WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Paris Hilton v. Deepak Kumar
Case No. D2010-1364
1. The Parties
1.1 The Complainant is Paris Hilton of Beverly Hills, California, United States of America, represented by Tucker & Latifi, LLP, United States of America.
1.2 The Respondent is Deepak Kumar of New Delhi, India.
2. The Domain Name and Registrar
2.1 The disputed domain name <parishiltonheiress.com> (the “Domain Name”) is registered with GoDaddy.com, Inc (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2010. On August 12, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On August 13, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
3.2 On August 18, 2010 the Center received an email from the Respondent. In that email the Respondent stated as follows:
“First thing, [I] purchased the [D]omain [Name] from [an individual], Cedo Media (OLD OWNER & Registrar of this domain) for $4500.00 USD” and
“I will be happy with any compensation amount decided by WIPO, but [I] request be loyall with me as [I] already expended more th[a]n $4500.00 USD on this domain”
3.3 In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 21, 2010.
3.4 On August 21, in response to an email from the Complainant’s lawyers in which they had forwarded to the Respondent a copy of the amended Complaint, the Respondent sent an email in response copied to the Center. In that email, the Respondent stated:
“Sorry [I] am not able to understand the PDF written documents which you had sent.
[I’]ll be appreciate if you guys hire someone who will be comfortable in my language (HINDI)”
3.5 The Center verified that the Complaint as amended 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”).
3.6 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 August 24, 2010. That same day the Respondent sent a further email to the Center, repeating his assertion as to how much he paid for the Domain Name.
3.7 In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2010. The Respondent did not submit any formal response.
3.8 The Center appointed Matthew S. Harris as the sole panelist in this matter on September 21, 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.
4. Factual Background
4.1 The Complainant is the well-known socialite, celebrity and heiress, Paris Hilton. She resides in the United States but her fame extends beyond that country.
4.2 The Complainant has obtained registered various trade marks in various countries around the world that comprise or incorporate the terms “Paris Hilton” and “Heiress” and various consumer products are sold under these marks.
4.3 The marks registered by the Complainant include:
(i) United States (“U.S.”) registered trade mark No 3,788,818 for the words PARIS HILTON in class 9 filed on July 7, 2006 and registered on May 11, 2010;
(ii) U.S. registered trade mark No 3,309,679 for the words PARIS HILTON in class 25 filed on April 21, 2006 and registered on October 9, 2007;
(iii) U.S. registered trade mark No 3,152,292 for the word HEIRESS in class 3 filed on May 6, 2004 and registered on October 3, 2006; and
(iv) Community trade mark No 4,059,631 for the words PARIS HILTON in classes 3, 14 and 25 filed on October 4, 2004 and registered on July 14, 2006.
4.4 The Complainant also operates (or perhaps it would be more accurate to say, authorises the operation of a website) from the domain name <parishilton.com>.
4.5 The Respondent would appear to be an individual residing in India.
4.6 WhoIs details for the Domain Name suggest that it was registered on March 9, 2010. It would appear that at some point in early April the Complainant’s lawyers wrote to the then registrant of the Domain Name. In an email dated April 25, 2010 that individual responded in which he appeared to claim that the Complainant had no rights in the term “Paris Hilton Heiress”. He asserted that he had been in the “Domain Parking Business” for four years and that if the Complainant wanted the Domain Name she would need to buy it from him.
4.7 The following day the Complainant’s lawyers informed the apparent previous Domain Name holder that unless the Domain Name was transferred to their client, proceedings would be brought against him under the Policy. The individual responded on April 28, 2010 stating that the Domain Name had been sold to the Respondent. According to the information provided by the Registrar in response to the Center’s verification request, the Domain Name was indeed registered in the name of the Respondent on April 28, 2010.
4.8 At that point the Complainant’s lawyers got in contact with the Respondent. In an email dated April 30, 2010 the Respondent confirmed that he had purchased the Domain Name. He asserted:
”[I] … purchased that domain for $4,700 USD and buying and selling domain is my primary business, I had more then 1K top keywords domains names”
4.9 It is apparent from the case file papers that as at August 24, 2010, the website operating from the Domain Name bore all the hall marks of having been generated by a “domain name parking” or “pay–per-click” site. The Domain Name was displayed at the top of the page, and beneath it was the now familiar phrase “What you need, when you need it”. The “related searches” displayed below this predominantly were connected with hotels and hotel reservation, although they also included a search for “Perfume”.
4.10 A domain name parking page still operates from the Domain Name as at the date of this decision.
5. Parties’ Contentions
5.1 The Complaint could have been prepared with greater care. The supporting evidence appended to the Complaint is limited. Assertions that are primarily relevant to one aspect of the Policy are at times to be found under headings that relate to other aspects of the Policy.
5.2 Nevertheless, the general thrust of the Complaint is reasonably clear. The Complainant refers to various trade marks which are claimed to be in her name and registration numbers, registration dates and classes are described (four of which are set out in this decision under the heading Factual Background above). She claims that the Domain Name is identical to or confusingly similar to those trade marks.
5.3 She claims that she has not authorised or licensed the Respondent to use her trade marks and that the Respondent has no legitimate right to use them. It is also asserted that the Respondent is not commonly known by the Domain Name and there is no legitimate business reason for the Respondent to own or use it. The Complainant further claims that the Respondent’s use of the Domain Name is not a noncommercial1 or fair use of the same.
5.4 The Complainant contends that the Respondent is “primarily using the website to advertise third party sites”, although what form that advertising takes is not explained or evidenced. She claims that the Domain Name was registered to wrongfully lead the public to believe that the Respondent’s business is associated with or authorised by the Complainant. According to the Complaint, it is being used in a manner that falls within the scope of the example of bad faith to be found at paragraph 4(b)(iv) of the Policy.
5.5 The Complainant also contends that the Respondent registered the Domain Name for the purposes of offering or selling it to the Complainant for an amount in excess of the Respondent’s out-of pocket costs and/or the cost of purchase which is said to be an “act of bad faith”. Reference here is made to the figure of USD 4,700 sought by the Respondent in email correspondence.
5.6 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 The Panel will address the three aspects of the Policy listed above in turn. Before it does so, the Panel will very briefly address the Respondent’s complaint in email correspondence that the proceedings are in English and not in Hindi.
A. Language of proceedings
6.5 Paragraph 11(a) of the Rules provides as follows:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
6.6 The Registrar has confirmed that the language of the Registration Agreement is English and therefore the starting point is that this is the language of these proceedings. The Policy sees no good reason to order that either another language shall apply or to order (as it could do under paragraph 11(b) of the Rules) the translation of any documents in these proceedings into some other language. The choice of registrar was under the Respondent’s control and he chose to use a registrar which used the English language for its Registration Agreement. Further, the Domain Name itself comprises English words. In such a case the Complainant should not be put to the further cost of providing any translation.
6.7 In any event, it seems reasonably clear that the Respondent has some command of the English language and has been sufficiently good to enable him to engage in communication with the Parties and the Center. In those communications he has clearly expressed how he acquired the Domain Name, for what purpose he did so, and what it is that he now wants. English will remain the language of these proceedings.
B. Identical or Confusingly Similar
6.8 The Panel accepts that the Domain Name can only be understood as the words “Paris”, “Hilton” and “Heiress” in combination with the “.com” TLD. The Panel also accepts that the Complainant has trade mark rights in the words “Paris Hilton” and “Heiress”. In the circumstances the Panel has little difficulty in concluding that the Domain Name is confusingly similar (as that term is understood under the Policy) to at least two of the Complainant’s registered marks.
6.9 The Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
6.10 Many panels have adopted the approach of saying that where prima facie none of the examples of rights or legitimate interests laid out in paragraph 4(c) of the Policy apply, then the burden of proof passes to the respondent to show such a right or interest. It is an approach that the Panel could perhaps also have followed in the current case. However, the Panel prefers to deal with this issue in a somewhat more direct manner.
6.11 For reasons that will be explained more fully, it seems likely in this case that the Domain Name is being used by the Respondent for use with a “domain name parking” or “pay-per-click” service or at least some other form of third party advertising. So far as “domain name parking is concerned”, it is now well-known how these sorts of services operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see, for example, Owens Corning v. NA, WIPO Case No. D2007-1143).
6.12 It is possible for use of a domain name for advertising purposes, whether through a parking site with advertising revenue generating sponsored links or otherwise, to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party’s rights and reputation in that term, then it may have a legitimate interest in the domain name (see Section 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another’s mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
6.13 The Panel also accepts that the various emails from the Respondent prior to and during these proceedings show that the Domain Name was registered and is currently held with at least the possibility of its potential onward sale or a profit. There is generally nothing per se illegitimate in selling or dealing in domain names. However, if there is an intention by reason of the sale or threatened sale of the domain name to take advantage of the third party’s rights and reputation in a trade mark represented in that domain name, then that is quite a different matter.
6.14 Essentially, therefore, in this case the assessment of rights or legitimate interests boils down to the question; is the Respondent using the Domain Name with the Complainant’s marks in mind and with a view to taking unfair advantage of the reputation of those marks?
6.15 This is a question that is addressed in greater detail when assessing the question of bad faith. For the reasons that are explained in greater detail under the heading of bad faith below, the Panel has reached the conclusion that the Domain Name has been both registered and used with a view to taking unfair advantage of the reputation of the Complainant’s trade marks. In the circumstances, the Panel has little difficulty in reaching a positive finding that the Respondent has no right or legitimate interest in the Domain Name. Accordingly, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
6.16 Even though the available record is sufficient to enable the Panel to form a clear view on the merits of the case (as the Panel discusses further below) the Complainant (or one assumes the Complainant’s advisors) has not done herself any favours by omitting to describe in any detail how the Domain Name has been used and by failing to evidence a copy of the website operating from the Domain Name at the date of the Complaint. Exactly, how a domain name has been used can be a key factor in assessing a respondent’s motivations, which in turn is often key to an assessment of bad faith. Panels will usually expect such evidence to be provided by a complainant where a domain name is actually being used. This sort of material is frequently of greater significance in determining the outcome of proceedings than legal argument. Therefore, to include such material in a complaint where available, should be a fairly elementary step. For a complainant not to provide this material, can even risk a complaint being rejected in its entirety (see, for example, Silvie Tomčalová a.k.a. Sylvia Saint v. Juan Campos, WIPO Case No. D2006-0379).
6.17 Nevertheless, there is an unambiguous (and in this case uncontested) assertion by the Complainant that the Respondent “is primarily using the Domain Name using the website to advertise third party sites”. Although an assertion of this type without supporting evidence is of limited evidential weight, it can nevertheless be taken into account by a Panel when considering whether the requirements of the Policy have been met (see, for example, the comments on evidential weight in First SBF Holding, Inc. v. XC2, WIPO Case No. D2008-0409). The fact that the previous owner of the Domain Name admitted that he was using it for domain name parking purposes and the case file records also records domain name parking use as at August 24, 2010, also strongly suggest that this is the sort of “advertising” to which the Complainant refers.
6.18 The generation of revenue from domain name parking or other advertising activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant is using the domain name in this manner because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page (see, for example, Express Scripts, Inc. v. Windgather Investments Ltd, supra). The confusion that is usually relevant here is the confusion that draws the Internet user to the respondent's website in the first place (for example, confusion that leads an Internet user to type the domain name into his Internet browser). It does not matter that when the Internet user arrives at the pay–per-click site that it then becomes clear that the website is unconnected with the trade mark holder.
6.19 That it was to take such unfair advantage of the Domain Name’s similarity with the Complainant’s marks in this case is reasonably clear. The Respondent was obviously aware of the Complainant at the time of registration. Not only is there the Complainant’s fame, but there is the Domain Name itself. The combination of the terms “Paris Hilton” and “Heiress” is such that it is obvious reference is being made to the Complainant in particular (as opposed to some other “Paris Hilton”).
6.20 Further, there are the Respondent’s own assertions and admission in correspondence. He is a domain name trader and the suggestion in this and various other emails that he should be paid at least USD 4,700 in relation to any transfer. Ultimately, it is clear that the Respondent registered the domain name in order to exploit the content of the Domain Name and its associations with the Complainant for his commercial advantage whether through advertising, sale or otherwise. It is difficult to see how he might do this legitimately.
6.21 Whether or not sale of the Domain Name was the “primary” purpose of the Respondent’s registration, and therefore strictly falls within the wording of the example of circumstances indicating bad faith set out at paragraph 4(b)(i) of the Policy, or was simply one of a number of possible ways in which the Respondent considered the Domain Name might be exploited, is not certain2. But in the Panel’s opinion none of this really matters. The offer and admission is significant, not because the Respondent’s activities fall within this particular provision of the Policy, but because it provides such strong evidence of the fact the Respondent registered the Domain Name in some manner or other to take unfair commercial advantage of the Complainant’s marks.
6.22 Accordingly, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 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 <parishiltonheiress.com> be transferred to the Complainant.
Matthew S. Harris
Dated: September 23, 2010
1 The Complaint refers to “commercial” use, but this must be a typographical error.
2 So far as the application of paragraph 4(b)(i) is concerned, in the opinion of the Panel the only real issue is whether this was the Respondent’s “primary” intention. As the Panel stated in Al Rajhi Banking and Investment Corporation v. Enough Host LLC, WIPO Case No. D2010-0777:
“The Panel is unconvinced that the term ‘out-of-pocket costs’ as referred to in [paragraph 4(b)(i)] extend to the costs of acquisition, where the high price of acquisition can only be explained by reference to the value of another’s mark. In any event, these costs have certainly not been ‘documented’ by the Respondent”.
Those comments apply equally to the present case.