WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Paris Hilton v. Dmitrij Timofeev
Case No. D2010-1905
1. The Parties
The Complainant is Paris Hilton of Beverly Hills, California, United States of America, represented by Tucker & Latifi, LLP, United States of America.
The Respondent is Dmitrij Timofeev of Saint-Petersburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <paris-hillton.com> (the “Domain Name”) is registered with Center of Ukrainian Internet Names (UKRNAMES) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2010. On November 9, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 12, 2010, the Registrar 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 Registrar also indicated that the language of the registration agreement for the Domain Name was Russian. The Center sent two email communications to the Complainant on November 15, 2010 providing the registrant and contact information disclosed by the Registrar and a language of the proceeding document stating that the Complainant would need to either provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; submit the Complaint translated into Russian; or submit a request for English to be the language of the administrative proceeding, and inviting the Complainant to submit the amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 17, 2010 adding the disclosed registrant as the Respondent and requested that the language of the proceedings be English. The Center verified that the Complaint together with the amendment to the Complaint and language submission 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 November 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2010.
The Center appointed Assen Alexiev as the sole panelist in this matter on December 28, 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.
In relation to the language of the administrative proceeding, the Panel notes that the language of the registration agreement for the Domain Name is Russian. The Complainant has submitted a request that English be the language of the proceedings, to which the Respondent has not responded. The Panel is prepared to accept the Complainant’s request, especially in the light of the Respondent’s lack of reaction on the issue and the English language content of the website once associated to the Domain Name. The Center has at all times communicated to the Respondent in both English and Russian, and it appears that no unfairness would be caused to either party if English is chosen as the language of the proceedings. Therefore, in exercise of its powers under Rules, paragraphs 10 and 11, the Panel decides English to be the language of this administrative proceeding.
4. Factual Background
The Complainant Ms. Paris Hilton is a well-known celebrity and a public figure because of the legacy associated with her family name and personally as an actress, singer, and fashion designer.
Ms. Hilton has registered the PARIS HILTON trademarks in connection with various goods and services such as clothing and footwear, cosmetics, retail store services, fragrance, watches and fashion accessories. The Complainant is the holder of the following PARIS HILTON trademarks (the “PARIS HILTON Trademarks”):
the word trademark PARIS HILTON with registration No. 3,788,818, registered on May 11, 2010 in international class 9 for the territory of the United States of America;
the word trademark PARIS HILTON with registration No. 3,514,355, registered on August, 7, 2008 in international class 18 for the territory of the United States of America;
the word trademark PARIS HILTON with registration No. 3,309,679, registered on October 9, 2007 in international class 25 for the territory of the United States of America;
the word trademark PARIS HILTON with registration No. 3,059,587, registered on February 14, 2006 in international class 3 for the territory of the United States of America;
the combined trademark PARIS HILTON with registration No. 3,740,362, registered on January 19, 2010 in international class 25 for the territory of the United States of America;
the word trademark PARIS HILTON with registration No. 3,550,627, registered on December 23, 2008 in international class 28 for the territory of the United States of America;
the word trademark PARIS HILTON with registration No. 3,249,904, registered on June 5, 2007 in international classes 9, 14, 18, 25, 41 for the territory of the United States of America;
the word trademark PARIS HILTON with registration No. CTM 004059631, registered on July 14, 2006 in international classes 3, 14, 25; and
the word trademark PARIS HILTON with registration No. 109267, registered on July 10, 2007 in international class 3 for the territory of Ukraine.
The Domain Name was registered on October 8, 2010.
5. Parties’ Contentions
The Complainant submits that consumer products worth millions of dollars are sold each year under the PARIS HILTON trademarks. These products are widely advertized by Ms. Hilton’s licensees. Ms. Hilton regularly receives significant press coverage for her persona and the products bearing the PARIS HILTON Trademarks. As a result, consumers readily identify any products bearing the PARIS HILTON Trademarks with the Complainant.
The Domain Name is substantially identical to the Complainant's trademarks. Its relevant part is a misspelling of the Complainant's PARIS HILTON Trademarks, as it differs from them by one letter only.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has not authorized or licensed the Respondent to use its registered trademarks, and the Respondent has no legitimate right to use them. The Respondent is not commonly known by the Domain Name. The Respondent has registered and began using the Domain Name long after the Complainant established its rights in the PARIS HILTON Trademarks.
The Complainant contends that the Domain Name was registered and is being used in bad faith. The Respondent is primarily using the Domain Name to link it to the website at “www.nude-celebrity.info”, where pornographic photographs of celebrities including Ms. Paris Hilton are posted. The Domain Name wrongfully leads the public to believe that the Respondent's business is associated with or authorized by the Complainant, which is not true. This shows that the Respondent's use and misspelling of the PARIS HILTON Trademarks is an intentional attempt to attract Internet users to the Respondent's website or other online location for commercial gain, by creating a likelihood of confusion with the Complainant's Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location.
The Complainant requests the transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the Domain Name:
(i) That the Domain Name registered by the Respondent 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 Domain Name; and
(iii) That the Respondent has registered and is using the Domain Name in bad faith.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this case, the Center has employed the required measures under Rules, paragraph 2(a), to achieve actual notice of the Complaint to the Respondent, and the Respondent was given a fair opportunity to present his case.
In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.” As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004:
“Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, the Respondent has chosen not to submit a Response. In the Panel’s view, his default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take its decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The Complainant has provided sufficient information to establish her rights in the PARIS HILTON Trademarks, registered for the territories of various jurisdictions around the world.
It is a common practice under the Policy to disregard gTLDs such as the “.com” section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is its “paris-hillton” section. This part of the Domain Name is visually separated in two elements – “paris” and “hillton”. These two elements differ from Complainant’s PARIS HILTON Trademarks by only one letter and a hyphen between “paris” and “hillton”. The additional letter “l” is insignificant, and the hyphen is an element customary used in domain names to denote an interval between words. For these reasons, the Domain Name is difficult to distinguish from the Complainant’s trademarks both visually and phonetically.
On these grounds, the Panel finds that the Domain Name is confusingly similar to trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name, stating a number of arguments in this regard. In the opinion of the Panel, the Complainant has established a prima facie case under Policy, paragraph 4(a)(ii).
It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the showing by providing evidence to the contrary.
The Respondent has chosen not to present to the Panel any allegations or documents in his defense despite the Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that a panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any justification for registering or using the Domain Name, he could have provided it. In particular, the Respondent has not contended that any of the circumstances described in Policy, paragraph 4(c) — or any other circumstance — is present in his favor.
The only information available about the Respondent is the WhoIs information, provided by the Registrar, and the content of the website, associated to the Domain Name. The WhoIs information contains no evidence of rights or legitimate interests of the Respondent in the Domain Name. The Respondent makes no claims for having rights or legitimate interests in respect of the Domain Name and provides no explanation whatsoever for its registration and use. As submitted by the Complainant and not denied by the Respondent, the Domain Name was linked to a pornographic website containing images of the Complainant at the time the Complaint was filed, and this has been done without the consent of the latter. In the Panel’s view, such activity cannot be regarded as establishing rights or legitimate interests in the Domain Name.
The above circumstances appear to confirm the Complainant’s prima facie case. In the lack of any evidence or allegations to the contrary, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name within the meaning of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For the purposes of Policy, paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.
In the present case, the Domain Name is confusingly similar to the Complainant’s PARIS HILTON Trademarks, and its registration appears to be an act of typosquatting. See, e.g., Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971. According to the uncontroverted contention of the Complainant, the Domain Name has been used in an attempt to attract Internet users to a commercial website displaying pornographic photographs of the Complainant and of other celebrities without the consent of the Complainant. Such conduct illegitimately exploits with a commercial purpose the reputation of the Complainant and her trademarks.
Taking the above into account, and in the lack of any contrary allegation by the Respondent, the Panel is prepared to accept that the Domain Name has been registered and used by the Respondent in an attempt for commercial gain to attract Internet users to the Domain Name by creating a false association with Complainant and his trademarks. Under the Policy, such actions amount to bad faith registration and use of the Domain Name.
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 <paris-hillton.com> be transferred to the Complainant.
Dated: January 11, 2011