WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jeanette Winterson v. Mark Hogarth
Case No. D2000-0235
1. The Parties
The Complainant is Jeanette Winterson, represented by Bird & Bird, solicitors of 90 Fetter Lane, London EC4A 1JP.
The Respondent is Mr Mark Hogarth of 12 St. Luke's Street, Cambridge CB4 3DA.
2. The domain names and Registrar
The domain names at issue are:
and the Registrar is Register.com, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on March 30, 2000, [electronic version] and April 5, 2000, [hard copy]. The Centre verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules of Uniform Domain Name Dispute Resolution Policy [the Rules] and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.
The formal date of commencement of this administrative proceeding is April 10, 2000.
On April 4, 2000, the Center transmitted via e-mail to Register.com, Inc. a request for registrar verification in connection with this case and on April 10, 2000, Register.com, Inc. transmitted by mail to the Center Register.Com's verification response confirming that registrant is Mr. Mark Hogarth, who is also the contact for administrative purposes.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on April 10, 2000, to
the Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by April 29, 2000. On the same day the Center transmitted by mail copies of the forgoing documents to
Mr. Mark Hogarth
12 St Luke's Street
Cambridge CB4 3DA
The Response was received from the Respondent by e-mail and by fax on May 1, 2000. Prior to that, on April 26, 2000, the Complainant's solicitors submitted to the Center Annex J for inclusion with the Complaint. The letter of April 26, 2000, was sent by e-mail to the Respondent (without Annex J) and by mail (including Annex J) and to the Registrar, Register.com, Inc.
Having received on May 3, 2000, Mr. David Perkins Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was May 16, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to the Respondent". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the addition to the Complaint of April 26, 2000, the Response, the Policy, the Rules and the Supplemental Rules.
Pursuant to para. 10 of the Rules, the Panel admits the letter of April 26, 2000, from the Complainant's solicitors and the addition of Annex J to the Complaint. As the letter of April 26, 2000, states, Annex J merely supplements para. 12.8.3 of the Complaint, it does not add a new ground of Complaint: it adds another illustration of the allegation made in para. 12.8.3. Further, it would appear from the Response [penultimate paragraph, page 2] that the Respondent had considered the letter of April 26, 2000, and Annex J in preparing and submitting the Response.
The Panel also admits the Response, notwithstanding its receipt by the Center on May 1, 2000, bearing in mind that the due date for the Response was Saturday, April 29, 2000.
4. Factual Background
4.1 The Complainant
The Complainant, Jeanette Winterson, is a well known author. She has published nine books since 1985, which have been published in 21 countries in 18 different languages. The Complainant has written two screen plays for BBC Television, which have been broadcast in 15 countries and has two additional works which are in the pre-production phase (one for Miramax Films and one for the BBC) and another work in the development phase. The Complainant states that several hundred thousand copies of her books are sold worldwide every year. The Complainant's literary works comprise:
h Oranges are not the only Fruit (1985)
h The Passion (1987)
h Sexing the Cherry (1989)
h Written on the Body (1992)
h Art & Lies (1994)
h Gut Symmetries (1997)
h The World and Other Places - Collected Short Stories (1998)
h The Power Book (due to be published this year)
h Art Objects - Essays (1995)
h Boating for Beginners (1985)
4.2 The Respondent
The Respondent, Mark Hogarth, is a Research Fellow in the Department of History & Philosophy of Science at Cambridge University. In March 2000, the Respondent states that he registered the domain name writerdomains.com under which he operates a web page announcing that its aim is to develop websites devoted to some of the world's favourite writers. 132 such writers are named, including the Complainant, Jeanette Winterson. The introduction page to the website proposes that it will develop web pages devoted to these authors which will:
"... serve to inform about the writer's work, their biography, forthcoming work, interviews, book signings, and much more besides."
4.3 The Complainant's Trade Mark
The Complainant does not rely upon any registered trade marks but on her common law rights in her real name, JEANETTE WINTERSON. The Complainant's case is that, under that Mark, she has achieved international recognition and critical acclaim for the works identified above and that use of that Mark has come to be recognised by the general public as indicating an association with words written and produced exclusively by the Complainant. As a result, the Complainant asserts that she has common law rights in the Mark, which are sufficient for the purposes of this Complaint.
4.4 The Respondent's activities
In his Response, Mr Hogarth states that when he registered the domain names in issue, together with domain names associated with about 130 other writers' names, in February and March 2000, to the best of his knowledge none were registered as trade marks or service marks. He states that his intention in registering the domain names in issue and the domain names associated with the other authors was to develop websites devoted to them containing book extracts, reviews, biographies, signings, forthcoming works and links to an e-book seller like amazon.com. He states that it will be made clear that each such site is unofficial.
4.5 The Respondent explains that, initially, his plan was to sell one or two domain names to provide the necessary venture capital for this scheme. To that end, he advertised this on his website and also wrote to 10 authors, including Julian Barnes and Joanna Trollope, asking if each wished to purchase the domain names associated with them. The Complainant has exhibited one such letter addressed to the literary agent of the author, Joanna Trollope. That letter, dated March 16, 2000, read as follows:
"Dear Pat Cavanagh
You may have read in last Tuesday's The Independent that I have registered a number of domain names linked to high-profile authors. Joannatrollope.com is among them. Since then there has been considerable media and commercial interest in the venture but I am writing to you because I want to give Joanna Trollope first refusal to buy the relevant domains.
The timetable is a bit tight, partly because I am keen to return to my day job of teaching philosophy and partly because Ginanne Brownwell is running the story in next week's NewsWeek, which is out on Monday. When that story breaks I want to auction the names as a bundle while the public interest is still high. The buyer's aim here will be to set up individual sites corresponding to each name and sell books on a commission basis. (This idea has already been implemented in pop music and sport.) After that, I guess it will become more difficult to obtain the domain.
I won't attempt here to present a case that having the most natural domain name and good website can boost sales. One need only visit, for example, stephenking.com or tomwolfe.com.
The price is set at 3% of the writer's 1999 gross book sales. This includes joannatrollope.com, joannatrollope.net, joannatrollope.org. If this agreeable, then please contact me on 0777 3950 or via chillibook@hotmail.
4.6 The Complainant has exhibited an interview given by her to The Times newspaper, published in that newspaper on March 29, 2000. In this she quotes a telephone conversation between herself and the Respondent, relevant extracts of which include:
"Hello, is that Mark Hogarth?
So why do you want to be me? This is Jeanette Winterson.
You’re the first author who has rung me up. I have had a lot of hate mail though which is really distressing.
Don't you think we might be distressed?
You hadn't registered it yourself.
So why have you done this?
To make money basically.
What are you going to do with the names?
Well, if the writers don't want them, maybe I'll exploit them myself, set up a website or pass it on to somebody else to set up. It will be good for writers. It will sell their books.
Suppose I want to sell my own books? What right do you have to 3% of a writer's earnings?
Its only for one year.
So what do you want from me, Mark?
I haven't really thought about it yet."
In his Response, the Respondent denies that he has offered to sell the domain names in issue to the Complainant. He states that the telephone conversation with the Complainant reported in The Times interview [above] was friendly
"... and there is little resemblance to the account she gave to The Times."
The Respondent goes on to state that, when it became clear to him that some of the writers whose identities he registered as domain names were annoyed by his approach, his offer to sell those domains was immediately withdrawn. He states that none of the domains were ever sold and none have been offered for sale. The Response states, inter alia,
"In most cases I registered each domain in three forms: .org, .net and .com. This is to increase exposure in web search engine listings, but as stated on the writer domains website, I am happy, as a token of goodwill, to transfer, at cost price, either a .org or a .net domain name to any writer who wishes to develop their own website using one of these domain names."
5. The Parties' Contentions
A The Complainant
The Complainant contends that the Respondent has registered as domain names a mark which is identical to the Mark, JEANETTE WINTERSON, under and by which her literary works have come to be recognized by the general public as indicating an association with works written and produced exclusively by her. The Complainant also contends that the Respondent has no rights to or legitimate interests in respect of the domain names in issue, that the Complainant has not consented to use of the Mark by the Respondent and that the Respondent has registered and is using the domain names in bad faith.
B The Respondent
The Respondent states that he registered the domain names in issue in the belief that JEANETTE WINTERSON was not a trade mark or a service mark and that the domain names in issue were registered with a view to developing a website devoted to the work of the Complainant. It appears from the Response that the Respondent is offering to transfer to the Complainant at cost price, two of the domain names in issue, either jeanettewinterson.org or jeanettewinterson.net, if the Complainant wishes to develop her own website using one of those domain names.
6. Discussions and Findings
6.1 The Policy para. 4a provides that the Complainant must prove each of the following:
h that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
h the Respondent has no rights or legitimate interests in respect of the domain name; and
h the domain has been registered and is being used in bad faith.
6.2 Is a trademark required to be registered? This is the main issue to be decided in this Complaint. Provided the Complainant meets that hurdle, self-evidently, the domain names in issue are identical in all material respects with the Complainant's name.
6.3 The Rules do not require that the Complainant's trademark be registered by a government authority or agency for such a right to exist. In this respect, the Panel refers to WIPO's Final Report on the Internet Domain Name Process [April 30, 1999] paragraphs 149 - 150.
6.4 The Registration Agreement between the Respondent and the Registrar, Register.com.Inc, [Exhibit B to the Complaint] is consistent in this respect. Clause 11 of that Agreement, which sets out the registrant's representations and warranties, provides:
"You represent that, to the best of your knowledge and belief, neither the registration of the domain name nor the manner in which it is directly or indirectly used infringes the legal rights of a third party."
Legal rights in a trade mark does not require that the trade mark must be registered.
6.5 The Rules (paragraph 15(a)) provide that a Panel shall decide a Complaint on the
basis, inter alia, of
"... any rules and principles of law that it deems applicable."
Since both the Complainant and the Respondent are domiciled in the United Kingdom, to the extent that it assists in determining whether the Complainant has met her burden under paragraph 4a of the Policy, the Panel can look at applicable decisions of the English Courts.
6.6 The Complainant cites [Annex E] a Decision of The National Arbitration Forum
in Cedar Trade Associates Inc .v. Greg Ricks [File No. FA 0002 000093633] of February 25, 2000. In that Decision, the Complainant asserted common law rights only in the mark "BuyPC.com", which it had used as a trade name for the resale of personal computers and peripherals in the State of California since January 1996. Both parties operated from addresses in the United States of America. The Panel found that the Complainant (Cedar) had invested considerable time and effort in establishing an association between "BuyPC.com" and its goods and services over approximately 4 years. The Panel's Decision accepted that "BuyPC.com" qualified as a trademark for the purposes of the Policy.
6.7 Is the position different in the United Kingdom? In Elvis Presley Trade Marks
(1999) RPC 567(C.A.) the Court of Appeal was concerned with the registrability under the old UK trademarks legislation [the Trade Marks Act 1938] of, inter alia, two words marks, ELVIS and ELVIS PRESLEY for goods in Class 3 [toilet preparations; soaps; cosmetics etc]. The Court held that those marks did not reach the level of distinctiveness required by the 1938 Act. That Decision is, not, however of relevance to the question of whether common law rights can subsist in an individual name under English law.
6.8 In British Telecommunications plc .v. One in a Million Ltd (1999) FSR 1 (C.A.)
the facts were more apposite to the case in point. The Defendants had registered as domain names a number of well-known trade names: those in issue were:
The judgment of the Court of Appeal was concerned primarily not with trademark infringement, but with the law of passing-off. The Court traced the origins of the tort back to the 16th century. The essence of the tort is that
".. nobody has any right to represent his goods as the goods of somebody else. It is also sometimes stated in the proposition that nobody has the right to pass off his goods as the goods of somebody else." [A.G. Spalding & Bros. .v. A.W. Gamage Ltd. (1915) 32 RPC 273 at 283].
6.9 In his case, this issue is not whether the Respondent has committed passing-off by
registering the three domain names in issue, it is merely whether under English common law unauthorized use of a mark can be restrained other than by an action for infringement of a trade mark. The mere fact that the right to sue for infringement of an unregistered trade mark is not available under English law does not affect a person's rights of action against another for passing-off. The Court of Appeal reviewed the cases concerned with dishonest misappropriation of the plaintiff's name, citing with approval Glaxo plc .v. Glaxo-Wellcome Ltd (1996) FSR 388, where the defendants formed Glaxo-Wellcome Ltd. in anticipation of the merger of Glaxo and Wellcome and asked the plaintiffs to pay £100,000 for the name. The judge held that the defendants had acted dishonestly to appropriate the goodwill of the plaintiff and to extort a substantial sum as the price for not damaging the plaintiff's goodwill.
6.10 In the One in a Million case the Court held that registration in itself amounted to passing-off.
"The placing on a register of a distinctive name such as marksandspencer makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name" [Aldous L. J. at p. 23]
6.11 There are a number of English cases dealing with passing-off the names of well-known individuals and personalities, which all - as may be expected - turn on the facts. These include, the Uncle MAC case [1947 2 All ER 845]: the KOJAK case [Taverner Rutledge .v. Trexpalm (1975) FSR 479]: the WOMBLES case [1977 RPC 99]: the ABBA case [1977 FSR 62]: and the Teenage Mutant Ninja Turtles case [1991 FSR 145]. The case for decision here does not concern whether or not passing-off has occurred but whether the Complainant (Jeanette Winterson) has rights in her name sufficient to constitute a trade mark for the purposes of para. 4a of the Policy.
6.12 In the Panel's view, trademarks where used in para. 4a of the Policy is not to be construed by reference to the criteria of registrability under English law [the ELVIS PRESLEY case] but more broadly in terms of the distinctive features of a person's activities. In other words, akin to the common law right to prevent unauthorised use of a name. Thus, applying English law the Complainant clearly would have a cause of action to prevent unauthorized use of the Mark JEANETTE WINTERSON in passing-off. The Decision in Cedar Trade Associates .v. Ricks [para. 6.6. supra] unfortunately gives no guidance as to why common law rights in the mark "BuyPC.com" qualified as a trade mark. The question posed by the Panel in this case was not addressed. From this, the Panel concludes that in that Complaint Judge James A Carmody did not believe that the absence of a registered trade mark raised any question for decision and that where the Policy refers to trademark without requiring registration it clearly includes unregistered common law rights.
6.13 Such a conclusion is entirely consistent with para. 2 of the Policy – "Your
Representations" - which required a registrant to represent and warrant that
(ii)(b) to your knowledge, the registration of the domain name will not infringe
upon or otherwise violate the rights of any third party.
This refers to rights not registered trademarks of a third party. The Panel is, therefore, satisfied that the Complainant has for the purposes of para. 4a(i) of the Policy established trade mark rights in the mark JEANETTE WINTERSON and that the domain names in issue are identical to that Mark. The Complainant, therefore, meets the requirements of para. 4a(i) of the Policy.
Rights or Legitimate Interests
6.14 Para. 4c of the Policy identifies circumstances which, in particular, but without
limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent's right or legitimate interest for the purpose of para. 4a(ii).
6.15 The Respondent's case is that he told the Complainant that he intended to
develop a website devoted to her work. He states that he is in negotiation with a UK web design company, Computable Functions, and expects that the Jeanette Winterson site, along with a number of related sites, will be running within the next three or four months.
6.16 Against that is the Respondent's statement in his letter to Joanna Trollope's
literary agent [Annex J]:
"The timetable is a bit tight ... . When that story breaks I'll want to auction the names as a bundle while public interest is high. The buyer's aim here will be to set up individual sites corresponding to each name and sell books on a commission basis."
The full text of the letter is set out in paragraph 4.5 above. This is consistent with the Press Reports annexed to the Complaint as Annexes G and H.
6.17 On the evidence before him, the Panel does not consider that the Respondent
satisfies para. 4c(i) of the Policy. Plainly, he cannot bring himself within paras. 4c(ii) and (iii) either. Further, the Complainant has not licensed or otherwise permitted the Respondent to use the JEANETTE WINTERSON Mark or to apply for or use any domain name incorporating that Mark. In the circumstances, the Panel can find no evidence that would tend to establish that the Respondent has rights to or legitimate interests in respect of the domain names in issue. The Complainant succeeds in establishing the requirements of para. 4a(ii) of the Policy.
6.18 Para. 4a(iii) of the Policy requires that the Respondent's domain names must both
have been registered and be being used in bad faith. Both requirements must be met.
Para. 4b of the Policy sets out circumstances which, 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 goes on to state that those circumstances are not exhaustive of the circumstances indicating registration and use in bad faith.
Registered in Bad Faith
6.19 The Respondent's case is that none of 130 domain names associated with authors which he has registered represent, to the best of his knowledge, trade marks or service marks. Whilst the existence of registered trade marks and applications to register trademarks can be checked by searching with the appropriate authority in this country and overseas, that is not the end of the matter.
6.20 If, as the Panel rules in this Case, trademark where used in para. 4a of the Policy
includes the rights of any third party to his/her name, then it must have been abundantly clear to the Respondent that registration of the domain names in issue could not be bona fide. The One in a Million case, which was decided primarily on principles of passing-off, was widely reported in the British Press. The maxim, ignorance of the law is no excuse, applies in this case. The Respondent's lack of bona fides is evidenced by his intention to auction the domain names. The Respondent registered the domain names in issue on
March 14, 2000, and was publicising his intention to sell them within days "whilst public interest is still high".
Used in Bad Faith
6.21 The domain names in issue are not used in relation to active websites. Whilst in
the Response, the Respondent states that he will transfer, at cost, either an .org or a .net domain name to any writer who wishes to develop their own website using one of those domains, this does not meet the Complaint. The Panel concludes that the Respondent fails to demonstrate use in good faith under para. 4b of the Policy or at all.
For all the forgoing reasons, the Panel decides that the Complainant has proved each of the three elements of para. 4 of the Policy. Accordingly, the Panel requires that the registrations of the domain names jeanettewinterson.com; jeanettewinterson.org; and jeanettewinterson.net be transferred to the Complainant.
Dated: May 22, 2000