WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pamela Anderson v. Alberta Hot Rods
Case No. D2002-1104
1. The Parties
The Complainant is Pamela Anderson of California, United States of America, represented by Lord, Bissell & Brook of California, United States of America.
The Respondent is Alberta Hot Rods of Alberta, Canada.
2. The Domain Names and Registrar
The disputed domain names <pamelaanderson.com>, <pamelaanderson.net> and <pamelalee.com> are registered with CORE Internet Council of Registrars, of Switzerland.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 3, 2002. On December 4, 2002, the Center transmitted by email to CORE Internet Council of Registrars a request for Registrar Verification in connection with the domain names at issue. On December 9, 2002, CORE Internet Council transmitted by email to the Center its Verification Response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. It also indicated that the Policy has been the policy of the Registrar since December 1, 1999, and that the domain names at issue had been placed on Registry-lock.
The Center verified that the Complaint satisfied the formal requirements of 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").
In accordance with Paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 12, 2002. In accordance with Paragraph 5(a) of the Rules, the due date for Response was January 1, 2003. Respondent did not submit any Response. Accordingly, the Center notified Respondentís Default on January 10, 2003.
The Center appointed Henry Olsson as Sole Panelist in this matter on January 16, 2003, and indicated as the projected decision date January 30, 2003. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Paragraph 7 of the Rules.
The Panel considers that it was properly constituted.
4. Factual Background
Complainant is an individual person who is a noted actress and model. The Respondent is located in Canada. The nature of the Respondentís activities can only be ascertained from the information provided in the complaint.
In accordance with Paragraph 3(b)(xiii) of the Rules, Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain names that are the subject of this Complaint, to the jurisdiction of the courts at the location of the domain name holderís address as shown for the registration of the domain names in the concerned Registrarís Whois database at the time of the submission of the Complaint to the Center.
5. Partiesí Contentions
Identity or Confusing Similarity
Complainant submits that Complainant is known by her maiden name, Pamela Anderson, as well as her married name, Pamela Lee, or a combination of both, Pamela Anderson Lee. In the Complaint it is indicated that Complainant is a noted actress and model who has been featured on ten covers of Playboy Magazine and appeared in TV shows such as "Home Improvement", "V.I.P." and "Baywatch" (where she played the role of C.J. Parker from 1992 to 1997). It is believed that the latter show was syndicated in 144 countries in 40 languages. Furthermore, according to Complainant, Pamela Anderson is widely featured in celebrity and entertainment publications and TV shows.
Complainant submits that from the beginning of 1996, Respondent started to operate a commercial celebrity fan network known as "Celebrity 1000, Your Ultimate Entertainment Source" ("Celebrity 1000"), operating under the domain name <celebrity1000.com>. As part of the "Celebrity 1000" fan network, Respondent registered <pamelaanderson.com> on November 6, 1996, <pamelalee.com> on March 27, 1997 and finally, <pamelaanderson.net> on February 25, 1998. The purpose was, according to Complainant, to divert Internet users to Respondentís website. Complainant submits that by doing so, Respondent uses the disputed domain names to mislead such Internet users to believe that they are accessing a site that is associated or affiliated with Complainant.
Complainant furthermore submits that it has been a well established practice by prior Panels that a celebrity has sufficient proprietary rights in her name to satisfy the requirement of Paragraph 4.a(i) of the Policy due to the fame of the celebrity and the association of her name with her persona. In this context, Complainant refers to several earlier cases, inter alia the WIPO case Roberts v. Boyd (D2000-0210) where it was found that the name Julia Roberts has sufficient secondary association to constitute common law trademark rights. Moreover, according to Complainant, a celebrity is deemed to have common law trademark rights under federal trademark law when used to identify the performances of that celebrity. Complainant suggests that there is no question that the public associates Complainantís names "Pamela Anderson" and "Pamela Lee" with her persona, acting and modeling career; consequently, those names have sufficient secondary association with Complainant that she possesses common law trademark rights over them.
Complainant suggests that the domain names at issue are identical to Complainantís maiden name and married names and cause a likelihood of confusion as defined by Section 2(d) of the United States Lanham Act (Section 2(d), 15 U.S.C. Section 1052(d). The unique parts of the domain names are exactly the same as, and are clearly calculated to cause a likelihood of confusion with, Complainantís names.
Moreover, according to Complainant, a domain name is still considered identical or confusingly similar to a legally protected name, because the suffixes ".com" and ".net" are required in domain names and do not add source identity significance.
In summary, Complainant alleges that Respondentís misuse of the disputed domain names, which are identical, respectively, to Complainantís names, clearly causes a likelihood of confusion to the public and infringes upon Complainantís common law trademark rights.
Rights or Legitimate Interests
In this respect, Complainant reiterates that the only use that Respondent is making of the domain names at issue is to divert Internet users contacting the sites under those domain names to Respondentís own commercial website "Celebrity1000." Complainant alleges that prior Panels have held that such use of domain names is not an offering of bona fide goods or services. Furthermore, according to Complainant, Respondent has never been commonly known by either the name "Pamela Anderson" or "Pamela Lee", nor does Respondent have any relationship with Complainant, or permission from Complainant to use her names and marks; Complainantís names bear no relationship to Respondentís name and therefore do not justify Respondentís use of the domain names at issue. In summary, Complainant alleges that Respondent has no rights or legitimate interests in Complainantís names.
Registration and Use in Bad Faith
First, Complainant alleges in this respect that Respondent has been using Complainantís name and common law trademark at least as early as in November 1996, by which time Complainant had already acquired celebrity status through both her acting and her modelling activities; in fact Complainant had for many years prior to that time been featured on numerous TV shows and had acquired trademark rights in her name. Respondentís registration of Complainantís famous name with full knowledge that Complainant had trademark rights in that name reveals, in the view of Complainant, bad faith.
In addition, Complainant suggests that Respondent is using the domain names in bad faith by intentionally attracting visitors to the websites under the domain names at issue for commerce; in full awareness of Complainantís celebrity, Respondent is seeking to capitalize and trade-off on Complainantís fame by re-directing Internet traffic to Respondentís website. Complainant suggests that, by doing so, Respondent clearly intended to gain commercially by using the domain names at issue to attract Internet users who misleadingly believed that they were accessing a site associated with, or affiliated to, Complainant and then divert them to Respondentís website. As such, according to Complainant, Respondentís use constitutes bad faith under the Policy.
Complainant adds that, in its opinion, Respondent registered the domain names at issue for the purpose of disrupting the business of Complainant in her own online ventures and to prevent Complainant from using her trademarks in a corresponding domain name herself. In this context, Complainant alleges that Respondent persistently registered celebrity ".com" names which take or took Internet users to Respondentís "celebrity1000.com" website and thus engaged in a pattern of conduct of "stockpiling" such registrations and thus prevented those celebrities from securing the ".com" registration for their names. Such conduct is, in the view of Complainant, to be deemed to fall within the form of bad faith identified in the Policy. In this context Complainant refers to an earlier WIPO case (D2000-1838).
Complainant alleges in this context, finally that the domain names at issue are only a few among other numerous names that Respondent registered as domain names in order to further its "Celebrity1000" fan network from which it received advertising revenues.
In accordance with Paragraph 4.i of the Policy and for the reasons described, Complainant requests the Administrative Panel to issue a decision that the three domain names at issue be transferred to Complainant.
The Respondent did not reply to the Complainantís contentions and is consequently in Default.
6. Discussion and Findings
Paragraph 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.
In the case of default by a Party, Paragraph 14 of the Rules prescribes that if Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, theses Rules, the Panel shall draw such conclusions therefrom as it considers appropriate. In this case no Response has been submitted and none of the contentions by Complainant have been contested, despite the opportunity given to do so. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.
From the Registrar Verification it follows that the Policy is applicable in this case.
Consequently, there is an obligation for Respondent to submit to a mandatory administrative proceeding as now initiated in respect of the domain names at issue.
The Panel notes that the Complaint has, according to the documentation available, been duly communicated to Respondent and that there is consequently from this point of view no obstacle to considering the case.
Paragraph 4.a. of the Policy directs that Complainant has to prove each of the following:
- that the domain names registered by Respondent are identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights;
- that Respondent has no rights or legitimate interests in the domain names; and
- that the domain names have been registered and are being used in bad faith.
In the following parts of this Decision the Panel discusses each of those elements.
A. Identity or Confusing Similarity
In this respect, Complainant has, according to Paragraph 4.a(i) of the Policy, to prove that the domain names at issue are identical or confusingly similar to a trademark or a service marks in which Complainant has rights.
The domain names at issue are <pamelaanderson.com>, <pamelaanderson.net> and <pamelalee.com>.
One of the main issues in this context is whether Complainant has a common law trademark right in the names "Pamela Anderson" and "Pamela Lee." In this context Complainant has referred to Section 2(d) of the United States Lanham Act, Section 2(d), 15 U.S.C. Section 1052(d) and also to some earlier ICANN Panel Decisions where such trademark rights have been considered to exist for various celebrities, among them Julia Roberts (WIPO Case D2000-0210). The allegations by Complainant are essentially that Pamela Anderson/Pamela Lee as a celebrity has fame and association of her name with her persona and, moreover, that such common law trademark rights exist when the name of a celebrity is used to identify performance services.
The Panel finds it obvious that Complainant is a celebrity in the sense described by Complainant and that the names Pamela Anderson/Pamela Lee have, in the mind of the public, a secondary association with Complainantís persona and her professional career as actress and model. In view of this and in view of the need to ensure consistency with earlier Panel precedents relating to trademark rights in celebritiesí names, this Administrative Panel is satisfied that in fact Complainant shall, for the purposes of this case, be considered to have common law trademark rights in the names "Pamela Anderson" and "Pamela Lee" at least as early as from the mid-1990s.
The domain names at issue incorporate Complainantís names with the addition of ".com" and ".net" respectively. In conformity with well-established practice in this respect, the Panel finds that the addition of those two suffixes do not change the likelihood of confusion with Complainantís names.
On the basis of these considerations, the Panel finds it to be established that confusing similarity exists between the domain names at issue and Complainantís names "Pamela Anderson" and "Pamela Lee" in which Complainant has trademark rights.
B. Rights or Legitimate Interests
In this respect Complainant has, according to Paragraph 4.a(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain names.
Complainantís main allegation in this respect is that the use that Respondent is making of the three domain names at issue is to divert Internet users accessing those websites to its own website "Celebrity 1000" which is of a commercial nature.
Respondent has not commented on this allegation nor on any other elements mentioned by Complainant in this context. The Panel therefore has to base its findings on what Complainant has thus alleged and also on the reference that Complainant makes to findings in earlier cases.
In considering the circumstances present in this case the Panel comes to the conclusion that in fact Respondent has no rights or legitimate interests in the domain names at issue.
C. Registration and Use in Bad Faith
In this respect, Complainant has, according to Paragraph 4.a(iii) of the Policy, to prove that the domain names have been registered and are being used in bad faith. Furthermore, Paragraph 4.b of the Policy sets out some circumstances which, in particular but without limitation, shall, if found to be present by the Panel, be considered as evidence of registration and use in bad faith.
From the Registrar Verification and from the Complaint it follows that Respondent made the first registration of one of the domain names at issue in November 1996. Complainant alleges that Complainant had been acting in the well-known TV show "Baywatch" as from 1992, and that Complainant already before that had, inter alia, featured on numerous TV shows.
On the basis of those circumstances the Panel is satisfied that Respondent registered the domain names at issue in full knowledge about Complainantís fame which, as found by the Panel earlier in this Decision, constitutes common law trademark rights in the names "Pamela Anderson" and "Pamela Lee" at least as from the mid 1990s. Therefore, the Panel concludes that the registration of the domain names was made in bad faith in the sense of the Policy.
As then regards the use that Respondent has made, and is making, of the domain names at issue, Complainantís main allegation is that those accessing the websites under those domain names are re-directed to Respondentís own commercial "celebrity1000.com" website. This is, according to Complainant, who also refers to earlier panel practice, to be considered as use in bad faith, the more so as Respondent registered numerous other celebrity names as domain names in order to further its own commercial celebrity fan network.
As indicated earlier, Respondent has not commented on Complainantís allegations about the actual use made of the domain names.
What has thus been established in this case about the use of the domain names at issue leads the Panel to the conclusion that Respondentís activities amount to use in bad faith in the sense of the Policy.
On the basis of the foregoing, the Administrative Panel concludes that it has been established that the domain names at issue are confusingly similar to the trademarks in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain names and that the domain names have been registered and are being used in bad faith. Complainantís request for a transfer of the domain names to Complainant shall consequently be approved.
For all the foregoing reasons, in accordance with Paragraph 4.i of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain names <pamelaanderson.com>, <pamelaanderson.net> and <pamelalee.com> be transferred to Complainant.
Dated: January 20, 2003