WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr. Eric Bana v. Amazing Systems LLC
Case No. D2007-1574
1. The Parties
The Complainant is Mr. Eric Bana of South Yarra, Australia, represented by Chris Connolly, Australia.
The Respondent is Amazing Systems LLC of Cheyenne, Wyoming, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <ericbana.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2007. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 25, 2007 the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amendment to the Complaint on November 2, 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 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2007.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 10, 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.
The Amendment to the Complaint was occasioned by a change of the named registrant of the Domain Name made on the same day that the Complaint was filed and after the original registrant, Apache Securities, had been notified of the Complaint. The Complainant has filed sufficient evidence to satisfy the Panel that an individual known variously as Don Reid and John Smith is behind both Apache Securities and the Respondent. Accordingly, the Panel proposes to regard this change in registrant details as a classic case of “cyberflight” and, except where the context requires the contrary, to treat the Respondent, Apache Securities, Don Reid and John Smith as one.
4. Factual Background
The Complainant is a famous film and television actor, with a distinguished track record. He made his film debut in 1997.
The Domain Name was registered by Apache Securities on October 20, 2004.
Since then the Domain Name has been connected directly or indirectly to a variety of websites variously (a) providing information relating to how the Domain Name had been acquired by the Respondent, knowing of the Complainant’s potential interest in it; (b) offering the Domain Name for sale; (c) ridiculing the Complainant for not having been prepared to pay the Respondent $5,000 for the Domain Name; (d) displaying pornographic material.
The Complainant filed the Complaint with the Center on October 24, 2007 and duly notified the then registrant, Apache Securities. Shortly thereafter on the same day Apache Securities ceased to be the registrant and the Respondent appeared in its place. However, as indicated in the preceding section, the Panel is satisfied that it was a less than arm’s-length transaction and that those businesses and the people behind them should be treated as one for the purposes of this decision.
5. Parties’ Contentions
The Complainant claims common law rights in respect of his name, Eric Bana. On that basis ERIC BANA is a common law trademark also known as an unregistered trademark. Accordingly, he contends that the Domain Name is identical to his unregistered trademark. He cites a number of WIPO cases under the Policy in which famous actors have been recognized to possess unregistered trademark rights in respect of the names under which they conduct their profession.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name and points to the use which the Respondent has made of it, a use which demonstrates that the Respondent (a) was aware of the Complainant’s potential interest in the Domain Name prior to the Respondent’s acquisition of it and (b) registered the Domain Name with the intention of selling it to the Complainant at a profit.
By the same reasoning the Complainant contends that the Domain Name was registered in bad faith and is being used in bad faith. The Complainant points in addition to the various uses made of the Domain Name, uses (referred to above), which the Complainant contends were designed to encourage the Complainant to purchase the Domain Name at a high price.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that
(i) The Domain Name 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 in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
B. Identical or Confusingly Similar
The Complaint recites his distinguished history as a film actor over the last decade and the Panel is satisfied that he has acquired a reputation and goodwill over that period sufficient to give rise to common law rights in respect of his name.
Ideally, the Panel would have preferred to have seen some independent supporting material exhibited to the Complaint to substantiate the Complainant’s claim to common law rights in respect of his name. However, not only has the Respondent not challenged the claim, but also from time to time the Respondent’s website has featured material demonstrating the substance of the Complainant’s claim in this regard (e.g., a catalogue of the Complainant’s film triumphs).
Accordingly, the Panel is satisfied that the Complainant has common law rights in respect of his name and that, in consequence, the Domain Name is identical to a trademark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant contends that the Respondent registered the Domain Name, knowing of the Complainant’s potential interest in the Domain Name. The Complainant produced extracts from the Respondent’s website demonstrating that the Respondent registered the Domain Name with that knowledge and with a view to selling the Domain Name to the Complainant at a substantial profit. The Respondent ridicules the Complainant for not having been prepared to pay the Respondent $5,000 for the Domain Name.
When the Complainant showed no sign of purchasing the Domain Name from the Respondent, the Respondent started connecting the Domain Name to pornography.
The Complainant has made out a strong prima facie case under this head and the Respondent has not responded.
The Panel is satisfied that none of the circumstances set out in paragraph 4(c) of the Policy is applicable and can think of no other reason why the Respondent might reasonably be said to have rights or legitimate interests in respect of the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
On precisely those grounds the Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy. The Panel agrees. The content of the Respondent’s own website back in 2004, shortly after the Domain Name was registered by the Respondent, leaves no room for any doubt in the matter.
For completeness, it is appropriate that the Panel should refer to the “cyberflight”, which took place on the day the Complaint was originally filed and which is more particularly described in section 3 above. If any confirmation were needed that the registration of the Domain Name was an abusive registration, this is it.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(i) of the Policy.
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, <ericbana.com>, be transferred to the Complainant.
Dated: December 18, 2007