Complainant is Eventus Management, Inc. of Miami, Florida, United States of America.
Respondent is Twenty Four Hours, LLC of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <celiacruz.com> is registered with Signature Domains, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2009. On January 20, 2009, the Center transmitted by email to Signature Domains, LLC a request for registrar verification in connection with the disputed domain name. On January 20, 2009, Signature Domains, LLC transmitted by email 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” or “UDRP”), 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 proceeding commenced on January 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 12, 2009.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on February 24, 2009. 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 domain name was registered on December 5, 1999.
Celia Cruz was a world famous Cuban salsa singer who died on July 16, 2003. She was internationally recognised as the “Queen of Salsa” and during her lifetime received countless awards and honours including three Grammy Awards, four Latin Grammy Awards, the Lifetime Achievement Award of the Smithsonian Institution, and several other awards. She was also honoured by the naming of streets in her honour in Miami, United States; in San José, Costa Rica; and Mexico City, Mexico. She received from the President of the United States the highest honour that country bestows upon an artist, and was shown on the cover of Billboard Magazine. She recorded over 78 albums which have been distributed worldwide through Sony Music, Universal Music, Virgin and other labels.
On March 23, 2007, Omer Pardillo Cid was appointed the sole executor of her estate by Order of the Superior Court of New Jersey, United States. By power of attorney dated July 30, 2008, Pardillo-Cid appointed Complainant as his attorney-in-fact with full power, right and authority to do any and all acts relating to on-line matters and content including preparation and delivery of all documents relating to the commercialisation or exploitation of all intellectual property and proprietary rights pertaining to on-line matters and content.
Complainant asserts the above factual background and produces evidence in support thereof. Complainant contends that those facts clearly establish that Celia Cruz, and by devolution her estate, owns and controls common law trademark rights in the name Celia Cruz. Complainant cites in support of its contention a number of prior UDRP decisions including Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210, Estate of Stanley Getz aka Stan Getz v. Peter Vogel, WIPO Case No. D2000-0773, and several other cases in which well-known performers and authors have been held to establish trademark rights in the names under which they perform and publish.
Complainant cites a New Jersey court case, Estate of Elvis Presley v. Russen, 513 F. Supp. 1339 as showing that the common law rights of Celia Cruz descended to her estate.
Complainant contends that Respondent has no rights or legitimate interest in respect of the disputed domain name and that Celia Cruz had established common law trademark rights in her name long before the domain name was registered.
Complainant produces evidence to show that the disputed domain name resolves to a portal site with links to a variety of businesses including travel, accommodation, finance, electronics, insurance, and many other services. The site recognises that Celia Cruz was “one of the greatest musical talents of the 20th century” and features in bold type the words “Great Collection of Celia Cruz Music CD's” which provides a link to a site at “www.eTours.com” providing travel and accommodation services. Complainant contends that such use cannot constitute a bona fide offering of goods or services and cites Madonna Ciccone p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847.
Complainant asserts that Respondent is not commonly known by the name Celia Cruz, and is using it for commercial purposes to create a likelihood of confusion with Celia Cruz.
Complainant contends that Respondent is in the business of buying and selling domain names and has registered over 3,000 domain names, including the disputed domain name, in order to prevent the owner of the trademark from reflecting the name in corresponding domain names and intentionally to attract, for commercial gain, Internet users to Respondent's website. Complainant cites the Madonna case supra as showing that Respondent's disclaimer on the website is insufficient to avoid a finding of bad faith.
Complainant further asserts that a cease and desist letter was sent to Respondent at their posted address in the WhoIs database of the registrar, and the letter was not accepted and returned. Complainant cites this as further evidence of bad faith.
No response was filed.
Complainant has produced documented evidence to show that the deceased Celia Cruz was one of the best known and most widely acclaimed performers in her field. Complainant has also shown that Complainant was known and promoted by reference to her name such that she had established strong and substantial common law trademark rights in her name. Complainant has produced documentary evidence of the devolution of the rights in the name and trademark CELIA CRUZ upon Omer Pardillo Cid as sole executor of her estate and of the appointment by Omer Pardillo-Cid of Complainant as his Attorney under Power.
The Panel is therefore satisfied that the name “Celia Cruz” is a common law trademark in which Complainant has rights.
The disputed domain name comprises the trademark with the addition only of the “.com”. It is trite law that in a domain name, the domain designator (such as “.com”) does not serve to distinguish the domain name from the complainant's trademark for purposes of identity or confusing similarity under the Policy.
The Panel therefore finds that the disputed domain name is identical or confusingly similar to the trademark which in which Complainant has rights.
Complainant has produced a strong prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name. Respondent had an opportunity to rebut that showing but has failed to do so. The Panel is therefore entitled to assume that Respondent is unable to make such rebuttal and finds that Respondent has no rights or legitimate interests in the domain name.
The disputed domain name was registered on December 5, 1999. By that date the name and reputation of Celia Cruz had long been established, and the honours conferred upon her had been widely publicised. Respondent must therefore be presumed to have known of her name and trademark at the date of registration of the domain name. Respondent's use of the domain name, knowing of her and her reputation, as evidenced by the content of Respondent's website, has been for the evident purpose of capitalising on the reputation of the name to attract Internet users to its website for commercial gain.
The Panel is therefore satisfied that the disputed domain name was registered and is being in bad faith.
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 <celiacruz.com> be transferred to Complainant.
Desmond J. Ryan AM
Dated: March 5, 2009