WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Warren Faidley v. Venture Services, Inc.

Case No. D2001-1143

 

1. The Parties

The Complainant is Warren Faidley, an individual located in Tucson, Arizona .

The Respondent is Venture Services, Inc., with addresses in Georgia USA; and Arizona 85268, USA.

 

2. The Domain Name and Registrar

This dispute concerns the following domain name ("Disputed Domain Name"), <warrenfaidley.com>.

The Registrar with which this domain name is registered is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.

 

3. Procedural History

On September 19, 2001, and September 21, 2001, respectively, the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") received a Complaint by e-mail and in hard copy for a decision in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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").

On September 19, 2001, the WIPO Center acknowledged receipt of the said Complaint. On September 24, 2001, the WIPO Center sent a Request for Registrar Verification to the Registrar. On September 25, 2001, the Registrar, Network Solutions, Inc., confirmed to the WIPO Center that it was the Registrar of the Disputed Domain Name and also that the current registrant of the said Domain Name was the Respondent.

On October 1, 2001, having found that the Complaint had satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the "Notification") by post/courier, and e-mail to the Respondent and transmitted electronically copies of said documents to the Complainant, ICANN, and the Registrar. The said Notification particularized the formal date of the commencement of this administrative proceeding as October 1, 2001, and required the Respondent to submit a Response to the Complaint within 20 calendar days from the date of receipt of the Notification, failing which the Respondent would be considered to be in default.

The Respondent failed to file the Response with the WIPO Center by the last date, i.e. October 21, 2001. On October 23, 2001, the WIPO Center sent the Notification of Respondent Default to the Respondent by e-mail and by courier and copied the Complainant via e-mail. The Complainant elected to have the dispute decided by a single-member panel (the "Panel"). On October 31, 2001, the WIPO Center appointed Mr. Terrell C. Birch to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him. The same day, the WIPO Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent and copied it to the Panel by e-mail. On the same day, the WIPO Center sent a Transmission of Case File to the Panel.

The Panel finds that the WIPO Center has discharged its obligations and responsibility under the Rules. The Panel will hereby issue its Decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules, without the benefit of any Response from the Respondent.

 

4. Factual Background

A. The Warren Faidley Name

This Complaint is based on the following grounds:

The name of the Complainant is WARREN FAIDLEY. Complainant is a world famous weather photojournalist whose photos and commentary have appeared in publications such as National Geographic, Life, Time, The New York Times, Newsweek, LA Times, Popular Science, Maxim, The Arizona Republic, Arizona Daily Star, Weatherwise, Readers Digest, and USA Today. His popularity as a photojournalist has led to numerous television appearances on programs such as National Geographic Explorer, The Maury Povich Show, The Late Show with Tom Snyder, Real TV, NOVA, and Front Runners, and various news and feature programming on CBS, NBC, ABC, Fox, MSNBC, CNBC, The BBC, PBS, The Discovery Channel, The History Channel and The Weather Channel. Complainant also has served frequently as a severe weather consultant for the cable television news networks CNN and MSNBC. His weather footage has appeared on MTV, in NFL and NBA broadcasts, in the movie Jurassic Park, in the television show Buffy the Vampire Slayer, and in a variety of television commercials. Complainant was the initial consultant for the blockbuster movie Twister. In the summer of 2001, he served as a guest on Fox News Channelís The OíReilly Factor and the nationally-televised, syndicated game show To Tell The Truth.

In 1996, Complainant authored a best-selling autobiography entitled Storm Chaser, In Pursuit Of Untamed Skies, which sat on several best seller lists, including that of <amazon.com>. Complainant has also provided photographs for two books: Lightning, published in 1992, and the childrenís book Eye of the Storm, published in 1997. In addition, Complainant has published yearly since 1997, a calendar entitled Storms featuring violent weather pictures.

Complainant has produced eight video productions on severe weather, beginning in 1991, with the short movie Thunderstorm In 1996, The Weather Channel produced the short movie Storm Chaser Warren Faidley: In Pursuit of Untamed Skies, which features fifty-five minutes of Complainant's award-winning photography and firsthand accounts of his life and profession as a Storm Chaser.

Complainant has worked as a photojournalist for The Tucson Citizen and as a freelance photojournalist for clients including the Associated Press, United Press International, Sports Illustrated magazine, USA Today, and The Arizona Republic newspaper. His awards include the William Randolph Hearst Foundation Journalism Award in 1989, a Special Service Award from the United States Department of Commerce and the National Weather Service, The Washington Edpress Award and a number of Associated Press and UPI awards. His personal website, located at "http://www.stormchaser.com", summarizes his accomplishments, and has received over 7,500,000 hits since August 9, 1995.

Complainant is the CEO and owner of the Weatherstock News and Photo Agency, a company that markets the worldís most extensive file of weather images and film. He is a Corporate Member of the American Meteorology Society and a member of the Picture Agency Counsel of America, the National Press Photographers Association and the Society of Professional Journalists.

A search of the NEXIS database reveals that since 1987, one-hundred and eleven articles or other published materials have mentioned Complainant. The articles have appeared in some of the most widely-circulated periodicals in the world, such as Time, Chicago Tribune, Newsday, Fortune, The Los Angeles Times, Entrepreneuer, The Dallas Morning News, Popular Science, Life, The New York Times, and The Chicago Sun-Times. Many such articles have featured Complainantís photography and storm chasing accomplishments.

In 1989, Life magazine published one of Complainant's photographs and referred to him as a "Storm Chaser." Over the years since then, because of Complainantís work and the public recognition surrounding it, Complainantís name has become associated around the world with severe weather photos and commentary. Thus, Complainant has common law trademark rights in the mark WARREN FAIDLEY. A number of prior UDRP decisions have shown that the Policy recognizes the common law rights of famous persons in their names. Live and deceased entertainers have succeeded under the Policy. See Julia Fiona Roberts v. Mark Hogarth, D2000-0210 (WIPO) May 29, 2000, (holding that the registration of Complainantís name as a registered service mark or trademark was not necessary and that the name had significant secondary association with Complainant to create common law trademark rights); Experience Hendrix, LLC v. Denny Hamerton and the Jimmy Hendrix Fan Club, D2000-0364 (WIPO) August 2, 2000, (finding the estate of deceased singer and performer Jimmy Hendrix had common law rights in the deceased performerís name). Numerous authors have also sought and received protection under the Policy. See Margaret Drabble v. Old Barn Studios Limited, D2001-0209 (WIPO) March 26, 2001, (finding common law rights in the mark MARGARET DRABBLE, based on evidence that the Complainant had achieved international recognition for several works published under the mark); Jeanette Winterson v. Mark Hogarth, D2000-0235 (WIPO) May 22, 2000, (finding that Complainant acquired common law trademark rights to her name sufficient to meet the requirements of paragraph 4a(i) of the Policy where Complainant had published nine books and two screenplays since 1985). Professional athletes have also sought and received protection under the Policy. See Jules I. Kendall v. Donald Mayer Re <skipkendall.com>, D2000-0868 (WIPO) October 26, 2000, (finding common law rights in the mark SKIP KENDALL, based on evidence that the Complainant is a professional golfer who has attracted endorsements and has achieved moderate success on tour); Pierre van Hoojidonk v. S.B. Tait, D2000-1068 (WIPO) November 4, 2000, (finding common law rights based upon Complainant's reputation as a professional football player). Other individuals who have received protection of their common law trademark rights under the policy include a horse trainer (see Monty and Pat Roberts, Inc. v. Bill Keith, D2000-0299 (WIPO) June 9, 2000, (finding common law rights in Complainant's name in the limited field of horse training based upon Complainant's two major equestrian championships, providing horse training services worldwide, authorship of two books, appearance in a videotape, and appearances in major magazines such as Time)); an investment banker (see Steven Rattner v. BuyThis DomainName (John Papin), D2000-0402 (WIPO) July 3, 2000, (finding common law rights in Complainant's name based upon Complainant's activities as an investment banker/financial advisor and as a fundraiser for politicians)); and a real estate agent (see Marty Rodriguez Real Estate, Inc., v. Lancaster Industries, D2000-1468 (WIPO) December 24, 2000, (finding common law rights in Complainant's name based on having generated over $700 million in real estate sales over her career as a real estate agent)).

Respondentís domain name <warrenfaidley.com> is identical and confusingly similar to Complainantís mark WARREN FAIDLEY.

Respondent has no rights or legitimate interest in respect of this domain name. See Quixtar Investments, Inc. v. Smithberger, D2000-0138 (WIPO) April 19, 2000, (only arguable basis for claim that domain name owner has legitimate interests would be if he could show he has prior rights in the name, or was affiliated with an entity he has registered). Respondent does not possess priority rights in the name, is not affiliated with Complainant, is not otherwise authorized to use Complainantís mark, and has never been known as "Warren Faidley."

Respondentís domain name has been registered in bad faith. Respondent registered the domain name in an effort to harass and interfere with Complainant's celebrity status and goodwill. Respondent also registered the domain name in apparent retaliation for Complainant's registration of STORM CHASER as a service mark with the United States Patent and Trademark Office.

When Respondent registered the domain name <warrenfaidley.com> he knew of the existence of the WARREN FAIDLEY mark. On February 22, 2000, Respondent stated in an e-mail correspondence to Complainant that "Iíve always been a fan, and even own your book." Respondent's awareness of Complainant's mark is another indicia of Respondent's bad faith. See Document Technology v. International Electronic Communication, Inc., D2000-0270 (WIPO) June 6, 2000, (Respondentís knowledge of Complainantís mark at the time of registration of the domain name suggests bad faith).

On or about February 7, 2000, Respondent posted the following e-mail message to a news group: "with regard to who coined Ďstorm chaser." Well (sic) boys and girls how's thisÖ. as of this Monday afternoon, I will have personally trademarked "Warren Faidley". Hereafter, let it be known that you (or he) will be infringing upon my trademarked ownership of his name for any existing and/or future use of his name with regards to any proprietary gains or profits. My research has oncovered (sic) that in fact his mom first officially used his name in the context of conversation some years ago, however I have now decided to acquire legal claim! If you think that'll tick him off, wait til he finds out that I've registered <warrenfaidley.com> with Network Solutions. If he wants it, he's more than welcome to buy it from me. Now, the question is, what shall we put on "www.warrenfaidley.com"? Convectively, Nick"

Respondent registered the domain name <warrenfaidley.com> on or about February 7, 2000.

On February 7, 2000, Respondent posted the following email posting on a news group site: "Hi all, I expect <warrenfaidley.com> to be active within the next 24 hours. Let's see if Warren wants to screw with someone who actually has an attorney on staff. Of course, I'm a reasonable guy. I'm willing to sell Warren the domain name, (though not necessarily at *my* cost), with the express condition that he stop all this "Storm Chaser" nonsense. Warren should act quickly though. My next move is to file the domain with several search engine listing services, so when people search for "warren faidley", they'll come up with my site. What will they see there? Don't know yet. But you can bet that whatever it is, it will make Warren nervous as hell. Stay tuned, Storm Chaser Nick."

Beginning on or about February 22, 2000, Respondent and Complainant exchanged a series of email messages regarding the transfer of the domain name at issue. On February 22, Respondent stated that "I set up the domain warrenfaidley.com really as a joke. . ." and offered to sell the domain name to Complainant for $119 plus the cost of a domain forwarding service.

Complainant agreed to this proposal. Respondent agreed that, while the domain name was being transferred, he would link the domain name at issue to Complainantís website located at <weatherstock.com>.

February 28, Complainant e-mailed Respondent to check on the status of the transfer. Respondent replied that "It should be taken care of by tomorrow morning."

On March 10, Complainant sent an e-mail to Respondent informing him that he had not yet sent in the necessary transfer documents. Complainant received no Response to this e-mail.

In April 2000, Complainant again e-mailed Respondent to see if he had executed the transfer documents. Respondent responded on April 25, 2000, that he would transfer the name the next day.

Despite these repeated promises, however, Respondent has failed to transfer ownership of the disputed domain name to Complainant.

In June 2000, counsel for Complainant telephoned Respondent and requested that the disputed domain name be transferred to the Complainant. The Respondent stated that he was willing to transfer the disputed domain name to the Complainant.

On June 14, 2000, counsel sent Respondent a Registrant Name Change Agreement, requesting that Respondent execute and deliver the Agreement to Complainant's counsel by June 20, 2000. Complainantís counsel received no Response to this correspondence.

 

5. Partiesí Contentions

A. Complainant

Essentially, the contentions of the Complainant are as follows:

The Disputed Domain Name wholly incorporates the Complainantís mark, WARREN FAIDLEY, and is confusingly similar to that mark;

the Respondent has no rights or legitimate interests in the Disputed Domain Name; and

the Respondent has registered and is using the Disputed Domain Name in bad faith.

B. Respondent

In view of the fact that the Respondent has not filed a Response, the Panel is in no position to make out its contentions.

 

6. Discussion and Findings

6.1 Effect of Respondent's Default

By Paragraph 5(b)(i) of the Rules, it is expected of a Respondent to: "[r]espond specifically to the statements and allegations contained in the Complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain nameÖ"

In the event of a default, under Paragraph (14)(b) of the Rules: "Öthe Panel shall draw such inferences therefrom as it considers appropriate."

As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddyís Antiques, WIPO Case No. D2000-0004 (February 16, 2000):

"Respondentís failure to present any such evidence or to deny Complainantís allegations allows an inference that the evidence would not have been favorable to Respondent."

In the instant administrative proceeding, the Respondentís default entitles the Panel to conclude that Respondent has no evidence to rebut the assertions of the Complainant. It enables the Panel to proceed to make a finding in favor of the Complainant.

6.2 Elements to be proven

However, Paragraph 4(a) of the Policy envisages that for the Complaint to succeed, the Complainant must establish that:

i) the Respondentís Domain Name(s) is(are) identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

ii) the Respondent has no rights or legitimate interests in respect of the Domain Name(s); and

iii) the Respondentís Domain Name(s) has(have) been registered and is(are) being used in bad faith.

The Panel in Cortefiel, S.A. v. Miguel Garcia Quintas, WIPO Case No. D2000-0140 (April 24, 2000), notes that under the Policy, even if the Respondent is in default,

"Öthe Complainant must prove that each of these three elements are present."

6.3 Identical or Confusingly Similar

The Complainant claims and has established first use and ownership of the WARREN FAIDLEY mark. Ownership of this mark is clearly documented in the Complainant. Under the Policy, all that is required of the Complainant is to establish its rights in the mark, and the extent of the geographical area in which the rights accrue does not matter. The Panel has compared the Disputed Domain Name with the Complainantís mark and finds that the second level domain thereof is dominated by the Complainantís mark. The Panel finds that there is such similarity in sound, appearance, and connotation between the mark and the said Disputed Domain Name as to render said Disputed Domain Name confusingly similar to the Complainantís mark.

6.4 Respondent's Rights or Legitimate Interests in the Disputed Domain Name

Under Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the said Disputed Domain Name by showing:

i) its use of, or demonstrable preparations to use, the said Disputed Domain Name or a name corresponding to the said Disputed Domain Name in connection with a bona fide offering of goods or services before any notice to him of the dispute; or

ii) it (as individuals, a business, or other organization) has been commonly known by the said Disputed Domain Name, even if it has acquired no trademark or service mark rights; or

iii) it is making a legitimate noncommercial or fair use of the said Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence presented by the Respondent in demonstrating any of the foregoing factors because the Respondent is in default and has failed to respond in this action. Accordingly, the evidence available contains nothing that may justify a legitimate noncommercial or fair use of the said Disputed Domain Name by the Respondent. Neither is there any evidence for any of the other two foregoing requirements.

Furthermore, in the absence of any license or permission from the Complainant to use its mark or to apply for or use any domain name incorporating that mark, it is clear that no actual or contemplated bona fide or legitimate use of the contested domain name could be claimed by the Respondent. Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 (March 21, 2000).

6.5 Registration and Use in Bad Faith

As stated by the Panel in World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 (January 14, 2000), in order for the Complainant to succeed:

"... the name must not only be registered in bad faith, but it must also be used in bad faith."

The Complainant must prove that the Respondent registered and also used the said Domain Name in bad faith in order to establish Ďbad faithí on the part of the Respondent.

The Respondentís bad faith in registering and using the Disputed Domain Name is evident in a number of ways.

Respondentís activities in connection with the Disputed Domain Name, which is confusingly similar to and wholly incorporates Complaintís famous mark, such as openly and notoriously identifying its and its Presidentís, Nick Nicholson, spiteful intentions vis-ŗ-vis the Complainant and its mark, clearly manifest bad faith as identified in at least Paragraph 4(b) (iii) of the Policy. Furthermore, the Panel considers this to be a deliberate and calculated act and as such, constitutes bad faith, per se.

For the above reasons, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith by the Respondent in violation of Paragraph 4(a) of the Policy.

 

7. Decision

For all the foregoing reasons and pursuant to the ICANN Rules, Paragraph 15, the Panel finds that the Complainant has proved each of the three elements of Paragraph 4(a) of the Policy. The Panel requires that the Disputed Domain Name <warrenfaidley.com> be transferred to the Complainant pursuant to Paragraph 4(i) of the Policy.

 


 

Terrell C. Birch
Sole Panelist

Dated: December 11, 2001