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and Mediation Center
William H. Cosby, Jr. v. Sterling
Case No. D2005-0756
1. The Parties
The Complainant is William H. Cosby, Jr., an individual professionally know as “Bill Cosby.” He is represented by the law firm of Patterson, Beknap, Webb & Tyler LLP, New York, New York, United States of America.
The Respondent is Sterling Davenport, Loretto, Tennessee, United States of
2. The Domain Name and Registrar
The disputed domain name is <fatalbert.org>. The registrar is eNom, Inc.
3. Procedural History
This action (the “Complaint”) was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 (the “Policy”); the ICANN Rules for Uniform Domain Name Dispute Policy dated October 24, 1999 (the “Rules”); and WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2005 (by e-mail) and on July 19, 2005 (by hard copy).
The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules and the WIPO 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 July 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of his default on August 10, 2005 and advised the Respondent of the consequences of such a default.
The Center appointed John E. Kidd as the sole panelist in this matter on August 16, 2005. 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.
Having reviewed the communication records, the Panel finds that the Center
has discharged its responsibilities under Paragraph 2(a) of the Rules “to
employ reasonably available means calculated to achieve actual notice to Respondent.”
In the view of the Panel the proper procedures have been followed and it may
issue its decision based upon the documents submitted in accordance with the
Policy, the Rules and the Supplemental Rules without the benefit of a response
from the Respondent.
4. Factual Background
4.1 The Complainant
The Complainant is William H. Cosby, Jr., who is also, and perhaps more commonly, known as Bill Cosby. Mr. Cosby is a world famous comedian, writer, actor, producer and creator of the FAT ALBERT cartoon character of the late 1960’s as part of his stand-up comedy routine about his childhood growing up in Philadelphia, Pennsylvania.
An animated children’s television series incorporating the FAT ALBERT character, “Fat Albert and the Cosby Kids,” aired on the CBS television network from 1972, until 1984 and was re-syndicated on the NBC and USA television networks in 1989. The television series was viewed by millions of children and households and was critically applauded for its entertainment qualities and social values. CBS has called the Complainant’s “Fat Albert and the Cosby Kids” series “one of the most popular children’s programs in all television.” A major live-action motion picture entitled “Fat Albert” and based on the “Fat Albert and the Cosby Kids” television series was released in December 2004 by 20th Century Fox.
The Complainant owns all the trademarks of the characters associated with the “Fat Albert and the Cosby Kids” television show, including the character FAT ALBERT. The words FAT ALBERT have been used as a trademark in the United States since 1972.
The Complainant also owns trademark registrations for the FAT ALBERT word and design marks in many countries around the world, including the United States and the European Union, for use with clothing in International Class 25. A complete list of registered trademarks was included in the Complaint.
According to the Complaint, the Complainant has also licensed the use of the FAT ALBERT trademark to third parties who manufacture, distribute and sell various entertainment related goods and services incorporating the FAT ALBERT trademark, including a recent major motion picture, DVDs and video tapes of the original television series, toys, figurines, comic books and clothing.
It is undisputed that the Complainant and his licensees have advertised goods bearing the FAT ALBERT trademark in various media and enjoy worldwide fame, including in the United States.
4.2 The Respondent
The Respondent has registered over 500 domain names, many of which incorporate trademarks owned by others or the names of well-known celebrities and public figures. Examples of some of the many such domain names were listed in the Complaint.
On June 29, 2004, shortly after publicity regarding the then upcoming release of the “Fat Albert” movie, the Respondent first registered the domain name <fatalbert.org>. At that time the domain name was linked to a search engine service web-site that listed <fatalbert.org> and search results for the domain name at the top of the home page. The web-site was linked to other third party web-sites related to the Complainant and his FAT ALBERT mark, including categories for “animation”, “cartooning”, “TV shows”, “children’s” and “kids stuff.”
4.3 The Complainant Requested Transfer of Domain Name
On October 26, 2004, attorneys for the Complainant sent a cease and desist letter to the Respondent by e-mail and post, informing him of the Complainant’s rights in the FAT ALBERT marks and demanding immediate transfer of the domain name to the Complainant.
The Respondent did not directly reply to the letter, but when the Complainant’s attorneys rechecked the disputed domain name on October 29, 2004, it had been changed and was linked to a CNN news article about an incident in Colorado involving a bear referred to as “Fat Albert.”
On January 28, 2005, when the Complainant’s attorneys rechecked the disputed domain name, it was linked to a web-site that offered sexually explicit products for sale, specifically penis enlargement products.
On February 28, 2005, the Complainant’s attorneys sent a second cease and desist letter to the Respondent.
The Respondent did not reply to that letter. The Complainant’s attorneys
rechecked the disputed domain name and found that the Respondent had, once again,
directed the domain name to an article about a bear named “Fat Albert”
at <www.wnrq.com/albert.html>. The web-site is registered to the Respondent
and offers drugs for sale, particularly penis and breast enlargement pills.
5. The Parties’ Contentions
5.1 The Complainant
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied. More specifically, the Complainant submits that: (i) the domain name in dispute, <fatalbert.org>, is identical or confusingly similar to trademarks in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests with respect to the domain name; and (iii) the domain name was registered and is being used by the Respondent in bad faith.
5.2 The Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Identical or Confusingly Similar Domain Name
Pursuant to paragraph 4(a) of the policy, the Complainant has the burden to
submit evidence in order to convince the Panel that the domain name in dispute
should be transferred to the Complainant. In light of the Respondent’s
failure to submit a response, the Panel, pursuant to the Rules, may draw such
inferences, including adverse inferences, as it considers appropriate. See Charles
Jourdan Holding AG v. AAIM, WIPO Case
The Complainant is the owner of numerous trademark registrations for the mark FAT ALBERT in the United States of America and other countries. The Complainant has established that he has a unique, distinctive and strong mark.
The disputed domain name incorporates the words FAT ALBERT. The Panel finds
that the words are identical to the mark owned by the Complainant. The only
difference is the lack of space between the words and the Panel finds that this
difference does not differentiate the domain name from the Complainant’s
mark. The Panel further finds that the gTLD suffix “.org” serves
no relevant distinguishing purpose. See EMI Records Limited v. Complete Axxcess,
WIPO Case No. D2001-1230.
The Panel finds the disputed domain name, registered by the Respondent, to be identical or confusingly similar to the Complainant’s registered trademarks.
6.2 The Respondent’s Rights or Legitimate Interests in the Domain Name in Dispute.
The Respondent did not register the domain name until June 29, 2004, long after the Complainant’s first use of his marks and after the Complainant’s registration for his marks in the United States and abroad.
The Respondent’s name is Sterling Davenport, a name which has no similarity to the disputed domain name.
The Complainant has not authorized or licensed the Respondent to use his marks.
The Respondent has provided no evidence or circumstances of the type specified
in Paragraph 4(c) of the Policy, or of any other circumstances giving rise to
a right to or legitimate interests in the domain name in dispute nor has the
Respondent provided any evidence that the domain name was used in connection
with any bona fide offerings of goods or services. The Panel finds that
the evidence does suggest that the Respondent’s purpose was to divert
Internet users to a separate search engine that capitalized on the Complainant's
mark. This is not a bona fide offering of goods or services. See Banca
Carige S.p.A. v. MustNeed.com, Lee Yi, WIPO
Case No. D2004-0445.
The Panel finds that the evidence shows that the Respondent acted with the
intention of trading on the fame of the Complainant and this is an additional
reason why the Respondent has no rights or legitimate interests in the disputed
domain name. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,
WIPO Case No. D2000-0847.
The Panel also finds that, in the circumstances of this case as noted above, linking the disputed domain name to a web-site featuring a copy of a newspaper article about a bear called “Fat Albert” is not directly offering goods or services.
Finally, the Panel views the Respondent’s failure to respond after proper
notice of these proceedings as further evidence that he has no rights or interests
in the domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith
Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO
Case No. D2000-1221, GEOCITIES v. GEOCIITES.COM, WIPO
Case No. D2000-0326.
For the foregoing reasons, the Panel is satisfied that the Respondent has no rights or legitimate interests in the domain name.
6.3 Domain Name Registered and Used in Bad Faith
In the Panel’s view, the evidence clearly suggests that the Respondent has deliberately and confusingly used the Complainant’s mark as the dominate part of the domain name in order to attract internet users to the disputed domain name, which was linked to a web-site offering sexually explicit products for sale. That on its own is sufficient in the Panel’s view to constitute bad faith registration and use.
There are also other indicators of bad faith registration by the Respondent,
particularly in the history of the registration of the disputed domain name,
as noted above. In the absence of any response from the Respondent, the Panel
accepts the compelling evidence offered by the Complainant that the domain name
was registered by the Respondent in order to prevent the Complainant from using
his mark in a corresponding domain name. See Diageo p.l.c. v. John Zuccarini,
WIPO Case No. D2000-0541.
The Panel also finds that the Respondent’s act of associating the Complainant’s
mark with a sexually explicit web-site, especially where the Complainant’s
mark has been associated with children’s entertainment services, tarnishes
and damages the Complainant’s FAT ALBERT mark and reputation. This act
by the Respondent indicates bad faith registration and use of the disputed domain
name. See Williams-Sonoma, Inc. dba Pottery Barn Kids v. Ed Domains,
WIPO Case No. D2004-0640.
In light of the above circumstances, the Panel concludes that the Respondent
has both registered and used the domain name in dispute in bad faith.
The Panel concludes that:
(a) the domain name <fatalbert.org> is identical or confusingly similar to the Complainant’s FAT ALBERT marks;
(b) the Respondent has no rights or legitimate interests in the domain name; and
(c) the Respondent registered and used the domain name in bad faith.
Therefore, pursuant to paragraphs 4(e) of the Policy and 15 of the Rules, the Panel orders that the domain name <fatalbert.org> be transferred to the Complainant.
John E. Kidd
Dated: August 30, 2005