WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

ELMORE "RIP" TORN, Jr., p/k/a RIP TORN v RIPTORN.COM

Case No. D2001-0850

 

1. The Parties

The Complainant in this administrative proceeding is Elmore "Rip" Torn, Jr., professionally known as Rip Torn, a citizen of the United States who maintains a residence in Los Angeles County, and who can be reached c/o Greenberg Glusker Fields Claman Machtinger & Kinsella LLP, 1900 Avenue of the Stars, Suite 2100, Los Angeles, California, USA.

The Respondent in this administrative proceeding is riptorn.com whose address is Nathan Freedman, 2220 Golden Briar Trail, Oakville, Canada.

 

2. The Domain Name and Registrar

This dispute concerns the domain name <riptorn.com> hereinafter the "Domain Name".

The Registrar with which the Domain Name is registered is:

Tucows, Inc. (Domain Direct)
96 Mowat Avenue
Toronto, ON M6K 3M1
Canada

The Domain Name was registered on March 20, 2000.

 

3. Procedural History

A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which are implemented by ICANN on October 24, 1999, was received by the Center in electronic format on July 3, 2001, and in hardcopy on July 6, 2001. Payment in the required amount to the Center has been made by the Complainant.

On July 6, 2001, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the complaint from the Complainant, that the Domain Name was currently registered with it and that the policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name.

On July 6, 2001, communication was received from the Respondent. Further correspondence on July 14, 2001, was returned.

On July 9 2001, the Complainant filed an amended complaint.

On July 16, 2001, the administrative proceeding began.

On August 10, 2001, notification of the Respondent's default was received.

On, September 7, 2001, notification of appointment of three administrative Panelists and projected decision date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Respondent's request, the appointment notification informed the parties that the administrative Panel would comprise of three Panelists.

A request for an extension of time was made and a new date of October 5, 2001, was advised.

On October 1, 2001, a decision was submitted to the Center.

 

4. Factual Background

The Complainant is a well-known film and television actor who has continuously and exclusively performed under the name "Rip Torn" since the 1950's. A complete list of the Complainantís motion picture and television appearances, found on The Internet Movie Database (IMDb), has been cited. The Complainant has achieved a number of awards and has also received two American Comedy Awards nominations for Funniest Supporting Male Performer in a TV series and an American Comedy Award for his work on "Larry Sanders Show." He has also received two Golden Satellite Award nominations, including Best Performance by an Actor in a Supporting Role in a Motion Picture - Comedy or Musical for his role in "Men in Black" and Best Performance by an Actor in a Television Series - Musical or Comedy for his role on "The Larry Sanders Show."

The Respondent is a Canadian citizen. On or about March 20, 2000, Mr. Freedman registered the domain name <riptorn.com> with Tucows, Inc. He does not operate an active web site utilizing the Domain Name. Any attempt to access a web site corresponding to the Domain Name results in the display of a page that states "This website is currently Under Construction."

 

5. Partiesí Contentions

A. Complainant

The Complainant asserts that he has become known, and the use of his name "Rip Torn" in connection with entertainment services provides a strong indication of source. It is said that over the course of Complainantís long and distinguished career, the public has come to recognize and associate the name "Rip Torn" as a symbol that identifies and distinguishes the acting services provided exclusively by Complainant. As a result of the Complainantís long and continuous use of the name "Rip Torn," his widespread recognition, and the extensive advertising and promotion of his services, "Rip Torn" has acquired distinctiveness and secondary meaning as a common law trademark and service mark.

It is submitted that it is not required that the name "Rip Torn" be federally registered as a trademark or service mark. See Julia Roberts v. Russell Boyd, No. D2000-0210 (WIPO May 29, 2000) finding that federal trademark registration was not required under the Policy and that the name "Julia Roberts" has sufficient secondary association with the complainant that common law trademark rights exist); Nicole Kidman v. John Zuccarini, No. D2000-1415 (WIPO Jan. 23, 2001) (finding that actress Nicole Kidman had established common law trademark rights in her name because by virtue of her successful films, she has become renown, and the use of her name in connection with entertainment services provides a strong indication of source.); Daniel C. Marino, Jr. v. Video Images Productions, No. D2000-0598 (WIPO Aug. 2, 2000) (finding that professional football player Dan Marino had established common law trademark rights in his name).

The Complainant claims that the words "Rip Torn" are arbitrary, particularly in regard to the juxtaposition of the words "Rip" and "Torn," and sufficiently unique, such that it is highly unlikely that the Respondent would have coined such a domain name without already knowing about the Complainant.

The Complainant says that it has not authorized the Respondent to use the "Rip Torn" name and mark nor to include the mark in any domain name. During December 2000, the Complainantís representatives sent several communications to the Respondent requesting that he cease using the Domain Name by transferring the Domain Name to the Complainant. It is understood that the Respondent never replied to these communications.

The Complainant submits that the Respondentís failure to develop a web site corresponding to the Domain Name in well over a year since registering the Domain Name is further evidence that the Domain Name was registered without a bona fide intent to make a good faith use of that Domain Name. It is also noted that the Respondent has not developed an active website corresponding to the Domain Name even though the Complainant first contacted the Respondent over six months ago to request a transfer of the Domain Name. It is contented that the Respondentís failure to respond to the Complainantís communications requesting a transfer of the Domain Name is strong evidence that the Domain Name has been registered and is being used in bad faith.

B. Respondent

No response was received from the Respondent.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

- The Domain Name is identical or confusingly similar to the trade mark; and

- The Respondent has no right or legitimate interest in respect of the Domain Name; and

- The Domain Name has been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.

Domain Name Identical to or Confusingly Similar

It is now well established that well-known entertainers and personalities are able to prevent the unauthorized registration of domain names in appropriate cases. Refer: Nicole Kidman v. John Zuccarini, No. D2000-1415 (WIPO Jan. 23, 2001) as cited above. That is, because of her renown, and the use of her name in connection with entertainment services, which provided a strong indication of source. The same principles apply here.

The Complainant asserts he has become known by the name "Rip Torn" in connection with entertainment services and that over the course of his career, the public has come to recognize and associate the name as a symbol that identifies and distinguishes his particular acting services.

It appears from the complaint and evidence, that the name "Rip Torn" is recognized in the USA and internationally in connection with entertainment services, such acting services being provided exclusively by the Complainant. It is asserted and not disputed that this is so.

The Complainant claims that the words "Rip Torn" are arbitrary, particularly in regard to the juxtaposition of the words "Rip" and "Torn," and sufficiently unique. The contention has merit. On the facts before us it would be reasonable to assume that a person, entity or organisation styled "Rip Torn" was somehow connected or associated with or approved by the Complainant.

Accordingly it is found that the Domain Name is identical or confusingly similar to the name/mark "Rip Torn" and that the Complainant makes out its case on this ground.

No Right or Legitimate Interest

Given that the words "Rip Torn" appear to be arbitrary we accept the submission that it is highly unlikely that the Respondent would have coined such a domain name without already knowing about the Complainant. We do so on the basis of reasonable inference and in the absence of any argument or evidence to contradict it.

Accordingly, it is found that the Respondent has no right or legitimate interest in respect of the Domain Name.

Domain Name Registered and Being Used in Bad Faith

It is argued by the Complainant that the Respondentís failure to develop a web site corresponding to the <riptorn.com> domain name and failing to respond to the Complainantís communications requesting a transfer of the Domain Name is evidence that the Domain Name has been registered and is being used in bad faith.

It is now clearly established now that actual use is not necessary and mere holding of a domain name may be sufficient to constitute bad faith. While neither of the above points made by the Complainant are necessarily defintive, in the context of this case and in the absence of any explanation from the Respondent we are inclinde to accept the essence of the Complainantís contention.

Again the Complainant makes out its case on this ground.

Accordingly, the Complainant has successfully made out all three of the above grounds and is entitled to appropriate relief.

 

7. Decision

The Domain Name should be transferred to the Complainant.

 


 

Clive L. Elliott
Presiding Panelist

Cecil Branson QC
Panelist

Richard W. Page
Panelist

Dated: October 9, 2001