The Complainant is Vanisha Mittal of Cedex, France, represented by Nameshield, France.
The Respondent is email@example.com of Puerto Rico, Unincorporated Territory of the United States of America.
The disputed domain name <vanishamittal.com> (“the Domain Name”) is registered with Wild West Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2010. (Initially, the complaint relating to the Domain Name formed part of a wider complaint against the Respondent, covering not only the Domain Name but also certain other domain names registered in the “.me” country code top level domain. The wider complaint was brought by a number of complainants, one of whom was the Complainant and another of whom was the Luxembourg-registered company (of which the Complainant is a director), ArcelorMittal S.A. The Center having advised the complainants named in the wider complaint that the “.me” domain names should be the subject of a separate proceeding under the Policy (as adopted by the registration authority of .ME), the Complainant then filed the present proceeding under the Policy (as adopted by ICANN), in which she seeks only an order for the transfer of the Domain Name). On May 20, 2010, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the Domain Name. On May 21, 2010, Wild West Domains, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on May 27, 2010. The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on June 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2010. The Respondent submitted informal email communications to the Center on May 31, June 5, and June 7, 2010. However, no formal Response has been filed.
The Center appointed Warwick Smith as the sole panelist in this matter on July 2, 2010. 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.
By email dated July 1, 2010, the Complainant advised the Center that it had found another domain name namely <vanishamittalalbhatia.com> registered by the Respondent, and it enquired if this additional domain name could be added to the Complaint. The Center replied on July 2, 2010 advising that it would be for the Panel (when appointed) to determine whether to allow such an addition, and if allowed, what additional procedural steps (if any) would follow.
The email communications received from the Respondent sufficiently show that he received due notice of the Complaint.
The case having presented certain issues of particular difficulty (relating primarily to the Complainant's claim to trademark or service mark rights in her personal name), the time for the Panel to give its decision is hereby extended to the date which appears below.
The Complainant, Vanisha Mittal, is a director of the Luxembourg-registered corporation, ArcelorMittal SA (“ArcelorMittal”). She is the daughter of ArcelorMittal's Chief Executive Officer, Lakshmi Mittal.
According to the Complaint, ArcelorMittal was created in 2006, following a merger between Arcelor SA and Mittal Steel Company NV. Prior to the merger, Mittal Steel Company NV was one of the world's largest steel producers, both by volume and turnover.
The Complainant produced evidence of two registered Community Trademarks, one being word a mark consisting of the word MITTAL, and the other consisting of a stylized, or figurative, version of that word mark. The application for the figurative mark was made on June 23, 2005, and the application for the word mark was made on August 16, 2005. In each case, the registered proprietor of the mark is shown as Mittal Steel Technologies Limited. The Community Trademark registrations cover various goods and services in international classes 6, 39, and 40.
In addition, the Complainant produced evidence of two international trademark registrations, both owned by ArcelorMittal. One of the international registrations is for the word mark ARCELORMITTAL, and the other is a figurative mark consisting of a distinctive device or logo (“the ArcelorMittal logo”) appearing immediately above the words “ArcelorMittal”. Both of the international registrations date from August 2007, and they cover a large range of goods and services.
In the Complaint, the Complainant asserts that the expression “Vanisha Mittal” is known only in relation to the Complainant, the ArcelorMittal group, or the Mittal family. According to the Complainant, a Google search on the words “Vanisha Mittal” displayed several results, all related to the Complainant herself, the ArcelorMittal group, or the Mittal family. The Google search was not produced with the Complaint.
The Domain Name was originally created on July 29, 2007. According to the Registrar, it was registered to the Respondent on July 28, 2009.
The Domain Name has resolved to a website (“the Respondent's website”) which has advertised the Domain Name for sale. The Complainant produced a screen shot from the Respondent's website as it stood on April 14, 2010, and the screen shot prominently reproduced the ArcelorMittal logo. Immediately above the ArcelorMittal logo were the words, prominently displayed:
is For Sale …”
Further below those words, the following appeared:
“Vanisha Mittal is THE RICHEST WOMAN IN THE WORLD
Vanisha Mittal is THE BIGGEST CELEBRITY IN THE INDIAN
Vanisha Mittal is THE MOST EXPENSIVE WEDDING IN THE HISTORY OF THE WORLD
VanishaMittal.com – break the record of Business.com? We'll see!”
The reference to “breaking the record of Business.com” referred to a note further up on the screen shot to the effect that the domain name <business.com> was the most expensive domain name in history.
At the foot of the Respondent's website, the Respondent advised that part of the money (presumably from a sale of the Domain Name) would go to a named church, to children who have no food, and to “others”.
In addition, the Complainant produced a screen shot from the website at “www.arcelormittal.tv”, printed on April 19, 2010. The printout consisted of an article apparently produced by the ArcelorMittal group's online communications specialist, and it was accompanied by one comment, posted by the Respondent, making personal (but not derogatory) comments about the ArcelorMittal communications specialist (whose photograph appeared with the online article).
The Complainant also produced a page from the website at “www.facebook.com”, which appeared to consist of links to various third party sites at which domain names could be purchased. One such link was “Yamil Rios → Domainshooter PREMIUM DOMAINS FOR SALE: Vanisha Mittal.com is For Sale ….” For more information, a visitor to the Facebook page was invited to contact an email address which was the same as that provided for the registrant in the Whois particulars for the Domain Name.
The Complainant also produced a web page from the website at “www.youtube.com”, which appears to be dated June 7, 2009. The Youtube page was headed:
“Welcome to Vanisha Mittal.com
What is your opinion on Vanisha Mittal.”
The Youtube page noted that the Domain Name was for sale, and produced what appears to have been a video clip of the Complainant's wedding, with “$60,000,000” superimposed above the picture. Various posts relating to the Complainant appeared below the video clip, and two appeared to note that a “VanishaMittal.com Porn Site” would be “coming soon”.
The last annexure produced by the Complainant was a screen shot of the Respondent's website printed on May 19, 2010. On this date, the Respondent's website was headed:
“News flash – Vanisha Mittal Does Not Own its Internet address”
There was space for site visitors to post comments, and there were two from the apparent author of the Respondent's website (described on the Respondent's website as “yamspanic”). The first post read:
“… 20 Octobre 2008 – Vanish Mittal PAY $100. MILLIONS for VANISHAMITTAL.com? If she buys her web domain will become THE MOST FAMOUS …”
The second post read:
“News reveal that the person who obtained the web domain Vanisha. try to sell it for purposes of using the money for the work of God and bring food to poor children.
mittal's see if they can buy.”
Other posts on the Respondent's website at May 19, 2010 included posts drawing attention to the Mittal family wealth, and comparing it to the plight of the world's needy people, including starving children.
On May 5, 2010, the Complainant's representative sent a cease and desist email to the email address noted in the Whois particulars for the Domain Name. The email referred to the registration of the Domain Name, and also to the registration, apparently by the same Respondent, of the domain names <arcelormittal.me>, <adityamittal.me>, <vanishamittal.me>, and <vanishamittal.co.uk> (with the Domain Name, collectively referred to hereafter as “the disputed domain names”). The email referred to the prior rights claimed by the relevant members of (or individuals associated with) the ArcelorMittal group, and advised that those parties wished to find an amicable settlement with the Respondent by having him stop using the disputed domain names and voluntarily transfer them to the appropriate claimants on whose behalf the email was written.
On May 17, 2010, a law firm acting on behalf of the Respondent sent an email in reply to the email from the Complainant's representative. This email sought more information about the claimed prior rights over the disputed domain names, and asserted the Respondent's legal ownership of the disputed domain names. The email sent on the Respondent's behalf noted that buying domain names for resale was a legitimate business, and that unless there was some evidence to the contrary, the Respondent was the legitimate owner. The email sent on the Respondent's behalf went on to advise:
“If after searching in your records you don't find evidence in support of your client's allegations, we would like to know if your client is interesting to buy Mr Rios' domains in a very reasonable price. By the same token if your client has a trademark over the name of ‘Arcelormittal' then we will have to make an exception as to such name being use in any domains. However, this is not extensive to the rest domains …. Finally, our client is an honest business man and is in the best attitude to talk about this and find a solution that benefits both parties. …”
In the Complaint, the Complainant stated that an answer was sent to the May 17, 2010 email from the Respondent's lawyers, providing evidence of the claimed prior rights. The Complainant's answer was not produced with the Complaint. The Complainant says that no further communication was received from or on behalf of the Respondent, although changes were made to the Respondent's website, evidenced by the May 19, 2010 screen shot referred to above.
According to the Complaint, the Domain Name has, since May 19, 2010, been pointed to a new page on the website at “www.youtube.com”.
The Respondent sent an email to the Center on May 31, 2010. In it, he offered to transfer one of the disputed domain names (<arcelormittal.me>), because he accepted that the Complainant's representative's relevant client had prior trademark rights in a corresponding trademark. The Respondent apologized, and explained that when he bought that particular domain name he did not know what ArcelorMittal was.
The Respondent stated in his May 31, 2010 email to the Center that he bought the Domain Name because it was not a trademark, it was free, and he always wanted to buy it. He stated that if he ever sold the Domain Name, it would be to donate money to the Church.
The Panel visited the Respondent's website on July 14, 2010. The Respondent's website then consisted of numerous links to third party websites, under the heading “Sponsored Listings”. The Respondent's website appeared to be operating as a typical landing page, with links to third party commercial websites grouped under various category headings such as travel, airline, dating, mortgages, etc.
The Complainant contends:
1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The personal name Vanisha Mittal is known in the world as part of Mittal's mark, and her personal name qualifies for common law trademark rights in a personal name (citing Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235). Also, the Domain Name is identical or confusingly similar to the trademark MITTAL.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following matters:
(i) The Respondent is not related in any way to Vanisha Mittal, and the Respondent has not been granted any license or authorization to make any use of the Complainant's personal name or the MITTAL mark, or to apply for registration of the Domain Name.
(ii) It is difficult to differentiate the Domain Name from the Complainant's name, or from her company ArcelorMittal.
(iii) The Respondent does not have the right to express his view, even if positive, on an individual or entity by using a confusingly similar domain name, as the Respondent in those circumstances is misrepresenting himself as being that individual or entity. In particular, where the Domain Name is identical to the trademark on which the Complainant relies, the Respondent by his actions, has prevented the Complainant from exercising her rights to her mark and her right to manage her presence of the Internet (citing David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla, WIPO Case No. D2000-1459).
(iv) The use of the ArcelorMittal logo on the Respondent's website is an obvious infringement against ArcelorMittal's brand. It also shows that the Respondent was well aware of ArcelorMittal or of the Mittal family.
3. The Domain Name was registered and is being used in bad faith. The Complainant relies on the following matters:
(i) The Domain Name has been used to describe the Complainant in negative terms.
(ii) The Respondent's use of the ArcelorMittal logo on the Respondent's website makes it easy for Internet users to understand that the references to “Vanisha Mittal” on the Respondent's website are references to the Complainant.
(iii) The Respondent deliberately altered the Respondent's website following the Respondent's receipt of the Complainant's cease and desist email, in order to remove any evidence of bad faith.
(iv) The Respondent's various offers to sell the Domain Name are further evidence of his bad faith (see Kangwon Land Inc v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320 – “the Panel concludes that Respondent hopes to either benefit from confusion and the diversion of web traffic or by selling the domain name to the trademark holder. This constitutes bad faith registration of the domain name.”) On the facts in this case, the Respondent has registered the disputed domain names, including the Domain Name, without legitimate interest and in order to obtain financial compensation.
(v) The Respondent's bad faith is further evidenced by his refusal to accede to the request made by the Complainant's representative that the Respondent transfer to the appropriate owner the disputed domain names.
(vi) The fact the Respondent registered the Domain Name evidences his desire to divert many potential Internet users to the Respondent's website, and so to infringe ArcelorMittal's rights and to obtain financial compensation.
The essence of the Respondent's email communications was as follows.
1. The Domain Name is not a trademark.
2. It is not fair for the Complainant to take the Domain Name when it cost the Respondent money to acquire it. The Respondent has never intended to use the Domain Name to hurt anyone.
3. The fact that there is a MITTAL trademark does not establish any infringement by the registration of the longer expression “Vanisha Mittal.com”. (For example, if the Respondent had registered “MichaelVanisha.com”, that would not mean that Michael Jordan would be able to sue for recovery of that domain name. Nor would Victoria's Secret be able to recover the domain name “VictoriaVanisha.com”.)
4. If “VanishaMittal” really were a brand, it would not have been made available for domain name registration. (The Respondent produced a page from the website at “www.godaddy.com”, showing the domain name <vanishamittal.net> as being available for registration.)
5. To be a trademark, the Complainant would have to have registered her full name. She cannot rely on the registration as a trademark of just her surname. There are many other people in the world called “Vanisha Mittal”.
The Panel declines to add the additional name domain name as requested by the Complainant. To do so would only add delay to the proceeding while additional allegations were added to cover the new domain name, and the Respondent would have to be given a further period to file a response. Further, the Complainant has failed on the record in these proceedings to persuade the Panel that she has rights in a trademark or service mark which is identical or confusingly similar to the Domain Name; in those circumstances it is clearly preferable that any claim relating to the additional domain name should be pursued in a separate proceeding.
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
Following the splitting of the originally filed complaint into two separate complaints, the Complainant elected to proceed with the present Complaint as the sole Complainant, and to advance a claim under the first element of the Policy based on a claim of common law or unregistered trade mark rights in the name “Vanisha Mittal”. The company ArcelorMittal, which appears to be the holder of trademark rights which on the face of it may well have been relevant, was not named as a party (nor indeed, if it had been the Complainant's intention to rely on that company's rights in a MITTAL mark, was that entity's consent to the bringing of the present dispute in evidence in the Complainant's pleadings in the present case). The result of that decision is that the Complainant must show that she personally has a right in a trademark or service mark which is identical or confusingly similar to the Domain Name. It will not be enough for her to show that the company ArcelorMittal holds such a trademark, and (if such be the case) that it has a good claim under the Policy to recover the Domain Name from the Respondent.
For the reasons which are set out below, the Complainant has failed to make out a case based on personal rights in a relevant trademark or service mark.
The Complainant's case is that her personal name qualifies for common law trademark rights in a personal name. She cites Jeanette Winterson v. Mark Hogarth (supra) in support of that submission. Alternatively, she submits that the Domain Name is identical or confusingly similar to the trademark MITTAL. It is convenient to deal with the second of those submissions first.
There is no evidence before the Panel of the Complainant personally being the registered proprietor of any trademark or service mark, anywhere in the world. Nor is there any contention that she holds common law rights in some jurisdiction in a MITTAL mark. At best, the argument could only be that the Complainant enjoys rights as a licensee, given by the proprietor of a MITTAL trademark.
But there was no evidence to support that submission. The evidence provided to the Panel by the Complainant is extremely sparse. All the Panel has been told about the Complainant's relationship with ArcelorMittal is that she is on the board of directors, and that her father is the chief executive officer of the company. A website extract was produced listing the ArcelorMittal board of directors, and it shows the person who is presumably the Complainant as “Vanisha Mittal Bhatia”. The same website extract notes that 8 independent directors sit on the ArcelorMittal board (out of a total of 11).
Particularly with a group the size of the ArcelorMittal group, where hundreds if not thousands of employees could be expected to use the group's principal trademarks on a daily basis, it cannot be the case that each of those employees would have a “right” in those marks for the purposes of paragraph 4(a)(i) of the Policy. In this Panel's view, the cases in which licensees of a mark have been regarded as holding a “right” for the purposes of paragraph 4(a)(i) must be restricted to “armslength” licensees who are separate entities from the trademark owner, not employees or directors of it. The approved actions of employees and directors are necessarily the actions of the trademark owner itself (which, if it is an incorporated body as in this case, can only act through human employees or other agents).
Without any evidence that the Complainant holds some specific right as licensee of a “Mittal” trademark, the license argument must fail.
The evidence is again inadequate on the Complainant's principal argument,that her personal name qualifies for common law trademark rights. The Panel has been told almost nothing about the Complainant, and it is only possible to infer from the Respondent's various website postings that she is a celebrity in some parts of the world, and that she celebrated a lavish and expensive wedding.
Celebrity status, on its own, does not provide a complainant with rights in a trademark or service mark, which is the bottom line requirement for a complainant to satisfy paragraph 4(a)(i) of the Policy. As the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” notes at paragraph 1.6, the consensus view of WIPO panels is that:
“While the [Policy] does not specifically protect personal names, in situations where an unregistered personal name is being used for a trade or commerce, the complainant can establish common law trademark rights in the name. Reference can be made to the test required for the common law action of passing off. Personal names that have been trademarked are protected under the UDRP. … However: the name in question should be actually used in trade or commerce to establish unregistered trademark rights. Merely having a famous name (such as a businessman or religious leader) is not necessarily sufficient to show unregistered trademark rights. (Relevant decisions: Israel Harold Asper v Communication X Inc, WIPO Case No. D2001-0540, and Chinmoy Kumar Ghose v ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248).”
Quite apart from the need for a complainant relying on alleged unregistered trademark rights in his or her personal name to show that that name has actually been used in trade or commerce, such a complainant would be prudent to state the jurisdiction in which such rights are claimed to exist (see, for example, Sibyl Avery Jackson v Jan Teluch, WIPO Case No. D2002-1180). Trademark rights are territorial: they can only exist to the extent that they are recognized in a particular jurisdiction. In this case, the Complainant has failed to state the jurisdiction in which the claimed common law rights in her personal name are said to exist.
In Israel Harold Asper v. Communication X Inc (supra), the panel was called upon to consider the question of whether the well-known business identity “Izzy Asper”, founder of the prominent Canadian multi-national media company CanWest, could establish common law rights in his personal name. The panel referred to the following passage from the WIPO Second Process Interim Report:
“Under trademark law, the mark itself for which protection is sought must be used in commerce as a precondition to relief, whereas the personality right may protect a person who does not commercially exploit his or her own identity, but nevertheless desires to prevent others from doing so.”
The panel in the Israel Harold Asper case went on to note that in all the earlier cases in which panels had held that the complainant enjoyed a common law trademark right in his or her personal name, the panel had found that the complainant “either used the personal name in question as a marketable commodity, allowing his or her name or image to be used for a fee, to promote someone else's goods or services, or for direct commercial purposes in the marketing of his or her own goods and services”.
Lindsay, in his text “International Domain Name Law”, concludes that:
“….the preferred view is that, to be protected as a common law mark, a famous personal name must have acquired a secondary meaning so as to function as an identifier of goods or services. Where a famous personal name has been used to market the complainant's own goods or services, or is used for a fee to promote someone else's goods or services, there will usually be little difficulty in establishing a secondary meaning. Thus, common law trademark rights will readily be found in … a celebrity's name that is used in connection with promoting products. As the panel has pointed out in ‘Izzy' Asper, in such cases the acquisition of secondary meaning will usually be obvious. Merely having a famous name, however, is not sufficient for there to be common law rights, even if the fame results from commercial activities.
The distinction is especially important in relation to the personal names of famous business people. The difference between a personal name that is famous because of commercial activities and a personal name that is a mark because it has become distinctive in relation to goods or services was emphasized in ‘Izzy' Asper, where the panelist pointed out that:
‘It is less likely that a business person will use his or her name to market their own goods or services, and very unlikely that they will do so to market someone else's. Take by way of examples, Henry Luce, Kenneth Thomson, Conrad Black and Rupert Murdoch. Are their publications marketed as a product connected to the person in question? Not likely. It is also not likely that someone would pay a fee to use these names in the promotion of a good or service with which they have no connection. Yet, each of these gentlemen is or was a famous businessman with a very high profile in the publishing business and held in high regard by many.'
As the panelist further pointed out, where it is not obvious that a famous personal name has become distinctive, the onus is on the complainant to show, on the preponderance of evidence, that the name has acquired a secondary meaning.”1
In this case, there is little evidence that the Complainant is a celebrity, let alone evidence that her name has acquired a secondary meaning so as to function as an identifier of any particular goods or services. Accordingly, the Panel finds that there is insufficient evidence that the Complainant holds common law trademark or service mark rights in her personal name.
The case cited by the Complainant, Jeanette Winterson, does not affect that conclusion. The panel in Jeanette Winterson clearly distinguished between the ability to bring an action for passing off under English law, and the establishment of common law trademark rights. It is the latter with which paragraph 4(a)(i) of the Policy is concerned.2
In summary, this Panel finds there is nothing in the evidence that establishes that the Complainant's personal name has become distinctive of any particular goods or services. That being so, there is no evidence that the Complainant holds any relevant trademark or service mark right in either a VANISHA MITTAL mark or a MITTAL mark. The Complaint accordingly fails.
Before leaving the case, the Panel notes that this decision relates only to a claim made by Vanisha Mittal, based on alleged personal rights in her name which she has failed to substantiate on the evidence presented in these Policy proceedings. The decision makes no finding regarding the Respondent's rights or legitimate interests in the disputed domain name (about which the Panel is highly doubtful), or the (at times, highly questionable) use and seeming offers to sell the disputed domain name (as described by the Panel above under Factual Background)3. The decision says nothing about any rights which the company ArcelorMittal might or might not be able to establish under the Policy, and in particular does not preclude any claim being brought by that company under the Policy with respect to the <vanishamittal.com> domain name, if it should choose to bring one.
For all the foregoing reasons, the Complaint is denied.
Dated: August 8, 2010
1 “International Domain Name Law', David Lindsay (Hart Publishing, 2007) at page 219.
2 See also Lindsay (supra), at page 208: “As a general rule, then, in order for there to be common law trademark rights under English law, in addition to being able to bring an action for passing off, the complainant must establish that the term has become distinctive.”
3 See further the Panel's observations and findings set out in the related case of ArcelorMittal Legal Affairs Corporate, Vanisha Mittal, Aditya Mittal v. All Illumination, Vanisha Mittal, firstname.lastname@example.org, WIPO Case No. DME2010-0006.