WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Laure Pester (Lorie) and Sony Music Entertainment France SA v. Movie Name
Case No. D2003-0312
1. The Parties
The Complainants are Laure Pester, whose stage name is LORIE, of Franconville, France, and Sony Music Entertainment France SA, a French company organized under the laws of France, of Paris, France, represented by Virginie Lapp of Paris, France.
The Respondent is Saeid Yomtobian d/b/a/ Movie Name, of Malibu, California, United States of America ("USA").
2. The Domain Name and Registrar
The disputed domain name <lorieonline.com> is registered with Dotster Inc., USA.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 23, 2003, (hardcopy) and April 30, 2003, (e-mail version). On April 24, 2003, the Center transmitted by email to Dotster, Inc. a request for Registrar verification in connection with the domain name at issue. This email was re-transmitted by the Center to the Registrar on May 1 & 5, 2003. On May 6, 2003, Dotster Inc. 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. 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 6, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2003. An early response was filed with the Center on May 5, 2003 (e-mail version), followed by a facsimile confirmation on May 6, 2003. On May 6, 2003, considering that the Response was received in the Center before the official commencement of the administrative proceeding, the Center asked Respondent to confirm whether the said document was to be considered his formal Response in this case. Respondent replied on the same date in the affirmative, stating that such document was his formal Response.
The Center appointed Kiyoshi I. Tsuru as the sole Panelist in this matter on May 22, 2003. 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
Complainant Laure Pester (Lorie) is a singer. She owns two French trademark registrations, i.e., "LORIE" N° 003068793 and "LORIE" N° 023199266, applied to various goods and services in classes 3, 9, 14, 21, 24, 25, 28, 35, 38 and 41.
Complainant Sony Music Entertainment France SA (SONY) has an exclusive recording contract with Complainant Lorieís Producer and thus holds in trust for Complainant Lorie, inter alia, the domain name <lorieonline.net> through which it runs the official LORIEís website.
The Registrant of the contested domain name, as recorded in the WHOIS database of the Registrar is Movie Name; the same may be said about the Administrative and Technical Contact. However, Respondent has identified himself as Saeid Yomtobian doing business as (d/b/a/) Movie Name.
5. Partiesí Contentions
Complainant Lorie claims to be a famous singer who is well known in France, in Europe and Taiwan, and who has sold since 2001 some 2 million records which have obtained various international awards. She asserts to be one of the first artists to have been known by the public through the Internet.
Complainants state that the disputed domain name was linked to an active website named "www.sexhorse.com"; that the website "www.sexhorse.com" is a pornographic website, and that it is clearly specified on the website that the domain name <lorieonline.com> is for sale for an amount of $ 300 via an escrow company service. Complainants have provided a certified instrument executed by Mr. Olivier BOUDOT, Huissier de Justice Associé in Paris, France, where these facts have been corroborated. Some printouts of the contents of "www.sexhorse.com" and the site where the disputed domain name was being offered on sale, have been attached to the said instrument.
Complainants argue that they have sent some Cease and Desist letters to Respondent and the concerned Registrars (former and current Registrar), urging them to cut immediately the link between the domain name < lorieonline.com> and the pornographic website "www.sexhorse.com"; and to transfer amicably the domain name <lorieonline.com> to the Complainants. Complainants further state that no answer to these letters was received.
Complainants assert that the contested domain name has later on been linked to a website "www.iwantgod.com" about the Dalai Lama.
A.1. Identity or Confusing Similarity
Complainant Lorie claims rights to the trademark "LORIE," based on her French trademark registrations for "LORIE" N° 003068793 and "LORIE" N° 023199266, and on Common Law rights deriving from the fame of the stage name "LORIE" as a singer. She alleges that a singer or performer can establish trademark rights to a name either through a trademark registration or through deployment of her stage name as a source indicator in commerce, in which case she may have unregistered or Common Law rights for protection against misleading use (citing Celine Dion and Sony Music Entertainment (Canada) Inc. v. Jeff Burgar operating or carrying on business as Celine Dion Club, WIPO Case N° D2000-1838, February 13, 2001).
Complainants argue that the only actual differences between the domain name <lorieonline.com> and the trademarks "LORIE" are the addition of the word "online" which is trivial and generic; that such word "online" is a generic term indicating an Internet presence, and that the likelihood of confusion is thus not diminished but rather aggravated because the domain name <lorieonline.com> denotes a website linked with the trademark "LORIE" (and cite Sodexho Alliance v. Entredomains, Inc., WIPO Case N° D2002-1001, January 20, 2003; Barnes & Noble College Bookstores, Inc v. Good Domains, WIPO Case N° D2002-0812, October 21, 2002, Six Continents PLC & Six Continents Hotels, Inc. v. Immobliare Incorporated, WIPO Case N° D2002-0811, October 17, 2002; Ontario Lottery and Gaming Corporation v. Paul Sweitzer, WIPO Case N° D2002-0602, August 7, 2002).
A.2 Respondentís lack of rights or legitimate interests in respect of the domain name
That Respondent does not have any rights in the trademark "LORIE" as a licensee or otherwise, and that Respondent has no contractual rights to use the said trademark as a domain name.
That Respondent has no legitimate interests in the domain name and that Respondent has not used the domain name <lorieonline.com> in connection with a bona fide offering of goods or services but on the contrary, to promote a pornographic website first, and linking it to a website about the Dalai Lama without any explanation, after having received Complainantsí Cease and Desist letters.
That Respondent is making an illegitimate commercial use of the domain name in order to divert consumers or to tarnish the trademark "LORIE" and the fame of the stage name LORIE.
A.3 Bad faith registration and use
That Respondent has registered the contested domain name <lorieonline.com> primarily for the purpose of selling or transferring the domain name to the Complainants or to a competitor for a valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; that the said domain name is offered for sale for $ 300 through an escrow company service (and cites Carolina Herrera, Ltd v. Europel srl, WIPO Case N° D2002-0816, November 20, 2002).
That the contested domain name <lorieonline.com> was registered in order to prevent the artist "LORIE" from reflecting the mark and her stage name in a corresponding domain name; that furthermore, the domain name <lorieonline.com> was pointing on a pornographic website, deliberately selected by Respondent in order to attract visitors to such site. Complainants deduct that Respondent has clearly registered the contested domain name for a commercial profit by using the first Complainant trademark "LORIE" in connection with a pornographic website which could only tarnish the distinctiveness and reputation of Complainant Lorieís trademark and stage name (citing General Electric v. Basalt Management, WIPO Case N° D2000-0925, October 25, 2000).
Complainants point out, as an additional element of bad faith, the fact that Respondent re-directed the contested domain name to a website about the Dalai Lama "www.iwantgod.com," without reason, and after having received Complainantsí Cease and Desist letters.
That he has owned the disputed domain name since January 2002; that prior to such date the disputed domain name had been in existence for some unknown period of time.
That he has used the contested name in good faith and in accordance with legitimate business practices. Respondent states that the disputed domain name is currently linked to a news information website and has been so linked since purchase.
That he has never met or even heard of Ms. Laure Pester, and argues that his customers are primarily in the United States and use his website for news related information.
That he had owned a domain name <newsguys.com>, and that he had linked it to a good faith and legitimate news information website, but that Network Solutions Inc negligently lost, misplaced or deleted Respondentís website "newsguys.com." Respondent further claims to have filed a lawsuit against Network Solutions.
B.1. Identity or Confusing Similarity
In Respondentís view, the request to transfer the domain name should be denied because complainant has not met their burden of proof in that their domain names are not identical or confusingly similar to any trademarks in which complainant has rights.
That the connection between the disputed domain name and Complainantís mark is a mere coincidence, and was not initiated by Respondent to take or steal away any business from Complainant.
That Complainants have waited over one year to file this Complaint against Respondent, and that such a wait should be interpreted as a waiver of rights of the Complainants.
That Complainants do not provide evidence of ownership of a trademark "LORIEONLINE."
That the contested domain name is composed of ten letters, five more than Complainant Lorieís trademarks "LORIE."
That the Complainants can not argue that Internet users are somehow confused by Respondentís site, because Complainants do not even have a website attached to their mark "LORIE." Respondent goes on by saying that Complainants only contention is that the disputed name somehow suggests a connection to other trademarks and associations owned by the Complainants.
That the term "lorie" is generic, being the first name of thousands of women worldwide.
B.2 Respondentís rights or legitimate interests in respect of the domain name
That he is currently expecting a resolution relating to the suit initiated against Network Solutions to see whether he will once again invest substantial sums of money into domain names, but that this situation is only temporary, and that Respondent will again set up a website similar to the one he had established the first nine months when he owned and operated a news information site at newsguys.com.
That in the present case, there is no showing of misuse of the disputed domain name.
That his long term intentions are legitimate and will not interfere with the trademarks of Complainants in the future.
That he has never attempted to use, or otherwise attempted to confuse the users of the website into thinking that they are actually one of the trademarks of Complainant; that his website comprises a clear mention relating to the "Los Angeles News Company"; that within the said site there is no mention, direct or indirect to Complainants or any business of Complainants.
B.3 Bad faith registration and use
That during one year he has not received one single Complaint from Complainants that any of their users were mistakenly directed to Respondentís website.
That the Complainants have not put forth any evidence showing that their users were attracted to or unintentionally taken to Respondentís website.
That the Complainants do not even have a Website.
That he has not intentionally attempted to attract for commercial gain, Internet users to Respondentís website or any other on-line location, by creating a likelihood of confusion with the Complainantsí mark as to the source, sponsorship, affiliation, or endorsement of Respondentís website or location or of a product or service on Respondentís website or location.
That he has not registered this disputed domain name in order to prevent the owner of the trademarks from reflecting the mark in a corresponding domain name from their receiving or collecting upon their good-name or goodwill.
That he has never attempted, and Complainants do not allege, that Respondent has offered the names for sale above Respondentís actual costs.
That he has not registered the domain names primarily for the purpose of disrupting the business of a Complainant or of a competitor.
That the Complainants have not put forth any evidence showing that a Website of theirs is being interfered with, by means of the disputed websites.
6. Discussion and Findings
In accordance with the Policy, Paragraph 4(a), the Complainants must prove that:
(i) the domain name in question is identical or confusingly similar to a trademark
or service mark in which the Complainants have rights, and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith.
In the administrative proceeding, the Complainants must prove that each three of these elements are present.
A. Identical or Confusingly Similar
This Panel finds that the disputed domain name <lorieonline.com> is confusingly similar to Complainantsí registered trademarks "LORIE," to Complainantsí trademark rights in the name by which Complainant Lorie has become well-known through use. See Celine Dion and Sony Music Entertainment (Canada) Inc. v. Jeff Burgar operating or carrying on business as Celine Dion Club, WIPO Case N° D2000-1838, February 13, 2001, citing, inter alia, Winterson v. Hogarth, WIPO Case No. D2000-0235, May 22, 2000; Roberts v. Boyd, WIPO Case No. D2000-0210, May 29, 2000; Marino v. Video Images Productions, WIPO Case No. D2000-0598, August 2, 2000; Adu (Sade) v. Quantum Computer Services, Inc., WIPO Case No. D2000-0794, September 26, 2000.
Respondent points out a difference between the contested domain name and Complainantsí trademarks, i.e., that the former is composed of ten letters (actually eleven), while the latter comprises five, and that such a difference renders the disputed domain name non-confusingly similar when compared to Complainantsí marks. This Panel thinks that the addition of the suffix "online" to Complainantsí marks is irrelevant in determining the confusing similarity of the said domain name.
Numerous ICANN decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See for example the following decisions: Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615, August 27, 2002; Compagnie Générale des Etablissements MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504, August 1, 2002; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, November 6, 2001; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, January 29, 2001; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047, March 24, 2000; Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002, March 22, 2002, and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802, September 9, 2000.
More importantly, there is a series of cases involving distinctive marks plus the suffix "online" in which the corresponding Panels have found that the addition of the word(s) "online" grants no distinguishing attributes to the relevant domain name (e.g. Ontario Lottery and Gaming Corporation v. Paul Sweitzer, WIPO Case No. D2002-0602, August 7, 2002, (<casinoniagaraonline.com>); Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Steven Heiberger and Legacy Development USA Corp., WIPO Case No. D2002-0336, June 28, 2002, (<calvinkleinonline.com>); Telstra Corporation Limited v David John Singh, WIPO Case No. D2002-0260, May 28, 2002, (<telstraonline.com>); Dell Computer Corporation v. Parmi Phull, WIPO Case No. D2001-0285, April 11, 2001, (<dellonline.net> and <dellonline.org>)). As Complainants correctly point out, the addition of the word "online" is trivial and generic. See Sodexho Alliance v. Entredomains, Inc., WIPO Case N° D2002-1001, January 20, 2003; Barnes & Noble College Bookstores, Inc v. Good Domains, WIPO Case N° D2002-0812, October 21, 2002, Six Continents PLC & Six Continents Hotels, Inc. v. Immobliare Incorporated, WIPO Case N° D2002-0811, October 17, 2002.
The other difference between the contested domain name and Complainantsí trademarks is the addition of the generic top-level domain (gTLD) ".com" to the said domain name, which is completely without legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, December 4, 2000 (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, June 13, 2000; J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035, March 23, 2000).
Thus, Complainants have complied with the first requirement of the Policy.
B. Rights or Legitimate Interests
The following are examples of circumstances where Respondent may have rights or legitimate interests over a contested domain name:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, Paragraph 4c).
Respondent has not offered goods or services in good faith. Complainants have provided evidence, certified by a public officer, i.e., Mr. Eric Crussard, Huissier de Justice Associé, Audiencier à la Cour díAppel de Paris, that the disputed domain name resolved to a pornographic website. Respondentís perception that there is no showing of misuse of the disputed domain name is erroneous (see point 5.B.2 supra).
Respondent has not been commonly known by the disputed domain name.
Respondent has not established how his alleged domain name <newsguys.com> or the news information site relating thereto may be connected to the disputed domain name <lorieonline.com>.
Complainants have stated that they have not authorized or licensed Respondent to use their trademarks. Respondent has not contested this statement.
Posting pornographic material in connection with a domain name that reflects the trademark of another cannot qualify as legitimate noncommercial or fair use of the domain name.
Respondent claims to have acquired the disputed domain in January 2002. By then, Complainant Lorie was already an artist, whose performances were being distributed in media like the Internet. By then, Complainant Lorie had already applied for one of her trademarks, i.e., the one that was filed on December 5, 2000, and which matured into Registration N° 003068793 for "LORIE." This Panel finds no legitimate reason for Respondent to obtain a specific, previously registered domain name from a third party, domain which has not been alleged to have a clear relationship with Respondent (Respondent never explained why it was that he acquired the contested domain name, or how the name LORIE relates to him or his business), and which reproduces the name of a pop artist who has sold approximately 2 million records up to now, in order to have that name resolve to a pornographic site. See Dixons Group Plc v Mr. Abu Abdullaah, WIPO Case No. D2000-1406, January 18, 2001, in that: "Legitimacy" in this context presupposes that there must be some justification in the choice or adoption of a particular domain name and, in the present case, such a justification seems lacking. The Respondent's domain name is virtually the same as the style adopted by the Complainant on its website) and the latter has been widely advertised. In view of this, it is difficult to describe the Respondent's use of the disputed domain name as "legitimate."
This Panel finds no rights or legitimate interests on the side of Respondent, regarding the contested domain name <lorieonline.com>.
The second requirement set forth in the Policy has thus been fulfilled.
C. Registered and Used in Bad Faith
According to the Policy, the following circumstances shall be evidence of registration and use in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
(Paragraph 4(b) of the Policy)
Even if Respondent did not himself register the contested domain name, it has been held more generally that "registration" extends to subsequent acts of acquisition, i.e., that acquiring a domain name that has already been registered may also fall within the scope of "registration." See Dixons Group Plc v. Mr. Abu Abdullaah supra (citing, in turn: BWR Resources Ltd v. Waitomo Adventures Ltd, WIPO Case No D2000-0861, October 16, 2000, and Motorola Inc v. NewGate Internet, Inc WIPO Case No D2000-0079, April 27, 2000). See also Toronto Convention & Visitors Association v. This Domain is For Sale /Email Your Offers, WIPO Case No. D2001-1463, February 25, 2002: transfer to and acquisition by a Respondent of a domain name in bad faith can be treated as equivalent to registration of the domain name in bad faith; and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com," WIPO Case No. D2000-0847, October 12, 2000: Here, although Respondent was not the original registrant, the record shows he acquired the registration in bad faith. The result is the equivalent of registration and is sufficient to fall within the Policy. Indeed, Paragraph 4(b)(i) of the Policy treats acquisition as the same as registration for the purposes of supporting a finding of bad faith registration. We therefore conclude that bad faith acquisition satisfies the requirement of bad faith registration under the Policy.
Therefore, Respondentís acquisition of the disputed domain name shall be considered as "registration" for the purposes of this proceeding.
Complainants have provided evidence that the contested domain name has been for sale for $300 through an escrow company service. This amount is in excess of the documented out-of-pocket costs directly related to the domain name. Therefore, such conduct falls within the scope of Paragraph 4(b)(i) of the Policy.
Considering that the examples comprised in Paragraph 4(b) of the Policy are non-exclusive, this Panel finds that Respondentís conduct consisting of acquiring a domain name that entirely encompasses a trademark associated with a well publicized artist who has registered trademarks and other rights derived from use, covering her artistic name, and who has sold approximately 2 million copies of her records, having won some international prizes and being advertised and featured on the Internet, such an acquisition made in order that the acquired name may resolve to a pornographic site, especially considering the average age and characteristics of the market and audience of Complainants in this case, constitutes bad faith registration and use.
The third requirement of the Policy has been therefore fulfilled.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lorieonline.com> be transferred to the Complainants.
Kiyoshi I. Tsuru
Dated: June 5, 2003