WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Willard C. Smith II v. Domain Manager
Case No. D2007-0442
1. The Parties
The Complainant is Willard C. Smith II, c/o Kenneth B. Hertz, Goldring Hertz & Lichtenstein, Beverly Hills, California, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Domain Manager, of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain names <freshprince.com>, <freshprince.net> and <freshprince.org> are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2007. On March 26, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On the same date, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details. 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 March 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2007. The Respondent did not submit any response. Accordingly, the Center subsequently notified the Respondent’s default.
The Center appointed Alistair Payne as the sole panelist in this matter on May 11, 2007. 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, Willard C. Smith II, is the world-famous musician and actor Will Smith.
The Respondent is the registered owner of the three Disputed Domain Names.
5. Parties’ Contentions
The Complainant states that the Disputed Domain Names are identical or confusingly similar to the Complainant’s stage and performance name “The Fresh Prince” (or “Fresh Prince”). Although this name is not registered as a trademark the Complainant asserts that this name is exclusively associated with him world-wide in his capacity as an actor and a musician.
As a hip-hop artist, the Complainant has performed under the name “Fresh Prince” since 1984. He has released 9 albums under this name with combined sales exceeding 5 million copies world-wide. These albums are still available to purchase. The Complainant further released 12 singles and 6 Music videos under the name “Fresh Prince” and received many music awards, including 2 Grammy Awards.
As an actor, the Complainant starred in 146 episodes of the television sitcom “The Fresh Prince of Bel Air” between 1990 and 1996 as “The Fresh Prince”. The theme song to the television show was also released as a single and it reached number 3 in the music charts of the United States of America and number 12 in the corresponding music chart of the United Kingdom of Great Britain and Northern Ireland. Currently, the sitcom is available to purchase on DVD in a boxed set prominently marked “The Fresh Prince” and containing cover art featuring a picture of the Complainant. Also, repeat viewings of the sitcom continue to air on television in the United States of America, the United Kingdom of Great Britain and Northern Ireland, Canada, the Netherlands, Brazil, Venezuela, Spain, Italy, Finland, Iceland, Sweden, Australia and Germany.
The Complainant further asserts that articles and biographies written about him frequently associate him with the name “The Fresh Prince” and “Fresh Prince”. Several entertainment websites such as “www.tv.com” also refer to the Complainant in this way.
As a result of the above, the Complainant believes that he has acquired common law trademark rights and goodwill in “The Fresh Prince” and “Fresh Prince” and that these names and marks have been associated exclusively with him.
The Complainant contends that the Respondent has no right or legitimate interest in the Disputed Domain Names. The Complainant further submits that there has never been any relationship between him and the Respondent that would give rise to any permission, license or authorization to use or register the Disputed Domain Names.
The Complainant asserts that the Disputed Domain Names were registered and are being used in bad faith and that the Respondent has engaged in acts of cybersquatting.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
If the Complainant is to succeed, he must prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Names are 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 Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
In this case it is clear that the Disputed Domain Names are each identical to the name “Fresh Prince” used by the Complainant. The Complainant does not have registered trademark rights and the Panel must consider whether the Complainant has sufficiently demonstrated the existence of common law trademark rights in the name “Fresh Prince”.
The names “The Fresh Prince” and “Fresh Prince” have been clearly shown to be associated with the Complainant world-wide in both his capacity as an actor and a musician. There is evidence that, as an actor, the Complainant starred in a popular television sitcom for a number of years under the name “The Fresh Prince” and “Fresh Prince” and that this television show is now available as a DVD boxed set and is repeated on various television stations around the world. There is further evidence that, as a musician, the Complainant released 9 albums, 12 singles, 6 music videos and won many acclaimed awards also under the name “The Fresh Prince” and “Fresh Prince”. The Complainant’s association with the names is so well recognized that members of the press refer to him as “The Fresh Prince” or “Fresh Prince” in published articles and interviews.
The Panel notes that in decision of Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210, the panel found that common law trademark rights existed in the actresses name and that registration of her name as a registered trademark or service mark was not necessary for protection under the Policy. In the decision of Allee Willis v. NetHollywood, WIPO Case No. D2004-1030, the Complainant was also held to have common law trademark rights in her personal name as she was “clearly a well-known author of musical compositions”.
Accordingly, the Panel finds that the Complainant does have common law trademark rights in his names “Fresh Prince” and “The Fresh Prince” and that the Disputed Domain Names are identical or confusingly similar to the Complainant’s mark, fulfilling paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Disputed Domain Names were registered by the Respondent 16 years after the Complainant began his musical career as “The Fresh Prince” and 10 years after the sitcom “The Fresh Prince of Bel Air” began. As noted above the Complainant had by this time acquired very substantial common law trademark rights in the “The Fresh Prince” name.
The Panel accepts the Complainant’s assertion that there is no relationship between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant nor has it otherwise obtained consent to use the name “Fresh Prince” in the Disputed Domain Names. Further, in view of the Respondent’s blatant use of the Disputed Domain Names for websites acting as search pages for sponsored links as noted below and of the Respondent’s failure to file a Response, the Panel finds that the Complainant has succeeded in demonstrating that the Respondent has no rights or legitimate interests in the Disputed Domain Names.
C. Registered and Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy it shall be deemed to be evidence of registration and use in bad faith if the registrant of a domain name intentionally attempts to attract, for commercial gain, Internet users to a site by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of a website.
In this case, the Disputed Domain Names are used in connection with an identical website that acts as a search page for sponsored links. Each of the three Disputed Domain Names directs an Internet user to a page containing the heading “Welcome to Freshprince.com”. The page contains links to various listings. One particular listing, “Fresh Prince”, sends the Internet user to a web page containing sponsored listings to various sites where the user can purchase DVDs of the Complainant’s television sitcom “The Fresh Prince of Bel Air”.
The Panel is satisfied from the above that the use of the Complainant’s name “Fresh Prince” in the Disputed Domain Names is intended to attract Internet users to the site to generate commercial gain for the Respondent as users click through onto sponsored links. This is a blatant example of the sort of cybersquatting in bad faith that the Policy seeks to remedy.
For all the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names be transferred to the Complainant.
Dated: May 25, 2007