WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Rita Rudner v. Internetco Corp.

Case No. D2000-0581

 

1. The Domain Name and Registrar

The domain name at issue is ritarudner.com. This domain name is registered with Network Solutions, Inc. ("NSI").

 

2. The Parties

The complainant is Rita Rudner, an American comedian, actress, author, and screenwriter. The respondent is Internetco Corp., with an address at 185 South 1st Street, Lehighton, Pennsylvania.

 

3. Procedural History

The Complainant initiated this proceeding by filing a Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") through the Centerís online process for complaints on June 10, 2000. On June 19, 2000, the Center received a hard copy of the Complaint. On June 20, after confirming that the Complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Center sent the Respondent notice of the commencement of proceedings by e-mail, fax, and post, as required by the Rules 2(a) and 4(a). Swiss Post confirmed that a copy of the notice and Complaint were delivered by courier to a person at Respondentís address on June 23, 2000.

Respondent did not submit any response by the deadline of July 9, 2000. On July 11, 2000, the Center issued a notification that Respondent was in default. On July 12, 2000, the Center appointed David H. Bernstein as the sole panelist in this matter. The parties have not filed any additional submissions.

 

4. Factual Background

Because Respondent has not answered the Complaint, the Panel accepts as true all allegations alleged therein. See Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, Case No. D2000-0138 (WIPO April 19, 2000), ß 6.

Complainant is a well-known performer and writer whose television credits in the 1980s and 1990s included regular appearances on "The Tonight Show," and the "Late Show with David Letterman." In 1990, she received the American Comedy Award for Funniest Stand-Up Comedienne; later, she co-wrote and appeared in the films "Peterís Friends" and "A Weekend in the Country," and published two popular books, "Naked Beneath my Clothes," and "Rita Rudnerís Guide to Men."

In November 1998, Respondent registered the domain name ritarudner.com with NSI. For over a year, the site has featured the following message as its only posting:

"RITA!
Rudner

STARTS HERE SOON

Have Fun!"

Because of the unavailability of the domain name ritarudner.com, Complainant "has had to register a different domain name for her website (www.ritafunny.com), but would dearly love her own name transferred back to her." The Complaint suggests that the Respondentís registration of ritarudner.com, and its use with a "starts here soon" message, has caused confusion among consumers: "Rita Rudner is concerned that many members of the public have complained to her about Ďher inactive website.í" Complaint ∂ 12.

A search in the WHOIS database conducted by the Panel indicated that Respondent has registered a number of other domain names that incorporate the names of well-known persons. For example, Respondent has registered domain names that are similar or identical to the names of Jack Valenti, the president of the Motion Pictures Association of America (jackvalenti.com); Barry Diller, the chairman and CEO of USA Networks, Inc. (barrydiller.com); the entertainer Liza Minelli (lisaminelli.com); and Joanna Hurwitz, author of popular books for children including "Class Clown" and "Russell Sprouts" (johannahurwitz.com). Each of these four sites features the following message:

"Welcome!

Why not help

me build this site. . .

E-mail me at:

tasha@12345678.com

Check out these sites!"

Clicking on the "Check out these sites," link takes the user to a list of "sex links" to web sites such as incest.com, fetishlove.com, freesexsite.com and coitus.com. Those sites contain sexually explicit materials. Although this information was not included in the Complaint, the Panel concludes that it is fully appropriate to consider information that is part of the public record.

 

5. Discussion

In order to succeed in its claim, Complainant must demonstrate that all of the following elements enumerated in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") have been satisfied:

i. the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

ii. the Respondent has no rights or legitimate interests with respect to the disputed domain name; and

iii. the domain name has been registered and is being used in bad faith.

The Domain Name is Similar to A Mark in Which Complainant Has Rights.

Although Complainant has not alleged ownership of a trademark registration for "Rita Rudner," her use of her name to indicate the source of her books, movies, stand-up comedy routines, and other goods and services, is more than enough to establish common law trademark rights. Moreover, Complainant also uses her name in connection with her company, Rita Rudner Enterprises, which she established in 1988. Accordingly, there can be no dispute about Complainantís rights in the mark "Rita Rudner." Julia Fiona Roberts v. Russell Boyd, Case No. D2000-0210 (WIPO May 29, 2000), ß 6; Jeanette Winterson v. Mark Hogarth, Case No. D2000-0235 (WIPO May 22, 2000), ßß 4.3, 6.2-6.13. There similarly can be no dispute about the fact that the domain name is identical to Complainantís mark. Accordingly, Complainant has satisfied the first factor under Paragraph 4(a) of the Policy.

Respondent Has No Legitimate Interest in the Domain Name.

The Complaint alleges that Respondent has no rights or legitimate interests in the domain name ritarudner.com. Given Respondentís failure to submit a response, that allegation is undisputed and therefore is accepted by the Panel. Moreover, the Panel notes that Respondentís name, Internetco Corp. does not suggest any right to the domain name ritarudner.com, nor is there any content on Respondentís website that would suggest the existence of any such rights. Accordingly, Complainant has satisfied the second factor under Paragraph 4(a) of the Policy.

Respondent Registered and Used the Domain Name in Bad Faith.

Paragraph 4(b) of the Policy sets out four illustrative (but not exclusive) circumstances that, for purposes of Paragraph 4(a)(iii), shall be evidence of the registration and use of a domain name in bad faith. One of those illustrative circumstances is that:

i. Respondent registered the contested domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; and

ii. Respondent engaged in a pattern of such conduct.

Policy ∂ 4(b)(ii).

Respondentís conduct prevented Complainant from registering her own name and common law trademark as her domain name. Given the Respondentís failure to submit a response, and its pattern of registering the names of other famous personalities, it is appropriate to infer that Respondent registered ritarudner.com to prevent Complainant from registering that domain name. See Rule 14(b). This behavior is itself sufficient to show bad faith.

Further evidence of Respondent's bad faith is that it has registered other domain names that contain the names of celebrities, and those other domain names contain links to sexually-explicit web sites. Given Respondent's failure to submit a response, it is not clear whether Respondent similarly intends to offer sexually-explicit links from the ritarudner.com website. It appears that the Respondent registered these domain names with the intent of attracting Internet users to the sites by causing confusion as to their source so that it could profit when those Internet users click through to its links to sexually explicit web sites. Such conduct constitutes evidence of bad-faith under Pargraph 4(b)(iv) of the Policy.

 

6. Decision

For all of the foregoing reasons, the Panel finds that the domain name ritarudner.com is confusingly similar to Complainantís common law trademark Rita Rudner; that Respondent Internetco Corp. has no rights or legitimate interest in respect of the domain name, and that the Respondent registered and is using the domain name in bad faith. Accordingly, the Panel orders that the registration of the domain name ritarudner.com be transferred to the Complainant.

 


 

David H. Bernstein
Presiding Panelist

Dated: August 3, 2000