WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shonda Rhimes and Shondaland, Inc. v. Windsor Lambiotte LLC
Case No. D2011-1601
1. The Parties
Complainants are Shonda Rhimes and Shondaland, Inc., both of Beverly Hills, California, United States of America (“U.S.”), both represented by Keats McFarland & Wilson, LLP, U.S.
Respondent is Windsor Lambiotte LLC of Spartanburg, South Carolina, U.S.
2. The Domain Names and Registrar
The disputed domain names, <shondaland.com> and <shondarhimes.com>, are registered with GoDaddy.com, Inc. (“GoDaddy”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on September 21, 2011. On September 22, 2011, the Center transmitted by email to GoDaddy a request for registrar verification in connection with the disputed domain names. On September 22, 2011, GoDaddy transmitted by email to the Center its verification response disclosing registrant and contact information for each domain name that differed from that contained in the Complaint. On September 23, 2011, the Center provided Complainant with the information disclosed by GoDaddy by email and invited Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 28, 2011.
The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint. The proceedings commenced on September 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 19, 2011.
The Center appointed Debra J. Stanek as the sole panelist in this matter on October 26, 2011. 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
Complainant Shonda Rhimes is a screenwriter, director, and producer who claims common law trademark rights in the mark SHONDA RHIMES for entertainment services dating back to 1998. Complainant Shondaland, Inc. owns several U.S. federal trademark registrations for the mark SHONDALAND for, among other things, entertainment services, all of which issued in 2009 with the earliest claimed date of first use September 2005.
Both domain names were registered using an identity shield in May 2006. Complainants objected in a cease and desist letter sent in May 2011, but never received a response.
5. Parties’ Contentions
1. Identical or Confusingly Similar
Complainant Shonda Rhimes is a famous screenwriter, director, and producer best known as the creator, writer, and executive producer of the American television series “Grey’s Anatomy.” She made her directorial debut in 1998 and subsequently sold a script that she had written. She has written feature films.
Complainant Shondaland, Inc. is Ms. Rhimes’ production company. The Complaint alleges that Complainants “became household names,” with the release of the television series, “Grey’s Anatomy”, which premiered in 2005 and has been critically acclaimed. Complainant Shonda Rhimes was named one of Time Magazine’s “100 most influential people who shape the world.”
Complainants have been using the mark SHONDA RHIMES since 1998 and the mark SHONDALAND since 2005. The marks have acquired secondary meaning and identify Complainants’ entertainment services. Further, because “Shonda Rhimes” is a personal name, it is inherently distinctive and evidence of its secondary meaning “is replete on the Internet.” Complainants also have rights in the mark SHONDALAND by virtue of the U.S. federal trademark registration for the mark, which Complainant Shondaland, Inc. has used since September 2005.
The domain names incorporate these marks in their entirety, with only the addition of “.com,” which does not distinguish the domain names from Complainants’ marks.
2. Rights or Legitimate Interests
Respondent is not commonly known by the domain names and has not been authorized or licensed by Complainants to use the marks.
Prior to Respondent’s registration, Respondent never used and was not preparing to use, the domain names in connection with a bona fide offering of goods or services.
Moreover, Respondent is not making a legitimate noncommercial or fair use of the domain names without intent of commercial gain. Respondent is monetizing the domain names by directing them to parked pay-per-click or sponsored listing websites.
Accordingly, Respondent has no rights or legitimate interest in the domain names.
3. Registered and Used in Bad Faith
Respondent registered the domain names in 2006, after Complainant Shonda Rhimes used her name as a trademark in interstate commerce in 1998 and after Complainant Shondaland, Inc. began using its SHONDALAND mark since at least September 25, 2005.
Respondent registered both domain names on the same day that the first season finale of “Grey’s Anatomy” attracted 22.2 million viewers. Respondent was well aware of the valuable good will and reputation of the marks at the time of the registration.
In May 2011, Complainants’ counsel sent letters to the identity shield service objecting to the registrations and again in September 2011 after Respondent’s identity was disclosed. No response was received.
The fact that the marks are inherently distinctive, combined with Respondent’s wholesale incorporation of the SHONDALAND and SHONDA RHIMES marks to create confusingly similar domain names, weighs in favor of finding bad faith.
Further, as a result of Respondent’s registrations, Complainants are precluded from exploiting their marks and Respondent has monetized the domain names by parking them and populating them with pay-per-click or sponsored ads featuring links to websites related to Complainants’ television series “Grey’s Anatomy.”
Finally, sponsored links to websites featuring information on Complainants’ entertainment services and unrelated sponsored listings are designed to attract customers for commercial gain. As a result, Internet users are being attracted to Respondent’s website by a likelihood of confusion regarding the source or sponsorship of the websites.
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
In order to prevail, a complainant must prove, as to each disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which the complainant has rights.
(ii) The respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainants. Rather, Complainants continue to have the burden of establishing the required elements as to each of the domain names at issue. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).
A. Procedural Matters
1. Identity of Respondent
The Rules define the “Respondent” as “the holder of a domain-name registration against which a complaint is initiated.” See Rules, paragraph 1, s.v. “Respondent.” The Panel is of the view that a complaint is “initiated” when it is filed with the Center as described in the Rules, paragraph 3. This is consistent with the paragraph 3(a) of the Rules1, which provides (emphasis added):
Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN.
Therefore, in the Panel’s view, the original Complaint correctly named the identity shield service as the Respondent. It was only after this proceeding was filed and commenced that the registrar identified “Windsor Lambiotte LLC” as the registrant. Complainant thereafter amended its Complaint to substitute that entity as Respondent.
Notwithstanding the Panel’s conclusion that the Complaint as originally brought was proper, for purposes of this decision, the Panel treats only “Windsor Lambiotte LLC” as the Respondent.
2. Multiple Domain Names
The Complaint seeks relief as to two domain names. The Rules provide that a complaint may relate to more than one domain name, “provided that the domain names are registered by the same domain-name holder,” see Rules, paragraph 3(c). The domain names were registered using a so-called privacy service to shield the identity of the actual registrant. As noted above, in the Panel’s view, the original Complaint was properly brought against the service. Following filing of the Complaint, the service disclosed that the actual holder of each domain was the same entity. Under these circumstances, the Complaint’s request for relief as to two domain names is proper.
3. Multiple Complainants
The Complaint seeks relief on behalf of two Complainants: the individual, Shonda Rhimes, and a corporation identified as “her production company,” Shondaland, Inc.
Neither the Policy nor the Rules expressly provide for multiple Complainants. The Panel, consistent with the consensus view, finds that a complaint filed by multiple complainants may be appropriate where all of the complainants either have a specific common grievance against the respondent or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion and it would be equitable and procedurally efficient to permit the consolidation […]. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0), Question 4.16. The Panel also subscribes to the remainder of the consensus view:
In order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted.
No request for consolidation appears to have been made here. Further, the Complaint for the most part does not distinguish between the two Complainants and their respective rights and interests.2
Complainants are separate legal entities, one an individual and the other a corporation, and although they are apparently connected, the Complaint does not identify with any specificity a shared interest3 in the two marks at issue, such as that of licensor and licensee, that they are part of a larger group or venture, or that they are members of an association or other organization in which they have individual rights. See WIPO Overview 2.0, Question 4.6. Instead, it appears that Complainant Shondaland, Inc., which owns the cited U.S. federal trademark registration for SHONDALAND, objects to the <shondaland.com> domain name, while Complainant Shonda Rhimes, who claims common law rights in the SHONDA RHIMES mark consisting of her personal name, objects to the <shondarhimes.com> domain name.
Nonetheless, the Panel finds that the Complaint does assert that Respondent has engaged in common conduct that has affected their individual rights in a similar fashion. Both domain names were registered on the same day, both domain names appear to have been similarly parked with the registrar, and both direct visitors to similar “pay-per-click” or sponsored links. The Panel also finds that it would equitable and procedurally efficient to permit the consolidation.
Under the circumstances of this case, the Panel permits the consolidation of the Complaint such that each Complainant asserts a claim against Respondent -– Complainant Shondaland, Inc.’s claim relating to <shondaland.com> and Complainant Shonda Rhimes’ claim relating to <shondarhimes.com>.
B. Substantive Discussion
1. Identical or Confusingly Similar
Complainant Shondaland, Inc. has established rights in the mark SHONDALAND by virtue of the evidence of its U.S. federal trademark registrations for the mark. The Panel finds that, for purposes of these proceedings (in which the “.com” generic top-level domain is not relevant) the domain name <shondaland.com> is identical to the SHONDALAND mark.
Complainant Shonda Rhimes does not claim any registration for the SHONDA RHIMES mark and must therefore establish rights in its unregistered mark. The Panel shares the consensus view that a complainant may establish trademark rights in a personal name that has not been registered. See WIPO Overview 2.0, Question 1.6.
Here, the Panel is not persuaded that Complainant has provided any evidence of the type that establishes rights in a mark that has not been registered. See WIPO Overview 2.0, Question 1.7 (consensus view requires assertion of rights in unregistered mark by showing mark has become a distinctive identifier for party or its goods and services, such as by evidence of length of use, amount of sales, nature and extent of advertising, consumer surveys, and media recognition of mark). Instead, Complainants’ “evidence” of rights in the mark SHONDA RHIMES consists of printouts from the Wikipedia (s.v. “Shonda Rhimes” and “Grey’s Anatomy”) and Internet Movie Database (s.v. “Shonda Rhimes”) websites, an article mentioning Complainant Shonda Rhimes, and a listing generated by a Google search of the name “Shonda Rhimes.” Moreover, the Complaint is signed only by Complainant’s counsel; no information is provided that would indicate that any of the information is based on his personal knowledge.
Complainants have established that Complainant Shonda Rhimes is a screenwriter, director, and producer of a popular television program. They have not established that either or both of them have any rights in a SHONDA RHIMES mark.4
As an initial matter, Complainants’ use of sources such as Wikipedia to establish rights in a mark is problematic at best. Wikipedia, according to the disclaimers that appear on the site, is a collaborative effort that permits “anyone with an Internet connection to alter its content.” See http://en.wikipedia.org/wiki/Wikipedia:General_disclaimer. The disclaimer goes on:
Please be advised that nothing found here has necessarily been reviewed by people with the expertise required to provide you with complete, accurate or reliable information.
That is not to say that you will not find valuable and accurate information in Wikipedia; much of the time you will. However, Wikipedia cannot guarantee the validity of the information found here. The content of any given article may recently have been changed, vandalized or altered by someone whose opinion does not correspond with the state of knowledge in the relevant fields.
See http://en.wikipedia.org/wiki/Wikipedia:General_disclaimer (emphasis supplied). More disturbing, however, is the false representation made by Complainants’ counsel that the pages included in the annex to the Complaint were “true and correct copies of pages printed from the <Wikipedia.org> website.” In fact, the article begins with the following:
The neutrality of this article is disputed. Please see the discussion on the talk page. Please do not remove this message until the dispute is resolved. (March 2011)
This article contains weasel words: vague phrasing that often accompanies biased or unverifiable information. Such statements should be clarified or removed. (March 2011)
See http://en.wikipedia.org/wiki/Shonda_Rhimes (hyperlinks omitted).
The Panel must conclude that Complainant Shonda Rhimes has not established rights in the mark SHONDA RHIMES. Accordingly, the Panel concludes that the Complaint as to <shondarhimes.com> fails as to the first element.
2. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0), Question 2.1 (once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As noted above, a complainant must establish each of the three elements outlined in paragraph 4(a) of the Policy in order to prevail. In light of the conclusion that the first element has not been established as to the <shondarhimes.com> domain name, it is not necessary to address the issue of Respondent’s rights or legitimate interests as to that domain name.
As to the <shondaland.com> domain name, the Panel concludes that Complainant has made a prima facie showing that none of the three examples set forth in Paragraph 4(c) of the Policy are applicable here.
As noted above, the disputed domain name is identical to Complainant’s mark, which was in use prior to registration of the <shondaland.com> domain name.5 It appears that the domain name is being used to generate “click through” revenue for the registrar or Respondent. There is no reason to believe, from the WhoIs record or otherwise, that Respondent is or could be known by the domain name. Finally, it does not appear that Respondent is making a legitimate noncommercial or fair use of the domain name.
The Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(c) of the Policy.
3. Registered and Used in Bad Faith
A complainant must establish that the domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which may establish bad faith, (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location, (see Policy, paragraph 4(b)(iv)).
For the same reasons noted above, it is not necessary to address the issue of bad faith as to the <shondarhimes.com> domain name.
As to the <shondaland.com> domain name, Complainant Shondaland, Inc.’s rights in the SHONDALAND mark predate Respondent’s registration and use of the domain name. As noted above, the Panel concludes that registration of both domain names at issue on the same day as the first season finale of Complainant Shondaland Inc.’s television program was not serendipitous and infers that it was done with knowledge of the SHONDALAND mark.
Further, the Panel has already concluded that Respondent has no rights or legitimate interests in the <shondaland.com> domain name and that the use of the domain name was not in connection with a bona fide offering of goods or services.
Under these circumstances, combined with the adverse inferences drawn by Respondent’s failure to respond, the Panel finds that Complainant Shondaland, Inc. has established that Respondent registered and is using the domain name in bad faith.
For the foregoing reasons, the Complaint is denied as to the domain name <shondarhimes.com> and, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <shondaland.com> be transferred to Complainant Shondaland, Inc.
Debra J. Stanek
Dated: November 8, 2011
1 See also, Rules, paragraph 4, which is entitled “Notification” of Complaint and does not refer to “initiation.” Instead, paragraph 4(c) refers to the “commencement” of the proceedings.
2 In fact, the Complaint requests that the domain names be transferred to “Complainants”. Such a request is not helpful given that, as discussed more fully above, each of the two Complainants appear to be relying on rights arising from two different trademarks, each of which appear to correspond to one of the two domain names.
3 It seems likely that the individual Complainant may have granted to the corporate Complainant rights to use a portion of her personal name as the corporate name and in the SHONDALAND mark, despite the fact that the SHONDALAND registrations contains a statement to the effect that SHONDALAND (which the Panel appreciates is not the individual Complainant’s actual name) “does not identify a living individual.” The burden is on the Complainant to establish the facts needed to support consolidation and it is not the Panel’s role to guess or speculate on the Complainants’ arrangements, if any.
4 “Merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier for the business engaged in, or a religious leader), or making broad unsupported assertions regarding use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights.” See WIPO Overview 2.0, Question 1.6.
5 Although the domain name was registered before the SHONDALAND trademark registration issued, Complainant’s evidence, including its federal trademark registration, does establish use of the mark as early as 2005. The Panel concludes, from registration of both of the domain names at issue on the same day, which coincided with the first season finale of Complainant’s television program, and the adverse inferences from Respondent’s failure to respond, that Respondent knew of Complainant Shondaland’s trademark rights.