WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Paris Hilton v. John Daizy, InfoMedia D.O.O
Case No. D2013-1979
1. The Parties
Complainant is Paris Hilton of Beverly Hills, California, United States of America (“U.S.”), represented by Tucker & Latifi, LLP, U.S.
Respondent is John Daizy, InfoMedia D.O.O of Ljubljana, Slovenia.
2. The Domain Name and Registrar
The disputed domain name <parishiltonpornvideos.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2013. On November 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 22, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amended Complaint on December 9, 2013.
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 of the Complaint, and the proceedings commenced on December 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2013.
Respondent communicated with the Center by email on December 10, 2013 but did not submit a formal Response.
On December 31, 2013, the Center informed the Parties of the commencement of the Panel appointment process.
The Center appointed Clive L. Elliott QC as the sole panelist in this matter on January 17, 2014. 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 is a well-known American celebrity.
The Domain Name was created on October 12, 2013 and registered with the Registrar on November 1, 2013. The website at the Domain Name displays pornographic content.
5. Parties’ Contentions
Complainant states that for over ten years Ms. Paris Hilton has been a world renowned celebrity and a public figure because of the legacy associated with her family name and in her own individual right as an actress, singer, public persona and fashion designer.
Complainant contends that millions of dollars of consumer products are sold annually under the trade marks PARIS HILTON, JUST ME BY PARIS HILTON, HEIR BY PARIS HILTON, HEIRESS and various other combinations and stylized versions thereof (collectively, the “PARIS HILTON Trade Marks”). Complainant also contends Ms. Hilton receives a vast amount of unsolicited press coverage almost on a daily basis for her persona and the array of product lines bearing the PARIS HILTON Trade Marks. Complainant asserts that as a result of this, together with the extensive funds expended annually by Ms. Hilton’s licensees in advertising products sold under the PARIS HILTON Trade Marks, consumers worldwide readily identify any products and services bearing the PARIS HILTON Trade Marks with Ms. Hilton and with no other entity or person.
Complainant asserts that Ms. Hilton is the worldwide owner of the PARIS HILTON Trade Marks in connection with various goods and services, including but not limited to, clothing and footwear, cosmetics, retail store services, fragrances, watches, handbags, and a wide variety of fashion accessories worldwide. Complainant further asserts that she has the exclusive rights to use, license and exploit the PARIS HILTON Trade Marks. Complainant’s trade mark rights in the PARIS HILTON marks date back to as early as 2004. Ms. Hilton is the owner of numerous trade mark registrations in the U.S. and in 60 additional countries.
Complainant submits that Respondent registered and began using the Domain Name long after Complainant established her rights in and to the PARIS HILTON Trade Marks. Complainant asserts that as well as the Domain Name incorporating Complainant’s PARIS HILTON Trade Marks, it is also substantially identical to Complainant’s own domain name <parishilton.com>, which is used both by Complainant and her affiliated companies. Complainant submits that this creates a likelihood of confusion.
Complainant asserts that Respondent is using the Domain Name to post pornographic videos of Ms. Hilton, which Complainant believes wrongfully leads the public to believe that Respondent’s business is associated with, authorized by, or sponsored by Complainant. Complainant states that she has not authorized or licensed Respondent to use Complainant’s PARIS HILTON Trade Marks and that it has no legitimate right to use these trade marks. Further, Complainant claims that the content on Respondent’s Domain Name casts Ms. Hilton in a negative light.
Complainant notes that Respondent is not commonly known by the Domain Name and contends that there can be no legitimate business reason for Respondent to own and/or use the Domain Name, aside from wrongfully leading the public to believe that Respondent’s website is associated with, authorized by, or sponsored by Complainant, and Complainant submits that the sexual content on the Domain Name threatens to tarnish Ms. Hilton’s mark.
By using the Domain Name, Complainant alleges that Respondent is intentionally attempting to attract for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s PARIS HILTON Trade Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or the services being offered on Respondent’s website. Thus, Complainant believes the Domain Name has been registered and is being used in bad faith, thus creating a likelihood of confusion in the market place.
There was no formal response received from Respondent.
Respondent did however send three email communications to the Center on December 10, 2013, one of which stated “i have talked to a few ppl, all say that i’m not infringing “ParisHilton” trade mark. it’s kinda blog making people aware of her porn past”.
While these communications could be described as non-compliant with the Policy, Rules and Supplemental Rules and thus unavailing the statement above makes it clear that Respondent is aware that the use of the Domain Name is making the public aware of Complainant’s alleged “porn past”.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant provides clear evidence that the PARIS HILTON Trade Marks in so far as they relate to the legacy associated with the Hilton family name and in Complainant’s own individual capacity as an actress, singer, public persona and fashion designer have been used since in or about 2004 and that due to use and/or registration of the PARIS HILTON Trade Marks, that Complainant has relevant rights. That is, that as a result of such use in relation to a range of celebrity activities Complainant owns rights, through registration and at common law, in the PARIS HILTON Trade Marks.
It is clear that the PARIS HILTON Trade Marks are exclusively associated with Complainant. It is also clear that by virtue of the use and the repute of the PARIS HILTON Trade Marks an unrelated entity or person using a similar domain name is likely to lead to members of the public being confused and deceived.
Complainant argues that the Domain Name is confusingly similar to the PARIS HILTON Trade Marks in that it consists of the words “Paris Hilton” with the addition of the descriptive term “pornvideos” and the generic top-level domain (“gTLD”) “.com”.
This is likely to confuse and deceive consumers as to the true nature of the goods they are purchasing and the origin of those goods. Further, the overall impression must be that the Domain Name is necessarily connected in some way to Complainant and/or her PARIS HILTON Trade Marks, contrary to the fact.
On this basis the Panel finds:
a) Complainant has rights in respect of the PARIS HILTON Trade Marks.
b) The Domain Name is confusingly similar to the PARIS HILTON Trade Marks.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
As noted above, Complainant asserts that Respondent is using the Domain Name to post pornographic videos of Ms. Hilton, which Complainant contends wrongfully leads the public to believe that Respondent’s business is somehow associated or connected with Complainant and that in doing so it casts Ms. Hilton in a negative light.
Respondent does not deny posting so-called pornographic videos of Ms. Hilton and acknowledges that in doing so he is publicising her alleged “porn past”. Without in any way accepting Respondent’s characterisation of the situation, there is clearly merit in the submission that Respondent’s conduct is likely to cast Ms. Hilton in a negative light. More so, it is apparent, and not in any way denied, that through these activities Respondent is using the PARIS HILTON Trade Marks accompanied by a salacious descriptor to attract Internet traffic and thus business.
The Panel concludes that the Domain Name has been employed as a means of improperly diverting or attracting Internet customers. In those circumstances, it is difficult to see how Respondent’s conduct could be characterized as legitimate and thus permissible.
On this basis the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
The Panel concludes that Respondent has intentionally attempted to divert or attract for commercial gain Internet users to its websites or others with which it is associated, thereby creating a likelihood of confusion with Complainant and/or the PARIS HILTON Trade Marks. In the absence of any meaningful explanation from Respondent, the Panel finds that he registered and is using the Domain Name in bad faith. That is, so as to take bad faith advantage of Internet users who may be looking for Complainant or wish to purchase Complainant’s goods.
Further, the Panel is satisfied that bad faith registration is supported by the fact that the PARIS HILTON Trade Marks significantly pre-dated Respondent’s registration of the Domain Name and in light of the use and protection of the PARIS HILTON Trade Marks and Ms. Hilton’s well-known celebrity status that Respondent knew of Complainant’s prior rights.
The Panel thus has no difficulty in concluding that the third element of the Policy has been met.
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 <parishiltonpornvideos.com> be transferred to Complainant.
Clive L. Elliott Q.C.
Date: January 31, 2014