WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lynne Russell v. Kenneth Young

Case No. D2002-1133

 

1. The Parties

The Complainant is Lynne Russell of Georgia, United States of America represented by Isaacman, Kaufman & Painter, of Beverly Hills, California, United States of America.

The Respondent is Kenneth Young of Stirling, United Kingdom.

 

2. The Domain Name and Registrar

The disputed domain name <lynnerussell.com> is registered with eNom Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on December 12, 2002. A hard copy was received by the Center on December 16, 2002.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 20, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2003. The Response was filed with the Center on December 21, 2002. The Center received a hard copy of the Response on December 30, 2002.

The Center appointed John Swinson as the sole panelist in this matter on January 7, 2003, and the parties were notified accordingly. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant is a well-known former television news anchorperson who was seen and heard on and via CNN Headline News for a period of 18 years. The Complainant was an evening anchor of CNN Headline News and was the first woman to become the regular, solo anchor of a daily evening prime time newscast on a television network.

The Complainant was the former registrant of the disputed domain name. The disputed domain name lapsed unintentionally and was registered two weeks later by the Respondent on August 3, 2001.

An authorised representative of the Complainant sent an email to the Respondent on March 7, 2002, explaining that the Complainant was the former registrant of the disputed domain name. The Complainant offered to reimburse the Respondent for his expenses in order to have the disputed domain name transferred back to her.

The Respondent replied on the same day as follows:

"The domain name lynnerussell.com was registered by me in good faith for my own legitimate purposes. . .Whilst I do not wish to respond to the points you raise in detail I am of the view that the arguments you present are entirely without merit and if necessary I am prepared to go to the courts to protect my domain"

On March 9, 2002, the Complainant personally appealed to Respondent via email. On the same day the Respondent rejected the request stating:

"My reasons for registering the domain are personal and Iím afraid are totally unconnected with you or your career."

The Panel was provided with a copy of this correspondence by the Complainant.

The Respondent is also the registrant for 162 other domain names which include names belonging to celebrated people, places and things.

 

5. Partiesí Contentions

A. Complainant

The Complainant asserts the following:

The Complainant registered and maintained ownership of the disputed domain name from April 7, 1999, until it was mistakenly allowed to expire on April 6, 2001.

The Complainant was a CNN news anchor. In 1999, the Complainant published a book called "How to Win Friends, Kick Ass and Influence People" and also markets cosmetics (called "Lynne Russell Red" brand lipstick). She has made numerous public appearances to promote her book and cosmetics.

Whilst at CNN, her contract with her employer prevented her from exploiting the disputed domain name and setting up a website. When she departed CNN in May 2001, she began the process of setting up a website in order to market and sell cosmetics and other products using her name and likeness, only to discover on August 23, 2001, that the disputed domain name had lapsed and was registered by the Respondent.

The Complainant established an alternative website at <lynne-russell.com> to market and sell her products. However the Complainant claims this alternative website has caused confusion amongst potential customers who "were having serious problems with this alternate URL, insofar as they were neglecting to insert the Ďhyphení". The Complainant alleges that she lost traffic and business as a result. The Complainant claims that radio commercials that she recorded promoting her products referring to the alternate URL address caused a number of people to complain that they were unable to locate the Complainantís website and that the Ďhyphení in the alternate URL caused confusion to consumers.

The Complainant contacted the Respondent on March 7, 2002, and again on March 9, 2002, requesting transfer of the domain name. Both requests were denied by the Respondent.

Prior to contacting the Respondent the disputed domain name was "parked" and the Complainant asserts it was "ostensibly for sale" together with 163 domain names over which the Respondent claims ownership. The Complainant provided a list of other domain names registered by the Respondent which include names of famous people, places and things.

After the Complainant made contact with the Respondent, the website at the disputed domain name was changed. There is no information on the website other than a poem which reads as follows:

"Another year
Another start
Where is the wisdom
Where is the heart
Dreaming days
And sleepless nights
Thinking of Lynne
Touching the heights
"

The Complainant claims that:

(a) she owns common law trademarks in the name "Lynne Russell" ("the Mark") and that the Respondent has wrongfully adopted the use of Mark in violation of Complainantís common law trademark rights;

(b) the disputed domain name bears a confusing similarity to the Mark and is causing public confusion;

(c) the Respondent has no rights or legitimate interests in respect of the disputed domain name because:

(i) the Respondent is not commonly known by the disputed domain name and has no license or permission from the Complainant to use the Mark in the disputed domain name;

(ii) uncorroborated assertions by the Respondent that he plans to build a website does not suffice: Do the Hustle, LLC v. Monkey Media, WIPO Case No. D2000-0625;

(iii) the Respondent has not shown demonstrable preparations to use the disputed domain name prior to being contacted by the Complainant as it was "parked" by Respondent at the registrarís website with 162 other domain names where it was ostensibly offered for sale;

(iv) it was only after the Respondent was notified of the dispute by receiving an email from the Complainant in March 2002, that the Respondent began making preparations of any sort to use the disputed domain name;

(v) the disputed domain name continues not to be used by Respondent in connection with any bona fide purpose e.g., an offering of goods or services, and that the website as it currently appears is "a thinly veiled continuation of [the Respondentís] desire to cybersquat"; and

(vi) the Respondentís illegitimate use of the disputed domain name is tarnishing the Mark and disrupting the Complainantís business;

(d) the disputed domain name was registered and is being used in bad faith because:

(i) it was registered and is being used to prevent the Complainant from reflecting the Mark in a corresponding domain name, and the Respondent has engaged in a pattern of such conduct;

(ii) the Respondent has registered 163 domain names reflecting the proper names of famous persons, places and businesses ostensibly belonging to others including:

(A) Famous Persons: Ali McGraw, Ally Sheedy, Annette Bening, Lorraine Bracco, Anthony Michael Hall, Joanna Going, John Updike, Laura Linney, Sinclair Lewis and Ned Kelly (a famous Australian bushranger who was executed by the British in the 19th century);

(B) Notable Places: East Ayrshire, East Renfrewshire, Stirling District;

(C) Notable Things: Shanghai World Financial Center, Plaza Athenee [Hotel], Blackpool Casino; and

(iii) the Respondent held the disputed domain name passively by connecting to a website which "seems to be perpetually under construction";

(iv) the Respondent has demonstrated a deceptiveness as shown by his remark "My reasons for registering the domain Ö are totally unconnected with you or your career"; and

(v) based on the Respondentís other registrations, it is not possible to conceive of any plausible use of the Mark that was not illegitimate and that illicit intent is evident on the face of his activities.

The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent asserts that:

(a) the Complainant has no trademark rights in the name "Lynne Russell";

(b) he has a legitimate interest in the disputed domain name as he registered it in memory of a girl named Lynne Russell who he knew in his "younger days", in the hope that this friend might stumble across the website and might contact the Respondent "by looking up the WhoIs for the domain name or at the very least smile and think of me kindly as she read the poem";

(c) he registered and is using the disputed domain name in good faith "for the purposes of friendship and communication"; and

(d) the Complainant is guilty of reverse domain name hijacking.

A summary of the relevant submissions put forward by the Respondent are as follows:

1. The name "Lynne Russell" is "a common name shared by hundreds of people throughout the world Ö [t]he complainant is not sufficiently well known to merit her name being considered as a trademark" and that "to the general public around the world there is no secondary meaning to the term "Lynne Russell" and therefore there is no implied trademark". The Respondent claims that the Complainant is not famous enough to be distinguished from any other person called Lynne Russell, and that he had never heard of the Complainant prior to being contacted by her.

2. By "voluntarily and deliberately" allowing the disputed domain name to lapse, the Complainant has failed to protect her trademark (if a trademark exists) and "this act of negligence alone is sufficient grounds to disqualify the complainant from having any trademark rights over the term ĎLynne Russellí". The Complainant has lost the disputed domain name through her own negligence and not because of any action on the Respondentís part.

3. If a cybersquatter considered that the disputed domain name was valuable, the disputed domain name would have been registered very soon (almost immediately) after it lapsed and became available. The Respondent suggests that because he registered the disputed domain name some twenty days after the disputed domain name expired, this demonstrates that he is not a cybersquatter and that the Complainant is not a well-known person.

4. The Complainantís alternate URL <lynne-russell.com> is registered to Lynne Russell Unlimited Inc (a company which is also referred to on the Complainantís website) which implies that the Complainant does not have exclusive rights in the name "Lynne Russell". Also, the Complainant was prevented from exploiting the disputed domain name whilst she was employed by CNN which suggests that "her claim to any ĎLynne Russellí trademark is not paramount".

5. The Respondentís entire basis for claiming a legitimate interest in the disputed domain name is as follows (quoted directly from the Response):

"I registered the domain name lynnerussell.com simply because in my younger days I was very friendly with a girl named Lynne Russell with whom I have now lost touch. I wanted to put up a simple website that included a poem that I had once written for her and hoped that she might one day stumble upon the site and might get back in touch with me by looking up the WhoIs for the domain or at the very least smile and think of me kindly as she read the poem.

In the event that my old friend does get in touch it would be my intention to transfer the site to her for her own personal use.

I believe that the above constitutes Ďlegitimate interestí in the domain name."

6. Just because the disputed domain name was "parked" at a Registrar does not mean it was for sale. The Respondent has never offered the disputed domain name for sale and in fact turned down an anonymous offer made through Great Domains for $200.

7. The Respondent has not acted in bad faith. The disputed domain name was registered and is being used "in good faith for the purposes of friendship and communication". The disputed domain name is not being used for commercial purposes and the website could not possibly be mistaken for that of the Complainant.

8. In response to the comment that the Respondent owns a number of other domain names which incorporate the names of famous people, the Respondent states the following:

(a) His motivation for registering the disputed domain name "was prompted entirely by personal reasons" and the Respondentís motivation for doing so was entirely different from any other domain name that he owns.

(b) Each domain name he has registered was registered in good faith for the purposes of development. He develops websites as a hobby and receives no income from them, although he admits he does not develop all of his registered domain names. For example, he has developed websites for the domain names <paulamarti.com> and <niclasfasth.com> (two professional golfers) "which provide free information to visitors Ö include no advertising or other sources of income and include a disclaimer that [the] sites are unofficial and entirely unrelated to their subjects".

(c) The fact that he has registered other domain names using names of famous people is irrelevant. The requirement to have engaged "in a pattern of such conduct" has been misinterpreted by the Complainant and other panelists. "A pattern of conduct" requires the Respondent to have registered other domain names which incorporate the Mark in order to prevent the Complainant from reflecting her Mark in the domain name (for example, by registering <lynnerussell.net>, <lynnerussell.org>, <lynnerussell.info> etc.). The Respondent has not registered such domain names and therefore has not engaged in a "pattern of such conduct". In the Respondentís words, "The question of bad faith Ö should Ö be confined entirely to whether or not the respondentís registration domains affects the owner of the Markís ability to use the Mark without reference to the respondentís ownership of other domains which do not affect the Mark ownerís ability to use the mark".

9. The Respondentís failure to go into detail as to his reasons for registering the disputed domain name when corresponding with the Complainant does not equate to the Respondent being "coy and deceitful". The Respondent says he was under no obligation to disclose his personal reasons for registering the disputed domain name.

 

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 Policy, namely:

(a) the domain name is identical or confusingly similar to a trademark 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 that of the Complainant.

The Respondent made a number of insightful and clever submissions. The Panel agrees with a number of statements and submissions of the Respondent. However the Panel decides for the Complainant because overall, the Respondentís story is simply not credible or believable. Is it believable that someone who is sophisticated in relation to domain names, and who has registered many names of famous people as domain names, registers the name of a former lost friend as a domain name that happens by chance also to be the name of a CNN news anchor? Is it believable that the disputed domain name was registered to create a website with a poem tribute to a long lost friend?

A. Identical or Confusingly Similar

It is well established that common law trademark rights can exist in a personís name and are sufficient to succeed in a Complaint under the Rules. See: Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121; Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235; Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; Daniel C. Marino, Jr v. Video Images Productions, et al., WIPO Case No. D2000-0598; Kathryn Bridget Moynahan v. Fantastic Sites, Inc, WIPO Case No. D2000-1083; Marian Keyes v. Old Barn Studios Ltd, WIPO Case No. D2002-0687; Van Morrison and Exile Productions Limited v. Unofficial Club de Van Morrison, WIPO Case No. D2002-0417.

The Complainant has established that she is a well-known and internationally recognizable former television news anchorperson due to her long association and presence on the CNN network over an 18 year period. Because of the Complainantís international recognition and success as a news anchor person, she has common law trademark rights in her name, "Lynne Russell" and is trading off her name and reputation to sell products such as cosmetics and books.

The Panel finds that the disputed domain name is identical to the Complainantís name, in which she has common law trademark rights. 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. It is absurd for the Respondent to suggest that the Complainant has relinquished herself of her common law trademark rights by accidentally allowing the disputed domain name to lapse.

B. Rights or Legitimate Interests

Under Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the contested domain name by showing any of the following circumstances, in particular but without limitation:

(i) its use of, or demonstrable preparations to use, the contested domain name or a name corresponding to the contested domain name in connection with a bona fide offering of goods or services before any notice to it of the dispute; or

(ii) it (as an individual, a business, or other organization) has been commonly known by the contested 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 contested domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Those circumstances are not exhaustive of the circumstances that may establish rights or legitimate interests. The Respondent has provided no evidence to satisfy any of the above three criteria.

It is clear on the evidence that the Respondent has not at any time been commonly known by the domain name within the meaning of the Policy. There is no evidence revealing that the Complainant has licensed or otherwise authorised the Respondent to use the Mark in the contested domain name.

The Respondent has not provided any evidence of its use of, or demonstrable preparations to use, the contested domain name in connection with a bona fide offering of goods or services before any notice to it of the dispute.

The website accessible by the disputed domain name is a simple "mock up" website consisting of one webpage which displays no information other than a poem allegedly written by the Respondent. No contact details are listed for the Respondent. The Respondentís bare assertion that he registered the domain name in memory of an old friend with whom he has lost touch, who he hopes will "stumble upon the site" and "get back in touch with [the Respondent] by looking up the WhoIs for the domain or at the very least smile and think of [the Respondent] kindly as she read the poem" is vague and extremely unconvincing. No message appears on the website to indicate the Respondent is trying to locate a lost friend, and no contact details for the Respondent appear on the website. Even so, a "mock up" prototype website is not adequate evidence to show that the Respondent is making a legitimate noncommercial or fair use of the contested domain name: Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems, WIPO Case No. D2001-0932.

Other domain names allegedly developed by the Respondent (including <niclasfasth.com> and <paulamarti.com>) also appear to be mock up sites. In fact the website for <niclasfasth.com> has the same background as that which appears on the website for the disputed domain name. The Panel is sceptical of the Respondentís claim that he generally registers domain names for the purpose of developing them.

On the evidence available, the Panel is unable to conclude that the Respondent is making a legitimate non-commercial or fair use of the contested domain name. As a result, the Panel finds that the Respondent has no rights or legitimate interests in the contested domain name.

C. Registered and Used in Bad Faith

Paragraph 4 of the Policy provides that evidence of bad faith registration and use includes circumstances showing that the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.

The Respondent admits that he has registered other domain names incorporating the names of several famous people. It is fair to assume that the Respondent has no legitimate rights or interests in the names of these famous people. The Respondent provided no evidence to the contrary. Registrations of other domain names using names of famous people is relevant to determining that the Respondent has engaged in a pattern of such conduct. The Panel disagrees with the Respondentís interpretation of "engaging in a pattern of conduct" under the Policy: Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; Antony Beevor v. Old Barn Studios Limited, WIPO Case No. D2001-0123; Julie Brown v. Julie Brown Club, WIPO Case No. D2000-1628. It is irrelevant to the finding of bad faith that the Respondent registered the domain name twenty days after it expired. It is not necessary for the disputed domain name to be registered immediately after its registration expired in order to justify a finding of bad faith or cybersquatting.

Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith and that the requirement of the Policy paragraph 4(a)(iii) is satisfied.

D. Reverse Domain Name Hijacking

The Panel concludes that there is no evidence to support a finding of bad faith on the part of Complainant. The Panel rejects Respondentís request for a finding of reverse domain name highjacking.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.

 


 

John Swinson
Sole Panelist

Dated: January 21, 2003