WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ali Larter v. Domain Administrator, Marketing Express
Case No. D2014-0715
1. The Parties
The Complainant is Ali Larter c/o Hansen, Jacobson, Teller, Hoberman, Newman, Warren, Richman, Rush & Kaller, LLP of Beverly Hills, California, United States of America (the "US"), represented by Fross Zelnick Lehrman & Zissu, PC, US.
The Respondent is Domain Administrator, Marketing Express of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <alilarter.com> (the "Disputed 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 May 1, 2014. On May 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 6, 2014, 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 May 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 4, 2014.
The Center appointed John Swinson as the sole panelist in this matter on June 11, 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
The Complainant is Ali Larter, an American actress and model. She began her modeling career in 1990, and her acting career in 1996. The Complainant claims common law rights in the trade mark ALI LARTER (the "Trade Mark").
The Respondent is Domain Administrator, Marketing Express of the Cayman Islands, Overseas Territory of the United Kingdom. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Disputed Domain Name was registered on April 13, 2003. The Disputed Domain Name is currently inactive. In the past, it has reverted to a website containing pay-per-click links, some of which incorporated the Trade Mark.
5. Parties' Contentions
The Complainant makes the following submissions.
Common Law Rights
The UDRP protects common law trade marks, including an actress or artist's name (see e.g. Carmen Electra a/k/a Tara Leigh Patrick v. Network Operations Center, WIPO Case No. D2003-0852 and Miranda Kerr v. orangesarecool.com, WIPO Case No. D2013-0553).
The Complainant has appeared in a number of high grossing films, such as Final Destination and Legally Blonde. These films have been released both in the US and internationally. A number of these films had been released on home video prior to the registration of the Disputed Domain Name on April 13, 2003.
The Complainant has also had a long and successful television career. Prior to the registration of the Disputed Domain Name, she had appeared on a number of popular programs, including "Suddenly Susan" and "Dawson's Creek". The Complainant's most popular and long-running role was as Niki Sanders/Tracy Strauss/Jessica Sanders/Carol/Gina in the series Heroes, which originally aired from 2006 until 2010. The show earned numerous awards and nominations and was distributed in over 16 countries, including the United Kingdom. The Complainant has also appeared on a number of talk shows, such as "The Ellen DeGeneres Show" and "The Tonight Show with Jay Leno".
The Complainant has received awards and nominations for her work, both in film and television. She has appeared on the covers of magazines around the world (the Complainant provided representative samples of these covers). There have also been numerous articles written about the Complainant (the Complainant provided representative samples of such articles).
As a result of the above, the Complainant has acquired common law rights and goodwill in the Trade Mark. The Trade Mark has become exclusively associated with the Complainant and her entertainment services and is understood by consumers to exclusively refer to and designate the Complainant and her entertainment services.
On the date the Disputed Domain Name was registered (April 13, 2003), the Complainant had been modeling for over a decade, had appeared on five magazine covers, had been the subject of press articles, had appeared in seven television shows (four of which were distributed internationally) and had appeared in seven movies.
Identical or Confusingly Similar
The Disputed Domain Name incorporates in its entirety, and consists solely of, the Trade Mark. Users will reasonably believe the Disputed Domain Name is related to the Complainant, creating a likelihood of confusion (see e.g. Janine Turner v. Mercedita Kyamko, WIPO Case No. D2004-1036).
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:
- the Complainant has never given the Respondent any license, permission or authorization to use the Trade Mark as a domain name;
- the Respondent is not commonly known by the Disputed Domain Name;
- the Complainant has never consented to the use of her name (i.e. the Trade Mark) as a domain name; and
- the Respondent is using the Disputed Domain Name in connection with a parking page for sponsored links, when a user clicks on a link, more click-through advertisements appear, as well as more links referencing the Complainant (clicking on these links results in advertisements for products which are unrelated to the Complainant, but bear the Trade Mark). Adopting a domain name that intentionally trades off the Trade Mark is not a bona fide offering of goods or services (see e.g. Jim Carrey v. BWI Domains, WIPO Case No. D2009-0563).
Registered and Used in Bad Faith
The Respondent was aware of the Complainant's rights in the Trade Mark. The Disputed Domain Name incorporates the Trade Mark in its entirety and was acquired after common law rights had been established in the Trade Mark.
The Disputed Domain Name was registered to capture users searching for information about the Complainant (see e.g. Miranda Kerr v. orangesarecool.com, supra). Further, some of the links direct users to websites that sell or stream movies featuring the Complainant. This evidences that the Respondent had the Complainant in mind when it registered the Disputed Domain Name, and sought to profit from the confusion of users (through generating pay-per-click revenue).
The Respondent is a serial cybersquatter. The Respondent has been ordered to transfer domain names in numerous prior UDRP proceedings.
The Respondent's bad faith cannot be excused by any delay in filing the Complaint (see e.g. The John Hopkins University ("JHU"), The Johns Hopkins Health System Corporation ("JHHS"), Johns Hopkins Medicine International, L.L.C. ("JHI") v. Marketing Express, WIPO Case No. D2013-0148).
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
A. Procedural Issues
The Respondent's failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g. Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909). However, the Panel may draw appropriate inferences from the Respondent's default.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Complainant has provided no evidence that she owns a registered trade mark for ALI LARTER. However, she submits that she acquired common law trade mark rights for her name prior to the date that the Disputed Domain Name was registered. For the purposes of this element the date that common law rights are acquired is irrelevant (as there is no specific reference in the Policy to the date of acquisition of the trade mark rights). However, timing will be relevant in relation to the third element, discussed below.
Paragraph 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states that:
"Personal names that have been registered as trademarks are generally protected under the UDRP. While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person's name as a distinctive identifier of goods or services offered under that name would normally be required [see also paragraph 1.7 below]. A trademark-equivalent basis has been found in the common law action of passing-off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP.
The name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. 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."
Prior UDRP panels have held that in order for a complainant to rely on unregistered trade mark rights he or she must be able to demonstrate use of the trade mark in trade or commerce (see e.g. Miranda Kerr v. orangesarecool.com, supra, where the panel distinguishes "the category of a person with a famous name who does not actually use her name in connection with the business she is engaged in").
The Panel in Jim Carrey v. BWI Domains, supra, helpfully summarizes the tests applied by earlier panels:
"In Chimnoy Kumar Ghose v. ICD Soft.com and Maria Sliwa, WIPO Case No. D2003-0248, and Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210, it was held that the Complainant must demonstrate that their name has been used in commerce and has acquired a sufficient secondary association in order to establish that a common law trade mark exists.
In Ahmanson Land Company v. Save Open Space and Electronic Imaging Systems, WIPO Case No. D2000-0858, the panel held that:
"A mark comprising a personal name has acquired secondary meaning if a substantial segment of the public understand the designation, when used in connection with services or business, not as a personal name, but as referring to a particular source or organization.""
Here, the Panel finds that the Complainant has acquired common law trade mark rights. The ALI LARTER name has acquired a secondary meaning. It is a distinct identifier of the entertainment services that the Complainant provides (in trade and commerce) as an actress and model. The Complainant is booked as an actress or model by her name and she appears in print and other media under her name. The Complainant is also paid because of her name and image (see e.g. Miranda Kerr v. orangesarecool.com, WIPO Case No. D2013-0553).
The Disputed Domain Name is identical to the Trade Mark. In this case, the ".com" at the end of the Disputed Domain Name is irrelevant in assessing confusing similarity under the Policy and may be ignored (see e.g. Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).
In light of the above, the Panel finds that the Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case for the following reasons:
- there is no evidence that the Respondent is commonly known by the Disputed Domain Name; and
- there is no evidence that the Respondent has any connection with the Trade Mark and the Complainant has not given the Respondent any permission to use the Trade Mark.
Currently, there is no active website at the Disputed Domain Name (i.e. the Respondent is passively holding the Disputed Domain Name). In the past, the Disputed Domain Name resolved to a website that was commercial in nature. It was a "link farm" website which directed users to various goods and services (some of which incorporated the Trade Mark), and which generated pay-per-click advertising revenues. This was not a fair commercial use of the Trade Mark, nor did it constitute a bona fide offering of goods or services (see e.g. Jim Carrey v. BWI Domains, supra).
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name is not being actively used, it resolves to an error page. Passive holding does not prevent a finding of bad faith under certain circumstances (see e.g. Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). The question is whether the Respondent's passive holding of the Disputed Domain Name can be considered use in bad faith, taking into account all the circumstances of the present case. Here, one factor of significance is that the Disputed Domain Name was used in the past, and this use can be taken into account.
On the date the Disputed Domain Name was registered (April 13, 2003), the Complainant had already established a significant reputation. She had been modeling for over a decade and had appeared in internationally distributed television shows and hit movies (such as "Legally Blonde"). In light of this reputation, it is likely that the Complainant had knowledge of the Trade Mark when it registered the Disputed Domain Name. This inference is supported by the Respondent's historical use of the Disputed Domain Name. The Respondent used the Disputed Domain Name, which wholly incorporates the Trade Mark, to direct users to a website containing pay-per-click links (some of which incorporated the Trade Mark). This indicates that the Respondent registered the Disputed Domain Name to mislead users into thinking it is some way connected, sponsored or affiliated with the Complainant and her services, or that the Respondent's activities were approved or endorsed by the Complainant.
It appears to the Panel that the Respondent was trading off the Complainant's substantial reputation. This constitutes bad faith (see e.g. Cynthia Ann Crawford v. Julian S. Garcia, WIPO Case No. D2012-2454 and cases cited therein).
The Respondent had the opportunity to rebut the above evidence of bad faith but failed to do so. The Panel infers from this failure to respond that the Respondent could not provide any evidence of good faith use of the Disputed Domain Name (see e.g. Nike, Inc. v. No Owner / Ashkan Mohammadi, WIPO Case No. D2013-1297 and cases cited therein).
In light of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith as defined in paragraph 4(b) of the Policy.
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 Name, <alilarter.com>, be transferred to the Complainant.
Date: June 19, 2014