Garrapata, LLC, Clint Eastwood v Tuan Ha, SenPrints

WIPO Case No. D2024-5071

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Garrapata, LLC, Clint Eastwood v. Tuan Ha, SenPrints

Case No. D2024-5071

1. The Parties

The Complainants are Garrapata, LLC (the “First Complainant”) and Clint Eastwood (the “Second
Complainant), United States of America (“United States”), represented by Nolan Heimann LLP, United

States.

The Respondent is Tuan Ha, SenPrints, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <clinteastwoodstore.com> is registered with Name.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2024. On December 10, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 2024, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 19, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 16, 2025.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on January 22, 2025. 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.

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4. Factual Background

The Second Complainant is the actor, cineast and producer known as “Clint Eastwood”, having initiated his career in the film industry in the 1960s, having won four Oscars.

The First Complainant is the Second Complainant’s holding company which holds the United States trademark registration No. 3,265,483, for the word mark CLINT EASTWOOD, registered on July 17, 2007, in class 41.

The disputed domain name was registered on September 23, 2024, and presently resolves to an active webpage that describes itself as “Animal Rescue – Be Their Voice, Wear Your Heart” selling t-shirts and other merchandise under sections such as “Keanu Reeves support dog mother day”, “Keanu Reeves support

animals mug” etc.

5. Parties’ Contentions

A. Complainants

The Complainants contend that they have satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Eastwood,” which the Second Complainant has been using in commerce since the 1960s when he was cast as The Man with No Name in Sergio Leone's trilogy of spaghetti westerns, A Fistful of Dollars (1964), For a Few Dollars More (1965), and The Good, the Bad and the Ugly (1966), having, since then appeared in over 50 films and also directed critically acclaimed films including Unforgiven (1992) (for which he was nominated for Best Actor and won the Academy Award for Best Picture and Best Director), Mystic River (2003) (in which Sean Penn and Tim Robbins gave Academy Award-winning performances), Million Dollar Baby (2004) (for which he won the Academy Award for Best Picture and Best Director), Letters from Iwo Jima (2006) (nominated for the Best Picture Oscar), Sully (2016) (starring Tom Hanks as hero pilot	Notably, the Second Complainant claims to own common law trademark in his professional name “Clint registered the trademark CLINT EASTWOOD in 2007.
The Complainants contend that the disputed domain name is identical to and/or confusingly similar to the Complainants’ trademark rights in CLINT EASTWOOD.
As to the absence of rights or legitimate interests, the Complainants argue that:
(i) the Complainants never granted a license, consented to, or otherwise authorized, the Respondent or anyone else to use the Complainants’ trademark; (ii) the Respondent cannot assert any pre-existing right or interest in the Complainants’ CLINT EASTWOOD trademark that existed prior to the Respondent having actual knowledge of the Complainants’ exclusive rights in that name; (iii) there is no indication that the Respondent is not commonly known by the disputed domain name; and (iv) the Respondent is not making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
Lastly, in what it relates to the bad faith registration and use of the disputed domain name, the Complainants assert that the Respondent intentionally registered the disputed domain name and is using it in connection with an online store to sell apparel, causing Internet users to mistakenly believe that the website available at the disputed domain name is somehow associated with, affiliated with, or otherwise endorsed by Complainants, what is not true.

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B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the
Complainants have rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

The Complainants must prove in this administrative proceeding that each of the aforementioned three elements is present so as to have the disputed domain name transferred, according to the Policy.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Panel finds that the Complainants have shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, sections 1.2.1 and 1.3.

The entirety of the Complainants’ mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other term (“store”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

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Having reviewed the available record, the Panel finds the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainants’ prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name
or the absence of any trademarks registered by the Respondent corresponding to the disputed domain
name, corroborates with the indication of the absence of a right or legitimate interest in the disputed domain
name. According to unrebutted evidence, the disputed domain name is being used by the Respondent to
resolve to an online shop, which is commercial in nature, this could not be regarded as a bona fide offering of
goods or services since it seeks to free ride on the goodwill established by the Complainant in its trademark.

The Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, the Respondent has intentionally attempted 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 website or location or of a product or service on the website or location.

In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the use of the disputed domain name seeking to profit from the Second Complainant’s fame in connection with the offer of merchandise using the name of well-known actors, as seen above.

Other factors that corroborate the Panel’s finding of bad faith of the Respondent are as follows: the absence of a formal Response by the Respondent; and the indication of false contact details.

For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

7. 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 name <clinteastwoodstore.com> be transferred to the Complainants.

/Wilson Pinheiro Jabur/
Wilson Pinheiro Jabur
Sole Panelist
Date: January 30, 2025