WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Tia Carrere v. Steven Baxt

Case No. D2005-1072

 

1. The Parties

1.1 The Complainant is Tia Carrere, of Los Angeles, California, United States of America, represented by Valensi, Rose, Magaram, Morris, & Murphy, PLC, United States of America.

1.2 The Respondent is Steven Baxt, of Glen Waverley, Australia.

 

2. The Domain Name and Registrar

2.1 The disputed domain name <tiacarrere.com> is registered with eNom.

 

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2005. On October 12, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On October 13, 2005, eNom 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”).

3.2 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 19, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was November 8, 2005. The Response was filed with the Center on November 3, 2005.

3.3 The Center appointed Mr. Jay Simon as the Sole Panelist in this matter on November 15, 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.

3.4 An electronic copy of the Complaint was forwarded to the Panel on November 15, 2005, and a hard copy was forwarded to the Panel on that same day.

 

4. Factual Background

4.1 Complainant is a well-known entertainer involved in film and television as well as producing films, and singing. Complainant is of Hawaiian birth and adopted her name in 1984. Complainant has been recognized by People Magazine on its most beautiful people list, had a multi-platinum selling movie soundtrack and received a Lifetime Achievement Award from the Philippine government.

4.2 Respondent registered the disputed domain name on April 13, 2003 presumably as a fan site for Complainant.

4.3 Respondent’s website lists itself as a Tia Carrere fan site and contains pictures of Complainant and some biographical information about Complainant. Equally prominent on the website are links to various Hawaiian resorts and vacations, as well as links to “Ads by Google”. By clicking on this latter link, the Internet user is directed to several pages about Google services and using search-based technology to match advertisements and links “to the content and context of web pages”. Other links are to various commercial sites.

4.4 Other links of Respondent’s web page direct the user to Hawaiian hotels and vacation packages at those hotels.

 

5. The Parties’ Contentions

A. Complainant

5.1 Complainant contends that it has rights in the name by virtue of the prominence she has gained over the years as an entertainer, actress, and producer.

5.2 Complainant contends that the disputed domain name is identical or confusingly similar to the name in which Complainant alleges rights.

5.3 Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name and Complainant has never given permission, authorization, or consent to Respondent to use Complainant’s name in any manner.

5.4 Complainant further contends that Respondent is not known by the disputed domain name and that Respondent does not transact business in goods or services related to Complainant. Complainant further contends that Respondent’s website is a commercial site.

5.5 Complainant contends that the disputed domain name was registered and is being used in bad faith and that Respondent was aware of Complainant’s celebrity status when the disputed domain name was registered.

5.6 Complainant further contends that the fact that Internet users are diverted to commercial websites is evidence of bad faith use and that Respondent is using the disputed domain name to attract Internet users, for commercial gain, by creating a likelihood of confusion with Complainant’s name as to the source, sponsorship, affiliation or endorsement of Respondent’s website.

5.7 Complainant further contends that Respondent’s use of the disputed domain name, discounting the diversion of Internet traffic, would amount to bad faith registration and use because Respondent must have known that injury or harm to Complainant would be caused by the confusion regarding the website.

5.8 Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

5.9 Respondent contends that it has shown legitimate, fair use of the disputed domain name because it was registered to develop and was developed as a fan site.

5.10 Respondent contends it does not divert Internet users for commercial gain and that fan information is found on the pages containing Ads by Google, and that the top of each page reads “Tia Carrere Fan Site” and, therefore there is no confusion regarding sponsorship, affiliation, or endorsement by Complainant.

5.11 Respondent contends that it registered and is using the disputed domain name in good faith and that the remedy sought by Complainant should be denied.

 

6. Discussion and Findings

6.1 The Policy as affected by the Rules and the Supplemental Rules provides specified remedies to trademark rights holders against registrants of domain names where the rights holder (Complainant) proves each of the following elements:

(a) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

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

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

6.2 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element of Paragraph 6.1.

6.3 The initial issue for this Panel is determining whether Complainant can show rights in a personal name. The WIPO overview of WIPO Panel Views on Selected UDRP Questions, available at “http://www.wipo.int/amc/en/domains/search/overview/index.html”, concludes that a consensus view has developed regarding this issue. Thus, while the UDRP does not specifically protect personal names, where an unregistered personal name is being used for trade or commerce, a complainant can establish common law trademark rights in the name. The consensus view cautions that merely having a famous name may not be sufficient to show unregistered trademark rights.

6.4 The Overview is not precedent, merely a review of many WIPO Panel decisions to determine the views of Panels on a variety of issues. Nevertheless, where a consensus has been found, it behooves Panels to follow that consensus and provide predictability to UDRP decisions. See Fresh Intellectual Properties, Inc. v. 800Network.com.Inc., WIPO Case No. D2005-0061, particularly footnote 3.

6.5 In this case, Complainant has shown commercial use of a name adopted by Complainant ostensibly for the furtherance of her career. Therefore, this Panel finds that the name Tia Carrere has sufficient secondary association with Complainant that common law trademark rights exist.

A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)

6.6 The only difference between Complainant’s name (and mark) and the disputed domain name is the omission of the space between the first and last names and the addition of the suffix “.com”. These differences are insignificant and meaningless in the context of domain names. This Panel finds that the disputed domain name is almost identical to Complainant’s name (and mark) and is certainly confusingly similar.

B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)

6.7 Complainant has alleged that it has not authorized in any way, Respondent’s use of Complainant’s name, and obviously, Respondent has not been known, commonly or otherwise, by the name. Respondent asserts fair use of the disputed domain name by developing a fan site devoted to Complainant. The issue then is whether Respondent can have legitimate interests in a fan site, and if so, whether the fan site is a true fan site and clearly non-commercial. See Section 2.5 of the WIPO Overview, above, and cases cited therein.

6.8 Respondent is technically correct in stating that there is no diversion of Internet traffic from its website to other websites. An Internet user must properly place the cursor and click on the link in order to reach the Ads by Google pages. This begs the question. The diversion is that of Internet users searching for Complainant being diverted to Respondent’s website – a website not authorized by Complainant.

6.9 This Panel tends to the view expressed in Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299, where the Panel found that a website identified as Complainant’s name (as is the case here) was not a legitimate or fair use of Complainant’s mark since it diverts Internet traffic to Respondent’s site, thereby potentially depriving Complainant of visits by Internet users. Thus, the right to express views about a subject does not translate into a right to identify one’s self as that subject.

6.10 The website in question shows pictures of Complainant and has some biographical detail about Complainant. Equally prominent on the website are links to commercial activities. The fact that the pages to which the website are linked state that it is a fan site is self-serving, the linked pages being almost entirely commercial in nature. This Panel finds that Respondent is not making fair use of Complainant’s name (and mark) but is using the mark to attract Internet users to Respondent’s website and then providing links to other sites having little or nothing to do with Complainant. Thus, the links contained on Respondent’s website appear to be primarily commercial, and Respondent’s offerings are not bona fide. This Panel finds that Respondent has no rights or legitimate interests in Complainant’s mark.

C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)

6.11 There is no dispute that Respondent knew of Complainant’s name and reputation as an entertainer before registering the disputed domain name. This Panel finds that Respondent registered the disputed domain name in order to trade off that reputation by creating a false impression of association between Respondent and Complainant and thereby attract Internet users seeking Complainant’s site to Respondent’s website. Therefore, Respondent registered the disputed domain name in bad faith. See David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla, WIPO Case No. D2000-1459.

6.12 Insofar as the use of the disputed domain is concerned, Respondent has developed a website presumably devoted to Complainant, yet there is no evidence of the ability of Internet users to post or exchange comments, critical or in praise, of Complainant. Rather, the website attracts Internet users by virtue of Complainant’s name and then uses that name as a vehicle to send users to other commercial sites, either for the benefit of Respondent or others to whom Respondent’s website contains links. If there is such a thing as a true fan site, and this Panel is uncertain of that possibility, such a site would have to be devoted entirely to Complainant and Complainant’s activities. Respondent’s website is otherwise, and this Panel finds that the disputed domain name is being used in bad faith.

6.13 This Panel is mindful of the criteria set forth in Paragraph 4(b) of the Policy for showing bad faith registration and use. These criteria are non-exclusive, and even though none of them completely fits the activities of Respondent, the website to which Internet users are attracted, by using Complainant’ name, has significant commercial activity associated with the website and has only some relevance to Complainant. The commercial activity referenced on the website far outweighs any relationship to Complainant.

 

7. Decision

7.1 For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, this Panel orders that the domain name <tiacarrere.com> be transferred to Complainant.


Jay Simon
Sole Panelist

Dated: November 28, 2005