WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Cedric Kyles v. Domains by Proxy, Inc. /Asia Ventures, Inc.

Case No. D2006-0046

 

1. The Parties

The Complainant is Cedric Kyles, United States of America, represented by Del, Shaw, Moonves, Tanaka & Finkelstein, United States of America.

The Respondent is Domains by Proxy, Inc. /Asia Ventures, Inc., Domain administrator, Scottsdale Arizona, United States of America and, Central Hong Kong, SAR of China.

 

2. The Domain Name and Registrar

The disputed domain name <cedrictheentertainer.com> is registered with Nameview Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2006. On January 13, 2006, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On January 23, 2006 Nameview Inc. 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”).

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 February 2, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2006.

The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on March 10, 2006. 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 Complainant is a television and film actor, writer and producer who works under the names Cedric Kyles, Cedric and Cedric The Entertainer. He has a domain name <ceddybear.com> that resolves to his website described as The Official site of Cedric The Entertainer.

The Respondent or its predecessor registered the domain name on August 19, 2002.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the contentious domain name <cedrictheentertainer.com> should no longer be registered in the name of the Respondent but that it should be transferred to the Complainant.

He contends in substance that this should be done because, within the meaning of paragraph 4 the Policy, the domain name is identical or confusingly similar to certain unregistered common law trademarks and service marks, the Respondent has no rights or legitimate interests in the domain name and the domain name has been registered and subsequently used in bad faith. The Complainant maintains that he can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to himself.

In support of his case on the first of these three elements, the Complainant maintains that the domain name < cedrictheentertainer.com> is confusingly similar to the unregistered trademark or service mark that the Complainant has in his own name Cedric Kyles, in the name CEDRIC and in the name CEDRIC THE ENTERTAINER, all of which have been acquired through their use in his professional career as a television and film actor, writer and producer. He points to the identicality between the expression <cedrictheentertainer.com> in the domain name and the expression CEDRIC THE ENTERTAINER as it appears in his professional work and promotions and also to the confusing similarity between the domain name and his own personal name, for the person invoked by the domain name is clearly a reference to him personally.

The Complainant then contends, to establish the second element, that the Respondent cannot have any rights or legitimate interests in respect of the domain name because it has been granted no licence or other rights to use CEDRIC THE ENTERTAINER or the Complainant’s personal name as part of any domain name or for any other purpose. He also contends that the Respondent is a serial cybersquatter with a track record of many UDRP proceedings having been brought against it, which have been won by successive complainants.

Finally, the Complainant alleges that the domain name was registered and is being used in bad faith. The Complainant relies on all four grounds available under paragraph 4(b) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

It is appropriate therefore to note the fact that the Respondent has not made a Response to the Complaint does not avoid the necessity of examining the issues and of doing so in the light of the evidence. In fact, Paragraph 4 of the Policy expressly provides that in administrative proceedings ‘ …the complainant bears the onus of proof’ and it follows that, as the proceeding is a civil one, the standard of proof must be the balance of probabilities. The onus of proof clearly remains on the Complainant even where, as in the present case, the Respondent has not made a Response or put in a submission. That principle has been enunciated on many occasions by UDRP panels.

The Complainant must therefore establish all three of the elements specified in Paragraph 4(a) of the Policy on the balance of probabilities before an order can be made to transfer the domain name.

However, in the course of deciding whether that onus has been discharged, it is possible to draw inferences both from the evidence that has been submitted and, in appropriate cases, from silence. Indeed, Paragraph 14 of the Rules specifically provides that if a Party does not comply with its obligations, the Panel is still required to proceed to a decision, but it is also required to draw such inferences ‘as it considers appropriate’ from the non-compliance.

That being so, the Panel will now proceed to enquire if the Complainant has discharged the onus on him to prove each of the three elements specified in paragraph 4(a) of the Policy.

Those three elements, all of which must be proved, are:

A. That the Respondent’s domain name is identical or confusingly similar to a name, trademark or service mark 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 or subsequently used in bad faith.

The Panel will deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The Complainant does not claim that the domain name is identical or confusingly similar to a registered trademark in which he has rights. He says, however, that by virtue of his standing as a well-known television and film actor and also as a writer and producer of television programs and motion pictures, he has trademark or service mark rights in his business and personal names which are unregistered or common law marks.

It is now well established that the Policy protects rights in unregistered trademarks: for example, see: Bennett Coleman & Co. Ltd. v. Steven S. Lafwani, WIPO Case No. D2000-0014 and SeekAmerica Networks Inc. v. Tariq Masood, WIPO Case No. D2000-0131.

What evidence, then, will a panel expect to find before it is able to conclude that the evidence establishes the existence of an unregistered trademark?

A convenient answer has been given to this question in a recent UDRP decision: UK Betting PLC v. Oldfield, WIPO Case No. D2005-0637 where the panelist observed that:

“Unregistered trade mark rights are rights to stop unauthorized third parties using a name or mark which is likely to lead to deception. In other words, they are common law rights in passing off.

To succeed in a passing off action one has to prove (inter alia) a reputation and goodwill in respect of the name or mark in question…. Accordingly, to demonstrate a reputation and goodwill in respect of a name as descriptive as “UK BETTING”, the court will require details of trading such as length of trading under the name, volume of sales under the name, advertising expenditure in respect of the name, independent evidence from traders, customers, etc. . . . the relevant information can be provided in short form, but the Panel still needs to be satisfied that the relevant reputation and goodwill subsists in respect of the name or mark.”

As another expression of what must be shown, see the recent decision in Ticket Specialist Inc. v. hubshift, FA. 575616 (Nat. Arb. Forum, December 5, 2005) where the three panelists said:

“…to succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for Complainant to prove that it has, through use, acquired secondary meaning, i.e. a reputation such that members of the public associate those goods or services solely with Complainant or its licensees. British Heart Foundation v. Meyer, AF-0957 (eResolution August 22, 2001) ”.

The Complainant In Person

The first question is whether the Complainant can establish a trademark or service mark in his own name. If so, the question will then arise whether the domain name is identical to or confusingly similar to such trademark.

The initial question raises the contentious issue of whether a personal name that has not been registered as a trademark can ever constitute a common law trademark. The issue is contentious enough for it to be the subject of a series of UDRP decisions and an issue discussed in the valuable WIPO Overview of WIPO Panel Views on Selected UDRP Questions.1 The Overview summarises the current jurisprudence on this issue as follows:

“Consensus view: While the UDRP does not specifically protect personal names, in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name. Reference can be made to the test required for the common law action of passing off. Personal names that have been trademarked are protected under the UDRP.

Relevant decisions:

- Julia Fiona Roberts v. Russell Boyd D2000-0210 <juliaroberts.com>, Transfer;

- Jeanette Winterson v. Mark Hogarth D2000-0235 <jeanettewinterson.com> among others, Transfer;

- Dr. Michael Crichton v. In Stealth Mode D2002-0874 <michael-crichton.com>, Transfer.

However: The name in question should be actually used in trade or commerce to establish unregistered trademark rights. Merely having a famous name (such as a businessman, or religious leader) is not necessarily sufficient to show unregistered trademark rights.

Relevant decisions:

- Israel Harold Asper v. Communication X Inc. WIPO Case No. D2001-0540 <izzyasper.com> among others, Denied

- Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa WIPO Case No. D2003-0248 <gurusrichinmoy.com>, <aboutsrichinmoy.com>, Transfer.”

From this summary it may be deduced that the consensus view among UDRP panelists is that a complainant may show that his or her personal name has taken on such a cachet that it has become a trademark, but that to succeed in doing so the complainant will have to show that the name has actually been used in trade or commerce. It will instantly be seen that this is a considerable hurdle to vault and that the reason why some cases have failed to establish trademark rights in a personal name is that the evidence has shown only that the name is famous and not that it has been used in trade or commerce.

A recent decision that illustrates this dichotomy is Hillary Rodham Clinton v. Michele Dinoia a/k/a SZK.com, File No. FA0502000414641, (NAF March 18, 2005) where it was held that Senator Clinton had common law trademark rights in her own name, not simply because she was famous, for that would not have got her over the hurdle, but because she was also, as the panelist said,”a best-selling author (who) has written four novels including, It Takes a Village: and Other Lessons Children Teach Us, which was published in 1996 and has sold 622,000 copies, and “Living History,” which has sold 1.68 million hard copies and 525,000 paperbacks since its 2003 publication.” In other words, her name had been used to sell books written in her capacity as an author.

Likewise, in Nick Cannon v. Modern Limited - Cayman Web Development, WIPO Case No. D2005-0757, it was held that the complainant had trademark rights in his own name because he could rely on “… his movie experience (six films, from 2002 to 2005) and his extensive career as an actor, writer, producer, and musical composer and performer under his name since the 1980s… The Panel verified the number of appearances of the Complainant’s name “Nick Cannon” on <google.com> on August 21, 2005, and at least one hundred thousand appearances of the Complainant’s name were observed. The Panel finds that the Complainant has demonstrated substantial use of the name “Nick Cannon” in association with his professional career and consequently enjoys common law trademark rights in “Nick Cannon”. The evidence, as well as the representations of the Complainants, is consistent with UDRP decisions cited by the Complainants; see Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415.”

That being so, the question is whether the facts in the present case show that the Complainant’s name has become well known through its use in trade and commerce.

Material that is publicly available on the Internet shows that the Complainant is now becoming more famous under the name CEDRIC THE ENTERTAINER or CEDRIC than under his actual name. Details of this trend will be given when the Panel considers if the Complainant also has a trademark in the name CEDRIC THE ENTERTAINER.

He is, nevertheless, still well known in the entertainment world by his actual name CEDRIC KYLES and on other occasions simply by the name CEDRIC and it is clear that he has built his successful career on both of those names.

Either as CEDRIC KYLES or as CEDRIC, he has certainly achieved fame. He is principally described in the public material as an Afro American actor and comedian who has branched out into other areas of the entertainment industry and who has clearly achieved prominence and success.

He started his career as a comedian, won several awards and comedy contests and performed at various comedy clubs throughout the United States of America. He then moved into feature films and acted in many, notably Big Momma’s House and has clearly achieved considerable prominence in that field, not only because of his own skills but also because the films in which he has acted have starred such prominent actors as John Travolta, George Clooney, Jim Carrey, Tommy Lee Jones and Whoopee Golgberg. He has also appeared extensively in television and achieved considerable renown when appearing in a commercial for Bud Light Beer, said to have been seen by 144 million people. He has produced his own shows and has been active and prominent in other areas of the entertainment industry.

The Panel’s assessment of the totality of the material available to it is that the Complainant is, as claimed, ‘…a well known television and film actor, as well as a writer and producer of television programs and motion pictures’.

The same material also shows that the Complainant’s name can fairly be described as famous and that it has been used in commercial entertainment and hence in trade and commerce.

Accordingly, he meets the tests set out in other UDRP cases of not only being famous, but of having become so as the result of working in trade and commerce, which he has done in many branches of the entertainment industry. In other words his name has achieved prominence and he has used it for commercial purposes in trade and commerce. Moreover, his name has become associated in the public mind with the services that he provides.

The Panel therefore concludes that the Complainant has acquired trademark rights in his own name both as CEDRIC KYLES and CEDRIC.

The Panel also finds that although the contentious domain name is not identical to the trademark CEDRIC KYLES or to the alternative trademark CEDRIC, it is nevertheless confusingly similar to both of them.

This is so because an objective bystander would instantly appreciate that the ‘cedric’ referred to in the domain name <cedrictheentertainer.com> is the CEDRIC KYLES or the CEDRIC who is so well known as an entertainer. This is an illustration of the well established principle, expressed in Museum of Science v. Asia Ventures, Inc., WIPO Case No. D2003-0691, that ‘…when a domain name wholly incorporates a complainant’s mark and adds a generic word, that is sufficient to establish confusing similarity for the purposes of the Policy.’ Thus, in the present case, the domain name has incorporated the whole of the Complainant’s mark CEDRIC and added the generic expression ‘the entertainer’, being the exact field in which the Complainant conducts his business. The domain name is therefore similar to the two trademarks, for <cedrictheentertainer.com> is a clear invocation of both Cedric Kyles and the Cedric who is the entertainer of that name.

The domain name is also confusingly similar to both marks, because the domain name and any use of it in a website would be assumed by an objective bystander to be a reference to the website of the Complainant.

Finally, the addition of the generic Top Level Domain suffix, ‘. com’ to the domain name is disregarded for the purposes of determining similarity; for example, see Foundation Le Corbusier v. Mercado M., WIPO Case No. D2004-0723 and Gerd Petrik v. Johnny Carpela, WIPO Case No. D2004-1043.

The domain name is therefore in every sense confusingly similar to the trademarks and the Complainant has made out the first requirement under paragraph 4 of the Policy with respect to the trademarks in his own name.

Cedric The Entertainer

In addition to the foregoing, a further question arises whether the Complainant also has an unregistered or common law trademark in the name CEDRIC THE ENTERTAINER. If he does, the domain name is clearly identical to that trademark, as it embodies all of those words and no others.

In this regard, the panel finds that the Complainant has an unregistered or common law trademark in the name CEDRIC THE ENTERTAINER. That is so for the following reasons.

First, there is no doubt that CEDRIC THE ENTERTAINER has become the stage name and the alter ego of the Complainant. For instance, a Google search conducted by the Panel has revealed a long series of references to the Complainant by the name CEDRIC THE ENTERTAINER, even to the extent that on some occasions he is referred to, not by his real name at all, but exclusively as CEDRIC THE ENTERTAINER. One website, “www.imdb.com”, which prides itself on being ‘Earth’s Biggest Movie Database’ is meticulous enough to state that the Complainant is also known specifically as Cedric ‘The Entertainer’ and Cedric ‘the Entertainer’. Accordingly, the Panel is satisfied that CEDRIC THE ENTERTAINER is the nom de plume and stage name of the Complainant and that for purposes of his work in the entertainment industry it has virtually become his own name and his alter ego. When the public sees references to it, they could not but assume that these are references to the Complainant.

Secondly, it is clear that the name CEDRIC THE ENTERTAINER has become a well known trade name promoting goods and services that are for sale and that the Complainant conducts a business of providing a broad range of entertainment services under that name. Thus, the website referred to above, “www.imdb.com”, gives CEDRIC THE ENTERTAINER credits for appearances in 27 films, either released or in various stages of production, 7 as producer, the writer of one, significantly entitled ‘Cedric the Entertainer Presents’ and 48 appearances as himself on television shows such as ‘The Late Show With David Letterman’. Further facts confirm the public renown of the Complainant under his alter ego CEDRIC THE ENTERTAINER as well as under his actual name: thus, under the former name, 22 of his films are for sale on DVD through Amazon.com and one of his films, Big Momma’s House, has acquired an international reputation and is known in Germany as Big Mamas Haus.

Other information about the Complainant’s activities is supplied by his own website ”www.ceddybear.com” where, referring to himself interchangeably by his real name and his stage name CEDRIC THE ENTERTAINER, it is said that:

“ Cedric has celebrated many career successes spanning television, live performances and film. Some notable accolades include nabbing THE AFTRA AWARD OF EXCELLENCE IN TELEVISION PROGRAMMING for his Fox Television series “CEDRIC THE ENTERTAINER PRESENTS…”; a record-breaking (4) consecutive NAACP Image Awards for “Outstanding Supporting Actor in a Comedy Series” for his portrayal of the lovable “Coach Cedric Robinson” on the WB’s #1-rated “The Steve Harve Show”, which ran for six seasons. His first comedy book, Grown-Ass Man, was released in January of 2002 and sold out across the country. In 2001, a viewing audience of over 144 million saw Cedric star in the Bud Light commercial that landed in the #1 spot during the Super Bowl broadcast (subsequently, USA Today dubbed him “Madison Avenue’s Most Valuable Player”). And, in 1994, Cedric received THE RICHARD PRYOR COMIC OF THE YEAR AWARD from Black Entertainment Television for his ground-breaking work as host of Def Comedy Jam and BET’s Comic View (1994-95 season).

Now helming his own production company, A BIRD AND A BEAR ENTERTAINMENT, Cedric will develop and produce feature films. JOHNSON FAMILY VACATION was the first feature under the new company.

As a philanthropist, Cedric founded THE CEDRIC ‘THE ENTERTAINER’ CHARITABLE FOUNDATION, which provides scholarships and outreach programs to enhance the lives of inner-city youth and their families in his hometown of St. Louis, Missouri. He plans to extend the foundation nationally’.

Putting all of this material together and measuring it against the various tests suggested in the UDRP decisions referred to above, it is clear that the Complainant has established a reputation and goodwill under the name CEDRIC THE ENTERTAINER as well as in respect of his personal name, that it is a distinctive name used for a commercial activity with a good deal of consumer support, that the Complainant clearly has a reputation and goodwill vested in the name and that the public automatically associate the services of CEDRIC THE ENTERTAINER with the Complainant and nobody else.

The Complainant has therefore made out his case that he is the owner of the unregistered trademark CEDRIC THE ENTERTAINER.

The domain name is clearly identical to that trademark, as it embodies all of the words in the trademark.

The Complainant has therefore also made out the first requirement under paragraph 4 of the Policy with respect to the trademark CEDRIC THE ENTERTAINER as well as under his personal name.

B. Rights or Legitimate Interests

The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not make a Response or any other form of submission.

That is so in the present case, where the Respondent was given notice on February 2, 2006 that the administrative proceeding had been commenced and was served with a copy of the Complaint, which of course included the allegation that it had no rights or legitimate interests in the domain name <cedrictheentertainer.com>.

The Respondent was also given notice that it had until February 22, 2006, to send in its Response, that it would be in default if he did not do so and that, by virtue of Paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.

As the Respondent is in default, the Panel, after considering all of the evidence, draws the inference that the Respondent has no rights or legitimate interests in the domain name. It is appropriate to draw that inference because, first, if the Respondent had any such rights or interests, it was a simple matter to say what they were. Moreover, the substance of what has happened in this matter is that the Respondent has taken for its domain name the Complainant’s business name and the name under which he earns his living, giving rise to the possible explanation that it did so for some deceptive purpose, an inference which is easy to draw against someone who takes another’s name without consent. If there were, however, a more innocent or legitimate explanation for its conduct, which of course is also possible, the Respondent could have given it, but this it has failed to do.

In the absence of an innocent explanation for this conduct, as the Panel observed in Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273, the Panel is entitled to draw inferences adverse to the Respondent’s interests on that issue and to assume that ‘any evidence of the Respondent would not have been in his favour’.

Moreover, the Complainant asserts in the Complaint that the Respondent has no rights or legitimate interests in the domain name, that the Respondent has not been granted a licence or other right to use the Complainant’s name and that the Respondent has been registering other famous company and individual names. In the light of those matters and in the light of the registration itself, the Panel finds that the Complaint has made out a prima facie case on this element and the onus therefore falls on the Respondent to show that it has rights or legitimate interests in respect of the domain name; see: Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, WIPO Case No. D2001-0376. The Respondent had the opportunity to bring himself within paragraph 4(c) of the Policy which sets out several criteria, any one of which, if proved, ‘is to be taken to demonstrate’ the registrant’s rights or legitimate interests in the domain name.

However, the Respondent has not endeavored to establish even one of the criteria set out in Paragraph 4(c) of the Policy, giving rise to the inevitable inference that it could not do so by credible evidence. The Respondent has therefore failed to discharge the onus on it.

Accordingly, the Complainant has made out his case on the second requirement.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily 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 respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

The Complainant relies on all four of these criteria.

The contentious domain name does not resolve to a website and its use does not produce any result other than an error response. It is therefore difficult to draw conclusions from any overt act of the Respondent other than the registration of the domain name and the passive holding of it.

However, the Panel is not prevented by this inactivity on the part of the Respondent from reaching conclusions on this or any other issue. On the particular issue, the WIPO Overview (supra) suggests a useful approach:

‘3.2 Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder? (Passive holding)

Consensus view: The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.

Relevant decisions:

Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003 <telstra.org>, Transfer;

Jupiters Limited v. Aaron Hall WIPO Case No. D2000-0574 <jupiterscasino.com> and <jupiters-casino.com>, Transfer Ladbroke Group Plc v. Sonoma International LDC WIPO Case No. D2002-0131 <ladbrokepoker.com> among others, Transfer.’

In the present case, the Panel is faced with the facts, first, that the trademark CEDRIC THE ENTERTAINER is a unique, constructed name which is a well-known brand name associated with the Complainant, suggesting that it was chosen as a domain name to invoke the name and reputation of the Complainant. Secondly, this inference is strengthened by the fact that the Respondent has taken the name of the Complainant’s own domain name, <ceddybear.com> and the name of his website, <CeddyBear.com> and used it as the Respondent’s administrative, technical and billing contact, as in ceddybear.com@domainsbyproxy.com. Thirdly, the Respondent remained silent when put on notice that some explanation was being requested for the registration having been made. Fourthly, it is impossible to conceive of a good faith reason for the Respondent having registered the name. All of these facts lead to the conclusion that at least on the balance of probabilities, the Respondent registered the domain name in bad faith within the meaning of paragraph 4(b)(i),(ii) and (iii) and generally.

This conclusion is re-enforced by the fact that the Complainant is correct in saying that the Respondent is an established transgressor in this field and has been engaging in a pattern of conduct where it has registered prominent names of companies and individuals which the Panel must infer has been done for an improper purpose.

The Respondent’s conduct is recorded in the following UDRP decisions: John Alden Life Insurance Company v. Asia Ventures, WIPO Case No. D2005-0420, AstraZeneca AB v. Asia Ventures,Inc., WIPO Case No. D2005-0264, Pfizer Inc., v. Asia Ventures Inc., WIPO Case No. D2005-0256, Dell Inc., aka Dell Computer Corporation v. Asia Ventures,Inc., WIPO Case No. D2004-0452, Shabby Chic, Inc. v. Asia Ventures, Inc. File No. FA0409000335486, (NAF November 22, 2004), National Holistic Institute v. Asia Ventures, Inc.File No:  FA0503000433854, (NAF April 12, 2005), San Diego County Credit Union v. Asia Ventures, Inc., File No. FA0503000444402 (NAF April 26,2005), DaimlerChrysler Corporation v. Asia Ventures, Inc. File No. FA0504000453735 (NAF May17, 2005), Citigroup Inc. and Citigroup Global Markets, Inc. d/b/a Smith Barney v. Asia Ventures, File No.  FA0504000453926 (NAF May 19, 2005), Wachovia Corporation v. Asia Ventures, Inc., File No. FA0505000473245 (NAF June 27, 2005), Relix LLC v. Asia Ventures, Inc.File No. FA0508000531576 (NAF September 27, 2005), Maricopa County Community College District v. Asia Ventures, Inc., File No.  FA0508000540758 (NAF September 28, 2005) and Manatt, Phelps & Phillips, LLP v. Asia Ventures, Inc., File No. FA0511000598852 (NAF December 29, 2005). Without going into detail, it can be said as a general proposition that these proceedings show a pattern of unmeritorious conduct by the Respondent. The panels in each of these proceedings found against the Respondent, leaving no doubt that it is a serial offender and that its registration of the domain name and any use that has been made of it since then has been in bad faith.

The Complainant has therefore made out its ground under paragraph 4(b) of the Policy and accordingly each of the grounds under paragraph 4 as a whole.

 

7. Decision

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 <cedrictheentertainer.com> be transferred to the Complainant.


The Honourable Neil Anthony Brown QC
Sole Panelist

Dated: March 21, 2006


1 http://www.wipo.int/amc/en/domains/search/overview/index.html