WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Utada Hikaru v. utada fan

Case No. D2003-0686

 

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 "utada fan, Japan". No other meaningful contact details for the Respondent are available. The Panel questions how registration was able to be effected in the absence of such details being provided to the Registrar by the Respondent.

 

2. The Domain Names and Registrars

The disputed domain names, <utadahikaru.net> and <utadahikaru.org> are registered with OnlineNic, Inc. d/b/a China-Channel.com. The disputed name <utadahikaru.info> is registered with eNom, Inc.

 

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 the Registrar OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain names at issue. On September 2, 2003, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for <utadahikaru.net> and <utadahikaru.org>, 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"). The Center made a similar request for registrar verification to eNom, Inc., in connection with the domain name <utadahikaru.info>. Absence of eNom, Inc., Registrar verification response, the Center made a formal compliance check using the publicly available WHOIS data, which was printed and made part of the case file by the Center.

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 24, 2003. In accordance with the Rules, paragraph 5(a), the due date for a Response was October 14, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on October 15, 2003.

The Center appointed the Honourable Sir Ian Barker QC as the sole panelist in 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 names are 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. She 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. Also, her song "Blow My Whistle" was part of the sound tract of the popular American movie "Rush Hour 2," which was released in 2001. In the latter part of 2001, MTV featured her in solo "unplugged" MTV performances in Japan. The Complainant 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 on magazine articles, interviews etc. The Complainant gave the Respondent no rights in respect of her name.

The Respondent was given no rights by the Complainant in respect of the disputed Domain Names.

 

5. Partiesí Contentions Ė Complainant

The 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. D2001-0501; 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, 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 this unique name gives rise to the impression of an association with the Complaint, 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 Registrantsí actions therefore are done in bad faith.

It is obvious that the Respondent has used false information to register these Domain Names 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 Names, OnlineNic, as set forth by the OnlineNic-Member Joint Agreement. In particular, there is no postal address or legitimate voice telephone number listed in the Whois records for the Domain Names. The telephone number is listed as "+81.0000000" (or just +81"), and the zip code is listed as "0000000" or "1234567". Moreover, there is no information provided anywhere on the websites corresponding to the Domain Names about where the business of Respondent is located except some very vague and cryptic information at the bottom of certain web pages, such as "copyright(c) 2001 Atomic-Club" and an email contact address. It is clear that the Respondent is purposely attempting to conceal its address and telephone information to remain anonymous and evade attempts to track and stop his or her nefarious activities.

The Respondent has also listed two of the Domain Names for sale on the websites associated with "www.utadahikaru.net" and "www.utadahikaru.org". These two Domain Names are two of many Domain Names placed for sale on the website. The price for the two Domain Names is listed as "ask" and suggests that the two names can be purchased together as a package deal. This is further evidence of the Respondentís bad faith.

Furthermore, WIPO Panel have found that providing false information so as to obscure the identity of the registrant is evidence of bad faith. See Sud-Chemie AG v. tonsil.com, WIPO Case No. D2000-0376 (failure to provide contact information as required under the Registration Agreement is evidence of bad faith). See Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding bad faith where the "Respondent has taken deliberate steps to ensure that its true identity cannot be determined and communication with it cannot be made"); Yahoo!, Inc v. Eitan Zviely, WIPO Case No. D2000-0273 (finding that "[Respondentís] registrations under phony names" is evidence of bad faith registration and use); 3636275 Canada, dba eResolution v eResolution.com, WIPO Case No. D2000-0110 (finding bad faith registration where the Domain Name "is an unidentified business name of an unidentified business entity"); Salomon Smith Barney Inc v. Salomon Internet Services, WIPO Case No. D2000-0668; Lincoln Property Company v LPC, WIPO Case No. D2001-0238 ("[providing false information] should likewise constitute evidence of bad faith under the non-exclusive list of bad faith factors enumerated in the ICANN policy").

The Respondentís offer to sell two of the Domain Names 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. RandomThinkers 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.

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 names are 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 Israel 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. The first criterion under the Policy is proved.

Legitimate Rights and Interests

As to whether the Respondent has any legitimate rights or interests 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 deceptive registration detailed in the Complainantís submissions;

(c) The offer to sell two of the disputed domain names.

This case is simply another in a line of attempts by domain name registrants to capitalize on the fame and reputation of persons well-known internationally. Such blatant attempts do not usually succeed.

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

 

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain names <utadahikaru.info>,; <utadahikaru.net> and <utadahikaru.org> identical to the mark in which the Complainant has rights; and

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

(c) That the domain names have been registered and are being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names <utadahikaru.info>, <utadahikaru.net> and <utadahikaru.org> be transferred to the Complainant.

 


 

Hon. Sir Ian Barker QC
Sole Panelist

Dated: October 29, 2003