WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nicole Richie v. Sonny Ahuja
Case No. D2012-0500
1. The Parties
Complainant is Nicole Richie of Los Angeles, California, United States of America (“U.S.”).
Respondent is Sonny Ahuja of Milwaukee, Wisconsin, U.S.
2. The Domain Names and Registrar
The disputed domain names <nicolerichiefragrance.com> and <nicolerichieperfume.com> (the “Disputed Domain Names”) are registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2012. On March 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 16, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 of the Complaint, and the proceedings commenced on March 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2012. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on April 10, 2012.
The Center appointed Lynda M. Braun as the sole panelist in this matter on April 16, 2012. 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
This dispute concerns the Disputed Domain Names <nicolerichiefragrance.com> and <nicolerichieperfume.com>. The Disputed Domain Names were registered on September 28, 2008.
Complainant is a well-known actor and spokesperson who has achieved substantial success. She has received considerable press attention for her activities in the acting community and the fashion world. The name and trademark NICOLE RICHIE has become associated exclusively with Complainant and her entertainment and fashion services and is understood by consumers to refer to and designate Complainant and these services.
On October 20, 2011, Complainant announced a new line of fragrance products to be sold under the trademark NICOLE RICHIE, which was to be launched in September 2012. Therefore, on October 13, 2011, Complainant’s wholly-owned company, Nicole Richie, Inc., filed an intent-to-use trademark application with the United States Patent & Trademark Office, Serial Number 85/446,642, for NICOLE RICHIE in International Class 3 for fragrances, perfumes, eau deparfum, and various other cosmetic products.
Complainant owns and maintains the website “www.nicolerichie.com”, which features her fashion activities and prominently displays her NICOLE RICHIE trademark at the top of the home page and all other pages of the website. That website went live on June 2, 2011. As of February 29, 2012, it had attracted a total of approximately 2,132,330 visits. Prior to using that website, Complainant maintained a similar
website at “www.nicolerichie.celebuzz.com”. That website went live in March 2009 and now re-directs to “www.nicolerichie.com”.
Respondent is a serial cybersquatter who has registered dozens of domain names that infringe the rights of other celebrities and well-known fashion brands. These domain names consist of a celebrity’s name or a well-known fashion brand, followed by the singular or plural of the word “perfume”, “fragrance” or “cologne”, followed by .com, .net, .or .org. These celebrities and fashion brands include Beyonce Knowles (2 domain names), Bobbi Brown (3 domain names), Bruce Willis (3 domain names), Dolce &Gabbana (1 domain name), Halle Berry (3 domain names), Hannah Montana (3 domain names), Hillary Clinton (3 domain names), Jay-Z (6 domain names), Jennifer Aniston (2 domain names), Jesse McCartney (1 domain name), Justin Bieber (4 domain names), Kanye West (3 domain names), Kim Kardashian (1 domain name), Kylie Minogue (1 domain name), Lindsay Lohan (2 domain names), Miley Cyrus (1 domain name), Queen Latifah (2 domain names), Rihanna (3 domain names), Shakira (11 domain names), Usher (1 domain
name), Vera Wang (1 domain name), and Versace (1 domain name).
5. Parties’ Contentions
Complainant has acquired common law rights and goodwill in the name and trademark NICOLE RICHIE. Complainant has met her burden of proving that the Disputed Domain Names are identical or confusingly similar to Complainant’s name and trademark, that Respondent has no rights or legitimate interests in the Disputed Domain Names, and that the Disputed Domain Names were registered and are being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order for Complainant to prevail and have a domain name transferred to Complainant, Complainant must prove the following (the Policy, paragraph 4(a)(i-iii)):
(i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
As an initial matter, Complainant must demonstrate trademark rights in the trademark NICOLE RICHIE. Since Complainant does not have a federally registered trademark, Complainant must demonstrate common law trademark rights.
Based on numerous past decisions, the Policy is applicable to an unregistered trademark or service mark in which common law rights exist. Jeffery Archer v. Alberta Hotrods tda CELEBRITY 1000, WIPO Case No. D2006-0431 (“For the purposes of the Policy common law rights are sufficient and a complainant thus need not hold a registered trademark to establish rights in a mark. The Policy is thus broad in scope in that the reference to a trademark or service mark in which complainant has rights means that ownership of a registered mark is not required and unregistered or common law trademark or service mark rights will suffice to support a domain name complaint under the Policy.”)
Common law rights may exist in personal names where that name is used as an indication of the source of goods or services provided in trade or commerce and that, as a result of such use, the name has become distinctive of that source. Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. D2002-0874. A celebrity’s name can serve as a trademark when used to identify the celebrity’s performance services. Julia Fiona Roberts v. Russel Boyd, WIPO Case No. D2000-0210 (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association that common law trademark rights exist). On the record presented to the Panel, it has been demonstrated that Complainant has strong common law rights in the trademark NICOLE RICHIE.
As to the first element of the Policy, the Panel finds that the Disputed Domain Names are nearly identical and are confusingly similar to Complainant’s trademark. The words “perfume” and “fragrance” in the Disputed Domain Names are generic. The addition of “perfume” or “fragrance” does not remove the similarity but increases the risk of confusion for consumers, as they would believe that the websites to which the Disputed Domain Names resolve are connected to Complainant and her services.
Indeed, it is well established that the addition of generic words to a trademark does nothing to change an otherwise identical or confusingly similar domain name. Beyoncé Knowles v. Sonny Ahuj, WIPO Case No. D2010-1431 (adding the name Beyoncé to the generic word “fragrance” is insufficient to avoid confusion); Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809 (in case involving <chanelperfumes.com> and <chanelperfumes.net>, the addition of the term “perfumes” is not a distinguishing feature); Missoni S.p.A v. 仲裁域名/DomainJet, Inc ./Jack Sun, WIPO Case No. D2011-1058 (addition of word “fragrance” to trademark insufficient to dispel confusing similarity). See also PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (the addition of generic words to a mark to form a domain name is insufficient to dispel confusing similarity).
Here, the Disputed Domain Names are dominated by Complainant’s NICOLE RICHIE trademark. The source identifying and distinctive elements of the Disputed Domain Names and Complainant’s trademark are identical. “The fact that Complainant was not offering any fragrances under her name prior to the registration of the Domain Name is of no consequence. It is well known that celebrities often lend their name or image to ancillary products such as fragrances; witness Britney Spears, Jennifer Lopez, Sean Combs, Elizabeth Taylor, and Sarah Jessica Parker to name just a few. Combining this industry custom with Complainant’s history of being a spokesperson, the [Disputed] Domain Name[s] inevitably would be associated with Complainant.” Beyoncé Knowles v. Sonny Ahuj, WIPO Case No. D2010-1431.
Accordingly, the first element of Paragraph 4(a) of the Policy has been met by Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 2.1.
In this case, Complainant has made out a prima facie case. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case. Respondent’s lack of reply notwithstanding, there is no evidence in the record that Respondent is in any way associated with Complainant, that Respondent is now or was ever known by the Disputed Domain Names, or that Respondent has any authority, license or permission to use Complainant’s trademark.
The websites to which the Disputed Domain Names resolve contain sponsored links to a variety of third party sites that sell third-party fragrances. Respondent undoubtedly collects referral fees for these links on the pay-per-click websites. Prior UDRP decisions have made it clear that such use does not constitute a legitimate use of a domain name or the legitimate offering of goods or services. PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162. Thus, Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names. Instead, Respondent is using the Disputed Domain Names for commercial gain.
Even if Respondent were in the fragrance business, this would not allow Respondent to register the Disputed Domain Names. Several UDRP panels have ruled that a re-seller, even an authorized re-seller, cannot use a trademark in a domain name without the express consent of the trademark owner, consent that according to the Complainant does not exist here. See, e.g., The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113; Avon Products Inc. v. JongsooLee, WIPO Case No. D2001-0272.
Accordingly, the second element of Paragraph 4(a) of the Policy has been met by Complainant.
C. Registered and Used in Bad Faith
The Policy identifies the following circumstances that, if found, are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Names; or
(ii) Respondent has registered the Disputed Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Disputed Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or locations or of a product on Respondent’s websites or locations.
Policy, paragraph 4(b).
The Panel finds that based on the record, Complainant has demonstrated the existence of Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, Respondent attempted to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s trademark. Respondent seemed to be banking on the fact that, like many other celebrities, Complainant would market an eponymous fragrance line, and by registering the Disputed Domain Names, Respondent could disrupt Complainant’s business. Respondent was also preventing Complainant from making a legitimate use of the Disputed Domain Names.
Second, the websites to which the Disputed Domain Names currently resolve contain sponsored ads to various websites that sell third-party fragrances, among other items. As such, Respondent is not only trading on consumer interest in Complainant in order to generate Internet traffic and to commercially benefit from the sponsored links that appear on the websites, but Respondent also derives commercial advantage in the form of referral fees. This constitutes bad faith. Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Lewis Black v. Burke Advertising, LLC, WIPO Case No. D2006-1128.
Third, and perhaps the most egregious grounds for Respondent’s bad faith is the fact that Respondent has registered dozens of domain names, all of which infringe the rights of a celebrity and well-known fashion brands. The domain names consist of a celebrity’s name or fashion brand followed by the singular or plural of the word “perfume”, “fragrance” or “cologne”, followed by .com, .net, or .org. It is difficult to discern any motive other than that of preventing the trademark owner from reflecting the trademark in a corresponding domain name. Respondent’s conduct regarding Complainant, therefore, is not an isolated event, and the Panel believes that such serial cybersquatting is sufficient to constitute a pattern of conduct under the Policy, paragraph 4(b)(ii). See Potomac Mills Limited Partnership v. Gambit Capital Management, WIPO Case No. D2000-0062 (four domain names held sufficient); ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034 (thirteen domain names held sufficient).
Accordingly, the third element of Paragraph 4(a) of the Policy has been met by Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names, <nicolerichiefragrance.com> and <nicolerichieperfume.com>, be transferred to Complainant.
Lynda M. Braun
Dated: April 19, 2012