WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
John Tesh v. Payphone Search LLC
Case No. D2005-0894
1. The Parties
The Complainant is John Tesh, Los Angeles, California, United States of America, represented by Allen Matkins Leck Gamble & Mallory LLP, United States of America.
The Respondent is Payphone Search LLC, Charlestown, St. Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <johntesh.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2005, naming as respondent S.A., Inc., with an address in Jupiter, Florida, United States of America. On August 22, 2005, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On September 11, 2005, Moniker Online Services, LLC transmitted by email to the Center its verification response stating that the current Respondent, Payphone Services, LLC of Charlestown, St. Kitts and Nevis, is listed as the registrant and providing the contact details for the administrative contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 28, 2005, by e-mail, and on October 4, 2005, in hard copy. The Center verified that the Complaint, together with the amendment to 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 October 5, 2005. In accordance with the Rules, Paragraph 5(a), the due date for the Response was October 25, 2005. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on October 31, 2005.
The Center appointed D. Brian King as the Sole Panelist in this matter on November 7, 2005. 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 facts relevant to the current dispute are set out in the Amended Complaint. Considering the evidence submitted by the Complainant and the reasonable inferences to be drawn therefrom, the Panel finds the following facts to have been established.
The Complainant, John Tesh, is an individual engaged in the entertainment and broadcasting industry. Among other activities, he has been a television host of “Entertainment Tonight” in the United States of America, a recording artist, a music director and a syndicated radio show host.
The Respondent, Payphone Search LLC, registered the disputed domain name on December 11, 2003. Currently, the Respondent uses the disputed domain name to operate a website that provides, inter alia, links to “Sponsored Results”, such as online music stores selling the Complainant’s recordings. The website also links to “search-friendly indexes” for products and services in a broad range of categories, such as education, finances, health and entertainment. Visitors can also use the search engine to find links to websites relating to various goods or services.
5. Parties’ Contentions
The Complainant asserts that he is a well-known television host, recording artist, music director and syndicated radio show host who has been active in the entertainment and broadcasting industries for more than 25 years, resulting in world-wide recognition as a leading and respected figure in these industries.
On this basis, the Complainant argues that he has common law trademark rights in his name, on the ground that the name “John Tesh” has acquired secondary meaning and is associated by consumers with the Complainant. The Complainant notes that the disputed domain name is identical to his name, except for the “.com” TLD. According to the Complainant, the Respondent’s use of the disputed domain name infringes upon the common law trademark he possesses in his name and clearly causes a likelihood of confusion. The Complainant refers in this connection to Section 2(d) of the U.S. Lanham Act, 15 U.S.C. Section 1052(d).
The Complainant emphasizes that he has never authorized the Respondent to use his name in any manner. According to the Complainant, the Respondent never made any demonstrable preparations to use the disputed domain name, nor has it ever been commonly known by the disputed domain name, nor has it operated any business under this name. The Complainant adds that the Respondent has used the disputed domain name misleadingly for commercial profit, with the intent to attract Internet users to the Respondent’s website by trading on the fame of the Complainant’s mark in his name.
The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain name. At the time the Respondent registered the domain name, the Complainant was already a well-known entertainment personality and had acquired common law trademark rights in his name.
The Complainant asserts that the Respondent is using the Complainant’s name for commercial gain by profiting from providing “Sponsored Results” on its website and argues that this is an illegitimate use of the disputed domain name. On two occasions in May and June 2005, the Complainant submitted on-line bids of 401 United States dollars to purchase the disputed domain name, but he received only automated e-mail responses from the Registrar. The Respondent never acknowledged or responded to either bid.
Finally, the Complainant argues that the Respondent is using the disputed domain name in bad faith. According to the Complainant, the Respondent clearly seeks to attract fans and consumers who are seeking information about the Complainant to its website and to take advantage of initial interest confusion.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Because the Respondent defaulted, the Panel has considered whether the Respondent was afforded adequate notice of this proceeding. The Panel concludes that the Center has fulfilled its duty under Paragraph 2(a) of the Rules “to employ reasonably available means calculated to achieve actual notice to Respondent”. See VoiceStream Wireless Corp. v. Polanski, WIPO Case No. D2001-1413 (March 25, 2002). In this context, the Panel would, however, encourage the Registrar in future cases to cooperate more readily with the Center in expeditiously notifying responding parties that proceedings have been brought against them under the Policy.
The Center e-mailed its Request for Registrar Verification on August 22, 2005, asking for confirmation of, among other things, the fact that S.A., Inc. was the current registrant of the disputed domain name. Noting the tight schedule imposed by the Rules, the Center requested a response within two days. Ten days later, there had been no response, and the Center e-mailed a reminder to the Registrar on September 1, 2005. Another ten days passed before the Registrar finally replied on September 11, 2005.
In its reply, the Registrar listed Payphone Search LLC as the current registrant, without further explanation, although the Whois database had shown S.A., Inc. as the registrant as of August 22, 2005, when the Center had sent its initial verification request. The day after receiving the Registrar’s response, the Center sent an e-mail to the Registrar noting the discrepancy and pointing out that the transfer of a domain name registration during a pending administrative proceeding is prohibited by Paragraph 8(a) of the Policy. The Center asked for information concerning the circumstances of the transfer and also requested that the disputed domain name be retransferred to S.A., Inc.
The Registrar replied on the following day, September 13, 2005, as follows: “This domain did not change ownership – the domain was using our privacy services and this is the legal registrant of the domain. Please let me know if you have any additional questions.” The Center e-mailed another request for clarification on September 15, 2005, and received a very similar response on September 18, 2005, although this time the Registrar’s response explicitly confirmed that Payphone Search LLC was “the legal registrant”.
More time passed as the Center contacted the Complainant and requested (and received) an amendment to the Complaint naming Payphone Search LLC as the Respondent. Although this change was handled expeditiously by both the Center and the Complainant, it was not until October 5, 2005—more than six weeks after the submission of the original Complaint—that this proceeding formally commenced and the Center began its effort to notify the Respondent of the proceeding.
The Center sent copies of the Complaint by courier to both the address in Florida that had been listed for S.A., Inc. and the address in St. Kitts and Nevis given by the Registrar for Payphone Search LLC. The courier’s database confirms that the copy sent to Florida was delivered as addressed, but the copy sent to Nevis was returned to the Center. The Center also sent electronic copies of the Complaint, without attachments, to the email addresses recorded in the Registrar’s database for both the Respondent and S.A., Inc., as well as to firstname.lastname@example.org. The messages sent to the Respondent’s e-mail address and to email@example.com were returned as undeliverable; the e-mail to S.A., Inc.’s address was not returned.
Thus it appears that notice was actually received by S.A., Inc. It seems, however, that “S.A., Inc.” may actually be the Registrar, which uses that corporate name to mask the identity of registrants as part of its “privacy service”. See “http://www.moniker.com/domains/domain-privacy.jsp”. Much more doubtful, however, is that actual notice was received by the Respondent, Payphone Search LLC, since hard copies and e-mails sent to the addresses in the Registrar’s database could not be delivered. Nonetheless, it is the Panel’s conclusion that the Center has done all that it could reasonably do to give notice of this proceeding to the Respondent. It appears that the Respondent provided inaccurate and/or incomplete contact information when it registered the disputed domain name. That being the case, to the extent that the Respondent did not receive actual notice, the Respondent itself is responsible for this. The Policy cannot be evaded by making oneself unreachable.
Turning to the merits, Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant bears the burden of proof on each of these elements. See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (August 23, 2000). The Panel may draw inferences based upon the Respondent’s default (Paragraph 14(b) of the Rules). The Panel shall, however, draw only such inferences therefrom as have been established or can fairly be inferred from the facts presented by the Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence. See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465 (August 22, 2003).
A. Identical or Confusingly Similar
The disputed domain name, <johntesh.com>, is obviously identical (except for the “.com” gTLD) to the Complainant’s name. The question under the first element, therefore, is whether the Complainant has “rights” in his own name for purposes of the Policy. The Complainant acknowledges that he does not hold any registered marks for the name John Tesh. The Policy does not, however, require that a complainant must hold rights specifically in a registered trademark or service mark. Indeed, former panels have found that unregistered personal names might fall under the scope of Paragraph 4(a)(i) of the Policy. See Final Report, Second WIPO Internet Domain Name Process, at para. 182 (available on WIPO website).
In particular, previous panels have held that common law trademarks are sufficient under the Policy. See Jeanette Winterspoon v. Mark Hogarth, WIPO Case No. D2000-0235 (May 22, 2000); Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (May 29, 2000); Rita Rudner v. Internetco Corp., WIPO Case No. D2000-0581 (August 3, 2000); Patricia Ford and Online Creations Inc. v. Damir Kruzicevic, WIPO Case No. D2001-0059 (March 20, 2001). According to Paragraph 15(a) of the Rules, the Panel “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. In the current case, the Complainant is a United States resident. It is not clear where the Respondent is located or under which jurisdiction’s law it is organized; the St. Kitts and Nevis address in the Registrar’s database, being apparently erroneous and possibly fictitious, does not necessarily imply that the Respondent has any connection to that country. Considering the evidence available, the Panel finds that it is appropriate to apply the concept of common law rights, as it exists in the United States of America.
Briefly stated, common law rights in the United States of America arise out of the use of a mark in commerce in connection with goods or services. That is true whether the mark is a traditional mark on goods or a personal name that has come to be associated with particular goods or services. See Patricia Ford and Online Creations Inc. v. Damir Kruzicevic, WIPO Case No. D2001-0059 (March 20, 2001). The key element in previous decisions is the fact that the person in question has become renowned so that his or her name has become an indication of source for consumers. See, e.g., Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (January 23, 2001).
The assertions in the Complaint are sufficient to establish a common law right. To be sure, these assertions would have been more powerful if accompanied by written evidence documenting the Complainant’s fame—a somewhat surprising omission since the Complainant is represented by a lawyer. Nonetheless, the Complaint provides specific reasons for believing that the Complainant has achieved sufficient fame in his fields of endeavor, and these are reasons that are easily verified from public sources including the Respondent’s own website. The Complainant refers, for example, to his long period hosting a nationally broadcast television program (“Entertainment Tonight”), and says that he has sold millions of music albums. Especially in the absence of any contrary evidence, the Panel finds the Complainant’s reputation sufficiently established to conclude that he has protected rights for purposes of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The burden of proving the elements contained in Paragraph 4(a) of the Policy lies with the Complainant – including in respect of the Respondent’s lack of rights or legitimate interests in the disputed domain name. However, previous panels have recognized that it would be unfair and impractical to demand stringent proof of a negative, particularly where the relevant evidence is likely to be in the possession of the Respondent. Accordingly, a prima facie showing by the Complainant is sufficient, unless the Respondent comes forward with evidence tending to show a right or legitimate interest in the disputed domain name. See H.J.M. De Vries, Leidseplein Beheer B.V. v. O.E.W. van der Zwan, WIPO Case No. D2004-0174 (June 7, 2004); Croatia Airlines d.d. v. Modern Empire Internet Ltd., Case No. D2003-0455 (August 21, 2003).
Here, the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant says without contradiction that he never authorized the Respondent to use his name. In light of the Respondent’s use of the disputed domain name for a generic marketing website, the Complainant’s assertion that the Respondent has no rights or legitimate interests in the Complainant’s name is plausible and sufficient for prima facie purposes.
Paragraph 4(c) of the Policy lists three circumstances that, if found by the Panel to be established, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. The Panel finds on the evidence and argument presented that these circumstances, or others demonstrating rights or legitimate interests, are not present here.
First, the Respondent has not used the domain name in connection with a bona fide offering of goods or services (Paragraph 4(c)(i) of the Policy). On the state of this record, the most plausible conclusion is the one urged by the Complainant: that the Respondent seeks to attract the Complainant’s fans, and consumers who are seeking information about the Complainant, and then refer them to “sponsored” links from which the Respondent collects a fee. Such a parasitic use of the Complainant’s name, while undoubtedly commercial, is not bona fide under the Policy. See Helen Folsade Adu known as SADE v. Quantum Computer Services Inc, WIPO Case No. D2000-0794 (September 26, 2000).
In addition, the Panel finds it probable that the Respondent was never commonly known by the disputed domain name, within the meaning of Paragraph (4)(c)(ii) of the Policy, given that the contact details provided by the Registrar make no mention of any name similar to the Complainant’s mark.
Finally, the Respondent has been using the disputed domain name for commercial purposes, precluding any claim of a legitimate non-commercial or fair use of the domain name under Paragraph (4)(c)(iii) of the Policy.
The Panel finds the second element of the Complainant’s case to be established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four non-exclusive indicia of bad faith use and registration. The Complainant relies solely on the fourth: “by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or of a product or service on Respondent’s web site.”
As previously noted in connection with the second element, the Panel finds that this description fairly describes the Respondent’s activities. With no other explanation forthcoming from the Respondent, the Panel has little choice but to conclude that the Respondent is using the apparent notoriety of the Complainant’s name to induce consumers into visiting the Respondent’s website, and that it does so in order to generate income from the sponsored links found there.
Therefore, the Panel also finds the third element to be sufficiently established.
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 <johntesh.com> be transferred to the Complainant.
D. Brian King
Dated: November 21, 2005