WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
John P. Cusack v. Domain Admin, Whois Privacy Corp.
Case No. D2016-1460
1. The Parties
The Complainant is John P. Cusack of Chicago, Illinois, United States of America, represented by Much Shelist PC, United States of America.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <johncusack.com> is registered with Internet Domain Service BS Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 19, 2016. On July 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2016, 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 of the Respondent.
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 proceedings commenced on July 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 16, 2016.
The Center appointed Adam Taylor as the sole panelist in this matter on August 24, 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 Complainant is a well-known American actor, who has appeared in many Hollywood films since the early 1980s. He has been nominated for many awards including for a Golden Globe for "High Fidelity" in 2001. The Complainant has frequently appeared on talk shows and has been the subject of media focus throughout his career.
The disputed domain name was registered on April 13, 2003.
The disputed domain name has been used for a parking page with sponsored links. Further details are set out below.
5. Parties' Contentions
A summary of the Complainant's contentions is as follows:
The Complainant has owned common law trade mark rights in his name since long before the Respondent registered the disputed domain name.
A complainant can establish common law rights in his/her name by demonstrating the use of the name in commerce to distinguish goods or services offered by that person.
As a celebrated actor, the Complainant has cultivated widespread awareness in his name sufficient to indicate the source of the services he provides in the film and entertainment industries. The Complainant, whose surname is uncommon, has relied on his name as a strong indication of the services he provides in order to obtain film roles. Film studios also rely on the strong public awareness of his name as an indication of the source of acting services when they market the films in which he stars.
The disputed domain name consists of the Complainant's entire name.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has not authorised the Respondent to use his name.
The Respondent has used the disputed domain name for a parking page with sponsored links and not for any legitimate purpose relating to the Complainant's career such as providing biographical or fan club information. Such use by the Respondent does not constitute a bona fide offering of goods or services.
The Respondent is not commonly known as "John Cusack". Nor has the Respondent made a legitimate, noncommercial or fair use of the disputed domain name.
The Respondent has registered and is using the disputed domain name in bad faith.
In light of the Complainant's substantial fame and reputation cultivated over decades, the Respondent could have had no other rational motivation for registering the disputed domain name other than to create a likelihood of confusion among Internet users and to exploit such confusion for financial gain.
Maintaining the disputed domain name simply as a vehicle for generating revenues by deceptively attracting Internet users seeking information about the Complainant and then diverting those users to unrelated third party websites through pay-per-click links clearly constitutes ongoing use in bad faith.
The fact that the disputed domain name is offered for sale, indicating the Respondent's attempt to further profit from the likelihood of confusion it has created, is additional evidence of bad faith.
The doctrine of laches does not usually apply to UDRP cases. Rather, panels typically consider the potentially prejudicial effects of delay in the context of paragraph 4(a) of the Policy. There has been no such prejudice in this case.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states the consensus view of UDRP panels that, while the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trade mark is being used for trade or commerce, a complainant may be able to establish common law or unregistered trade mark 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.
The Complainant has submitted evidence that he has consistently and extensively used the name "John Cusack" as the mark under which he promotes his high profile acting career. The Panel therefore finds that this is a name in which the Complainant has rights.
The disputed domain name is identical to the trade mark, disregarding the domain name suffix.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the website screenshot exhibited by the Complainant is not that of the website at the disputed domain name, but that of a typo of the Complainant's name and mark. However, the Panel has viewed the website at the disputed domain name, as it is entitled to do (see paragraph 4.5 of WIPO Overview 2.0), and has established that it consists of a landing page with links to "John Cusack" and "John Cusack Movies" as well as other assorted links such as "Create a Website" and "Free Dating Apps", which have no obvious relationship to the name "John Cusack". Such use of the disputed domain name could not of itself confer rights or legitimate interests. See paragraph 2.6 of WIPO Overview 2.0, which states:
"Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a 'bona fide offering of goods or services' … especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion."
Here, most of the advertising links are unrelated to the meaning of the disputed domain name. Of those that are connected, some relate to movies and therefore capitalise on trade mark value.
Accordingly, the Panel considers that the Respondent's use of the disputed domain name cannot be said to be bona fide.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
For the following reasons, the Panel is satisfied that the Respondent registered the disputed domain name with the Complainant in mind:
1. the Complainant's name is comparatively unusual;
2. the Complainant has established that he possessed a high public profile by the date of registration of the disputed domain name;
3. the landing page at the disputed domain name includes a link to "John Cusack Movies"; and
4. the Respondent has not appeared in this proceeding to address the Complainant's assertions.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trade mark.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
The Complainant has pre-emptively raised the issue of laches. The Panel agrees with the Complainant that, as set out in paragraph 4.10 of WIPO Overview 2.0, panels have recognised that laches does not generally apply under the UDRP and that delay in bringing a complaint does not of itself bar a complainant. While there may be circumstances where delay makes it more difficult for a complainant to establish a case on the merits, particularly in relation to the second and third elements, there is no evidence that such is the case here and the Respondent has not appeared in this proceeding to argue otherwise.
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, <johncusack.com>, be transferred to the Complainant.
Date: September 6, 2016