WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Victoria Rowell v. Telco, Regsnet and Jeff Martin
Case No. D2003-0712
1. The Parties
1.1 The Complainant is Victoria Rowell, Beverly Hills, California, United States of America, represented by Isaacman, Kaufman & Painter, Beverly Hills, California, United States of America.
1.2 The Respondent is Telco, Jeff Martin, Vallejo, California, United States of America; and Regsnet, Grand Cayman, Georgetown, Cayman Islands.
2. The Domain Names and Registrar
2.1 The domain names subject to this Complaint are: <victoriarowell.com> and <victoriarowell.net>.
2.2 The Registrar of both names is Tucows, Inc.
3. Procedural History
3.1 The WIPO Arbitration and Mediation Center (the "Center") received the Complaint by electronic copy on September 9, 2003, followed by receipt of the hard copy of the Complaint on September 12, 2003. The Center sent an Acknowledgement of Receipt of Complaint to Complainant on September 10, 2003.
3.2 On September 10, 2003, the Center sent to Tucows, Inc., the Registrar identified in the Complaint, a request for Registrar Verification. The Registrar responded affirmatively on September 10, 2003.
3.3 On September 16, 2003, the Center verified that the Complaint satisfies 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").
3.4 On September 16, 2003, in accordance with Paragraphs 2(a) and 4(a) of the Rules, the Center notified the Respondent of the Complaint and the commencement of these Administrative Proceedings. The date set for a Response from Respondent, in accordance with Paragraph 5(a) of the Rules, was October 6, 2003. No response was received by the Center, and the Center notified Respondent of its default on October 7, 2003.
3.5 On October 16, 2003, the Center appointed an Administrative Panel consisting of Jay Simon as the sole panelist. The Panel submitted a Statement of Acceptance and Declaration of Impartiality and Independence as required by the Center and in compliance with Paragraph 7 of the Rules. A projected decision date of October 30, 2003, was indicated.
3.6 The case file was transmitted electronically to the Panel as October 16, 2003, and a hard copy was forwarded to the Panel that same day.
4. Factual Background
4.1 Complainant is well known in film and television having appeared in a number of films and television productions, including the long running television series The Young and the Restless (virtually continuously since 1973), and Diagnosis Murder (in which she wrote for the series in 1993). Complainant has also appeared in several television movies and movies in general circulation. The latter including Dumb & Dumber (1994). The Distinguished Gentleman (1992), Secrets (1997), Dr. Hugo (1998), A Wake in Providence (1999), Fraternity Boys (1999), Black Listed (2003), and the soon to be released in 2004, Motive. Complainant has made a number of guest appearances on television, including: The Cosby Show (1984), The Fresh Prince of Bel-Air (1990), Family Feud (1988), Sin City Spectacular (1998), Family Law (1999).
4.2 By virtue of her activities Complainant has had a long, and well known commercial career. Complainant is known by her birth name (has not adopted a pseudonym), and is active promoting dance (having begun her career as a dancer for American Ballet Theatre II), and charitable endeavors.
4.3 The Complainant is based upon the domain same registrations of <victoriarowell.com>, and <victoriarowell.net> registered by Respondent on or about February 2002.
4.4 The disputed domain names resolve to a website with a link to a pornographic site.
4.5 Respondent having failed to respond, the allegations and evidence filed in the Complaint are uncontested.
5. The Parties’ Contentions
5.1 Complainant contends that the disputed domain names are identical to or confusingly similar to a trademark or service mark in which the Complainant has rights.
5.2 Complainant further contends that even though she has not registered her name as a trademark, she has common law rights in her name by virtue of her extensive commercial activities in television and film, as well as under the Lanham Act, Section 2(d), 15 U.S.C.A. Section 1052(d), and that an unregistered mark can support a claim under the Policy and the Rules.
5.3 Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent has received no license or other grant of authority from Complainant to use the mark embodied in the now disputed domain names.
5.4 Complainant contends that the disputed domain names have been registered and used in bad faith.
5.5 Complainant has requested transfer of the disputed domain names to Complainant.
5.6 Respondent has failed to respond to the Complaint and is in default.
6. Discussion and Findings
6.1 The Policy, as effected by the Rules and the Supplemental Rules, provides specified remedies to trademark owners against registrants of domain names where the trademark owner (Complainant) proves each of the following elements:
(i) that the domain name is identical or confusingly similar to a trademark or source mark in which Complainant has rights; and
(ii) that the registrant (Respondent) has no rights or legitimate interest interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 This case involves the registration of domain names corresponding to the name of Complainant, Complainant being an actor and writer. The Policy is applicable to disputes of this nature, see the Report of the Second WIPO Internet Domain Process, September 3, 2001, Paragraph 172-199, and cases cited on pages 52-54 of the Report.
6.3 In this case, Complainant has the burden of proof, by a preponderance of the evidence, respecting each element as regards the domain names <victoriarowell.com> and <victoriarowell.net>. Because of the similarity of the domain names in dispute, they differ only in regard to the suffixes ".com" and ".net", the disputed domain names will be considered collectively. Complainant's burden is lessened by Respondent's failure to contest any allegations or evidence submitted by Complainant. Further, under Paragraph 14 of the Rules, the Panel may draw such influences from the default as it considers appropriate.
A. Identical or Confusing Similar (Paragraph 4(a)(i) of the Policy)
6.4 There is no doubt that Complainant is and has been for some years a well known and reputable personality, active commercially in film and television as an actor and writer. Indeed, in the Complaint, Respondent is alleged to have stated that his "wife was a big fan of Victoria Rowell." This allegation is not contested by Respondent and, therefore, must be accorded significant weight regarding its truthfulness.
6.5 By virtue of her successful commercial career and reknown in connection with entertainment services, this Panel finds that Complainant has established common law trademark rights in her name. See Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (May 29, 2000); Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 (May 22, 2000); Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415, (January 23, 2001).
6.6 The disputed domain names are identical to Complainant's name with only ".com" or ".net" added. Thus, there is no question that the disputed domain names are "identical or confusingly similar" to the name in which Complainant has rights, and this Panel finds that Complainant has met its burden respecting Paragraph 4(a)(i) of the Policy.
B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)
6.7 Complainant alleges that Respondent has received no license or grant of authority from Complainant to use Complainant's name, the name in which Complainant has trademark rights, in any domain name. The allegations being uncontested, the Panel accepts that Respondent has no license or other authority from Complainant to use the name in which Complainant has rights.
6.8 The Policy at Paragraph 4(c) lists three, non-exclusive methods for demonstrating rights to and legitimate interests in the domain name.
(i) before any notice of the dispute, Respondent's use or preparation to use the domain name or a name corresponding to the domain name is in connection with a bona fide offering of goods and services; or
(ii) Respondent has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate non-commercial 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.
6.9 Respecting item (i), Paragraph 6.7 above, when Web surfers address their browsers to either of the disputed domain names they are taken to splash pages for Victoria Rowell, which bear the denomination "Official Victoria Rowell Web Site." Upon entering either site, surfers are redirected to a pornographic site for which fees may be charged for further exploration of the site.
6.10 Respondent's use of the domain names, ostensibly for a fan site, are actually for use in redirecting web surfers to pornographic sites for Respondent's commercial interest. These sites have no relationship to Complainant or any of Complainant’s commercial activities. Thus, it appears to this Panel that Respondent is simply trading on Complainant's fame and reputation for Respondent's own purposes, and Respondent's use cannot constitute a bona fide offering of goods or services. See Madonna Ciccone p/k/a Madonna v. Dan Parisi and Madonna.com, WIPO Case No. D2000-0847 (October 12, 2000).
6.11 Respecting item (ii) of Paragraph 6.7 above, Respondent, having defaulted regarding a response, there is no evidence that Respondent has ever been commonly known by the disputed domain names.
6.12 In the strictest sense, Respondent has used the disputed domain names for its own purposes. But, in view of the short time between registration and the correspondence instituted by Complainant, and the extensive number of names registered by Respondent, see Annex 8 to the Complaint, Respondent can not claim that it has been commonly known by these domain names as opposed to any of the other registered domain names. Also, Complainant's fame was well known generally, and specifically to Respondent, see Paragraph 6.3 above, before Respondent's registration of the disputed domain names, suggesting that Respondent registered the disputed domain names because of Complainant's fame rather than because of any interest of Respondent.
6.13 Respecting item (iii) of Paragraph 6.7 above, Respondent's use of the disputed domain names can not be said to be for legitimate non-commercial purposes, and in view of the virtually immediate redirection of the internet user to a site having no relation to Complainant, there can not be any fair use of the disputed domain names.
6.14 Further, the use of the disputed domain names is solely for redirecting the internet user to a site which is devoted to Complainant's pecuniary interest, and the nature of the site surely tarnishes the commercial reputation that Complainant has worked long and hard to develop, as well as any good or charitable works that Complainant, having developed a commercial reputation, may endeavor to accomplish.
6.15 In the Panel's review of the evidence regarding Paragraph 4(c) of the Policy, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain names. See also The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, WIPO Case No. D2002-0701.
C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)
6.16 Paragraph 4(b) of the Policy sets out four, non-exclusive indicia of bad faith. The Panel notes that a showing of bad faith, in the sense of intentional malice on the part of Respondent, is not necessary to satisfy any of the elements of Paragraph 4(b) of the Policy. It is necessary only that Respondent's actions be shown, again by a preponderance of the evidence, to fit any of the recited elements at any time prior to or during the course of these Administrative Proceedings.
6.17 From the evidence submitted by Complainant, this Panel finds that Complainant has satisfied at least two of the indicia of bad faith put forth in Paragraph 4(b) of the Policy, namely, Paragraphs 4(b)(i) and 4(b)(iv).
6.18 In respect of Paragraph 4(b)(i) of the Policy, the registration of the domain names appear to have no purpose other than to create a web site that immediately directs a user to another site having no relationship to Complainant and which is used for Respondent's financial gain. Further, Complainant alleges that Respondent offered to sell the disputed domain names to Complainant for $6,000, an amount far in excess of Respondent's out-of-pocket costs directly related to registering the disputed domain names. These allegations, being uncontested must be given substantial weight.
6.19 Respondent has registered many names, 96 as noted in The Complaint, only one of which is the name of a famous personality, and that name was readily offered to Complainant without any claim of right by Respondent.
6.20 In respect of Paragraph 4(b)(iv) of the Policy, it is clear to this Panel that Respondent "intentionally attempted to attract, for commercial gain, Internet users to" Respondent's web site "by creating a likelihood of confusion with Complainant's mark as to the source or location or of a product or service" on Respondent's web site.
6.21 Upon browsing the web under the disputed domain names, the browser is immediately redirected to sites having no relationship to Complainant, are not legitimately associated with Complainant, and for the pecuniary interests of Respondent.
6.22 This Panel is not convinced that the Telstra case, Telstra v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) is controlling in light of the facts of this case. For one thing, in Telstra, Complainant had used a name that was particularly strong by virtue of its registration and use for 100 years. For another, the Registrant in Telstra had made no use of the disputed name and here, Respondent has used the name, albeit for illegitimate purposes. The activities of Complainant and Respondent in this case, while similar to that in Telstra are not believed to be similar enough for the Telstra case to govern the facts of this case.
6.23 Nonetheless, for the reasons stated above, this Panel finds that Respondent has registered and used the disputed domain names in bad faith.
This Panel finds that Complainant has proven each of the elements of Paragraph 4(a) of the Policy, that is, (i) the disputed domain names are identical or confusingly similar to the trademark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in the disputed domain names; and (iii) Respondent has registered and used the disputed domain names in bad faith. Therefore, pursuant to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain names <victoriarowell.com> and <victoriarowell.net> be transferred to Complainant.
Dated: October 30, 2003