WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Victoria Beckham v. David James
Case No. D2017-0035
1. The Parties
The Complainant is Victoria Beckham of London, United Kingdom of Great Britain and Northern Ireland, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland.
The Respondent is David James of Sheffield, South Yorkshire, United Kingdom of Great Britain and Northern Ireland, self-represented.
2. The Domain Name and Registrar
The disputed domain name <victoriabeckham.info> 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 January 10, 2017. On January 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2017, 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 proceedings commenced on January 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2017. The Response was filed with the Center on February 6, 2017.
The Center appointed Antony Gold as the sole panelist in this matter on February 14, 2017. 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 an English businesswoman and fashion designer. She is well known for her activities in the field of fashion and, in 2008, she launched a "Victoria Beckham" fashion label.
The Complainant is the owner of two European Union ("EU") Trade Marks, namely EU Trade Mark no. 2543320, registered on January 22, 2007 for VICTORIA BECKHAM in classes 3, 6, 9, 14, 16, 18, 24, 25, 26, 28 and 41 and EU Trade Mark no. 10935211, registered on December 11, 2012, in classes 3 and 35.
The Respondent is a website owner, developer and domain name investor. The disputed domain name was registered by him on September 2, 2016. It initially resolved to a page containing pay-per-click advertising, the content of which was apparently determined by the Registrar.
On November 9, 2016 the Complainant's agents wrote to the Respondent requesting a transfer of the disputed domain name to the Complainant. The Respondent replied on November 21, 2016 asserting that he had registered the disputed domain name legally and in good faith and explaining that the disputed domain name was "now up for sale" and that he had determined that its value was at least GBP 20,000 (twenty thousand pounds sterling). In response to a request from the Complainant's agent as to how this sum was arrived at, the Respondent provided a calculation which purported to show its value and said that, if the Complainant did not purchase the disputed domain name, he would either develop it himself or sell it to a third party.
As at the date of filing of the Complaint the website associated with the disputed domain name displayed a "for sale" page containing a notice: "VICTORIABECKHAM.INFO - P.O.A - BUY THIS DOMAIN TODAY" together with the Respondent's contact details. A further notice on the page said "Swift and Easy Transfer procedure. After development the price will increase... SUBSTANTIALLY".
5. Parties' Contentions
A. Complainant
The Complainant provides details of her fame and of awards she has won in the fashion industry. She also provides evidence of two registered trade marks for VICTORIA BECKHAM owned by her, details of which are set out above, and information about the transactional website operated by her, or on her behalf, at "www.victoriabeckham.com". The Complainant says that her name is synonymous with her business and commercial activities.
Identical or confusingly similar
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which she has rights. She says that, as the generic Top-Level Domain suffix (".info") is required only for technical reasons and as the space between "Victoria" and "Beckham" cannot be represented in the domain name system, the disputed domain name is identical, or at least confusingly similar, to her registered trade marks for VICTORIA BECKHAM. The Complainant points out that both of her trade marks predate the registration of the disputed domain name by several years.
Rights or legitimate interests
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. She refers to paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") which addresses whether a complainant is required to prove that a respondent lacks rights or legitimate interests in a domain name and explains that;
"……..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".
The Complainant says that the Respondent has not made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant says that in its correspondence with the Respondent, he did not set out what he planned to do with the disputed domain name, merely that he would not infringe the Complainant's trade marks in the classes in which they had been registered. Furthermore, the Complainant says that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. She says that the Respondent's intention has been to benefit from the registration of the disputed domain name in order to sell it to the Complainant or a third party and that this does not amount to a genuine, legitimate interest in the disputed domain name.
The Complainant says also that she has found no evidence that the Respondent has been commonly known as, or traded as, "Victoria Beckham" or that the Respondent owns any trade marks comprising or incorporating the term "Victoria Beckam". She says that the Respondent is not licensed or otherwise authorized to use her trade marks.
The Complainant accordingly says that she has made out a prima facie case to demonstrate that the Respondent does not have rights or legitimate interests in the disputed domain name and that the burden shifts to the Respondent to show that he has rights or legitimate interests in the disputed domain name. The Complainant contends that, given the fame of her name and marks, there is no conceivable use to which the disputed domain name could be put by the Respondent, now or in the future, that would confer any rights or legitimate interest upon him.
Registered and used in bad faith
Lastly, the Complainant says, the disputed domain name was registered and is being used in bad faith.
The Complainant observes that the disputed domain name resolved to pay-per-click advertising but was then reconfigured to resolve to a website which offered it for sale. The Complainant contends that both uses establish that the disputed domain name was registered and used in bad faith.
The Complainant contends that it is well established under the Policy that in most circumstances the display of pay-per-click advertising in association with a domain name in which a complainant's trade mark is the sole element is sufficient for a finding of registration and use in bad faith. The Complainant refers to paragraph 2.6 of the WIPO Overview 2.0, which notes that "…where such [pay-per-click advertising] links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion".
The Complainant contends that, as the disputed domain name is identical to her trade marks, it is very likely that the Respondent intended to target the value in the Complainant's name and mark and benefit financially through the display of pay-per-click advertising relating directly to the Complainant and her activities. She says that such use will cause confusion amongst web users searching for her and cause web users to be misdirected to unrelated third parties. The Complainant says that such use falls within paragraph 4(b)(iv) of the Policy in that it attracts, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website.
The Complainant adds that, even if the links on the Respondent's website were generated by its Registrar, such use would still be in bad faith. She refers to paragraph 3.8 of the WIPO Overview 2.0 which deals with whether third-party or automatically generated material appearing on a website form a basis for finding bad faith and explains that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if the registrant may not be exercising direct control over it.
Turning next to the offer for sale which has more recently featured on the Respondent's website, the Complainant says that the offer coupled with her correspondence with the Respondent supports her contention of bad faith registration and use as described at paragraph 4(b)(i) of the Policy, namely that the Respondent acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name.
B. Respondent
The Respondent says he is a website owner, developer, and domain name investor who registers, resells and/or develops relevant generic or descriptive domain names for profit. He says that this is a legitimate business model and that he has never previously had a dispute under the Policy in connection with any of the domain names he has registered.
Identical or confusingly similar
The Respondent says that, even if the Complainant's VICTORIA BECKHAM trade mark and the disputed domain name are identical, that alone is not grounds for a claim of infringement or dilution or grounds to cancel the disputed domain name. He cites a number of United States of America ("United States") court decisions in support of this contention.
The Respondent says also that the disputed domain name is not being used and never has been used by the Respondent in a way that could or would mislead the public. He says that there is no likelihood of confusion between the two parties' different uses of the "Victoria Beckham" name on their respective websites. He says that even if someone looking for the Complainant mistakenly accessed his website, any confusion would be quickly dispelled and that the United States courts have found that "original interest confusion", is not actionable.
The Respondent says the disputed domain name is based on two common forenames and surnames in the English language. He says that in the United States, there are ten people with the name "Victoria Beckham", over 11,000 people with the surname "Beckham" and over 290,000 females with the first name "Victoria". He says that it has now become relatively common for parents to register their babies' names as domain names, that he anticipates an increasing demand for personal name domains as a result and sees no reason why his business should not also cater to this market.
The Respondent says that to allow the Complainant, who already has other domain names incorporating her trade mark, to take the disputed domain name from him would be to give her rights to a combination of two common English names in most Top-Level Domains without sufficient proof of the strength of her trade mark or any indication that she is suffering harm by virtue of the Respondent's registration.
Rights or legitimate interests
The Respondent says that he is the legitimate registrant of the disputed domain name and is currently using it as part of a bona fide offering of goods or services.
The Respondent says that the disputed domain name has been available for sale through the Registrar from the date of registration. The Respondent contends that this constitutes clear evidence of his use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services prior to any notice of this dispute.
Registered and used in bad faith
The Respondent says that his registration of the disputed domain name was not in bad faith because he had no knowledge of the Complainant's marks when registering the disputed domain name. He says that, on a recent visit to the Complainant's website, he has not seen any obvious trade mark protection notation such as "TM" on the Complainant's website listings or on her branded goods offered for sale on "www.amazon.co.uk". He says that, whilst such notation with regard to websites is not required by law, their absence makes protected trade marks more difficult to identify.
The Respondent says that he has not intentionally registered as a domain name any trade mark owner's mark nor has he not attempted to extort money from any trade mark owner by attempting to sell to it a domain name incorporating one of its trade marks. He says that he has simply registered common words, names and phrases that he believes may have value now or in the future. He says that there is nothing improper or unlawful in doing so.
Dealing with the use of the disputed domain name to point to a parking page, the Respondent says that the disputed domain name was registered and parked by the Respondent with the Registrar on September 2, 2016, that any subsequent redirection to pay-per-click services was not instigated by him and that any profits derived from such links were the Registrar's alone. The Respondent says that he has no control over the Registrar's linking decisions relating to parked pages but that, in any event, all the links on the parking page were generic in nature and had nothing to do with the Complainant's marks. The Respondent says that the parking page would not have caused confusion or competed with the Complainant and would not have infringed her registered trade marks.
So far as the use of the disputed domain name to point to a web page offering it for sale is concerned, the Respondent says that the disputed domain name was being offered for sale and marketed before the Complainant made first contact with him. However, as he had no control over the pay-per-click links on the parking page created by the Registrar, he decided it was prudent to create his own sales page.
The Respondent denies that his conduct in respect of the disputed domain name falls within the non‑exhaustive examples of bad faith set out at paragraph 4(b) of the Policy. He says that he has not acquired the disputed domain name primarily for the purpose of selling the disputed domain name to the Complainant and that he has never directly solicited the Complainant to purchase the disputed domain name. He says that he also has not registered the disputed domain name in order to prevent the Complainant from reflecting the mark in the corresponding domain name and points out that the Complainant already possesses other domain names including <victoriabeckham.com>.
The Respondent also says that due to the geographical nature of trade marks, the disputed domain name could be used by a trade mark holder in many EU and non-EU countries in various classes of goods. Accordingly, there are thousands of potential claimants who could claim rights to this particular domain name and who could legally make use of it, including affiliates and fans. He says that as a bona fide domain name trader he is entitled to sell the disputed domain name to whoever wishes to buy it for the price he has determined.
The Respondent says he has no intention of attracting or confusing those looking for the Complainant, nor has he attempted to imply any affiliation or endorsement by her. The Respondent says that in his letter of November 21, 2016 he gave the Complainant a written undertaking not to infringe her trade marks in the classifications registered. The Respondent says that he gave a reasoned calculation as to how he came to his asking price and that this reflected the time and effort to create and develop a website and not just the cost of acquisition of the disputed domain name.
Lastly, the Respondent says that the Complainant has offered no real proof of her allegations and no convincing explanation as to why the facts presented constitute bad faith. He says that she has not demonstrated any harm or potential harm other than the need for her to pay more than she might wish in order to obtain the disputed domain name. Furthermore, the Respondent contends that the Complainant has not shown why she should receive global protection for her trade marks which would override his interests in the disputed domain name.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has 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.
If the Complainant can establish each of these elements on a balance of probabilities (see paragraph 4.7 of WIPO Overview 2.0) she succeeds in her Complaint. To the extent that any specific arguments made by the Respondent are not specifically addressed below it is because they are not directly or indirectly relevant to the questions which the Panel is required to consider in order to determine whether the Complainant has satisfied the three elements of the Policy.
A. Identical or Confusingly Similar
In considering whether the disputed domain name is identical or confusingly similar to the Complainant's VICTORIA BECKHAM trade marks, two issues require explanation.
First, due to the technical constraints of the Domain Name System, it is not possible for spaces between two words to be represented in a domain name. Previous UDRP panels have found that, for this reason, the absence of a space between words in a domain name is of no legal significance when considering similarity and identicality; see, for example, Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000‑0172. Moreover, an Internet user will clearly perceive the two distinct words which comprise the disputed domain name. Accordingly, the lack of a space between "Victoria" and "Beckham" in the disputed domain name is discounted for present purposes.
Second, it is established practice of UDRP panels, when comparing a disputed domain name with the trade mark in which a complainant has asserted rights, not to take into account the generic Top-Level Domain ("gTLD") suffix, that is ".info" in this case, of the disputed domain name.
Having regard to these factors, the Panel finds that the disputed domain name is identical to the Complainant's trade marks.
Whilst it is not therefore necessary to consider whether the disputed domain name is also confusingly similar to the Complainant's trade marks, it is relevant to note that the test of what might be considered confusingly similar is much narrower than the Respondent's submissions suggest. As explained at paragraph 1.2 of the WIPO Overview 2.0, "Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name". In other words, the focus is primarily on a comparison of the similarities between the trade mark relied on and the form of the disputed domain name. Broader issues such as the reasons why the Respondent chose to offer the disputed domain name for sale, the number of other women called "Victoria Beckham" in the United States or whether the Complainant has provided adequate details of the strength of her trade mark are simply not relevant for the purposes of determining whether the Complainant has made out her case under this element of the Policy.
B. Rights or Legitimate Interests
If the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, it is for the Respondent to show that, in fact, he has such rights or legitimate interests. See, for example, Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455 and the comment of the panel that "Since it is difficult to prove a negative (i.e. that Respondent lacks any rights or legitimate interests in the mark) especially where the Respondent, rather than the Complainant, would be best placed to have specific knowledge of such rights or interests and since Paragraph 4(c) describes how a Respondent can demonstrate rights and legitimate interests, a Complainant's burden of proof on this element is light".
The Respondent has not asserted any specific rights in "Victoria Beckham" and his use of the disputed domain name is clearly commercial in character. Use of a domain name which comprises an otherwise non‑descriptive trade mark owned by a third party in order to point to a parking page would not normally be considered capable of providing the registrant with a right or legitimate interest in the domain name. See the decision in Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364 and the panel's finding that "if the owner of the domain name in question is using it with [a parking page] in order to unfairly capitalise upon or otherwise take advantage of a similarity with another's mark then such use would not provide the registrant with a right or legitimate interest in the domain name".
The Panel accordingly considers that a prima facie case has been made out by the Respondent. On the facts of this case, the only basis by which the Respondent might be able to establish that he has a right or legitimate interest is if he can establish that either of the uses to which the disputed domain name has been put might amount to "a bona fide offering of goods or services".
Use as a parking page. The approach generally adopted by UDRP panels is set out at paragraph 2.6 of the WIPO Overview 2.0: use of domain names comprising dictionary or common words and phrases is permissible and capable of conferring a legitimate interest on a registrant; however, "where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion". The Respondent's use is essentially the same as that described by the panel in the Paris Hilton decision cited above. The disputed domain name corresponds to the name and mark of the Complainant. She is making extensive commercial use of it and her name is protected by registered trade marks. Use of the disputed domain name in order to drive traffic to a pay-per-click parking page on the Respondent's website does not amount to a bona fide offering of goods or services and does not confer rights or legitimate interests in the disputed domain name on him.
The fact that the profits from the parking page are apparently earned solely by the Registrar and that the Respondent apparently has no control over the linking decisions which featured on the parked pages does not change the position.
Advertising the disputed domain name for sale. The three specific circumstances set out at paragraph 4(c) of the Policy by which a respondent might demonstrate that it has a right or legitimate interest in a domain name are expressed to be without limitation. However, simply pointing the disputed domain name comprising the Complainant's trade mark to a web page in which it is advertised for sale at a substantial sum, whether before or after being contacted by the Complainant's representative falls outside the circumstances described as being capable of founding rights or legitimate interests.
Whilst the Respondent has claimed that all of the domain names registered by him are common generic words or short phrases, the disputed domain name is clearly outside this category. The Respondent asserts (somewhat implausibly) that he had not been aware of the specific trade marks registered by the Complainant, and had not registered the disputed domain name in order to extort money from the Complainant. However, it is not necessary for the Respondent to know of the specific registered trade mark rights of the Complainant in order for him to be aware that she was using the repute and fame in her name for commercial purposes (for nearly ten years) and that is sufficient to establish that a web page offering the disputed domain name for sale does not comprise a bona fide offering of goods or services.
The Panel accordingly finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Pay-per-click advertising. The Complainant says that registration and use of the disputed domain name in order to point to a parking page falls within the category of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy namely that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website.
Contrary to the Respondent's assertion, it is immaterial that Internet users, having viewed the parking page, may realize that it is unconnected with the Complainant or her business. It is sufficient that such users will have visited the website to which the disputed domain name points in the mistaken belief that it is likely to be connected with her. In other words, it is the characteristics of the disputed domain name itself, particularly when identical to the Complainant's mark which raises a heightened risk of impermissible impersonation, which creates the likelihood of confusion. Nor does the fact that the income derived from the parking page was not earned by the Respondent take his use of the website outside the circumstances described at paragraph 4(b)(iv) of the Policy because the commercial gain does not have to be solely or partly that of the Respondent. As explained at paragraph 3.8 of the WIPO Overview 2.0: "It may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show that profit or 'commercial gain' was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant".
The Respondent's assertion that it is not a bad faith registration to register a domain name corresponding to that of a well-known personality in order to seek to derive revenue from it is at odds with a numerous decisions on this point given by previous UDRP panels. See, by way of example, Halle Berry and Bellah Brands Incorporated v. Alberta Hot Rods, WIPO Case No. D2016-0256 in which the panel found that "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 trade mark, 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".
Offers to sell the disputed domain name. Paragraph 4(b)(i) of the Policy provides that bad faith registration and use will be found in circumstances indicating that a respondent has registered or acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark, or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name.
The Panel is unable to accept the Respondent's assertion that he was entitled to seek significantly more than his "documented out-of-pocket costs directly related to the domain name" because, according to the Respondent "it takes time and effort to create and develop a website and they invariably sell for much more than the domain name". Not only has the Respondent not provided any evidence to support his claim that any other costs have been incurred but, more importantly, the Respondent has sought to recover far more than his "documented out-of-pocket costs directly related to the disputed domain name" on the heels of the Complainant's reputation.
The Panel also rejects the suggestion that the offer to sell the disputed domain name was not targeted specifically at the Complainant. (An offer to sell a domain name does not have to be addressed specifically and solely to a complainant for it to be within the scope of this provision if the complainant was either the sole party, or among the most likely parties who might be interested in purchasing it.) The fact that the disputed domain name may have been available for purchase through other channels simply reinforces the fact that the Respondent's intention in registering it was not to put it to a good faith use.
Lastly, whether or not the Respondent was aware of the specific registered trade marks owned by the Complainant is immaterial. He was clearly aware of her fame and the fact that she is using her name as a brand for commercial purposes. Seeking to sell the disputed domain name to the highest bidder, whether before or after specific details of the Complainant's trade mark rights had been provided to him by her representatives, comprises bad faith use.
The Panel accordingly finds that the disputed domain name was registered and used in bad faith.
7. Decision
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 <victoriabeckham.info> be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: February 27, 2017