WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Utada Hikaru v. Sophia Univ

Case No. D2003-0684

 

1. The Parties

The Complainant is Utada Hikaru, c/o Inouye & Ogden of New York, New York, United States of America; represented by Mr. Gary S. Morris of Kenyon & Kenyon, Washington DC, United States of America.

The Respondent is a person or entity calling himself "Sophia Univ", of Tokyo Japan. The true identity of the Respondent is not known. Sophia University, a recognized tertiary institution in Tokyo, has advised the Complainantís counsel that it has no connection with the disputed domain name and that the University has been registered as owner without its authority and has no access or control of the domain name.

 

2. The Domain Name and Registrar

The disputed domain name, <utadahikaru.com> is registered with NamesDirect.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 29, 2003. On September 1, 2003, the Center transmitted by email to NamesDirect.com a request for registrar verification in connection with the domain name at issue. On September 3, 2003, NamesDirect.com. 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"). On September 16, 2003, the Complainant advised the Center of the attitude of Sophia University referred to in the second paragraph above by way of an Addendum to the Complaint.

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 September 22, 2003. In accordance with the Rules, paragraph 5(a), the due date for a Response was October 12, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on October 14, 2003.

The Center appointed the Honourable Sir Ian Barker QC as the sole panelist on October 23, 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 disputed domain name is identical to Complainantís personal and professional name.

The Complainant is currently a leading "pop" singer in Japan. Her first album "First Love" debuted in 1999, and sold more than 9.5 million copies, making it the best-selling album ever in Japan. Ms. Utada was featured on the cover of Time magazine in a special Fall 2001 issue, entitled "Music Goes Global", and in an article in Time magazine, "Diva on Campus," by Christopher John Farley, in 2001. Her song "Blow My Whistle" was part of the sound tract of the popular American movie "Rush Hour 2," released in 2001. In the latter part of 2001, MTV featured her in solo "unplugged" MTV performances in Japan. She has been called a "superstar female vocalist" by Billboard magazine, and "the leading Japanese pop star" by Japan Weekly Monitor. Her musical talent is recognized internationally. The Complainant was born in the United States and is as well-known in that country as in Japan.

The Complainant has no registered trademarks. Her popularity in many countries relies on her musical talents as expressed in concerts and recordings, and described in magazine articles, interviews etc. The Complainant gave the Respondent no rights in respect of her name.

The prior registration listing of the disputed Domain Name was by an who linked it to the "Hiratsuka Website" at "www.tosatu.com" which in turn was linked to a series of pornographic websites. While he was the listed registrant of the disputed Domain Name, the prior registrant posted an unsolicited offer to sell it for 5,500 British pounds on a domain-name auction.

On June 3, 2002, an intellectual property attorney acting for the Complainant sent a certified Ďcease and desistí letter to the prior registrant. The prior registrant indicated that he would transfer the domain name, but he never completed the necessary forms to process the transfer.

The registration information for the Domain Name was subsequently changed, and is now listed as being registered to "Sophia Univ." of Tokyo, Japan. Sophia University is a prestigious private university in Tokyo which, as noted in the second paragraph, did not authorize registration of the disputed domain name.

Neither the current Respondent nor the prior registrant has been given any rights in or to the disputed Domain Name by the Complainant.

 

5. Partiesí Contentions Ė Complainant

Complainantís fame and popularity give her the right to prevent others from capitalizing on her well-known name. WIPO Panels have recognised that a publicly-known entertainer, artist or sports figure need not register his/her name as a trademark or service mark in order to establish and enforce exclusive rights in his/her name. Rather, common law rights developed in a public figureís name are sufficient to show a mark identical or confusingly similar to a domain name. The Complainant has achieved international renown due to her widespread success in the music industry. She is entitled to pursue those who improperly trade off her rights. See Julia Fiona Roberts v Russell Boyd, WIPO Case No. D2000-0210; Jeanette Winterson v Mark Hogarth, WIPO Case No. D2000-0235; Hunton & Williams v American Distribution Systems, Inc. et al., WIPO Case No. D2000-0501; Nicole Kidman v John Zucarrini, d/b/a Cupcake Party, WIPO Case No. D2000-1415.

Moreover, because of the widespread identification and recognition of her name by the public and the press, the Complainant has established a right of publicity in her name that prevents its misappropriation by others. The right of publicity recognizes a plaintiffís rights in his/her identity, and it prevents a defendantís unauthorized use of that identity. See Aguilar v. Ragusa, 572 N.Y.S.2d 164 (4th Depít 1991); Abdul-Jabbar v General Motors Corp., 75 F.3d 1391, 1398 (9th Cir. 1996); Geary v Goldstein, 1996 WL 447776, n.7 (S.D.N.Y. 1996).

The Respondentís (and prior registrantsí) use and registration of the disputed domain name constitute bad faith as provided by the Policy, since that registration was done: (1) primary 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 the documented out-of-pocket costs directly related to the domain name; (2) to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has in a pattern of such conduct; (3) primarily for the purpose of disrupting the business of a competitor; or (4) by using the domain name, the Respondent "intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation." Policy, para 4(b)(i-iv).

WIPO Panels have held that the uniqueness of a personal name in a domain name, when identical to the Complainantís personal name, makes it extremely difficult to foresee any justifiable use that the Respondent could claim. On the contrary, selecting her unique name gives rise to the impression of an association with the Complainant, which is not based in fact. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Daniel C. Marino, Jr. v Video Images Productions, et al., WIPO Case No. D2000-0598. The Respondentís actions therefore are done in bad faith.

Moreover, the prior registrant's unsolicited offer to sell the domain name falls squarely into the recognized principle that an offer to sell a domain name is strong evidence of bad faith. See Policy, 4(b)(i). See also McKinsey & Company, Inc. and McKinsey Holdings, Inc. v Jerome Zimmermann, WIPO Case No. D2001-0009; Dunkiní Donuts Incorporated and Dunkiní Donuts USA, Inc. v. Random Thinkers and Patrick Huba, WIPO Case No. D2001-0104 (offer to sell found to constitute bad faith); The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038 (registrantís making known that domain name was for sale considered evidence of bad faith); Microsoft Corporation v. Amit Mehrotra, WIPO Case No. D2000-0053.

Additionally, the prior registrant's use of the site of the disputed domain name to redirect to a pornographic site is evidence of bad faith. The posting of pornographic content on a website under a domain name that corresponds to a third partyís mark is a bad-faith use of the domain name. Coral Trademarks, Ltd, v. Eastern Net, Inc., WIPO Case No. D2000-1295.

The Respondent is attempting to confuse consumers by registering the domain name and operating a web site. The current web site associated indicates that the website is Ďunder constructioní but provides a link to Toshiba-EMIís legitimate website featuring the Complainants'website. This creates the false impression that there is an affiliation, sponsorship or other relationship between the Complainant (and her recording label, Toshiba-EMI) and the Respondent, and/or that she and Toshiba-EMI in some way sponsor or approve of the Respondentís activities. It also interferes with the Complainantís business activities by diverting those consumers who are interested in her to other, non-related subjects. Likewise, the prior registrant's website displayed pornographic material to those web users who were expecting to see more information and materials about the Complainant.

Attempting to attract Internet users familiar with the Complainant is confusing as to the source, sponsorship or endorsement of a website associated with her name. Such behaviour constitutes bad faith. See also American Online, Inc. and AOL International, WIPO Case No. D2000-0654 (intent to trade on goodwill of complainant considered bad faith); Encyclopedia Britannica Inc. v Shedon.com, WIPO Case No. D2000-0753.

The Respondent has no rights to the Domain Name, which have been registered and used in bad faith. The Respondent has used false information to register the Domain Name and is concealing information about his or her identity. A search on the publicly available Whois database reveals that the registrant failed to meet its obligation to provide accurate address information for its domain name registrations to the registrar of the Domain Name, NamesDirect.com.

Respondent

The Respondent has filed no response and has made no submissions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable."

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no legitimate rights or interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

The Panel has considered the submissions and evidence and largely agrees with the Complainantís submissions as outlined above.

Identical or Confusingly Similar

The disputed domain name is identical to the Complainantís common law mark established by the Complainantís international reputation as a successful vocalist. The case is similar to many WIPO decisions in which the names of famous people with a reputation in a given area Ė (e.g. writing, singing, acting) had been found to have generated a common law mark arising out of that reputation. Many of these decisions are noted in the Complainantís submissions quoted above. See also Francesco Totti v. Jello Master, WIPO Case No. D2002-0134 in respect of a famous sporting personality. One essential element in finding a common law mark in respect of a famous personality is that the personís image or name is a marketable commodity used for direct commercial purposes in marketing his/her own goods and services: See R.E. ĎTedí Turner & Ted Turner Film Properties LLC. v. Mazem Fahmi, WIPO Case No. D2002-0251 and Isreal Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540.

In the present case, the Complainant has established a broad reputation as a vocalist, enhanced by the marketing of her name for her own commercial purposes. Accordingly, her case is similar to those of other personalities in the literary, musical and sporting worlds cited earlier. The first criterion under the Policy is proved.

Legitimate Rights and Interests

The Respondent has no legitimate rights or interests in the disputed Domain Name. The Complainant gave it none. There is no evidence from the Respondent which could raise any of the matters in Paragraph 4(c) of the Policy. Accordingly, the Complainant has discharged the onus on the second criterion.

Bad Faith

The Panel infers bad faith registration and use from the following facts:

(a) The use of a famous personís name in a domain suggests an intent to divert users seeking information on that celebrity (see Nicole Kidman v. John Zuccarini, WIPO Case No. D2000-1415).

(b) The history of improper registration detailed in the Complainantís submissions.

(c) The offer by the prior registrant to sell the disputed domain name.

(d) The link in the website to the legitimate website of the Complainantís recording company. The link indicates (wrongly) a connection between the Complainant and the Respondent.

(e) The representation by the Respondent as to the Registrar of the name of a recognized university which did not authorize the registration. The Panel strongly questions the quality controls of the Registrar which allowed such a registration to occur.

This case is simply another in a long line of attempts by domain name registrants to capitalize on the fame and reputation of persons well-known internationally. Such blatant attempts usually fail.

The third criterion has been established and the Complainant must prevail.

 

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name <utadahikaru.com> is identical to the trade in which the Complainant has rights; and

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

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

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <utadahikaru.com> be transferred to the Complainant.

 


 

Hon. Sir Ian Barker QC
Sole Panelist

Dated: October 29, 2003