WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Helena Christensen v. DotBadger Domains, Online Admin
Case No. D2013-1706
1. The Parties
The Complainant is Helena Christensen of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by HGF Law, United Kingdom.
The Respondent is DotBadger Domains, Online Admin of Nymburk, Czech Republic.
2. The Domain Name and Registrar
The disputed domain name <helenachristensen.com> (the “Domain Name”) is registered with Rebel.com Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2013. On October 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 3, 2013, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on October 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2013. On October 21, 2013, the Center received a Complainant’s supplemental filing. On October 22, 2013, the Center acknowledged receipt of the Complainant’s supplemental filing and informed the parties that the supplemental filing request would be forwarded to the Panel (upon appointment) for determination pursuant to its discretion. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2013.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on November 4, 2013. 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
The Complainant is a fashion model and former “Victoria's Secret Angel” who has been working as a model internationally since the early 1990s. The Complainant has featured on the front covers of various internationally recognized magazines such as Vogue, Elle, Marie Claire and Harper's Bazaar, which are sold in numerous countries worldwide including the UK, United States of America, Australia, Argentina, Germany, Slovakia and the Czech Republic. The Complainant has been featured in various advertising campaigns for famous brands and fashion houses since the early 1990s including Chanel, DomPérignon, Prada, Versace and Victoria's Secret. During her career the Complainant has attracted wide publicity. Articles featuring pictures of her and her name have appeared in a number of newspapers and magazines worldwide.
As a model the Complainant uses the name HELENA CHRISTENSEN in two ways: (a) to promote her modeling services to various businesses mostly in the fashion and luxury goods industry and (b) for the purpose of merchandising and for the commercial promotion of goods worldwide.
The Complainant (through her management agency) has a Community Trade Mark registration No. 011286978 for the word mark HELENA CHRISTENSEN, applied for on October 23, 2012 and registered on March 21, 2013 (the “Trademark”).
The Respondent registered the Domain Name on April 13, 2003. At the time of this decision, the website at the Domain Name resolves to an error page.
5. Parties’ Contentions
The Complainant asserts that she owns the Trademark and has common law unregistered trademark rights in the name HELENA CHRISTENSEN both under the law in Denmark (where the Complainant is a citizen), the UK (where the Complainant’s management agency resides) and the Czech Republic (where the Respondent resides). Furthermore, the Complainant submits that it has sufficient rights to bring an action for passing off and has owned these rights since the late 1980s, HELENA CHRISTENSEN is a distinctive identifier of goods and services offered under the name (modeling services offered by the Complainant and goods offered by third parties promoted by using the Complainant’s name), the Complainant states. The Domain Name is identical to the mark HELENA CHRISTENSEN as the Domain Name incorporates the mark HELENA CHRISTENSEN mark in its entirety, so that - according to the Complainant - there is confusing similarity.
According to the Complainant, the Respondent is not called “Helena Christensen”, was not and is not known by the Domain Name and is not authorized by the Complainant to use the mark HELENA CHRISTENSEN. Furthermore, the Complainant submits, there is no evidence that the Respondent is operating a bona fide business through the website to which the Domain Name resolves, as it directs users to a pay-per-click portal and thus derives revenue from the web traffic that is diverted through the Domain Name.
The Complainant states that the mark HELENA CHRISTENSEN has been in continuous use worldwide since at least 1990. When the Respondent registered the Domain Name, the Complainant and her modeling services business was very well-known so that the Respondent would have been aware of the Complainant’s mark when registering the Domain Name in 2003. The Respondent is a sophisticated Internet user, registrant and on the WhoIs record for 419 domain names and 705 previously registered domain names including <fzacebook.com> and previously <micrsoftwindows.com>. According to the Complainant, this shows that the Respondent is a serial cybersquatter who has registered the Domain Name for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant (the owner of the mark HELENA CHRISTENSEN) for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the Domain Name. Furthermore, the Complainant submits, the Respondent has registered the Domain Name in order to prevent the Complainant as owner of the mark HELENA CHRISTENSEN from reflecting the mark in a corresponding domain name. The Complainant submits that the Respondent’s use of the Domain Name is interfering with the lawful trade of the Complainant by diverting traffic and interested customers from the official websites that feature the Complainant to the Domain Name. Members of the public are therefore confused by the registration and use of the Domain Name and the existence of the Domain Name is detrimental to the reputation of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural Issue: Supplemental Filing
There is no express provision under the Policy and the Rules regarding supplemental filings. However, the Panel may in its sole discretion request further statements or documents from the parties under paragraph 10 of the Rules. In this case, the Panel does not consider the Complainant’s application to file a Supplemental Filing is justified since no proper reason and exceptional circumstances were advanced and, therefore, declines to accept it.
B. Substantive Elements of the Policy
i. Identical or Confusingly Similar
While the Panel notes that the Complainant (through her management agency) has a Community Trademark, the Complainant relies mainly on unregistered trademark rights in the name HELENA CHRISTENSEN, both in her native Denmark and in the United Kingdom where her agency is established. The Panel therefore has to decide whether such rights do in fact exist and whether the requirements for the rights have been fulfilled.
As set out in Arthur Golden v. Galileo Asesores S.L., WIPO Case No. D2006-1215, in respect of the protection of famous names as unregistered trademarks the law is not identical in all jurisdictions. However, based on previous WIPO UDRP decisions, the Panel is convinced that unregistered (common law) trademark rights exist in the United Kingdom (see Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235).
Furthermore, this Panel notes that in Denmark unregistered trademark rights are recognized in s. 3(1) (ii) of the Trademarks Act.
The right is acquired by use of the trademark, provided it has been such (duration and extent of use, marketing activity) that it has established itself in the national market.
To establish (common law) unregistered trademark rights in a personal name it is necessary to show that the name is used as an indication of the source of goods or services supplied in trade or commerce and that, as a result of such use, the name has become distinctive of that source or has acquired secondary meaning. Upon such proof, a celebrity’s name can serve as a trademark when used to identify the celebrity’s performance services. See Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. D2002-0874.
Whether a person’s name has acquired secondary meaning (and therefore may claim protection as an unregistered trademark) requires a factual determination. Factors that a panel might consider include:
(a) whether the name is common (which reduces the possibility of acquiring secondary meaning) - see Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596;
(b) whether the name was used in connection with goods or services in a commercial context; and
(c) the time period over which the name was so used.
See Arthur Golden v. Galileo Asesores S.L., WIPO Case No. D2006-1215.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”, paragraph 1.7, relevant evidence of secondary meaning includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.
In this case, the facts introduced in evidence by the Complainant show that HELENA CHRISTENSEN is not a common name, and that it is associated with the image and the modeling work of the Complainant and has been used for this purpose for well over 20 years. In addition, the evidence shows that HELENA CHRISTENSEN has become well-known among the general public as the name of the Complainant, both in relation to her work as a model and the promotion of certain luxury goods (lingerie).
As a model, the Complainant has received wide international media coverage, both for her image, through magazine covers and advertisements, and her name, through interviews and stories about her work and other activities in magazines and in website publications.
Based on the above, the Panel is satisfied that the Complainant has unregistered trademark rights in the name HELENA CHRISTENSEN both in Denmark and the United Kingdom.
As the Domain Name contains the Trademark in its entirety, the Panel finds that the Domain Name is confusingly similar to the Trademark in which the Complainant has rights.
ii. Rights or Legitimate Interests
Based on the evidence submitted, the Panel accepts that (i) the Respondent is not known by the name HELENA CHRISTENSEN, (ii) there is no connection or affiliation between the Respondent and the Complainant and (iii) the Respondent has not received any license or consent to use the mark HELENA CHRISTENSEN as part of the Domain Name.
The Panel has also considered whether fair use of the Domain Name is possible, as may be the case if the Domain Name consists of a generic or common word, phrase or name.
In this connection, the Complainant has submitted that the use of the Domain Name cannot be considered to constitute fair, noncommercial use of the Trademark which it incorporates, since the Domain Name resolves to “a pay-per-click portal”. As the Complainant has not provided evidence of such use and no website was shown when the Panel tried to connect to the Domain Name, this statement is not supported by evidence.
However, as the name HELENA CHRISTENSEN is not a common name, while it has become famous as the name of the Complainant, this suggests that the Domain Name has been chosen by the Respondent to create the false impression of an association with the Complainant. This does not constitute fair use of the Domain Name.
The Panel further notes that the Respondent did not submit a response in this case to claim any rights or legitimate interests.
For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
iii. Registered and Used in Bad Faith
On the basis of the evidence before it, the Panel is convinced that when the Respondent registered the Domain Name in 2003, it was or must have been aware of the mark HELENA CHRISTENSEN. At the time the name of the Complainant in relation to her work as a model as well as her other commercial activities was well-known internationally. It is therefore likely that the Respondent deliberately registered the Domain Name to profit – e.g. by using it for a pay-per-click page - from the confusion created among the public with the mark of the Complainant. This is supported by the fact that the Respondent has apparently registered several hundreds of domain names, including misspellings of, inter alia <microsoftwindows.com> and <facebook.com>.
The apparent lack of so-called active use of the Domain Name at the time of this decision does not prevent a finding of bad faith.
Furthermore, the Panel cannot conceive of any fair use of the Domain Name which would not infringe the Complainant's right in the mark HELENA CHRISTENSEN.
Therefore, the Pannel concludes that the Domain Name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <helenachristensen.com> be transferred to the Complainant.
Wolter Wefers Bettink
Date: November 26, 2013