WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Charles Esten v. Tian Yi Tong Investment, Ltd.
Case No. D2014-1443
1. The Parties
The Complainant is Charles Esten of Brentwood, Tennessee, United States of America, represented by Ralph W. Mello, United States of America.
The Respondent is Tian Yi Tong Investment, Ltd. of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <charlesesten.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 August 22, 2014. On August 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 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 September 1, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2014.
The Center appointed Dawn Osborne as the sole panelist in this matter on September 29, 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 a recognised actor having appeared regularly in television series and some films since 1994 and currently appearing in the successful television series Nashville broadcast on television in, inter alia, the US and the UK.
The Domain Name was registered in 2011 and has been pointed to a web page purporting to be the web site of an old couple, but none of the links work and the same web page has been linked to domain names consisting of the names of 28 other actors.
5. Parties’ Contentions
The Complainant’s submissions can be summarised as follows:
The Complainant is a well known television and film actor, as well as music composer and performer and has appeared in numerous television programmes and motion pictures over the last 20 years. He has consistently used his name since the 1990s having acquired unregistered or common law rights in his name which is his distinctive and unique name and mark. The Complainant’s name is very distinctive as indicated by the fact that Google searches return hits that virtually all refer to the Complainant and no other person, company or product.
The Domain Name is identical to the Complainant’s name with only the extension “.com” added. As such it is confusingly similar to the Complainant’s mark in which he has rights.
The Respondent has no rights or legitimate interests in respect of the Domain Name. It has no licence to use the Complainant’s mark. The Respondent is the registrant of hundreds, if not thousands, of famous individuals’ names and company names where it is unlikely the Respondent has any rights or legitimate interests.
The Complainant has discovered some 28 domain names registered by the Respondent consisting of the names of actors and the extension “.com” through a cursory Internet search. Like the Domain Name all these domain names point to the same spurious web page purporting to be the web site of an older couple on which none of the links work. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. It has not been commonly known by the Domain Name. It has not been used for a bona fide offering of goods and services (even after registration for three years). The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Domain Name has been registered and is being used in bad faith. The Respondent has registered the Domain Name to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name. The Domain Name has been pointed to a spurious web site to prevent the owner from reflecting his name in a corresponding domain name or in order to extort money from the rightful owner of the mark. Respondent has engaged in a pattern of such conduct as shown by the representative 28 websites. Respondent knew or should have known that the subject name was the distinctive name and unregistered mark of the Complainant. The fact that the Respondent has registered a large number of domain names using the names of other actors and actresses is evidence of the fact that the Respondent is very familiar with a number of actors and actresses including the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(1) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Whilst more information could have been provided regarding the recognition of the Complainant’s name as a distinctive identifier of goods or services, it appears that it has been used by the Complainant in relation to his profession, acting, since the mid 1990s and appears to be distinctive of the Complainant and his acting services through use, such that use by any third party would be associated with him, at least in the US and UK. As such, the Complainant appears to have unregistered or common law trade mark rights in his name, a contention not contested by the Respondent. Apart from the “.com” suffix which is typically not taken into account for the purposes of the Policy, the disputed domain name <charlesesten.com> consists of a name equivalent to the Complainant’s unregistered mark used in relation to his acting services. Accordingly, the Panel finds that the disputed domain name <charlesesten.com> is identical to the Complainant’s trade mark for the purposes of the Policy.
B. Rights or Legitimate Interests
The Respondent has not responded. There is no evidence that the Respondent is commonly known by the Domain Name, that it has any licence from the Complainant or has any trade mark rights in the name “Charles Esten” itself. Although the web page attached to the Domain Name purports to be a noncommercial use of the site by an old couple, it appears that this same web page has been attached to 28 other domain names consisting of the names of actors. Accordingly, and in light of the Panel’s conclusions regarding bad faith below, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
It not being alleged that the Respondent is a competitor of the Complainant, that the web page attached to the Domain Name has any apparent connection with anyone of the name “Charles Esten”, including the Respondent, or anything to do with acting, nor that any money has been demanded for the Domain Name, the relevant criterion and the argument made by the Complainant is that it falls within (ii) above, although these grounds are not exclusive.
The Panel agrees with the Complainant that the fact that the same web page purporting to be that of an old couple, but with non-functional links has been attached to 28 other domain names containing the names of actors shows that the Respondent has engaged in a pattern of conduct of registering the names of recognised actors as domain names, using them to point to a fake web page and has targeted the Complainant as one of those actors, showing that he recognises the significance of the Complainant’s name and is seeking to prevent him from registering his unregistered mark as a Domain Name. As such the Panel finds that that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(b)(ii) 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 <charlesesten.com> be transferred to the Complainant.
Date: October 13, 2014