinces that the Respondents’ primary motive in relation to the registration and use of the disputed domain names was to capitalize on or otherwise take advantage of the Complainant’s trademark rights, through the deliberate creation of Internet user confusion. The record on balance reflects that the Respondent registered and has used the disputed domain names in bad faith to intentionally attract for commercial gain Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: October 25, 2012
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.
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