WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sofia Vergara v. Domain Administrator, Fundacion Private Whois / Domain Admin, Whois Privacy Corp. / Guy Bouchard
Case No. D2014-2008
1. The Parties
The Complainant is Sofia Vergara of Beverly Hills, California, United States of America (“USA”), represented by Cowan, DeBaets, Abrahams & Sheppard, LLP, USA.
The Respondent is Domain Administrator, Fundacion Private Whois of Panama, Panama / Domain Admin, Whois Privacy Corp., of Nassau, Bahamas / Guy Bouchard of Panama, Panama, represented by Guy Bouchard.
2. The Domain Name and Registrar
The disputed domain name <sofiavergara.org> is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2014. On November 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2014, the Registrar transmitted by email to the Center its verification response confirming that the disputed domain name is registered with it and disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 24, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 27, 2014.
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 the Respondent of the Complaint, and the proceedings commenced on November 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2014. The Response was filed with the Center on December 14, 2014.
On December 17, 2014, the Complainant filed a proposed supplemental filing. On December 18, 2014 the Respondent submitted a request that no supplemental filings be considered in this matter.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 22, 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 Complaint describes the Complainant as a Golden Globe-, Primetime Emmy Award-, and Screen Actors Guild Award nominated actress currently starring in the Emmy Award winning television series, Modern Family. According to the Complaint, the Complainant has also appeared in several feature length motion pictures and been pictured on the covers of hundreds of magazines including Vanity Fair and Cosmopolitan. In addition to her acting career, the Complainant has provided endorsements for Pepsi and Covergirl and has released, under her own name, lines of fragrances, clothing, footwear, jewellery, accessories and furniture. As a result of these activities, Forbes magazine ranked her No. 32 in its listing of the World’s 100 Most Powerful Women in 2014.
The Complainant has secured a number of trademark registrations for SOFIA VERGARA in the USA for a range of goods and services in International Classes 9 (sunglasses), 14 (costume jewellery), 18 (handbags, wallets, luggage), 20 (furniture), 21 (bath accessories), 24 (sheets, pillow cases, bed clothes, towels, shower curtains), 25 (clothing, hats, coats, apparel, footwear), 27 (bath rugs and mats) and 41 (entertainment services). The registrations include Registered Trademarks Nos 3919661 (registered on February 15, 2011 with a claimed first use in 1989), 4192039 (registered on August 14, 2012 with a claimed first use in September 2011), 4196035 (registered on August 21, 2012), 4219618 (registered on October 2, 2012), 4235420 (registered on October 30, 2012), 4251689 (registered on November 27, 2012), 4273528 (registered on January 8, 2013), 4362475 (registered on July 2, 2013 with a claimed first use in commerce in February 2012), 4414029 (registered on October 8, 2013), 4507479 (registered on April 1, 2014), and 4557170 (registered on June 24, 2014).
The Complainant has also secured International Registration No. 1205160 for SOFIA VERGARA in International Class 3 for fragrances, perfumes and cosmetics). This trademark was registered on May 1, 2014.
The disputed domain name was registered by the Respondent on July 30, 2014. The disputed domain name resolves to a website headed “SofiaVergara.org” and, at least some times, the tag line “We Love Her”. The right hand side of the website includes a series of photographs which are apparently taken from the Complainant’s Instagram stream. The bulk of the site appears to be posts with short reports about and photographs of a number of celebrities. Each of the posts also has at least one “rotating” hyperlinked pay-per-click advertisement.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
The Complainant has sought to file a supplemental filing. The Respondent objects to its admission. Before addressing the substantive requirements under the Policy, therefore, the Panel deals with the Complainant’s request to file a supplemental filing.
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent’s position on a particular point was clear. While the email under cover of which the supplemental filing was filed claims it addresses misleading allegations and misstatements of fact, the Panel is not satisfied that the supplemental filing is properly characterized in that way. The Panel had formed its own view about the issues from the Complaint and the Response and does not consider the purported supplemental filing adds sufficiently to the resolution of the dispute to warrant its admission. Accordingly, the Panel does not admit the supplemental filing into the record.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, a trademark in which the Complainant has rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for SOFIA VERGARA referred to in section 4 above. That is sufficient to satisfy the first part of the inquiry.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Apart from the inclusion of the generic Top Level Domain, “.org”, which it is permissible to disregard in assessing identity or confusing similarity as it is a functional aspect of the domain name system Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252), the disputed domain name differs from the registered trademark solely by the omission of the space between the names SOFIA and VERGARA. Such an omission is a fairly typical usage in domain name usage and, in a comparison of the sort being undertaken, is essentially trivial.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant states that she has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with her. The Complainant has not licensed the Respondent to use her trademark. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
In these circumstances, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent’s answer is that he registered the disputed domain name and is using it for a fan site and emphasizes the use of the tag line “We Love Her” to reinforce his bona fides. The Respondent says further that he has not sought to commercialise a “.org” domain name which are generally run and are understood by the general public to be not for profit enterprises. He says:
The fan site was intended to curate stories related to Ms. Vergara and celebrities associated with her. Any discussion of other celebrities was incidental or an editorial decision that should be considered protected free speech. There is no evidence of any content featuring anything the [sic] could be construed as competition with Ms. Vergara.
Exhibit D to the Complaint includes a print out of the website to which the disputed domain name resolved just before the Complaint was filed. It essentially reflects the website as operating at the time of this decision save, as the Respondent notes, the tag line “We Love Her” appears at or near the top of the web page or the display of the URL in the browser.
As noted above, a column down the right hand side of the website, approximately one quarter of the page’s width, features a pay-per-click advertisement at the top and then a number of photographs from the Complainant’s Instagram stream. The Complainant contends that these photographs have been obtained unlawfully or at least without authorization and contribute to the website being mistaken for an official website of the Complainant. The Respondent disputes this and claims the terms of the Instagram licence agreement permit the usage in question.
It is unnecessary to decide that issue. The main part of the website, extending across some two thirds to three quarters of the website’s width are “posts” with reports about activities of other celebrities. Each of these posts features a pay-per-click advertisement. If one clicks on the “Read more” button contained within a post, one is taken to a blank page for comments. The Respondent says that these are blank because of the short time the website has been in operation. If one clicks on the photograph of the celebrity in question in the “post”, one is taken to another “gossip” website at “www.justjared.com”, which appears to be the source of the “posts” on the Respondent’s website to which the disputed domain name resolves.
The central point here is that, apart from the Instagram stream, the website which the disputed domain name resolves to essentially consists of posts about other celebrities and pay-per-click advertisements. The Complainant does not appear to be the subject of any of the “posts” on the website to which the disputed domain name resolves or, if she is, her “appearances” are as only one of very many.
Given these posts make up by far the bulk of the website, it is hardly fair to characterize them as only “incidental” to discussion of the Complainant or matters related to her. It is also not apparent how or in what way the posts are posts about celebrities associated with the Complainant given the number and diversity of celebrities about whom there are posts. The posts do not appear to be about activities the other celebrities are engaging in with the Complainant. Nor given the diversity of celebrities involved do they appear to be actors she is working with or celebrities particularly associated with her.
The Instagram stream is of course related to the Complainant. By extent of the website it takes up and number of photographs included in the stream compared to the number of “posts”, however, it is plainly subsidiary to the “posts” about celebrity gossip. If its use were taken to suggest that the Complainant is responsible for the “posts” or lending her imprimatur to them, it would be quite misleading.
The number and prominence of the pay-per-click advertisements precludes the apparent claim that the website is a noncommercial or not for profit operation.
It may well be perfectly legitimate for the Respondent to post “news” or gossip snippets about any celebrities that catch his interest. The vice in the conduct, at least for present purposes, is not the posting of such snippets but the use of the Respondent’s trademark to attract traffic to his website. That does not qualify as “fair use” under the Policy.
Having regard to all these matters, the Panel rejects the proferred justification that the disputed domain name is legitimately being used as a fan site. The tag line “We Love Her”, which the Respondent relies on so heavily, could suggest that; but is ambiguous and could equally reflect an authorized site. In any event, it does not reflect the substance of the website itself. The Respondent has not rebutted the prima facie case established by the Complainant.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Respondent’s claim that the disputed domain name was acquired to operate a fan site establishes that the Respondent was well and truly aware of the Complainant when the Respondent registered the disputed domain name. The Complainant’s name is of course also her registered trademark.
The Panel finds that use of the disputed domain name to generate revenues from pay-per-click advertising associated with stories about other celebrities is use of the disputed domain name in bad faith. The (or the bulk of the) stories and the pay-per-click advertisements have no association with the Complainant. The Respondent therefore appears essentially to be using the Complainant’s name and trademark to attract users to his website to generate pay-per-click revenues unfairly. That is not use of the Complainant’s trademark in good faith under the Policy.
It is plain from the Response that the Respondent registered the disputed domain name to use it for the website which it is currently being used for. It follows that the Respondent also registered the disputed domain name in bad faith under the Policy.
The Panel notes further that, after receipt of a letter of demand from the Complainant’s lawyers, the Respondent offered to sell the disputed domain name to the Complainant for USD 10,000. That appears to be an amount well in excess of the likely costs of registering the disputed domain name. The Respondent does not seek to justify the demand on that basis but rather says it is perfectly legitimate for him to charge what he thinks the disputed domain name is worth. In the absence of a right or legitimate interest in the disputed domain name, however, that position cannot be supported.
Accordingly, the Panel finds that the disputed 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 disputed domain name <sofiavergara.org> be transferred to the Complainant.
Warwick A. Rothnie
Date: December 28, 2014