WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Marian Keyes v. Old Barn Studios Ltd.

Case No. D2002-0687

 

1. The Parties

The Complainant is Marian Keyes c/- Mark Wynne, Gayfield House, Clonminch, Tullamore, Co. Offaly, Ireland.

The Respondent is Old Barn Studios Ltd of 52 Blucher Street, Birmingham, United Kingdom.

 

2. The Domain Name and Registrar

The disputed domain name is <mariankeyes.com>.

The registrar is Register.com.

 

3. Procedural History

The electronic version of the Complaint was filed on July 22, 2002. The hardcopy of the Complaint was received on July 23, 2002.

In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules.

Payment in the required amount was received by the Center.

On August 13, 2002, the Center formally notified the Respondent by post/courier and email of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.

The Respondent failed to file a Response. On September 3, 2002, the Center sent a Notification of Respondent Default by email to the Respondent and the Complainant.

The Center contacted John Swinson and requested that he act as Panelist in this case. Mr. Swinson accepted to act as Panelist in this case and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

On September 9, 2002, the parties were notified that Mr. Swinson had been appointed and that a decision was, save exceptional circumstances, to be handed down on September 23, 2002.

The language of the proceeding was English.

The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules; no Response was filed by the Respondent; the Administrative Panel was properly constituted.

 

4. Factual Background

The Complainant is a very well-known novelist who has achieved international recognition.

The disputed domain name was registered on February 13, 2000. A search of the Registrarís database indicates that the disputed domain name is listed as owned by "register.com Account Masking" and the administrative contact details are "register.com Account Masking".

The Afternic.com database indicates that the disputed domain name is available for purchase from "OBS Ltd".

The Registrar wrote to the Center on July 24, 2002 to confirm that "the <mariankeyes.com> domain name was registered through Register.com, Inc., and that Old Barn Studios Ltd is the current registrant of the <mariankeyes.com> domain name".

The Complainantís authorised representative contacted the Respondent on June 7, 2002 and requested transfer of the disputed domain name to the Complainant. That same day, the Respondent replied to the Complainant as follows:

"Yes we possess that domain name (but not a Mr. Hogarth?). If you want to make the purchase then the price is $600, paid through the Afternicís escrow service."

The Respondent has been a Respondent in four other WIPO decisions involving famous authors and has lost in all four cases.

 

5. Partiesí Contentions

A. Complainant

The Complainant is a novelist who has achieved international recognition. She has sold more than six million copies of her works which have been translated into several foreign languages and are now sold in 35 countries.

The Complainant continues to write and produce novels under and by reference to her name "Marian Keyes". The name "Marian Keyes" has now come to be understood by the general public as indicating an association with the Complainant and works written and exclusively produced by the Complainant.

The Complainant claims common law trade mark rights to the mark "Marian Keyes" which is the real name of the Complainant.

The Complainant contends that:

(a) she has common law trade mark rights in the name "Marian Keyes" and that the disputed domain name is identical to the mark;

(b) the Respondent has no rights or legitimate interest in the domain name as:

(i) the Complainant has not consented to the use of the Mark by the Respondent;

(ii) there is no evidence the Respondent has used the domain name for the bona fide offering of goods or services, nor is the Respondent making a legitimate non-commercial or fair use of the disputed domain name; and

(iii) the Respondent is not commonly known by the disputed domain name;

(c) the Respondent registered and is using the domain name in bad faith as:

(i) it offered to sell the disputed domain name to the Complainant for $600;

(ii) the Respondent has engaged in a pattern of registering and using bad faith domain names evidenced by the fact that over 100 domain names are currently being offered for sale by the Respondent, including domain names containing the names of a number of well known authors including <martinamis.com>, <iainmbank.com>, <patriciascanlon.com> and <patrickmccabe.com>; and

(ii) the Respondent has engaged in a pattern of conduct of registering domain names of famous authors in order to prevent those authors from reflecting their mark in a corresponding domain name. The Panel has decided against the Respondent in four previous decisions: Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121; Louis De Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122; Antony Beever v. Old Barns Studios Limited, WIPO Case No. D2001-0123; Margaret Drabble v. Old Barn Studios Limited, WIPO Case No. D2001-0209.

The Complainant also contends that the Respondent is "simply a front" for one Mark Hogarth", and that previous Panelists have held this to be so. Mr. Hogarth has a well documented history of registration of domain names in bad faith for profit.

B. Respondent

The Respondent failed to file a Response within the time limit set by the Center.

In accordance with paragraph 5(e) of the Rules, this dispute shall be decided on the basis of the Complaint alone.

 

6. Discussion and Findings

In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 ("Policy"), namely:

(a) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(b) the respondent has no rights or legitimate interests in respect of the domain name; and

(c) the domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

6.1 Identical or confusingly similar to a trade mark or service mark

It is well established that common law trade mark rights can exist in a name and are sufficient to succeed in a Complaint under the Rules. Specifically, it is clear that the name of a well-known author can give rise to a common law trademark in which the author has rights. See: Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121; Louis De Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122; Antony Beever v. Old Barns Studios Limited, WIPO Case No. D2001-0123; Margaret Drabble v. Old Barn Studios Limited, WIPO Case No. D2001-0209 and Jeanette Winterson v Mark Hogarth, WIPO Case No. D2000-0235.

The Complainant has established that she uses her name in the creation and promotion of her work. Because of the Complainantís international recognition and success as a novelist, she has common law trademark rights in her name, "Marian Keyes".

The Panel finds that the disputed domain name is identical to the trademark owned by the Complainant. The only difference between the domain name and the trademark is the addition of the suffix ".com". See Microsoft Corporation v. Amit Mehrotra, WIPO Case No. D2000-0053.

6.2 Illegitimacy

The Complainant contends that the Respondent has no legitimate interest in the use of the disputed domain name for the reasons specified above.

The Respondent has not provided any evidence to support a finding that the Respondent has a legitimate right or interest in the domain name. When the Respondent offered to sell the disputed domain name to the Complainant, it did not offer any explanation as to what legitimate interest it had in the disputed domain name. Taking into consideration prior cases involving the Respondent, it appears its only interest in the disputed domain name is to sell it.

The Panel agrees with the Complainantís assertions that the Respondent:

(a) is not using the contested domain name in connection with a bona fide offering of goods or services, and the contested domain name is not being used as an active address; and

(b) is not making a legitimate, non-commercial or fair use of the domain name and does not use the domain name in connection with any bona fide offering of goods or services; and

(c) is not commonly known by the domain name,

and finds that the Respondent has no legitimate rights or interest in the disputed domain name.

The Respondent had the opportunity to respond and present evidence that it is a legitimate business that registered the domain name without knowledge of the Complainantís rights. The Respondent chose not to do so. The Complainant is not entitled to relief simply by default, but the Panel can and does draw evidentiary inferences from the failure to respond. See Royal Bank of Canada v. D3M Domain Sales, eResolution Case No. AF-0147, May 1, 2000.

6.3 Bad Faith

The Complainant contends that the Respondent registered and is using the domain name in bad faith as outlined above.

The Panel finds that the Respondent has registered the domain name primarily for the purpose of selling or transferring the disputed domain name to the Complainant for valuable consideration in excess of its out of pocket costs. Also, the fact that the Respondent has engaged in a pattern of registering domain names containing names of famous authors for the apparent purpose of selling or transferring the domain name to the author for valuable consideration in excess of its out of pocket expenses is additional evidence of bad faith.

On four previous occasions the Panel has found that the Respondent has acted in bad faith by engaging in the pattern of registering domain names containing the names of famous authors for the purpose of selling them at a profit: See: Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121; Louis De Bernieres v. Old Barn Studios Ltd., WIPO Case No. D2001-0122; Antony Beever v. Old Barns Studios Limited, WIPO Case No. D2001-0123; Margaret Drabble v. Old Barn Studios Limited, WIPO Case No. D2001-0209.

It also appears that the Respondent has tried to conceal the name of the true owner of the disputed domain name as the registrantís details noted on the Registrarís records is "Register.com - Account Masking".

The Panel finds that the Complainant has established this element.

 

7. Decision

For the reasons set forth above and pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the contested domain name be transferred to the Complainant.

 


 

John Swinson
Sole Panelist

Dated: September 23, 2002