WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Tucker Carlson v. Domain Privacy Ltd

Case No. D2008-0474

 

1. The Parties

Complainant is Tucker Carlson of Los Angeles, California, United States of America, represented by Arnold & Porter LLP of Los Angeles, California, United States of America.

Respondent is Domain Privacy LTD of Marblehead, Massachusetts, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <tuckercarlson.com> (the “Disputed Domain Name”) is registered with Fabulous.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2008. On March 28, 2008, the Center transmitted by e-mail to Fabulous.com a request for registrar verification in connection with the Disputed Domain Name. On March 31, 2008, Fabulous.com transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the 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 Respondent of the Complaint, and the proceedings commenced on April 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 2, 2008.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on May 19, 2008. 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

Complainant states that he is “an internationally famous television news anchor and author, most famous for his role as anchor of the eponymous televised newsmagazines Tucker (MSNBC) and Tucker Carlson: Unfiltered (PBS), as well as for his role as co-host of Crossfire (CNN).” Complainant states that his television debut came in 2000 as co-host of The Spin Room (PBS) and that he has also appeared on television as a contestant on Dancing With the Stars (ABC), the Tonight Show With Jay Leno and Late Night with Conan O’Brien. Complainant states that his writings “are regularly featured” in Esquire, The Weekly Standard, The New Republic and The New York Times Magazine. And, Complainant states that he has appeared as an actor in various television shows and movies.

The Disputed Domain Name was created on December 2, 2003.

 

5. Parties’ Contentions

A. Complainant

In addition to the factual background set forth above, Complaint contends, inter alia, as follows:

- Complainant “has become famous throughout the United States and the world, and the name ‘Tucker Carlson’ has acquired secondary meaning. As a result, the public associates Mr. Carlson’s services as a television host, reporter, author, and actor with the name ‘Tucker Carlson.’ Mr. Carlson’s name, therefore, has acquired common law trademark rights, which thus qualifies for protection under the UDRP.” Further, the Disputed Domain Name is identical or confusingly similar to the TUCKER CARLSON name and mark because the top-level domain “.com” “does not make an essential difference in determining the similarity of a celebrity name and a domain name.” (Internal punctuation and citation omitted.)

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Respondent “has no connection or affiliation with Mr. Carlson and has not received any license, authorization, or consent – express or implied – to use the TUCKER CARLSON name and mark in a domain name or in any other manner” and Complainant “is informed and believes that Respondent has never been known by the name ‘Tucker Carlson’ or by the domain name ‘TuckerCarlson.com’.”

- The Disputed Domain was registered and is being used in bad faith because Respondent is using the Disputed Domain Name in connection with a website that “provides links to websites that purport to sell products or provide information relating to Mr. Carlson and his services established under the TUCKER CARLSON mark.” Further, Respondent previously advertised the Disputed Domain Name for sale for as much as USD1,088. And, Respondent has engaged in a pattern of registering domain names that contain the trademarks of third parties, as shown by at least three decisions under the Policy ordering the transfer of domain names registered by Respondent: Lumber Liquidators, Inc. v. Click Cons. Ltd, Domain Privacy Ltd DNS Admin, WIPO Case No. D2007-1846; Maid to Perfection Corp. v. Domain Privacy LTD, NAF Case No. 1055131; and Xcentric Ventures, L.L.C. v. Domain Privacy LTD c/o DNS Admin, NAF Case No. 1087178.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

To prevail under paragraph 4(a)(i) of the Policy, a complainant must convince the panel not only that the domain name is identical or confusingly similar to a trademark or service mark but that “the complainant has rights” in the mark. A number of disputes under the Policy have involved personal names, as here, and the panels’ decisions have been mixed on the issue of whether the complainants have rights in the names. See, e.g., Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560 (finding common law rights in “Tom Cruise”); and The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net, and God.info, WIPO Case No. D2002-0184 (finding no rights in “Jerry Falwell”).

Indeed, the issue of rights in personal names has generated enough cases and raised enough questions that the matter has been addressed by the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, which states: “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.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 1.6, <http://www.wipo.int/amc/en/domains/search/overview/index.html> (visited June 2, 2008).

Accordingly, the Panel must seek initially to determine whether Complainant in this case has used the name “Tucker Carlson” for trade or commerce. Such a determination is consistent with previous panel decisions under the Policy, including those cited above.

In this case, Complainant states that he has acquired common law trademark rights in the TUCKER CARLSON name because the name has acquired secondary meaning as a result of his widespread use of the name in connection with his “services as a television host, reporter, author, and actor.” Evidence of these uses is supported by exhibits provided by Complainant as annexes to the Complaint, including a biography of Complainant from the MSNBC website, a “filmography” of Complainant from the “IMDBpro.com” website and search results from the LexisNexis database service. As a result, the Panel here agrees with Complainant that he has acquired trademark rights in his name just as other panels have concluded with respect to celebrity names. See, in addition to the cases cited above, e.g., Larry King v. Alberta Hot Rods, WIPO Case No. D2005-0570 (finding common law trademark rights in the mark LARRY KING where Complainant argued that the “public associates the name ‘Larry King’ with [Complainant’s] broadcast services on CNN”); and Kevin Spacey v. Alberta Hot Rods, NAF Case No. 114437 (“a celebrity’s name can serve as a trademark when used to identify the celebrity’s performance services”).

As to whether the Disputed Domain Name is identical or confusingly similar to the TUCKER CARLSON mark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “tuckercarlson”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Given that the second-level domain of the Disputed Domain Name, “tuckercarlson,” is identical to the TUCKER CARLSON mark, it is evident without the need for elaboration that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant alleges, inter alia, that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Respondent “has no connection or affiliation with Mr. Carlson and has not received any license, authorization, or consent – express or implied – to use the TUCKER CARLSON name and mark in a domain name or in any other manner” and Complainant “is informed and believes that Respondent has never been known by the name ‘Tucker Carlson’ or by the domain name ‘TuckerCarlson.com’.”

Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1 (visited June 2, 2008).

Accordingly, as a result of Complainant’s allegations and without any evidence of Respondent’s rights or legitimate interests in the Disputed Domain Name, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant does not allege with specificity which, if any, of the factors described in the Policy apply to Respondent. However, Complainant implies that Respondent’s activities constitute bad faith as set forth in Policy, paragraphs 4(b)(i), 4(b)(ii) and 4(b)(i)(iv).

With respect to paragraph 4(b)(i), a screenshot provided by Complainant of a website associated with the Disputed Domain Name indicates that it is (or was) for sale for USD1,088.00. While there is no evidence in the record of Respondent’s “documented out-of-pocket costs directly related to the domain name,” the Panel agrees with Complainant that this figure likely “exceeds any registration and maintenance costs.”

With respect to paragraph 4(b)(ii), Respondent’s registration of the Disputed Domain Name obviously prevents Complainant from registering the Disputed Domain Name for itself, and the cases cited by Complainant (and listed above) clearly show that Respondent has engaged in a pattern of registering domain names in a manner that violates the Policy.

With respect to paragraph 4(b)(iv), the links on the website associated with the Disputed Domain Name may indeed create a likelihood of confusion with the TUCKER CARLSON mark, as numerous other decisions under the Policy have found with respect to other pay-per-click websites. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc. WIPO Case No. D2005-0850 (“where, as here, the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy”).

In light of the above, the Panel is convinced that Complainant has proven the third element 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 <tuckercarlson.com> be transferred to the Complainant.


Douglas M. Isenberg
Sole Panelist

Date: June 2, 2008