Lieselpritzker.com

The timeline behind lieselpritzker.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Liesel Pritzker v. E Registration c/o DNS Administration Claim Number: FA0506000506761 PARTIES Complainant is Liesel Pritzker (“Complainant”), represented by James E. Griffith, of McDermott, Will & Emery LLP, 227 West Monroe Street, Chicago, IL 60606. Respondent is E Registration c/o DNS Administration (“Respondent”), PO Box 3360, Saratoga, CA 95070. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <lieselpritzker.com>, registered with Enom, Inc. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. James A. Carmody, Esq., as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2005; the National Arbitration Forum received a hard copy of the Complaint on July 5, 2005. On June 30, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <lieselpritzker.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On July 8, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 28, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@lieselpritzker.com by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On August 4, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has 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." 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <lieselpritzker.com> domain name is identical to Complainant’s LIESEL PRITZKER mark. 2. Respondent does not have any rights or legitimate interests in the <lieselpritzker.com> domain name. 3. Respondent registered and used the <lieselpritzker.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Liesel Pritzker, is an actress who has appeared in several movies and theater productions using the LIESEL PRITZKER mark. Complainant’s motion picture experiences include roles in A Little Princess, Air Force One, and Blast. Complainant recently appeared in the acclaimed Broadway production of Vincent in Brixton. Respondent registered the <lieselpritzker.com> domain name on May 31, 2004. The disputed domain name resolves to a website that features a generic search engine and displays links to various products and services unrelated to Complainant. Respondent presumably earns click-through fees for diverting Internet users to third-party websites via Respondents website. DISCUSSION 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." In view of 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 draw such inferences it 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 that Complainant must 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. Identical and/or Confusingly Similar Complainant asserts that she is an actress who has appeared in several major motion pictures and theater productions. Complainant further contends that due to her entertainment services offered under the LIESEL PRITZKER mark, Complainant’s mark has acquired secondary meaning under the Policy. Without a response from Respondent, to challenge Complainant’s contentions, the Panel accepts Complainant’s assertion of common law rights as true. Thus, for the purposes of Policy ¶ 4(a)(i), the Panel finds that Complainant has established common law rights in the mark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the complainant have rights in a registered trademark and that it is sufficient to show common law rights in holding that the complainant has common law rights to her name); see also Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association with the complainant that common law trademark rights exist); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). The <lieselpritzker.com> domain name registered by Respondent includes Complainant’s LIESEL PRITZKER mark in its entirety, adding only the generic top-level domain (“gTLD”) “.com.” It has been widely held under the Policy that the mere addition of a gTLD to a complainant’s mark is irrelevant in making a determination of similarity under Policy ¶ 4(a)(i). See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants"). The Panel concludes that the disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding the respondent’s domain name, <karlalbrecht.com>, identical to the complainant’s common law mark). Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests It has been established under the Policy that the complainant has the initial burden of proving that the respondent lacks rights and legitimate interests in the disputed domain name. In Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the panel held: Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question. Id.; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). Having found that Complainant has met its initial burden by establishing a prima facie case, the Panel will now analyze whether Respondent has met its burden to establish rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). Complainant asserts that Respondent is not commonly known by the <lieselpritzker.com> domain name. According to the WHOIS information for the domain name, Respondent is known as “E Registration” and “DNS Administration.” Because this information is the only evidence of Respondent’s identity, the Panel does not have any evidence that Respondent is commonly known by the disputed domain name. Without a response from Respondent to rebut Complainant’s evidence, the Panel finds that Respondent has failed to establish rights or legitmate interests in the domain name under Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). Complainant argues that the <lieselpritzker.com> domain name diverts Internet users searching for information regarding Complainant to a commercial website that features a generic search engine and links to various products and services unrelated to Complainant. Numerous Panels have held that use of a complainant’s mark in a domain name to attract Internet users to a respondent’s commercial website does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy). Furthermore, in failing to submit a response to Complainant’s allegations, Respondent has neglected to provide any evidence that would challenge Complainant’s prima facie case. Thus, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) or (iii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Thus, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith The <lieselpritzker.com> domain name resolves to a website that features a generic search engine and links to a variety of products and services. The Panel infers that Respondent receives a commission for diverting Internet users to third-party websites via the search engine and links located at Respondent’s website. Additionally, by using Complainant’s LIESEL PRITZKER mark in the domain name, Respondent is creating a likelihood of confusion and attempting to attract Internet users to Respondent’s website for Respondent’s commercial gain. Respondent’s activities are evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain). Furthermore, based on the uniqueness of the LIESEL PRITZKER mark, Respondent’s use of the mark within the domain name implies to Internet users that Respondent has some association with Complainant. Moreover, Respondent’s registration of the <lieselpritzker.com> domain name, which contains Complainant’s LIESEL PRITZKER mark in its entirety, suggests that Respondent knew of Complainant’s rights in the mark and intended to take advantage of Complainant’s goodwill in the mark. These circumstances constitute opportunistic bad faith and amount to evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with the complainant and its products that the use of the domain names by the respondent, who has no connection with the complainant, suggests opportunistic bad faith); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated the complainant’s name); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <lieselpritzker.com> domain name be TRANSFERRED from Respondent to Complainant. James A. Carmody, Esq., Panelist Dated: August 15, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.