WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Halle Berry and Bellah Brands Incorporated v. Alberta Hot Rods
Case No. D2016-0256
1. The Parties
The Complainant is Halle Berry and Bellah Brands Incorporated of Los Angeles, California, United States of America, represented by Loeb & Loeb, LLP, United States of America.
The Respondent is Alberta Hot Rods of Alberta, Canada.
2. The Domain Name and Registrar
The disputed domain name <halleberry.com> 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 February 10, 2016. On February 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on February 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 8, 2016
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on March 10, 2016. 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 Complainants are the actress Ms. Halle Berry and her wholly-owned corporation Bellah Brands Incorporated which operates as an intellectual property holding company in respect of the HALLE BERRY trademark. Ms. Berry is also the president of Bellah Brands Incorporated. Ms. Berry gained fame from the mid-1980s in respect of her participation in various beauty pageants in the United States of America ("USA"). She then appeared on television in 1989 and had her film debut in 1991. She has since appeared in at least 47 film or television series, winning numerous nominations and awards in respect of her performances, including a Golden Globe Award in 1999 and an Academy Award for Best Actress in 2002. Ms. Berry also served as a spokesperson and brand ambassador for the cosmetic company Revlon for two decades from 1996 and has licensed and promoted her own HALLE BERRY fragrance line which became a global brand sold in over 20 countries.
The Complainants claim common law trademark rights in the name HALLE BERRY by virtue of Ms. Berry's worldwide fame as an actress and celebrity. The Complainants also note that Bellah Brands Incorporated is the owner of a European Community registered trademark for the word mark HALLE BERRY, number 6656011, registered on November 20, 2008 in respect of international class 3. Likewise, Bellah Brands Incorporated is the owner of a USA registered trademark for the word mark HALLE BERRY, number 3677810, registered on September 1, 1999 in respect of multiple international classes.
The disputed domain name was created on May 24, 1997. The Respondent is a prolific registrant of domain names consisting of the names of celebrities and has previously been involved in numerous cases under the Policy in which the transfer of the various domain names at issue was ordered to the respective complainant (see for example the list of cases set out by the panel in Pamela Anderson v. Alberta Hot Rods, WIPO Case No. D2010-1144).
The Complainants note that from at least as early as 1999 until approximately January 1, 2006, the disputed domain name redirected to the Respondent's "Celebrity 1000" website, which the Complainants say features advertising and a wide variety of information about other celebrities but without specific ties to Ms. Berry. The Complainants believe that between around May 2006 to around February 2009, the website associated with the disputed domain name stated that it was a Halle Berry fan site but had no information related to Ms. Berry and was instead comprised of click-through sponsored links directed to other websites unrelated to Ms. Berry. At present, the disputed domain name is parked with no content. It has shown either an "HTTP 403" or "HTTP 404" message since April 2013.
5. Parties' Contentions
The Complainants contend that the disputed domain name is identical or confusingly similar to trademarks in which the Complainants own rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainants assert that UDRP panels in numerous cases against this Respondent and others have repeatedly found that celebrities have common law trademark rights in their famous names and that the present Panel should so find in respect of Ms. Berry, adding that Ms. Berry's rights date back at least as early as the mid-1980s and long before the Respondent's registration of the disputed domain name in 1997.
The Complainants note that the disputed domain name is identical to Ms. Berry's name and trademark with the addition of the ".com" identifier and assert that it has been established that the addition of a generic Top-Level Domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.
The Complainants submit that the Respondent is not known by the name or mark HALLE BERRY, has not made any legitimate use thereof in conjunction with any bona fide offering of goods or services, and has not made any legitimate noncommercial or fair use thereof. The Complainants add that the Respondent is not the owner of any HALLE BERRY trademarks and does not have any license or consent from the Complainants to use the name and mark. The Complainants state that searches confirm the Complainants to be the only parties to have filed applications to register this mark in the USA and Canadian trademark offices.
The Complainants submit that in common with the Respondent's many other celebrity name domain names where transfer has been ordered under the Policy, the Respondent has no right to use Ms. Berry's name and mark as a domain name. The Complainants state that while the Respondent's use of the disputed domain name has varied over time, none of the uses were legitimate, adding that the initial use was predominantly for the purpose of generating advertising revenues and promoting other celebrities and third party products on a website not related to Ms. Berry. The Complainants assert that the subsequent statement that the said website was a fan site relating to Ms. Berry was false in that there was no material thereon relative to Ms. Berry but merely click-through sponsored links. Regarding the current use of the disputed domain name, the Complainants say that this is passive holding of a domain name incorporating a well-known trademark and that this is not a legitimate noncommercial or fair use and confers no rights or legitimate interests upon the Respondent.
The Complainants state that they anticipate that the Respondent may assert that laches or estoppel bars the Complaint but note that the Respondent has lost this argument in other cases and submit that the Panel should reject it here on the grounds that the Policy includes no such doctrine or equitable remedy.
The Complainants assert that as the disputed domain name is confusingly similar to the Complainants' mark, Internet users will likely believe there to be an affiliation between the Complainants and the Respondent and that this constitutes evidence of bad faith. The Complainants submit that bad faith is further shown by the Respondent's use of the disputed domain name initially to generate advertising revenue and subsequently as a false fan site associated with sponsored links, being a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy. The Complainants add that the Respondent registered the disputed domain name for the purpose of preventing the Complainants from obtaining it and that the Complainants' counsel has attempted to contact the Respondent repeatedly for a lengthy period of time during which the Respondent has failed to respond, contending that this is also an indication of bad faith registration and use. The Complainants conclude by asserting that the Respondent has engaged in a pattern of bad faith conduct, the subject of more than 20 proceedings under the Policy involving famous celebrities from Pamela Anderson to JRR Tolkien and has repeatedly been found to have been acting in bad faith, such pattern of behavior creating an inference of registration and use in bad faith in the present case.
The Respondent did not reply to the Complainants' contentions.
6. Discussion and Findings
To succeed, the Complainants must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(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.
A. Preliminary Issue - Consolidation of Complainants
The Panel notes that the present Complaint has been filed by multiple Complainants who have submitted a request for consolidation of their respective complaints. On this subject, paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") provides inter alia as follows:
"Can multiple complainants bring a single consolidated complaint against a respondent? Can a single consolidated complaint be brought against multiple respondents?
WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted."
The Panel is satisfied that both of the Complainants share rights in the HALLE BERRY mark as set out in the Factual Background section above and as discussed in section 6B below. The Panel notes that the Complainants assert that they have been the target of common conduct by the Respondent and that as there is a common grievance on the part of each of them and a single disputed domain name it would be procedurally efficient to deal with all matters in the one proceeding, given the almost identical facts. The Respondent has not filed a Response and thus remains silent on this issue.
The Panel finds that the Complainants have established that they have a common grievance against the Respondent which would affect their individual rights on substantially the same basis. The Respondent has not indicated that it would suffer any prejudice from consolidation of the complaints and no potential prejudice is apparent to the Panel. The Respondent has not otherwise contested the request for consolidation. In all of these circumstances, the Panel considers that it is procedurally efficient to allow the Complainants to proceed with the single Complaint as filed and is content that such consolidation is fair and equitable to all of the Parties. With regard to the remedy sought by the Complainants, the Panel notes that, if the Complaint succeeds, the Complainants have specifically requested that the disputed domain name be transferred to Ms. Halle Berry.
B. Identical or Confusingly Similar
The Panel is satisfied that the Complainants have rights in the trademark HALLE BERRY by virtue of the registered trademarks described in the Factual Background section above. The Panel also accepts the evidence of Ms. Berry's longstanding use of her name in connection with commercial activity, including the provision of entertainment services. The Panel finds that Ms. Berry's name has become well-known in particular as a result of her fame arising from numerous award-winning performances on film and television.
In the Panel's view the evidence on record is more than sufficient to establish common law or unregistered trademark rights in Ms. Berry's personal name vesting in the Complainants and this accords with similar findings under the Policy (noting that it is the extent of activity in trade or commerce under such personal name and not the mere existence of a famous name alone which leads to such finding. See paragraph 1.6 of the WIPO Overview 2.0).
The disputed domain name is alphanumerically identical in the second level to the Complainants' HALLE BERRY common law and registered trademark. The generic Top-Level Domain (gTLD) ".com" is required for technical purposes and may be disregarded for the purposes of comparison.
In these circumstances, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainants have established such a prima facie case, based upon their assertions that the Respondent is not known by the name "Halle Berry", is not the owner of any HALLE BERRY trademarks, does not have any permission from the Complainants to use the Complainants' name and mark and has only ever made use of the disputed domain name to benefit from associating the Complainants' name and mark with various forms of online advertising.
Once the panel has found that a complainant has made out a prima facie case that a respondent has no rights or legitimate interests in a domain name under the Policy, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests. The Respondent has not filed a Response in this case. It has chosen neither to explain its conduct nor to set out evidence of any rights or legitimate interests which it might seek to claim in connection with the disputed domain name. Accordingly, the Panel turns to the record in order to consider whether this shows any evidence of such rights or legitimate interests.
In the Panel's opinion, there is nothing in the past and present uses of the disputed domain name by the Respondent or more generally in the circumstances of the registration and use of the disputed domain name which indicate that the Respondent may have rights or legitimate interests therein. In particular, despite the fact that the website associated with the disputed domain name may have stated at one time that it was a fan site for Ms. Berry, there is no evidence that such website ever operated as a genuine noncommercial fan site.
Accordingly, the Respondent has failed to rebut the prima facie case made by the Complainant and the Panel therefore finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(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".
The Complainants' case on this topic focuses on paragraph 4(b)(ii) of the Policy regarding the Respondent's alleged pattern of registering domain names which represent registered or unregistered trademarks corresponding to the personal names of multiple celebrities. This pattern has been documented in previous cases under the Policy, such as for example Pierce Brosnan v. Network Operations Center, WIPO Case No. D2003-0519, Jeffrey Archer v. Alberta Hotrods tda CELEBRITY 1000, WIPO Case No. D2006-0431 and Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560.
The Complainants make a further case in terms of paragraph 4(b)(iv) of the Policy regarding the Respondent's use of the disputed domain name in connection with an advertising revenue generating website and later an alleged fan site. The Complainants assert that the fan site was effectively a cover for the promotion of sponsored links rather than featuring any material relating to Ms. Berry. The Complainants' two cases on the Respondent's bad faith are intertwined given that the registration and use of the disputed domain name in this case is said to follow the Respondent's modus operandi and pattern of conduct in general, as illustrated by the previous cases brought against the Respondent under the Policy.
The Panel considers it reasonable to infer that the Respondent was aware of the Complainants' rights in the common law trademark HALLE BERRY when registering the disputed domain name in 1997, given Ms. Berry's fame and the substantial goodwill which she had generated in her personal name by that date, commencing in the mid-1980s. In the Panel's opinion, the original use of the disputed domain name to generate traffic resulting from interest in the Complainants' well-known trademark, such that the Respondent would benefit from a corresponding increase in advertising revenue or increased clicks on sponsored links, shows an intent on the part of the Respondent to target the Complainants' rights for commercial gain. These factors point firmly in the direction of registration and use in bad faith in terms of paragraph 4(b)(iv) of the Policy.
The Panel is also satisfied that the Complainants have successfully made out a case in terms of paragraph 4(b)(ii) of the Policy that the disputed domain name in the present case was registered as part of the Respondent's pattern of conduct of registering domain names to prevent the owner of a trademark from reflecting its mark in a corresponding domain name. There is a significant number of past cases under the Policy in which the Respondent's bad faith activities are described in detail and which identify a pattern of targeting celebrities' personal names by way of corresponding domain names. This likewise points strongly in the direction of registration and use in bad faith.
As noted above, the Respondent has chosen not to participate in the present proceeding. It has therefore denied itself the opportunity to address the Panel on any alleged good faith motivation on its part. In the absence of this, the Panel can identify no conceivable such motivation, the notion of a noncommercial fan site in tribute to Ms. Berry having been entirely contradicted both by the Complainants' evidence of the use to which the disputed domain name was put following its registration and by the Respondent's pattern of past conduct regarding domain names featuring the personal names of celebrities.
In all of these circumstances, the Panel finds that the disputed domain name was registered and has been used in bad faith and accordingly that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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, <halleberry.com>, be transferred to the first Complainant (Ms. Halle Berry).
Andrew D. S. Lothian
Date: March 15, 2016