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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nick Cannon v. Nikolay Zuyev

Case No. D2007-0870

 

1. The Parties

The Complainant is Nick Cannon, California, United States of America, represented by Del, Shaw, Moonves, Tanaka, Finkelstein & Lezcano, United States of America.

The Respondent is Nikolay Zuyev, Kiev, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <nickcannonmusic.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2007. On June 14, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On June 15, 2007, Network Solutions, LLC 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 June 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 10, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2007.

The Center appointed Isabel Davies as the sole panelist in this matter on August 6, 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 television and film actor, a writer, producer and presenter of television programs and films and a music composer and performer. The Complainant has appeared in numerous television programmes and films, including “The Nick Cannon Show” (2002); “Men in Black II” (2002); “Drumline” (2002); “Love Don’t Cost a Thing” (2003); “Shall We Dance” (2004); “Roll Bounce” (2005); “Even Money” (2006); “Nick Cannon Presents: Wild ‘N Out” (2006); and “Nick Cannon Presents: Short Circuitz” (2007). He has also performed extensively as a musician, including as supporting act for well-known artists such as Will Smith and Montell Jordan. His debut album, “Nick Cannon”, was released in 2003 and has sold more than 400,000 copies.

The Respondent is registrant of the domain name <nickcannonmusic.com>, which was registered with Network Solutions, LLC on August 14, 2002. The website is not being used to offer any goods, services or information connected with the Respondent or with music. Instead, the domain name links to a pornography portal website, www.sunnygals.com.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that, although he has not registered his name as a trade mark, he has consistently used this name for all of his entertainment activities for more than a decade and that he has acquired common law rights in this name by virtue of such use in his extensive entertainment career, as well as under 15 U.S.C Section 1052(d) of the Lanham Act.

The Complainant says that the domain name was formerly owned by the Complainant’s record company, Jive Records, for promotion purposes and was a popular portal for the Complainant’s music video “Can I Live”.

The Complainant contends that the disputed domain name is identical to his professional name with only the word “music” and the “.com” extension added. Accordingly, he contends that, the disputed domain name is confusingly similar to the name in which he has rights. He cites other UDRP cases in which a panel has found for the complainants in similar circumstances: FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881; Lewis Black v. Burke Advertising, LLC, WIPO Case No. D2006-1128; Cedric Kyles v Asia Ventures, Inc, WIPO Case No. D2006-0046; and Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415.

The Complainant further asserts that the Respondent has been granted no licence or right to use the Complainant’s name as part of a domain name or for any other purpose.

The Complainant notes that under paragraph 4(c) of the Policy, a registrant may demonstrate legitimate interests in a domain name by showing before notice of the dispute, use or demonstrable preparations for use of the domain name in connection with a bona fide offering of goods or services, or that he has been commonly known by the domain name in dispute, or that he is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert customers or to tarnish the trade mark or services mark at issue.

The Complainant contends that the Respondent cannot satisfy any of these criteria. Regarding the first criterion, he says that the Respondent has not used and is not using the domain name in connection with a bona fide offering of goods and services, but rather to direct people to a page with links to other websites offering pornography. As to the second criterion, the Complainant asserts that the Respondent has not been and is not known by the name Nick Cannon. Regarding the third criterion, the Complainant contends that the Respondent is making no legitimate use of the domain name, but is using the Complainant’s name as a domain name for commercial gain in a manner not related to the Complainant, redirecting Internet users to a pornographic site for the benefit of the Respondent and resulting in harm to the name and reputation of the Complainant. The Complainant also contends that the Respondent has refused to transfer the domain name to the Complainant despite requests to do so.

The Complainant contends that on this basis it is clear that the Respondent has no legitimate interests in the disputed domain name, but is misappropriating the Complainant’s name for his own commercial gain and damaging the Complainant’s name and reputation in the process.

The Complainant notes paragraph 4(b) of the Policy which provides four alternative non-exclusive criteria for determining if a domain name has been registered in bad faith. In relation to these he asserts that the disputed domain name directs an Internet user not to a fan site for Nick Cannon but to a website comprised of pornographic images and unrelated links to other web pages.

On the basis of the above, the Complainant contends that the domain name <nickcannonmusic.com> should be transferred to him.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

The Respondent failed to respond to the Complaint. Pursuant to Rule 14(b), the Panel is entitled to draw such inferences from such failure as it considers appropriate.

Because the Respondent has submitted no response, the Panel accepts the allegations set out in the Complaint as true. See Rita Rudner v. Internetco Corp., WIPO Case No. D2000-0581, Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415, and Rule 5(e): “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint”.

However, acceptance of the allegations set out in the Complaint as true does not automatically lead to the Complainant being granted the remedy sought. The Complainant must establish all three of the elements set out in paragraph 4(a) of the Policy on the balance of probabilities before an order can be made to transfer the domain name.

A. Identical or Confusingly Similar

The Complainant has no trade mark registration in respect of his name. However, he says that he has acquired common law trade mark rights in his name by virtue of his use of the name in his entertainment career. It is well established that the Policy protects common law trade mark rights in personal names: see Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 and Cedric Kyles v Asia Ventures, Inc, WIPO Case No. D2006-0046. See also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions: “in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name”. However, “the name in question should actually be used in trade or commerce to establish unregistered trademark rights. Merely having a famous name… is not necessarily sufficient to show unregistered trademark rights”.

Here, the Complainant has provided extensive evidence that he has established common law trade mark rights in his name by virtue of his use of it throughout his entertainment career, such use being in trade or commerce. Moreover, in Nick Cannon v Modern Limited – Cayman Development, WIPO Case No. D2005-0757, the panel accepted that the Complainant had common law trade mark rights in the name “Nick Cannon”. This Panel sees no reason to depart from that finding.

Accordingly, the Panel finds that the Complainant has common law trade mark rights in the name “Nick Cannon”.

The domain name in dispute incorporates the whole of the unregistered trade mark NICK CANNON and adds only the generic word “music” and the suffix “.com”. Music is one of the areas of activity with which the Complainant is most closely associated. The goodwill the Complainant enjoys in his name was generated in large measure through his activities as a musician. Moreover, the domain name in dispute has in the past been used as an outlet for the Complainant’s music, and members of the public who knew of it while it was being used for such purposes are likely to assume that it is still associated with the Complainant. The inclusion of the word “music” therefore does nothing to reduce, and if anything increases, the likelihood of confusion resulting from the similarity between the unregistered trade mark NICK CANNON and the domain name.

On this basis the Panel finds that the domain name is confusingly similar to the Complainant’s unregistered trade mark NICK CANNON.

B. Rights or Legitimate Interests

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions summarizes the approach taken in previous decisions to determining, where the respondent has failed to provide a response, whether the respondent has rights or legitimate interests in the domain name. It says that “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(iii) of the UDRP.”

Paragraph 4(c) of the Policy sets out a non-exhaustive list of ways in which a registrant may demonstrate legitimate interests in a domain name. These are: (i) by showing use or demonstrable preparations for use of the domain name in connection with a bona fide offering of goods or services; (ii) that he has been commonly known by the domain name in dispute; or (iii) that he is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or services mark at issue.

The Panel finds that the Complainant has made out a prima facie case that the respondent lacks rights or legitimate interests in the domain name.

The Complainant says that the Respondent has not been granted to right to use the Complainant’s name for any purpose. The Respondent has had the opportunity to assert any such right but has failed to do so. The Panel therefore concludes, in the absence of evidence to the contrary, that no such right has been granted.

Likewise, the Respondent has had the opportunity to demonstrate any legitimate interests in the domain name, and has failed to do so. Accordingly, the Panel infers that he has no legitimate interests in the domain name.

On this basis, the Panel finds that the Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

The Policy sets out at paragraph 4(b) a non-exhaustive list of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith. These include, at sub-clause (iv), that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to their website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Complainant says that the disputed domain name resolves to a webpage that directs the Internet user not to a fan site for Nick Cannon, but to a website composed of pornographic images and completely unrelated links to other web pages.

The use of domain names that incorporate or are confusingly similar to a famous person’s name strongly suggests an intention to divert users seeking information on that celebrity: see Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415.

In the absence of any response from the Respondent, the Panel is satisfied that the purpose for which the Respondent acquired and is now using the domain name, is to attract Internet users to its website for commercial gain by creating a likelihood of confusion between the disputed domain name and the Complainant.

Accordingly, the Panel finds that the Respondent the domain name has been registered and is being used in bad faith.

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 <nickcannonmusic.com> be transferred to the Complainant.

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Isabel Davies
Sole Panelist

Dated: August 20, 2007