The Complainant is Ashley Judd of United States of America (“USA”), represented by Bereskin & Parr LLP, Canada.
The Respondents are Alberta Hot Rods and Jeff Burgar, both of Canada.
The disputed domain name <ashleyjudd.com> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) against both Respondents on August 14, 2009.
The Center transmitted its request for registrar verification to the Registrar on August 17, 2009. The Registrar replied the same day, stating that it had not received a copy of the Complaint; that the Domain Name was registered with it in the name of the Respondent, Alberta Hot Rods; that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Name; that the Domain Name would expire on November 5, 2009 and would remain locked during this proceeding subject to expiry; that the registration agreement was in English; and that the Domain Name was transferred to the Registrar in the name of the Respondent, Alberta Hot Rods, in September 2007. The Registrar also provided the contact details in respect of the registration on its WhoIs database.
The Center verified that the Complaint satisfied the formal requirements of the 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
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondents of the Complaint, and the proceeding commenced on August 21, 2009. The notification sent by courier appears to have been delivered successfully. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 10, 2009. The Respondents did not submit any response. Accordingly, the Center notified the Respondent's default on September 11, 2009.
The Center appointed Jonathan Turner as the sole panelist in this matter on September 17, 2009. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondents and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
The Complainant is a famous actor who appeared in the television series “Star Trek: The Next Generation” in 1991 and films such as “Kuffs” (1992), “Natural Born Killers” (1994), “Smoke” (1995), “Heat” (1995), “A Time to Kill” (1996), “Kiss the Girls” (1997), “Double Jeopardy” (1999), “Where the Heart Is” (2000), “Someone Like You …” (2001), “High Crimes” (2002), “Divine Secrets of the Ya-Ya Sisterhood” (2002), “Frida” (2002), “Twisted” (2004), “De-Lovely” (2004) and “Bug” (2006).
The Respondent, Jeff Burgar, carries on activities under the name “Alberta Hot Rods” and various other names. He registered the Domain Name in 1996 and has registered numerous other domain names consisting of the name of a famous actor, celebrity or company followed by the generic “.com” top level domain suffix. In many cases, he has been found to have registered and used these domain names in bad faith. The Domain Name currently redirects to a website at “www.celebrity.com” which primarily displays sponsored links to other websites.
The Complainant's representative sent a cease and desist letter to the Respondents on May 4, 2009, and a reminder on May 11, 2009, but did not receive any response.
The Complainant contends that she has common law rights in the mark ASHLEY JUDD which she has used extensively in connection with her professional career as an actor. She submits that the Domain Name is identical and confusingly similar to this mark.
The Complainant further contends that the Respondents do not have rights or legitimate interests in respect of the Domain Name. She maintains that the Respondents have not
used the name “Ashley Judd” or the Domain Name in connection with any bona fide offering of goods or services, have not acquired any public reputation in association with these names and have not been commonly known by them. She states that the Domain Name has never been used for an active noncommercial website, but rather has been used misleadingly to divert Internet users to the Respondents' website at “www.celebrity.com” in order to generate revenue from sponsored links.
The Complainant also alleges that the Domain Name was registered and is being used in bad faith. She draws attention to the Respondents' registration of many other domain names consisting of the name of a famous actor, celebrity or company and the generic “.com” top level domain suffix. She asserts the Domain Name was registered as part of a pattern of registering such domain names with a view to preventing the owners of corresponding marks from reflecting them in corresponding domain names. She also maintains that the Domain Name was registered for the purpose of attracting, misleading and diverting Internet users to the Respondents' website for commercial gain in the form of advertising revenue.
The Complainant states that she took immediate steps to have the Domain Name transferred to her on becoming aware of the Respondents' registration of it in March 2009. She submits that laches is not a defence under the UDRP and that, in any case, the respondents cannot invoke it since they have suffered no prejudice and have not themselves behaved equitably.
The Complainant requests a decision that the Domain Name be transferred to her.
As stated above, the Respondents did not reply to the Complainant's contentions.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which she has rights; (ii) that the Respondents have no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 14(b) of the Rules the Panel shall draw such inferences from the Respondents' default as it considers appropriate. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
The Panel finds that the Complainant has common law rights in the mark ASHLEY JUDD. It is well-established that where an actor has a sufficient reputation for her professional work under her name or stage name, that name is a marke in which she has rights for the purpose of the UDRP: see, for example, Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210. The Panel finds on the evidence that the Complainant has amply sufficient reputation to satisfy this requirement.
The Panel further finds that the Domain Name is identical to this mark for the purpose of the Policy. It is well-established that the generic top level domain suffix is to be discounted in this connection.
The first requirement of the Policy is satisfied.
The Panel finds that the Respondents have no rights or legitimate interests in respect of the Domain Name. The Panel accepts the Complainant's evidence that the Respondents have not used the Domain Name or any corresponding name in connection with a bona fide offering of goods or services. In particular, the Panel considers that the Respondents' current use of the Domain Name is not a use in connection with a bona fide offering of goods or services, but rather is a use in bad faith to divert Internet users to their website through confusion with the Complainant's mark in order to obtain revenue from sponsored links.
It is evident that the Respondents are not commonly known by the Domain Name. The Panel further finds that the Respondents have not made legitimate noncommercial or fair use of the Domain Name; on the contrary, they have made misleading use of it to divert Internet users with intent for commercial gain.
The second requirement of the UDRP is satisfied
The Panel notes that the Complainant was already well-known as an actor under the name “Ashley Judd” by 1996 when the Respondents registered the Domain Name. The Panel further notes that the Respondents registered numerous other domain names consisting of the names of famous actors, celebrities or companies followed by the generic top level domain suffix; and that many of these registrations have been found to have been made in bad faith in order to prevent the owners of corresponding marks from reflecting them in appropriate domain names.
In all the circumstances, the Panel finds that the Respondents registered the Domain Name in order to prevent the Complainant from reflecting her mark in a corresponding Domain Name, as part of a pattern of such conduct.
In accordance with paragraph 4(b)(ii) of the UDRP, this constitutes evidence of the registration and use of the Domain Name in bad faith. This presumption is not displaced by any evidence to the contrary. The Panel concludes that the Domain Name was registered and is being used in bad faith. The third requirement of the UDRP is satisfied.
Where, as here, the requirements of the UDRP are satisfied, there is no separate defence of laches: see, for example, Deutsche Telekom AG v. Oded Zucker, WIPO Case No. D2004-0749. In any case, the Panel considers that any such defence would fail on the facts here, since there is no evidence of detrimental reliance on the part of the Respondents and they have not acted equitably.
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 <ashleyjudd.com> be transferred to the Complainant.
Dated: September 25, 2009