WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Hebrew University of Jerusalem v. Alberta Hot Rods

Case No. D2002-0616

 

1. The Parties

Complainant is The Hebrew University of Jerusalem, Givat Ram, Jerusalem, Israel, represented by Robert Alpert, Esq., Ladas & Parry of New York City, United States of America.

Respondent is Alberta Hot Rods High Prairie, Alberta, Canada, represented by Ari Goldberger, Esq. of ESQwire.com Law Firm of Cherry Hill, New Jersey, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is <alberteinstein.com> and the registrar is CORE Internet Council of Registrars of Geneva, Switzerland.

 

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") of the WIPO Arbitration and Mediation Center (the "Center").

The Complaint was received by the Center by email on July 4, 2002, and in hardcopy on July 5, 2002. The Complaint was acknowledged on July 5, 2002. On July 5, 2002, registration details were sought from the Registrar. On July 9, 2002, the Registrar confirmed that the disputed domain name is registered with it in the name of the Respondent; the record was created on September 17, 1996; the Policy applies to the disputed domain name and the language of the Registration Agreement is English.

On July 11, 2002, the Center formally dispatched a copy of the Complaint to the Respondent by post/courier (with enclosures) and by email (without attachments) together with a letter to notify the Respondent of the commencement of this administrative proceeding. The Center sent copies to the Complainant, the Registrar and ICANN.

In conformity with Rule 5(a), the last day specified by the Center for a Response was July 31, 2002. A Response was received by email at 12.04am on August 1, 2002, and in hard copy on August 5, 2002. Its receipt was acknowledged on August 1, 2002. The Center treated the Response as having been sent on the due date of July 31, 2002.

On September 2, 2002, the Center notified the parties of the appointment of Michael Ophir, M. Scott Donahey and Alan L. Limbury to serve as panelists, each of them having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On that day, the Center transmitted the case file to the Panel and notified the parties of the projected decision date of September 16, 2002. Due to exceptional circumstances, the Panel extended until October 8, 2002, the time for its decision to be delivered to the Center.

On September 5, 2002, Complainant made a supplemental submission to the Center, drawing attention to the recent decision in Kevin Spacey v. Alberta Hot Rods, NAF Claim Number: FA0205000114437 (August 1, 2002). The Center informed Complainantís counsel that no express provision is made in the Rules for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. Accordingly, it would be in the sole discretion of the Panel to determine whether to admit and consider it in rendering its decision.

The Panel accepts that, so far as cases such as this are matters of public record, it is proper for either party to draw the Panel's attention to them at any stage before submission of the decision to the Center: Julie Brown v. Julie Brown Club, WIPO Case No. D2000-1628.

The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules and complied with formal requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; a Response was submitted within the time prescribed by the Rules and the administrative panel was properly constituted. The language of the proceeding is English.

 

4. Factual Background

The late, famous scientist and Nobel Laureate Dr. Albert Einstein, whose theories of relativity and quantum revolutionized virtually every branch of physics, died on April 18, 1955. Dr. Einstein was one of the founders of Complainant, serving on its Board of Governors and Academic Council, delivering Complainantís inaugural scientific lecture and editing its first collection of scientific papers.

By his last will and testament, (after certain specific legacies and bequests):

"all of my manuscripts, copyrights, publication rights, royalties and royalty agreements, and all other literary property and rights, of any and every kind or nature whatsoever", were to be held in trust for the lives of his secretary and his step-daughter and thereafter "all funds or property, if any, still held in this trust", including "all literary rights or property" were to pass to Complainant (then known as Hebrew University) "and become its property absolutely, to be thereafter retained or disposed of by it as it may deem to be in its best interests".

The residuary estate was left to Dr. Einsteinís step-daughter.

Complainant claims these testamentary provisions bequeathed to Complainant the rights of publicity, common law trademark and service mark rights and registration rights (including the right to grant licences) covering the mark and name ALBERT EINSTEIN, including the mark EINSTEIN and EINSTEIN-formative marks and also including associated indicia, such as the likeness, voice, signature, illustrations, photographs and copyrights of Albert Einstein and the formula E=mc2.

Complainant claims to be the registered proprietor of U.S. trademark 1,479,104 EINSTEIN in International Class 42, registered on March 1, 1988. According to a schedule provided by Complainant (without Registration Certificates), Complainant registered the trademark ALBERT EINSTEIN in France on July 31, 1995, the mark EINSTEIN in Australia on November 4, 1994, and the mark EINSTEIN VERLAG in Germany on May 18, 1995.

Complainant has appointed as its authorized, exclusive agent the Roger Richman Agency ("the Richman Agency") to administer a licensing program and to police the unauthorized use of the ALBERT EINSTEIN mark. The Richman agency has licensed, among others, the Pepsi-Cola Company, Apple Computer, Inc., At-a-Glance and Microsoft to use the ALBERT EINSTEIN name and mark and associated indicia, in some cases in connection with various merchandise, including educational materials and CD-ROMs.

Complainant maintains a website at <www.albert-einstein.org>, providing information about Dr. Einstein and Complainant. The Richman Agency, on behalf of Complainant, maintains a website at <www.albert-einstein.net>, providing information about its services in connection with the ALBERT EINSTEIN name.

The disputed domain name <alberteinstein.com> was registered in the name of Respondent on September 17, 1996. This name directs Internauts automatically to Respondentís <celebrity1000.com> website, a portal site that contains links to sites about celebrities and entertainment news, as well as sites, such as <amazon.com>, where Internauts can purchase merchandise.

In addition to the marks registered by Complainant before the disputed domain name was registered, Complainant has subsequently registered and applied to register other marks incorporating the name EINSTEIN in various countries, including the registration of the mark ALBERT EINSTEIN in the European Community in April 2000.

Complainant learned in or about January 2002, that Respondent had registered the disputed domain name.

 

5. Partiesí Contentions

A. Complainant

Rights in a mark

The ALBERT EINSTEIN mark and name have achieved worldwide fame and the public relies upon the ALBERT EINSTEIN name and mark to indicate an association with Albert Einstein. Complainant has been using in U.S. commerce the ALBERT EINSTEIN name and mark since approximately 1985 and has common law rights in that mark. The Policy protects common law trademark rights in the hands of a deceased estate: CMG Worldwide, Inc. v. Steve Gregory, NAF Case No. FA0009000095645 (estate of Diana, Princess of Wales) and Estate of Tupac Shakur v. Shakur Info Page, eResolution Case No. AF-0346.

Identity

Since the disputed domain name wholly incorporates Complainantís ALBERT EINSTEIN mark and name, it is thus identical to them.

Illegitimacy

Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not affiliated with Complainant; is not licensed or otherwise authorized by Complainant to use its name and mark; does not own any United States or Canadian trademark registrations or applications for ALBERT EINSTEIN or any ALBERT EINSTEIN or EINSTEIN formative mark and does not use the disputed domain name in connection with the offering of any legitimate goods or services. Respondent is associated with one Jeffrey Burgar. Both have a reputation for cybersquatting.

Previous ICANN Panels have specifically found that the <celebrity1000.com> website fails to offer legitimate goods or services: Stephanie Seymour v. Jeff Burgar d/b/a Stephanie Seymour Club, NAF Case No. FA0104000097112 and Michael Andretti v. Alberta Hot Rods, NAF Case No. FA0108000099084.

Bad faith

Respondent registered and is using the disputed domain name in bad faith. It was registered to prevent Complainant from reflecting its ALBERT EINSTEIN mark and name in the corresponding .COM domain name, as was held against the same Respondent in Celine Dion and Sony Music Entertainment (Canada) Inc. v. Jeff Burgar operating or carrying on business as Celine Dion Club, WIPO Case No. D2000-1838.

Respondentís pattern of cybersquatting is clear and Mr. Burgar has been referred to as a "notorious cybersquatter". Numerous ICANN panels have found that Respondent and Mr. Burgar have acted in bad faith in registering and using "celebrity domain names" that act as a direct link to the <celebrity1000.com> website, as does the disputed domain name: see Michael Andretti v. Alberta Hot Rods, NAF Case No. FA0108000099084; Julie Brown v. Julie Brown Club, WIPO Case No. D2000-1628; Stephanie Seymour v. Jeff Burgar d/b/a Stephanie Seymour Club,NAF Case No. FA0104000097112 and Celine Dion and Sony Music Entertainment (Canada) Inc. v. Jeff Burgar operating or carrying on business as Celine Dion Club, WIPO Case No. D2000-1838; cf. Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, WIPO Case No. D2000-1532, refusing transfer, a decision criticized in Celine Dion, Julie Brown and Judy Larson v. Judy Larson Club, NAF Case No. FA0101000096488. The First Circuit Court of Appeals has recognised Mr. Burgar as "a self-described ĎInternet entrepreneurí, [who] has, since the mid-1990ís registered thousands of Ďcatchyí domain names Ė i.e.. Internet addresses appropriating, in identical or slightly modified form, the names of popular people or organizations": Northern Light Tech. v. Northern Lights Club, 236 F. 3d 57, 59 (1st Cir. 2001).

In sum, Respondentís registration and use of the disputed domain name as a direct link to the unrelated <celebrity1000.com> website does not constitute legitimate business activity.

Respondentís use is likely to cause confusion. Internauts will likely believe the disputed domain name is affiliated with Albert Einstein. Given the fame of Albert Einstein, Complainantís use of its ALBERT EINSTEIN name and mark and Respondentís lack of association with Complainant, Respondentís registration and use of the disputed domain name represents "opportunistic bad faith" (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0026); places Complainantís mark and name and associated goodwill and reputation at Respondentís mercy (Panavision Intíl, L.P. v. Toeppen, 141 F. 3d 1316, 1327 (9th Cir. 1998) and discourages Internauts from locating Complainantís true websites, thereby diluting the value of its ALBERT EINSTEIN mark: Porsche Cars North Am., v. Porsch.Com, 51 F. Supp. 2d at 710 (E.D. Va. 1999); Intermatic, Inc. v. Toeppen, 947 F. Supp. 1227, 1240 (N.D. Ill. 1996).

Remedy

Complainant seeks transfer to it of the disputed domain name.

B. Respondent

Rights

Complainant has no enforceable rights in a trademark that is identical or confusingly similar to the disputed domain name. Dr. Einstein did not bequeath the rights to his name or alleged trademark to any party.

Legitimacy

The title owner of the disputed domain name is 641271 Alberta d/b/a Albert Einstein Club. The domain name is registered to Alberta Hot Rods through a clerical error which Mr. Jeff Burgar, the principal of 641271 Alberta, is trying to have rectified.

Prior to the initiation of this dispute, Respondent developed and operated an information section about Albert Einstein as part of Respondentís Celebrity 1000 fan website network, which contains fan sites about hundreds of actors, actresses, athletes, comedians, directors, musicians and other famous persons. A prominent disclaimer appears on the site, which states: "Information on this site is for information purposes only. Nothing on this site is to be construed as an endorsement by any celebrity or personality, unless explicitly identified, for this site or for any information here".

Bad faith

Respondent did not register and has not used the disputed domain name in bad faith. Dr. Einstein has been dead for almost 50 years. Unlike the case of a living celebrity, it cannot be argued that Respondent registered the disputed domain name to sell it to Dr. Einstein, his heirs or Complainant, to disrupt their business, prevent them from registering a mark in a domain name or confuse others. Nothing on the website creates the impression that it is endorsed by Dr. Einstein or Complainant. Respondent did not have knowledge of Complainantís purported trademark rights when it registered the disputed domain name. Substantial third party use of EINSTEIN and ALBERT EINSTEIN is evidence that Complainant [scil. Respondent] is entitled to use the disputed domain name and that consumers do not expect to arrive at a particular source when they type in the scientistís name.

Delay

The claim is barred by laches for the failure of Complainant to raise it until more than five years had passed since the registration of the disputed domain name.

 

6. Discussion and Findings

Our substantive inquiry focuses on five issues:

(I) does Complainant have rights in a trademark or service mark;

(II) if so, is the disputed domain name identical or confusingly similar to that mark;

(III) does Respondent have a legitimate interest in the disputed domain name;

(IV) was the disputed domain name registered and is it being used in bad faith; and

(V) if Complainant has discharged its burden of proof in relation to issues (I) Ė (IV), does the doctrine of laches apply so as to deny Complainant the relief to which it would otherwise be entitled?

(I) Rights in a trademark

Personal names as such

In light of the Second WIPO Domain Name Process, it is clear that the Policy is not intended to apply to personal names that have not been used commercially and acquired secondary meaning as the source of goods and/or services, i.e. common law trademark rights: The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net and God.info, WIPO Case No. D2002-0184; Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540; Kathleen Kennedy Townsend v. B. G. Birt, WIPO Case No. D2002-0030; R.E.ĎTedí Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi, WIPO Case No. D2002-0251.

Common law trademark rights

To establish common law rights in a personal name, it is necessary to show use of that name as an indication of the source of goods or services supplied in trade or commerce and that, as a result of such use, the name has become distinctive of that source. Upon such proof, a celebrityís name can serve as a trademark when used to identify the celebrityís performance services: Kevin Spacey v. Alberta Hot Rods, NAF Case No. FA0205000114437.

(a) Common law rights said to be inherited from Dr. Einstein

There is no evidence before the Panel that Dr. Einstein used his name for commercial purposes during his lifetime nor that his name, famous though it was, became identified as a source of goods or services. Accordingly, Complainant fails to establish that Dr. Einstein had a common law trademark or service mark in his name.

Even if one were to assume, arguendo, that Dr. Einstein had a common law trademark or service mark in his name, the Panel is not satisfied that Dr. Einstein passed such rights to Complainant, which inherited

" manuscripts, copyrights, publication rights, royalties and royalty agreements, and all other literary property and rights, of any and every kind or nature whatsoever".

Trademark rights are not mentioned expressly nor is the goodwill arising out of the use of a common law mark, which one would expect to be bequeathed with it. Since trademark rights are neither a species of literary property nor of literary rights, it is important to determine the correct interpretation of this passage. The Panel is divided on this question.

Panelist Ophir interprets the passage as meaning:

"manuscripts, copyrights, publication rights, royalties and royalty agreements, and all other literary property and all other rights, of any and every kind or nature whatsoever".

On this view, the passage is apt to encompass, inter alia, the rights to register ALBERT EINSTEIN and EINSTEIN trademarks or service marks and to grant licences to others, from the date when the bequest to Complainant became absolute. Hence future registered trademarks are included by implication, as well as any trademarks Dr. Einstein might have registered and any common law trademarks he might have acquired during his lifetime.

The majority interprets the passage as meaning:

"manuscripts, copyrights, publication rights, royalties and royalty agreements, and all other literary property and all other literary rights, of any and every kind or nature whatsoever".

In the majority view, trademark rights did not form part of the trust property that eventually passed to Complainant. Hence, on this view, if trademark rights were part of the estate, they passed to the residuary legatee, Dr. Einsteinís step-daughter.

The majority finding that Complainant did not inherit any trademark rights under the late Dr. Einsteinís will does not preclude Complainant from otherwise establishing common law or registered rights to ALBERT EINSTEIN and EINSTEIN.

(b) Other common law rights claimed by Complainant

Complaint relies on a declaration of Roger Richman asserting common law rights in Complainant and that Complainant has used the name and mark ALBERT EINSTEIN in U.S. commerce since approximately 1985.

There is no evidence of any such use. Mere assertion is insufficient to discharge Complainantís burden of proof. Mr. Richman's organization, which was hired to exploit the rights granted by Dr. Einstein to Complainant, nowhere claims or even alludes to trademark rights. Exhibits B and C to Mr. Richmanís declaration refer to the licensing of Dr. Einstein's "likeness and persona" and make no reference to the licensing of trademark rights. Nor does Complainant produce any licences of such rights.

Complainant has failed to establish that it has common law rights in a trademark or service mark.

Registered rights

Except in the most unusual case, such as eGalaxy Multimedia Inc v. T1, NAF Case No. FA0111000101823, a Complainant cannot succeed under the Policy in reliance on trademark rights created after the registration of the disputed domain name. Trademark registration applications do not give rise to trade mark rights: see Aspen Grove, Inc. v. Aspen Grove, WIPO Case No. D2001-0798 and Spencer Douglass MGA v. Absolute Bonding Corporation, WIPO Case No. D2001-0904. Accordingly Complainantís applications and registrations made after September 17, 1996, afford it no assistance.

Complainant claims to be the registered proprietor of registered U.S. trademark 1,479,104 EINSTEIN in International Class 42, registered on March 1, 1988. A Certificate of Registration dated June 07, 2002, was put before the Panel by Complainant (Richman Declaration, Exhibit H). It says that the records of the United States Patent and Trademark Office show title to be in:

HEBREW UNIVERSITY OF JERUSALEM, THE

A CALIFORNIA CORPORATION

According to the Complaint, Complainant is an educational institution organized and existing under the laws of Israel. There is no explanation for this discrepancy.

The Certificate says that the attached U.S. trademark registration is "certified to be a true copy which is in full force and effect with notations of all statutory actions taken thereon as disclosed by the records of the United States patent and Trademark Office".

The attachment shows the mark to be a service mark in respect of "providing access to an on-line computer data base for use by high school students and teachers in class 42 (U.S. Cls. 100 and 101)". The registrant is shown as Addison-Wesley Publishing Company (California Corporation).

Respondent produced a TESS search dated July 30, 2002, (Response, Exhibit 7) showing that mark as having been registered in the name of a California company called Addison-Wesley Publishing Company, an assignment being recorded and the last listed owner as Telebase Systems, Inc. Corporation, Assignee.

Complainant does not claim the disputed domain name is identical or confusingly similar to the mark EINSTEIN and accordingly it is unnecessary for the Panel to decide whether Complainant is the registered proprietor of U.S. trademark 1,479,104.

According to a schedule provided by Complainant (without Registration Certificates), Complainant registered the trademark ALBERT EINSTEIN in France on July 31, 1995, the mark EINSTEIN in Australia on November 4, 1994, and the mark EINSTEIN VERLAG in Germany on May 18, 1995. In light of the Panelís findings on other issues, the Panel is prepared to assume that the schedule is sufficient evidence of these matters.

(II) Identity or Confusing Similarity

The Panel finds the disputed domain name is identical to Complainantís registered French trademark ALBERT EINSTEIN. Complainant has established this element of its case.

The disputed domain name is neither identical nor confusingly similar to the marks EINSTEIN and EINSTEIN VERLAG, nor did Complainant so assert.

(III) Legitimate Interest

Internet users who access the disputed domain name are automatically transported to Respondentís commercial website at <celebrity1000.com>. Respondent says this is a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue, and thus demonstrates legitimacy under paragraph 4(c)(iii) of the Policy. Respondent also says the commercial activity on the <celebrity1000.com> website constitutes a bona fide offering of goods or services, within paragraph 4(c)(i) of the Policy.

In the same circumstances, the Panelist in Stephanie Seymour v Jeff Burgar d/b/a Stephanie Seymour Club, NAF Case No. FA0104000097112 held that by virtue of serving only as a portal, the <celebrity1000.com> site associated with the disputed domain name "evidences no bona fide authorized offering of goods and services whatsoever and does nothing but misappropriate Complainantís trademark in order to lure Internet users to Respondentís commercial site". Likewise, the Panelist in Michael Andretti v. Alberta Hot Rods, NAF Case No. FA0108000099084 held that "Respondent's commercial website [celebrity1000.com] and its association with the disputed domain name does not offer any bona fide authorized goods or services" [emphasis added by this Panel].

Respondent argues it does not need any authorization from Complainant, citing Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, WIPO Case No. D2000-1532: "the absence of permission is notÖconclusive proof that the alleged infringer has no rights of his or her own".

In Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654, Respondentís redirection to an adult site logically related to the domain name at issue [tammy.com] was found to constitute a legitimate "use" under the Policy, even though redirection can also constitute bad faith "use." Reference was made to Bernstein v. Action Advertising, Inc., WIPO Case No. D2000-0706 (redirection of "lipservice.com" to adult website created legitimate interest) and Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (redirection to unrelated site was bad faith "use").

Here there is material relating to Albert Einstein at the site to which Internauts seeking the disputed domain name are redirected.

In Celine Dion and Sony Music Entertainment (Canada) Inc. v. Jeff Burgar operating or carrying on business as Celine Dion Club, WIPO Case No. D2000-1838, the Panelist said:

"The interpretation of this justification [i.e. paragraph 4(c)(iii) of the Policy] calls for careful attention, since it consists of a positive requirement and (from "without intent" onwards) an exclusionary statement. First, it requires that the Respondent prove legitimate non-commercial or fair use of the domain name; then it states that no such use could arise where, for commercial gain, consumers are misleadingly diverted or the mark is tarnished. It does not say that any use (let alone failure to use) is justified where the second exclusionary statement is not established. It is for the Panel to decide whether, in all the circumstances, the Respondent has sufficiently established a case of legitimate non-commercial or fair use of the domain name".

See also Julie Brown v. Julie Brown Club WIPO Case No. D2000-1628. In Celine Dion, Julie Brown and Kevin Spacey v. Alberta Hot Rods, NAF Case No. FA0205000114437, the domain name at issue initially directed the Internaut automatically to the <celebrity1000.com> website but, after notice of the dispute, was changed to a fan site. In Kevin Spacey, the Panel held this was an "apparent stratagem" which demonstrated that Respondent was not making fair use of the domain name. In all three cases Respondent failed to demonstrate fair use.

Here no attempt has been made to alter the use to which the disputed domain name is being put, after notice of the dispute.

In Bruce Springsteen (a case that has been much criticized) the crucial finding of the majority in relation to paragraph 4(c)(iii) of the Policy was that Internauts would not be misled by the domain name. This was based on the view that an Internet search using "Bruce Springsteen" would give rise to literally thousands of "hits" and it would be apparent that not all of those hits would be official or authorized sites. As the Minority Panelist pointed out, many Internauts, instead of conducting an Internet search, would create their own shortcut and try <brucespringsteen.com> expecting this to lead them to the official site.

Nevertheless, the Springsteen decision highlights the point that, if the use is not misleading and the other elements of the paragraph are established, legitimacy may be demonstrated.

The Panel agrees that it is necessary to determine in each case whether, in all the circumstances, a Complainant has demonstrated lack of rights or legitimacy within the Policy on the part of a Respondent. Previous cases involving the same Respondentís activities cannot be determinative. Although Respondent has been called a cybersquatter and has been found in breach of the Policy on previous occasions, we are obliged to consider the evidence and the circumstances of this particular case with an open mind.

The disputed domain name <alberteinstein.com> leads the Internaut automatically to Respondentís <celebrity1000.com> website, entitled "Celebrity 1000, Your Ultimate Entertainment Source" where, among other things, there is information about Dr. Einstein (Response, Annexure 2). Those other things include a variety of links to Celebrity Sites, Entertainment News, Online Polls, Merchandise, Affiliate Sites and a Featured Product. There is a link to amazon.com (Alpert Declaration, Exhibit C). Respondent contends the commercial activity at the <celebrity.com> site constitutes a bona fide offering of goods or services.

In determining whether Respondent has demonstrated legitimacy within either of paragraphs 4(c)(i) or (iii) of the Policy, the Panel needs to consider:

(a) Respondentís knowledge of Complainant or its mark;

(b) the content of the <celebrity1000.com> website;

(c) how Internauts arrive there; and

(d) the selection and use of the disputed domain name to direct Internauts there.

Knowledge

Mr. Burgar declares having had no knowledge that Complainant claimed any trademark right to ALBERT EINSTEIN or EINSTEIN when Respondent registered the disputed domain name. The Panel accepts this, for the reasons set out below.

Content

The <celebrity1000.com> website appears to offer links to genuine goods and services and there is no reason to conclude from that content that Respondent is not operating a bona fide commercial business.

How Internauts arrive

The Panel apprehends that Respondent has registered numerous domain names and linked them to the <celebrity1000.com> site as a means of generating maximum traffic to that site. This in itself, without more, is unobjectionable. It all depends on the domain names selected.

Selection and use

The crucial question, as identified by the majority in Springsteen, is whether Internauts are misleadingly diverted. To ascertain whether Internauts are misled, it is first necessary to establish what their reasonable expectations are.

There is a significant difference between the expectations of Internauts entering a domain name of a celebrity (alive or dead) who is (or was) famously associated in commerce with the supply of goods or services, on the one hand, and their expectations entering a domain name of a celebrity long since dead who was not so associated, on the other. The former expect to find a site offering goods or services associated with the celebrityís trademark. The latter cannot reasonably have such an expectation

Albert Einstein has been dead for 47 years. He was one of the most famous people of the 20th century. The name Albert Einstein is universally associated with him. That operates to the disadvantage of Complainant in this case. Internauts entering the disputed domain name would not expect to find a site offering goods or services with which Dr. Einstein was known to have been associated during his lifetime because, on the evidence, he was not known as having any such association. Nor would they expect to find a site associated with Complainant because Complainant has not established that it has any common law trademark rights.

Although Complainant has claimed (and the Panel has assumed) that Complainant has registered the trademark ALBERT EINSTEIN in France, Complainant has not shown that the registered mark is so well known in France (or elsewhere, for that matter) that the name Albert Einstein is so associated in the public mind with Complainant as owner of the trademark, that Internauts would expect the disputed domain name to lead to a site associated with Complainant, as distinct from a site associated with Dr. Einstein himself.

Because Dr. Einstein died long before the advent of the Internet and was not in his lifetime engaged in the supply of goods or services under his name, this Panel finds that what Internauts are seeking when they enter the disputed domain name is information about Dr.Einstein. That is precisely what Respondentís site <celebrity1000.com> contains. Accordingly, it was not misleading for Respondent to select and use the disputed domain name to lead to that site nor, for the above reasons, does the use of the disputed domain name for this purpose tarnish Complainantís trademark.

The Panel finds that, before notice to Respondent of this dispute, Respondent used the disputed domain name in connection with a bona fide offering of goods or services, within paragraph 4(c)(i) of the Policy, and that, within paragraph 4(c)(iii) of the Policy, Respondent is making legitimate fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish Complainantís French registered trademark ALBERT EINSTEIN.

Respondent has thus demonstrated its rights or legitimate interests in the disputed domain name and Complainant has failed to establish this element of its case.

(IV) Bad Faith Registration and Use

Complainant relies on paragraph 4(b)(ii) of the Policy, claiming Respondent registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, and that Respondent has engaged in a pattern of such conduct.

There is no doubt Respondent has previously been found by several Panels to have engaged in conduct of that kind, sufficient to constitute a pattern. However, there is no evidence Respondent had Complainant in mind when registering the disputed domain name and Mr. Burgar, on behalf of Respondent, has declared that it was unaware Complainant claimed trademark rights in the name ALBERT EINSTEIN. The Panel accepts this.

It is not sufficient, to establish bad faith under this paragraph, simply to show that the registration of a domain name necessarily prevents someone else from registering the exact same domain name. Although it is not necessary that a Respondent be shown to know the identity of the trademark owner, it must at least be shown that Respondent was aware that the domain name was identical or confusingly similar to a mark.

Here there was no reason for Respondent to believe that the name ALBERT EINSTEIN was or was claimed to be a trademark. The Panel therefore finds Respondent has not been shown to have registered the disputed domain name in order to prevent the owner of the mark from registering the corresponding domain name. The fact that this Respondent has engaged in a pattern of conduct of that kind is therefore irrelevant.

Complainant also relies on paragraph 4(b)(iv) of the Policy, claiming Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondentís web site or other on-line location, by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the web site and the activities therein. Such a claim was upheld in Stephanie Seymour, Celine Dion, Julie Brown and Michael Andretti, all cases of living celebrities whose names had become distinctive of their goods or services before Respondent registered the domain names in issue.

Here the Panel has accepted that Respondent was unaware that Complainant claimed trademark rights in the name ALBERT EINSTEIN. Accordingly, although Respondent intentionally attempted to attract Internauts, for commercial gain, to his website, it did not attempt to do so by creating confusion with a trademark, since it had no reason to suppose that the name ALBERT EINSTEIN was a trademark. To the contrary, it had every reason to believe that Dr. Einstein did not engage during his lifetime in commerce and did not therefore have trademark rights in his name at the time of his death.

Complainant had no trademark rights in ALBERT EINSTEIN in Canada when Respondent registered the disputed domain name and it would be unreasonable to expect Respondent, in Canada, to have been aware of Complainantís registered trademark in France.

There is no evidence of any other conduct on the part of Respondent that could justify a finding of bad faith registration and use.

Complainant has failed to establish this element of its case.

(V) Laches

Although historically, statutes of limitations did not apply to equitable claims, the courts of equity developed their own limitation defences, most importantly by the defence of laches: see Lindsay Petroleum Co v. Hurd (1874) LR 5 PC 221 at 239f; Erlanger v. New Sombrero Phosphate Co (1878) 3 App. Cas. 1218. Laches is established when two conditions are fulfilled. There must first be unreasonable delay in the commencement of proceedings; second, in all the circumstances the consequences of delay must render the grant of relief unjust. See generally Spry, Equitable Remedies, 5th ed at 431.

In respect of the first limb, the point of time as from which the reasonableness of delay is determined is, prima facie, the time at which the plaintiff came to know of the facts that had given rise to the ground of equitable intervention in question: Stafford v Stafford (1857) 44 ER 697 at p.701. In respect of the second limb, it is necessary that the Defendant be prejudiced by the delay.

The Policy is part of the domain name registration agreement. The Administrative Proceeding is brought pursuant to that agreement, the issue for determination being whether the grounds set out in the Policy for transfer or cancellation have been established. There is no limitation period in the Policy. The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.

Even if that conclusion be wrong, the facts here do not support a finding that Complainant should be barred from relief in this case by reason of laches. Complainant did not delay unreasonably after first becoming aware in or about January 2002, of Respondentís registration of the disputed domain name. Further, there is no evidence Respondent has been prejudiced by delay.

 

7. Decision

For the reasons stated above, the Panel finds this dispute is not within the scope of paragraph 4(a) of the Policy. Complainant's request for transfer of the domain name <alberteinstein.com> is therefore denied.

 


 

Alan L. Limbury
Presiding Panelist

Michael Ophir
Panelist

M. Scott Donahey
Panelist

Dated: October 7, 2002