WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pierce Brosnan v. Network Operations Center

Case No. D2003-0519

 

1. The Parties

The Complainant is Pierce Brosnan, c/o Flekman, Baren & Company, Beverly Hills, California, United States of America, represented by Arnold & Porter, United States of America.

The Respondent is Network Operations Center, Alberta Hot Rods, High Prairie, Canada.

 

2. The Domain Name and Registrar

The disputed domain name <piercebrosnan.com> (the "Domain Name") is registered with CORE Internet Council of Registrars.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 1, 2003. On July 1, 2003, the Center transmitted by email to CORE Internet Council of Registrars a request for registrar verification in connection with the domain name at issue. On July 8, 2003, CORE Internet Council of Registrars 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" or "UDRP"), 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 July 9, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2003. The Respondent did not submit any Response. Accordingly, the Center notified the Respondentís default on July 30, 2003.

The Center appointed Dawn Osborne as the sole panelist in this matter on August 13, 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

The Complainant is an internationally famous actor and producer.

The Respondent registered the domain name <piercebrosnan.com> and has redirected it to a commercial website "www.celebrity1000.com".

 

5. Partiesí Contentions

A. Complainant

The Complainantís contentions can be summarized as follows:

(1) The Complainant is an internationally famous film and television actor. Since the late 1970s Mr. Brosnan has appeared in over 50 motion pictures, television series and television programmes including playing the role of James Bond in the popular film series based on the character created by novelist Ian Fleming. Films in which the Complainant has appeared have generated box office sales of over $1 billion in the US alone. In addition to acting, the Complainant has also produced several motion pictures. The Complainant starred in the long-running television series Remington Steele as well as other television series. He is frequently featured in celebrity news and entertainment publications and television news and entertainment programmes. He is also actively involved in the promotion of various charitable causes.

(2) By reason of the foregoing, the Complainant has become famous throughout the world and the name "Pierce Brosnan" has acquired secondary meaning. As a result, the public associates the Complainantís services as an actor and producer with the name "Pierce Brosnan". The Complainant therefore has acquired common law trademark rights in his name and qualifies for protection under the UDRP.

(3) The Respondent has registered the Domain Name and is using it to divert traffic to a commercial website at "www.celebrity1000.com". This site purports to be the "Ultimate Entertainment Source" and offers biographical information regarding some actors. The website, however, contains no information about the Complainant. The website also contains banner advertisements, links to online retailers and uses the services of Engage "for serving and/or targeting of ads, promotions and other marketing messages," all of which presumably generate revenue for the Respondent.

(4) Following discovery of the Respondentís registration and use of the Domain Name, the Complainantís attorney, Sol Rosenthal, sent a letter to the Respondent notifying the Respondent that its use of the Domain Name infringed the Complainantís rights and requesting that the Respondent transfer the Domain Name to the Complainant. No response was received.

(5) Network Operations Center is a pseudonym for the infamous cybersquatter Jeff Burgar. Mr. Burgar, doing business as "Alberta Hot Rods" and the "Stefanie Seymour Club", has engaged in a practice of registering domain names comprised of celebritiesí names. The Respondentís conduct constitutes a pattern of conduct intended to capitalize on the goodwill associated with othersí fame for its own illegitimate purposes, namely to drive Internet traffic to a commercial website owned or affiliated with the Respondent or from which the Respondent receives monetary payment as a result of the Internet traffic brought to such websites by his illegal activities. In a prior UDRP proceeding against Mr. Burgar, the panel noted that "it has been clearly demonstrated, partly through Respondentís admissions, that he obtained a succession of <celebrity.com> domain names and this gives rise to an evident pattern of conduct in which he stockpiled similar registrations." Celine Dion v. Jeff Burgar WIPO Case No. D2000-1838 (February 13, 2001) at 3. 

(6) Multiple proceedings under the UDRP have been successfully prosecuted against Mr. Burgar, doing business under one of his multiple aliases, by celebrities who have obtained transfer or cancellation of domain names registered and used in bad faith by Mr. Burgar, including proceedings involving Kevin Spacey, Michael Andretti, Stephanie Seymour and Dr. Michael Crichton.

(7) The Domain Name is identical or confusingly similar to the Complainantís PIERCE BROSNAN name, the ".com" part of the name to be disregarded for these purposes.

(8) Prior UDRP panels have recognized that Internet users expect to find a celebrity on the Internet at a domain name address comprised of the celebrityís name. See Dr. Michael Crichton v Alberta Hot Rods WIPO Case No. D2002-0872 (November 25, 2002). The Respondent is taking advantage of such Internet user patterns for his own commercial advantage. It is likely that Internet users seeking the Complainantís official site will type the Domain Name into their browsers and be frustrated and confused when they do not reach their goal. The Respondentís registration and use of the infringing Domain Name is highly likely to cause confusion as to the source or sponsorship of the Respondentís website and possibly mislead the public into thinking that the Complainant supports, endorses or is affiliated with the Respondentís "www.celebrity1000.com" website.

(9) The Respondent has no legitimate interest in the infringing Domain Name. The Respondent has no connection or affiliation with the Complainant and has not received any licence, authorization, or consent express or implied to use the PIERCE BROSNAN name in a domain name or in any other manner. The Respondent does not offer any goods or services relating to the Complainant. No information regarding the Complainant is available on the Respondentís commercial "www.celebrity1000.com" website. The Respondent has never been known by the name PIERCE BROSNAN or the Domain Name. Prior UDRP panels have held that the Respondentís "www.celebrity1000.com" website portal "evidences no bona fide offering of goods and services whatsoever and does nothing but misappropriate Complainantís website in order to lure Internet users to Respondentís commercial site." Stephanie Seymour v Jeff Burgar NAF Case No. FA97112 (May 29, 2001).

(10) Respondentís well-documented practice of registering domain names comprised of celebritiesí names demonstrates his bad faith in registering the Domain Name. In other UDRP proceedings the Respondent has admitted to "incorporating the names of famous performers into domain names ... in 75 cases" Celine Dion v. Jeff Burgar WIPO Case No. D2000-1838 (February 13, 2001) at 6. Respondentís entire business is based on registration of countless domain names consisting or comprised of celebrity names for the purpose of driving Internet traffic to Respondentís website. This practice "prevented the celebrities concerned from securing the straightforward ".com" registration for their name as correctly spelled. They, therefore, could not reflect their mark in the particular corresponding domain name. Such conduct falls within the form of bad faith identified in the UDRP, paragraph 4(b)(ii)" Celine Dion v. Jeff Burgar WIPO Case No. D2000-1838 (February 13, 2001) at 6. Given his pattern of conduct, Respondentís bad faith in registering the Domain Name is irrefutable.

(11) Respondent has clearly used the Domain Name in bad faith. Respondent uses the Domain Name to divert Internet traffic to a commercial website. Respondentís same conduct with respect to other celebrity domain names has been held by prior UDRP panels to constitute bad faith use, e.g. Kevin Spacey v. Alberta Hot Rods NAF Case No. FA114437.

(12) The mere fact of diversion, regardless of the content of Respondentís website, is evidence of bad faith use of a domain name. Prior UDRP panels have found that this sort of activity using a domain name comprised of a well-known trademark to attract users to the registrantís website constitutes bad faith use of the domain name. Big Dog Holding Inc. v Frank Day NAF Case No. FA93554 (March 9, 2000).

(13) Even if Respondent had not used the Domain Name to divert Internet users to an active website, his actions still would constitute registration and use in bad faith. Respondent must have expected that any use of the Domain Name would cause harm to the Complainant. The Domain Name is so obviously indicative of the Complainantís services as an actor and producer that the Respondentís use of the Domain Name would inevitably lead to confusion of some sort.

(14) Finally, Respondent has refused to respond to the Complainantís cease and desist letter. Respondentís deliberate silence is further evidence of his bad faith use of this Domain Name.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has 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.

A. Identical or Confusingly Similar

(1) Complainantís Rights

The Complainant is an internationally famous actor and producer with a significant reputation and goodwill in the name PIERCE BROSNAN for entertainment services. Accordingly, the Complainant has demonstrated rights in the unregistered trademark PIERCE BROSNAN.

(2) Identical or confusing similarity

The Domain Name is identical to the Complainantís PIERCE BROSNAN mark, save for the ".com" generic top-level domain which does not serve to distinguish the Domain Name from the Complainantís trademark. The Domain Name is virtually identical and confusingly similar to the Complainantís trademark.

B. Rights or Legitimate Interests

The Respondent has not filed a Response to the Complaint and so has not made any representations concerning any rights or a legitimate interest in the Domain Name. The Respondent does not appear to have any connection with the Complainant and has not received any consent from the Complainant to use the PIERCE BROSNAN mark. The Domain Name points to a commercial website at "www.celebrity1000.com" which does not appear to offer any goods or services relating to the Complainant. It does contain commercial advertising which the Complainant suggests may generate income for the Respondent, although there is no evidence on this question. It does appear that the Complainantís famous mark is being used to attract traffic to the Respondentís site which has no connection with the Complainant, in circumstances where the Respondent has put forward no good reason for use of the Complainantís mark and is simply taking advantage of the reputation and goodwill in the PIERCE BROSNAN name. The Panel finds that the Respondent has not used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services. There is also no evidence that the Respondent has been commonly known by the Domain Name, nor that he is making a legitimate non-commercial or fair use of the Domain Name. Respondent has not demonstrated any rights or legitimate interest in the Domain Name, either by any of the illustrations under Paragraph 4(c) of the Policy or on any other basis.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Rules sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith, including:

- 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; or

- by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

The Respondent has not filed a Response in these proceedings and so has not attempted to controvert the Complainantís allegations of bad faith in these proceedings. Nor did he respond to the letter before action from the Complainant.

The Complainant alleges that the Respondent, Mr. Jeff Burgar, is an individual who has lost a number of UDRP domain name cases related to his admitted common practice of registering celebrity names as domain names. Indeed the Panel is satisfied of the connection as the address given for Mr. Jeff Burgar in Celine Dion v Jeff Burgar WIPO Case No. D2000-1838 is the same as the Respondentís address in this case, not to mention the shared connection with the "www.celebrity1000.com" site and the use of the name "Alberta Hot Rods" in this case by the Respondent and also by Mr. Burgar in other UDRP proceedings involving the registration of celebrity names. Further the Respondent has had an opportunity to respond to the Complainantís allegations in this regard and has not done so. Mr. Burgar appears to have admitted in the Celine Dion WIPO case that he registered at least 75 domain names containing the names of celebrities and a number of celebrities have brought UDRP proceedings successfully against Mr. Burgar or Respondent entities connected with him, including Celine Dion, Kevin Spacey, Michael Andretti, Stephanie Seymour and Dr. Michael Crichton. Accordingly, the Panel is satisfied that in registering the Domain Name the Respondent has engaged in a pattern of conduct of registering celebrity names as domain names and must have intended that this would prevent the owner of trademark rights in those names, such as the Complainant in this case, from registering a domain name corresponding to the trademark. Clearly the Domain Name in this case would be a significant registration to the Complainant being the obvious choice for his main domain name and presence on the Internet.

Further, although Internet users typing the Domain Name into the browser on their computer are highly likely to be seeking an official site connected with the Complainant, the Respondentís site does not have any obvious connection with the Complainant and there is no obvious explanation why the Domain Name has been pointed to a commercial site offering information about celebrities but not the Complainant and bearing commercial advertising. The Respondent has not offered any explanation. The Panel agrees with the Complainant that the Respondent appears to have registered and used the Domain Name to drive Internet traffic to his site for commercial gain and to benefit from likely confusion that the site is connected with the Complainant.

Accordingly, the Panel holds that the Respondent has registered and used the Domain Name in bad faith.

 

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 Domain Name <piercebrosnan.com> be transferred to the Complainant.

 


 

Dawn Osborne
Sole Panelist

Dated: August 27, 2003