WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Geri Halliwell v. Rampe Purda/Privacy-Protect.org
Case No. D2010-1419
1. The Parties
Complainant is Geri Halliwell of London, United Kingdom of Great Britain and Northern Ireland, represented by Field Fisher Waterhouse, United Kingdom of Great Britain and Northern Ireland.
Respondent is Rampe Purda of Hailuoto, Finland; Privacy-Protect.org of Shanghai, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <gerihalliwell.com> (“the Domain Name”) is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING ( SHANGHAI) CO., LTD dba HebeiDomains.com (“Hebei Domains”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 23, 2010. On August 23, 2010, the Center transmitted by email to Hebei Domains a request for registrar verification in connection with the Domain Name. On August 25, 2010, Hebei Domains transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 26, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 2, 2010. On August 26, 2010, the Center transmitted an email to the parties in both Finnish and English regarding the language of the proceedings. On September 2, 2010, Complainant submitted a request that English be the language of the proceedings. Respondent did not comment on the language of the proceedings by the specified due date.
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 Respondent in English and in Finnish of the Complaint, and the proceedings commenced on September 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 1, 2010.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on October 6, 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. Language of the Proceedings
The Registrar of the Domain Name is Hebei Domains of Shanghai, China. The language of the registration agreement is Finnish. Paragraph 11(a) of the Rules provides that unless otherwise agreed by the parties or otherwise specified in the registration agreement, the language of the proceedings 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 proceedings.
The Complaint is filed in English and Complainant has requested that the language of the proceedings be English. In support of its request Complainant states that it is not able to communicate in Finnish and for it to submit all documents in that language would result in substantial and disproportionately high costs. Based on the evidence of previous UDRP proceedings Complainant asserts that Respondent understands English and would not be prejudiced if the proceedings are undertaken in English and that in four previous WIPO UDRP cases involving Respondent the Panel agreed to hold the proceedings in English. In support of its contention Complainant cites Deutsche Messe v. Kim Hyungho, WIPO Case No. D2003-0679. There, in similar circumstances the Panel ordered that the language of the proceedings should be English. In this case the Panel accepts Complainant’s submissions, adding further that Respondent has not objected to English as the language of the proceedings and has not responded to the Complaint notwithstanding that in all correspondence from the Center to Respondent translations into Finnish were provided.
The Panel therefore decides that language of the proceedings shall be English.
5. Factual Background
The Domain Name was created on June 9, 2007.
Complainant is a very well-known singer, writer and television personality who commenced her career as a singer with the well-known pop group, the Spice Girls. The group was very successful, with its first release in June 1996 reaching the top of the charts in 41 countries around the world including United Kingdom, Australia, Canada and the United States. Complainant left the group in May 1998 and since that time has pursued a successful solo career not only as a singer but also as a television personality and the author of two autobiographies and a series of children’s books, including the Adventures of “Ugenia Lavender” publicized under headings such as “Ugenia Lavender by Geri Halliwell”. During her career she attracted wide publicity. Articles featuring her and her name appeared in a large number of English and other newspapers and magazines including The Evening Standard, The Independent, The Daily Express, the Daily Mail, the Daily Mirror, the Sunday Times and the Guardian as well as People, the New York Times and other international publications. Articles about her feature her name, for example, in articles such as “The Geri Halliwell Show” in the Evening Standard Magazine which is exhibited to the Complaint. According to Complainant, apart from the period when she was one of the Spice Girls, she always used only her personal name in promoting and presenting her work.
All that is known of Respondent is that he has an address in Finland and has been Respondent in at least five cases decided under the Policy. In none of those cases did Respondent file a response.
The website at the Domain Name resolves to a portal page listing links to third party sites, many of which are music or entertainment sites and some of which relate to Complainant and her works.
On April 14, 2010 Complainant’s solicitors wrote to Respondent requesting transfer of the Domain Name to Complainant and offering to pay Respondent’s administrative cost in making the transfer. According to the Complaint, Respondent did not reply to this letter.
6. Parties’ Contentions
Complainant submits that as a result of her long use of her personal name as the name by which she is known professionally over a range of activities in the entertainment field she has established extensive common law rights in that name as her trademark from a time well prior to the registration of the Domain Name. Complainant contends that the Domain Name comprises the whole of her name and mark, with the mere addition of the domain denominator “.com”. Complainant submits that it is well established that the addition of a top level domain does not affect the identity or the confusing similarity of the domain name to the trademark. Complainant cites Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Complainant further contends that Respondent has no rights or legitimate interests in the Domain Name.
Complainant states that it has not authorized Respondent to use the GERI HALLIWELL mark either as a domain name or otherwise, and that Respondent is not commonly known by the Domain Name, nor is there evidence of any legitimate noncommercial or fair use by Respondent of the Domain Name.
Complainant submits that Respondent registered the Domain Name primarily for the purpose of selling it to Complainant or to a competitor of Complainant or consideration in excess of Respondent’s out-of-pocket costs and also that Respondent has intentionally attempted to attract, for commercial gain, users to its website at the Domain Name by creating a likelihood of confusion with Complainant’s mark. Complainant submits that prior to the registration of the Domain Name in June 2007, Complainant enjoyed worldwide rights and reputation in the GERI HALLIWELL mark and that Respondent must have been aware of Complainant’s rights in the mark when he registered the Domain Name.
As evidence strongly suggesting that the Domain Name was registered primarily for the purpose of selling it, Complainant refers to the fact that the Domain Name is advertised for sale on the “www.sedo.com” website for USD1,888. Further, in Complainant’s submission, the fact that the Domain Name resolves to a website featuring links to various third party websites offering goods for sale including goods offered by reference to “Geri Halliwell” infers that Respondent is receiving payment for click-throughs to those websites.
Complainant cites Owens Corning v. NA, WIPO Case No. D2007-1143 and Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912 as an example of UDRP panels that have concluded that such behaviour constitutes an abusive registration, including in cases concerning Respondent. Complainant points to Respondent’s use of a privacy protection shield as further evidence of bad faith conduct, citing Stanworth Development Limited v. PrivacyProtect.org, WIPO Case No. D2009-1219.
As evidence of Respondent’s pattern of bad faith conduct, Complainant refers to prior UDRP decisions involving Respondent namely:
- Hertz System, Inc. v. Rampe Purda / Privacy--Protect.org, WIPO Case No. D2010-0636;
- U.S. Natural Resources, Inc. v. Rampe Purda / Privacy--Protect.org, WIPO Case No. D2010-0720;
- L’Oréal v. Rampe Purda / Privacy--Protect.org, WIPO Case No. D2010-0870; and
- LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840;
- Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v. Rampe Purda, NAF Claim No.FA1298005.
Complainant cites the following passage from the decision of the Panel in L’Oréal v. Rampe Purda / Privacy--Protect.org, supra:
“In the light of such a pattern of abusive behaviour associated with the name Rampe Purda, the panel has no hesitation in accepting the Complainant’s submissions in connection with registration and use in bad faith in the present case.”
Respondent did not reply to Complainant’s contentions.
7. Discussion and Findings
A. Identical or Confusingly Similar
The first hurdle which Complainant faces in a case such as this, is in showing that the rights upon which Complainant bases its claim are rights in a trademark. The Policy, unlike some other policies such as the Australian Domain Name Resolution Policy, is restricted to cases where the relevant rights are trademark rights and do not include rights in a name per se. Extension of the Policy to include rights in a name per se was not accepted in the Interim Report on the Second WIPO Domain Name Process. However, it has long been established that where the personal name concerned is used in commerce to distinguish the goods and services offered by a person under that name, common law trademark rights can be found in the name notwithstanding that there is no trademark registration. An early example of that finding is the case of, Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235.
The evidence submitted by Complainant clearly shows that Complainant, whose full name is Geraldine Halliwell, has consistently and extensively used the name GERI HALLIWELL as the name and mark under which she promotes and provides her services in the course of her multifaceted career. The Panel therefore finds that the name GERI HALLIWELL is a trademark or service mark in which Complainant has rights. The Domain Name consists solely of that trademark with the addition of the denominator “.com” which, as numerous panels have found, does not serve to differentiate the Domain Name from the trademark.
The Panel therefore finds that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant has presented a strong prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. He is not commonly known by the Domain Name, he has not been authorized by Complainant to use Complainant’s trademark and he is not making a noncommercial or fair use of it. As many panels have found, the use of a domain name to confuse users and direct them to a third party portal site cannot constitute use in connection with the bona fide offering of goods or services. The Panel accepts the inevitable inference that Respondent uses the Domain Name that way to generate income from pay-per-click commissions. Such use is bad faith use within paragraph 4(b)(iv) of the Policy, and bad faith use cannot generate a bona fide offering of goods or services. The prior UDRP panel decisions cited by Complainant support that conclusion and Respondent has failed to rebut it.
The Panel therefore finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
At the time the Domain Name was registered in June 2007, Complainant’s name and trademark were already well and widely known. Indeed within the relevant demographic it could be said that the name was world famous. It is not credible therefore that Respondent could have registered the Domain Name in ignorance Complainant’s rights, nor that he did so otherwise than for the purpose of profiting from the reputation to which they attach by selling the Domain Name and/or by using it to derive income.
As discussed above, Respondent’s use of the Domain Name to generate confusion in order to attract users to his website for commercial gain is bad faith use. The only reasonable conclusion to be drawn from Respondent’s website is that he uses it to derive revenue on a pay-per-click basis from the links shown on the site to which users have been attracted in the belief that it is connected with the well-known Geri Halliwell, thus satisfying the requirement of paragraph 4(c)(iv) of the Policy.
The Panel therefore finds that the Domain Name has been registered and is being used 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 <gerihalliwell.com> be transferred to Complainant.
Desmond J. Ryan AM
Dated: October 20, 2010