WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tony Alessandra D/B/A Alessandra & Associates v. Inss and Allesandra's
Case No. D2001-0619
1. The Parties
The Complainant is Tony Alessandra, an individual residing in the State of California, doing business as Alessandra & Associates at 210 Palomar, La Jolla, California 92037, U.S.A.
The Respondents are INSS, an entity whose address is Imossi House, 1/5 Irish Town, P.O. Box 561, Suite 6/362, Gibraltar; and Allesandra's, an entity located at 235 Main Street, Pleasanton, California 94566, U.S.A.
2. The Domain Names and Registrars
The domain names in dispute are: <alessandra.net>, <allessandra.com>, and <allesandra.com>.
The registrar for the domain name <alessandra.net> is Bulk Register.com, Inc., 7 East Redwood Street, Baltimore, Maryland, 21202, U.S.A.
The registrar for the domain name <allessandra.com> is Tucows, Inc., 96 Mowat Avenue, Toronto, Ontarios M6K 3M1, U.S.A.
The registrar for the domain name <allesandra.com> is Network Solutions, Incorporated (NSI), 505 Huntmar Park Drive, Herndon, Virginia 20170 U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules). The Complaint was filed in hardcopy on May 1, 2001.
On May 3, 2001, the Center informed the Complainant of certain deficiencies involving submitting to jurisdiction at the location of the registrars and providing the Center with electronic documents. By May 10, 2001, the Complainant had cured these procedural deficiencies.
On May 3, 2001, the Center requested that the registrar Tucows check and report back on the registrant for the domain name <allessandra.com>. On May 3, 2001, Tucows reported that the registrant was the Respondent INSS.
Still on May 3, 2001, the Center requested that the registrar NSI check and report back on the registrant for the domain name <allesandra.com>. On May 4, 2001, NSI reported the registrant was the Respondent Allesandra's.
Again on May 3, 2001, the Center contacted the registrar BulkRegister.com, Inc. to ascertain the registrant of the domain name <alessandra.net>. On May 9, 2001, BulkRegister.Com, Inc. reported the registrant for this domain name was the Respondent INSS.
On May 11, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this Proceeding officially began. Respondent did not file a Response within twenty (20) days as required by the Rules (Rule 5), and on
May 31, 2001, was declared in default.
The Administrative Panel submitted a Declaration of Impartiality and Independence on June 14, 2001, and the Center proceeded to appoint the Panel on June 15, 2001.
At first blush the two Respondents, INSS and Allessandra's, might appear to be two different entities, but the Complainant contends all three of the disputed domain names link to pornographic websites (Complaint, p.7). For the purposes of this proceeding, then, the Panel agrees with the Complainant that the Respondents may be treated as the same entity and in this Decision they will be referred to as the "Respondent".
The Panel finds the Center has adhered to the Policy and the Rules in administering this case.
This Decision is due by June 28, 2001
4. Factual Background
The Complainant, Dr. Tony Alessandra doing business as Alessandra & Associates, is an individual who is a business/marketing consultant, writer, TV commentator and lecturer. The Respondent is an entity that provides adult, sexually oriented entertainment on the internet. The Complainant has owned the domain name <alessandra.com> since 1995. Respondent registered the disputed domain name <alessandra.net> on November 20, 2000; Respondent registered the disputed domain name <allesandra.com> on February 25, 1999; and on May 1, 2000, Respondent registered the disputed domain name <allessandra.com>.
It does not appear the Complainant and Respondent ever corresponded regarding this domain name dispute. Instead, the Complainant seeks to take possession of the disputed domain names directly through this proceeding.
5. The Parties' Contentions
- Complainant has acquired common law trademark rights in the name "Alessandra" in connection with educational services, seminars and speaking engagements in the field of marketing and sales.
- The name Alessandra has sufficient secondary association with Complainant that common law trademark rights exist under United States trademark law.
- Dr. Alessandra is the widely published author of some thirteen books. He has been featured in over fifty audio/video programs and films. He also hosts the TPN/Primestar network talk show, "Strictly Business."
- Complainant's web site, <alessandra.com>, is very popular, attracting well over ten thousand visitors each month.
- Considerable goodwill is attached to Complainant's name, and any damage to this goodwill would be irreparable.
- Alessandra is a very distinctive name.
- Respondent has no rights or legitimate interests in the disputed domain names pursuant to the Policy 4(a)(ii).
- Respondent does not operate a web site that in any way utilizes the name Alessandra, Allessandra or Allesandra. Respondent does not offer any goods or services under the names Alessandra, Allessandra or Allesandra. Instead, all three of these domain names are linked to pornographic web sites.
- Respondent does not use the disputed domain names as part of its legal or corporate names.
- Allessandra and Allesandra are common misspellings of Complainantís trademark.
- Respondent utilizes Complainant's trademark and common misspellings of Complainantís trademark to attract potential clients of Complainantís to its pornographic web sites. This practice is injurious to the good will Complainant has acquired in the name "Alessandra."
- Respondent registered and is using the domain names <alessandra.net>, <allesandra.com> and <allessandra.com> in bad faith in violation of the Policy at paragraph 4(a)(iii).
The Respondent is in default in this proceeding and thus did not file any contentions.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain names transferred to it, Complainant must prove the following (the Policy, para 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant does not have a registered trademark in any of the disputed domain names. Instead, the Complainant asserts common law trademark rights acquired by using the name Dr. Tony Alessandra doing business as Alessandra & Associates to conduct business. The Complainant also has had a website at <alessandra.com> since 1995. From the material the Complainant provided at Annex 7, the Complainant conducts its business principally as Dr. Tony Alessandra. The reason for this is obvious: the name Alessandra alone, even with its spelling varied as in the disputed domain names, connotes a woman's first names across a broad variety of western languages, including English. Thus, the Complainant can offer its services using the name Dr. Tony Alessandra, but definitely not simply as Alessandra.
The Respondent, on the other hand, is using the three (3) disputed domain names for what the public would generally take them to be, i.e., references to a woman named Alessandra or Allesandra or similar. In the Panel's view, the Respondent's use of the name Alessandra to refer to a woman's first name is distinct from, and not confusingly similar to, the Complainantís use of the service mark Dr. Tony Alessandra who is a business/marketing consultant, author and lecturer.
The Complainant attempts to bolster its contentions by citing other ICANN cases involving personal names used as marks and domain names (Monty and Pat Roberts, Inc. v. Bill Keith, ICANN/WIPO Case No. D2000-0299, June 9, 2000; Jeanette Winterson v. Mark Hogarth, ICANN/WIPO Case No. D2000-0235, May 22, 2000, and Julia Fiona Roberts v. Russel Boyd, ICANN/WIPO Case No. D2000-0210, May 29, 2000). These cases are all inapposite because the Complainant did not use his complete name for the domain name even though, to the extent he has service mark rights in his name, it is as Dr. Tony Alessandra. Even for an actress as famous as Julia Roberts currently is, it would make little sense to try to keep others from registering domain names based on just "Julia" or just "Roberts". Nor does it seem acceptable for a famous author such as Jeanette Winterson to try to claim just "Winterson " or "Jeanette". Those cases were decided on the basis of their complainants' well-known full names.
The Panel is aware the Complainant also is maintaining that Dr. Tony Alessandra also is known as Alessandra through the website at the domain name <alessandra.com>, but there is scant evidence to support this contention (Complaint p.7). The evidence produced, particularly Complainant's Annex 7, leads the Panel to conclude the Complainant has service mark rights in his name Dr. Tony Alessandra.
The Panel finds the Complainant has not met its burden of proof under the Policy para 4(a)(i) to show the Respondent's domain names are identical or confusingly similar to the Complainant's mark.
The Panel further finds there is no need to discuss the issues of legitimate rights and interests and bad faith since the Complainant must prevail under every section of the Policy at para 4(a)(i-iii).
The Panel has found that the disputed domain names <alessandra.net>, <allessandra.com> and <allesandra.com> are not identical or confusingly similar to a trade or service mark in which the Complainant has rights. The Complainant has rights in his name Dr. Tony Alessandra offering services as a marketing consultant, whereas the Respondent is using the word Alessandra in its more usual meaning as a woman's first name.
In accordance with the Policy para 4(i) and Rule 15, the Complainant's request for transfer is denied and the Complaint is dismissed.
Dennis A. Foster
Date: July 13, 2001