WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Mr. William H. Cosby, Jr. v. Research Required Inc.

Case No. D2007-1556

 

1. The Parties

The Complainant is Mr. William H. Cosby, Jr. represented by Patterson, Belknap, Webb & Tyler, LLP, United States of America.

The Respondent is Research Required Inc. of San Francisco, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <cosbykids.com> is registered with Tucows.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2007. On October 23, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On October 23, 2007, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Of its own initiative, the Complainant filed an amendment to the Complaint on October 24, 2007. 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 November 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2007, which was extended by the Center at the Respondent’s request to December 13, 2007. The Respondent did not submit a response by the extended deadline of December 13, 2007. Accordingly, the Center notified the Respondent’s default on December 14, 2007.

The Center appointed William R. Towns as the sole panelist in this matter on December 28, 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.

Following the Panel’s appointment, the Respondent proceeded to submit a number of unsolicited email communications to the Center regarding the allegations made in the Complaint, including the submission of an “informal e-mail response” on January 11, 2008, and the subsequent submission of a belated “Response” on January 16, 2007. The Complainant has also submitted a number of unsolicited email communications including a “Reply to Response” dated January 15, 2007. These various unsolicited communications (which have been forwarded by the Center to the Panel at its request) have been noted.

 

4. Factual Background

The Complainant is a well known comedian, writer, actor, and producer. The Complainant developed the popular animated television series “Fat Albert and the Cosby Kids”, which aired on the CBS television network between 1972 and 1984, and received an Emmy nomination in 1974. The Complainant also acted in and produced the popular television series “The Cosby Show”, which aired on the NBC television network in 1984 and ran for eight seasons. The Cosby Kids characters, created by the Complainant, have continued to appear in films and television. Over time the “Cosby Kids” has come to be popularly associated with the Complainant, who also has used the “Cosby” name extensively as an actor in and producer of television programs and motion picture films, and as a writer of television programs and books.

The Respondent initially registered the disputed domain name <cosbykids.com> on December 12, 2001. The website to which the disputed domain name resolves at the time of the Decision is entitled “Cosby Kids”1, and contains a link to the Respondent’s “GO Times” website, an e-commerce store. The “Cosby Kids” website also contains links to third-party websites providing various entertainment-related goods and services. The Respondent also has registered other domain names containing third party trademarks. Such domain names include <topbmw.com>, bmw3.com>, <bmwboutique.com>, <bmwleases.com>, <1953corvette.com>, <jeeprestoration.com>, <linuxbugs.com>, and <segaplayers.com>.

 

5. Parties’ Contentions

A. Complainant

The Complainant maintains that it has established common law trademark rights in COSBY KIDS and COSBY as a result of their extensive use in connection with the Complainant’s entertainment goods and services. According to the Complainant, the disputed domain name is identical to his COSBY KIDS mark and identical or confusingly similar to his COSBY mark.

The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent is not using the domain name in connection with a bona fide offering of goods or services because it is intentionally trading on the fame of the Complainant’s marks to attract consumers to its website and generate sales and advertising revenues. According to the Complainant, the Respondent has never been commonly known by the disputed domain name and is not making any legitimate noncommercial use of the domain name.

In view of the foregoing, the Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The Complainant maintains that the Respondent has engaged in a pattern of registering domain names incorporating third party trademarks, and further contends that the Respondent is attempting for commercial gain to attract internet users to its website by creating a likelihood of confusion with the Complainant and his marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. In addition, the Complainant alleges that the Respondent provided false contact information when registering the disputed domain name, and that the use of the domain name to provide links to e-commerce sites featuring sex toys tarnishes the reputation of the Complainant and his marks.

B. Respondent

As noted above, the Respondent did not submit a timely or formal Reply to the Complainant’s contentions. The Respondent has however made a number of contentions in a series of communications and unsolicited submissions to which the Panel has had appropriate regard.

 

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See, Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer are the sole remedies provided to a complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, the Complainant must demonstrate rights in the marks that he asserts the disputed domain name is identical or confusingly similar to. The term “trademark or service mark” as used in paragraph 4(a)(i) encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218.

The Panel initially addresses the question of whether the Complainant has established common law trademark or service mark rights in COSBY and COSBY KIDS. An impressive number of panelists have recognized that celebrities who use their given names for commercial purposes may establish common law rights in their names sufficient to invoke the Policy.2 As noted by the Panel in Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540, for common law trademark rights to exist in such cases the complainant’s personal name must have come to be recognized by the public as a symbol which identifies the goods or services in question as those of the complainant.3 The Panel is persuaded from the Complaint and the Annexes thereto that the public has come to recognize both COSBY and COSBY KIDS as identifying the Complainant’s goods and services. Accordingly, the Panel concludes that the Complainant has established common law trademark or service mark rights in COSBY and COSBY KIDS.

Under paragraph 4(a)(i) of the Policy, the question of identity or confusing similarity is evaluated based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. In this case, the disputed domain name <cosbykids.com> incorporates the Complainant’s COSBY and COSBY KIDS marks in their entirety, and the Panel accordingly finds that the disputed domain name is identical and confusingly similar to the Complainant’s marks. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

In view of the foregoing, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain. It is uncontroverted that the Complainant has not licensed or otherwise authorized the Respondent to use the Complainant’s marks, nor has he authorized the Respondent to register a domain name corresponding to those marks. Nevertheless, the disputed domain name incorporates the Complainant’s marks in their entirety, and the record reflects the Respondent’s use of the disputed domain name to attract Internet users to a website providing links to the Respondent’s “Go Times” commercial website and to third party websites offering entertainment-related goods and services.

The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The circumstances as set forth and documented in the Complaint and its Annexes are sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to its of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial 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.

The Respondent has not submitted a timely formal response to the Complaint, and in the absence of any such submission this Panel would be entitled to accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.4 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein (including the various unsolicited supplemental filings) that would bring the Respondent’s registration and use of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy. Nothing in the record indicates that the Respondent has been commonly known by the disputed domain name. Nor has the Complainant acquiesced to the use of his name or marks.

The Respondent’s appropriation of the Complainant’s marks to attract internet users to its website does not constitute use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. See True Blue Productions, Inc. v. Chris Hoffman, WIPO Case No. D2004-0930. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a Complainant and its products, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith”. Nor is there any basis on which the Respondent could claim to be making a legitimate noncommercial or fair use of the domain name under paragraph 4(c)(iii) of the Policy. See Bata Brands S..r.l v. Charles Power, WIPO Case No. D2006-0191.

Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent 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;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

A strong inference can be drawn from the circumstances of record, including the Complainant’s longstanding use of his marks, that the Respondent was aware of the Complainant and his COSBY and COSBY KIDS marks when the Respondent registered the disputed domain name, and the Panel so finds. The Panel further finds that the Respondent registered and is using the disputed domain in an attempt to profit from and exploit the Complainant’s marks. As noted above, when a domain name is so obviously connected with a Complainant and its products or services, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith”. See Research In Motion Limited supra. See also Paula Ka v. Paula Korenek, WIPO Case No. D2003-0453.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

 

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 <cosbykids.com> be transferred to the Complainant.


William R. Towns
Sole Panelist

Dated: January 11, 2008


1 It appears that after the Complainant became aware of the website, the Respondent changed its title to “COS By Kids”. According to the website, “COS” stands for “Children on Stage”. The content of and links contained in the website remain essentially unchanged.

2 See, e.g., Freddy Adu v. Frank Fushille, WIPO Case No. D2004-0682; David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla, WIPO Case No. D2000-1459; Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.

3 Common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918).

4 Some panels have held that a respondent’s lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See, e.g., Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.