WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wes Anderson v. Domain ID Shield Service, Domain ID Shield Service CO., Limited / WORLDHOSTNET
Case No. D2018-0045
1. The Parties
The Complainant is Wes Anderson of Los Angeles, California, United States of America (“USA” or “US”), represented by Vorys, Sater, Seymour and Pease, LLP, USA.
The Respondent is Domain ID Shield Service, Domain ID Shield Service CO., Limited of Hong Kong, China / WORLDHOSTNET of Los Angeles, California, USA.
2. The Domain Name and Registrar
The disputed domain name <wesanderson.com> (the “Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2018. On January 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 12, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 18, 2018, 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 January 25, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2018.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on March 5, 2018. 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 American film director, producer, and screenwriter who has been known in the US film industry since 1996, when he directed and co-wrote Bottle Rocket. This first film garnered critical attention, launching the film acting careers of Owen and Luke Wilson. In 1998 the Complainant’s second film, Rushmore, featured the famous US actor Bill Murray in a starring role and was a commercial and critical success, earning box office receipts of some USD 17 million, winning several awards, and bringing the Complainant widespread attention in US media. (The Domain Name was created the following year.) Since then, the Complainant has written and directed numerous films, including The Royal Tenenbaums (2001, which grossed more than USD 50 million in box office receipts), The Life Aquatic with Steve Zissou (2004), The Darjeeling Limited (2007), Fantastic Mr. Fox (2009), Moonrise Kingdom (2012, with more than USD 45 million in box office receipts), and The Grand Budapest Hotel (2014, exceeding USD 59 million in box office receipts), which have received 154 industry award nominations and 66 awards.
The Complainant has recently applied for a US trademark registration but currently has no registered trademark. The Complainant claims common law protection for his name, WES ANDERSON, as an unregistered mark. Attached to the Complaint is the Complainant’s signed declaration and supporting materials documenting the Complainant’s film career and demonstrating the Complainant’s reputation as a film director, screenwriter and producer, including advertising, media articles, and awards. The Panel notes that the Complainant’s name is typically featured prominently on movie posters and other advertising for the films in which the Complainant is involved. Words such as, “a film by Wes Anderson”, “a Wes Anderson short”, “a new film by Wes Anderson” often appear immediately below the title, suggesting that the producers and distributors consider that the Complainant’s name has “brand” recognition and market appeal to moviegoers.
According to the Registrar, the Domain Name was created in September 1999. The record does not show that the Complainant employed domain tools to ascertain when this Respondent acquired the Domain Name, but the registration was most recently updated on October 26, 2017. The current registration was made in the name of a Chinese domain privacy service. Following notice of this UDRP proceeding, the Registrar identified the Respondent “WORLDHOSTNET” of Los Angeles, California, USA as the registrant. The domain privacy service has expressed no interest in the Domain Name. Accordingly, WORLDHOSTNET will be referred to hereafter as the “Respondent”.
The online database operated by the California Secretary of State does not list any corporation, limited liability company, or partnership licensed to do business in California under a name corresponding to the Respondent’s. The website at “www.worldhostnet.com” consists of a single page advertising “web hosting”, “domains”, and “websites”, with an email address as the only contact information.
At the time of this Decision the Domain Name resolves to a “Sedo Domain Parking” page advertising that the Domain Name is for sale and that the owner is asking for USD 10,000. A “Related searches” button is labelled “Movies”. However, like the “Sponsored listings” button on the page, at the time of this Decision it takes the user only to lists of presumably pay-per-click (PPC) advertising links under a wide variety of categories including software updates, entertainment, travel, financial products, jobs, lifestyle products, and electronics. As described in the Domain Parking Terms and Conditions at “www.sedo.com”, the Sedo Domain Parking Service is a commercial program under which domain name owners can forward their undeveloped domain names to a nameserver specified by Sedo and receive a share of generated PPC advertising revenue. Sedo also offers the service of advertising domain names for sale and describes itself as “the largest domain marketplace with the most buyers worldwide.”
The Internet Archive’s Wayback Machine preserves screenshots of landing pages associated with the Domain Name over the years since August 2001. These are typically parking pages, some advertising the domain name for sale and also including PPC advertising links. However, a page dated July 25, 2002 is headed “Welcome to World Hosting Network”, followed by the words, “more coming soon” and a contact email address. This suggests that the Respondent was involved with the Domain Name as early as 2002.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is confusingly similar to its unregistered WES ANDERSON mark, in which the Respondent has no rights or legitimate interests. The Complainant argues that the Domain Name has been registered and used in bad faith, in the hope of selling it to the Complainant for an amount considerably in excess of direct out-of-pocket costs.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a 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.
Under paragraph 15(a) of the Rules, “A Panel shall decide a 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.”
A. Identical or Confusingly Similar
The UDRP Complaint must be grounded on a trademark or service mark. The Policy is not restricted to registered trademarks, but claims based on an unregistered or “common law” mark require a showing that the mark has become a distinctive identifier that consumers associate with the Complainant’s goods or services (a quality referred to as “acquired distinctiveness” or “secondary meaning”). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3. Relevant evidence for this quality includes the nature and duration of the mark, the volume of sales under the mark, the extent of advertising, and the degree of public recognition. Id. When the mark is an individual’s name, as it is here, it can be difficult to distinguish between the ordinary and necessary uses of the name and the use of the name as a brand in commerce.
Here, the Panel finds substantial evidence in the record that the Complainant’s name, WES ANDERSON, has indeed acquired distinctiveness among US consumers since the late 1990s in association with films. Even by the time the Domain Name was created in September 1999, the Complainant’s name was prominently linked with the successful film Rushmore, while media stories reported more projects in progress. Since then, there has been a great amount of advertising, sales, and public recognition of films associated with the Complainant’s name. As noted above, the Complainant’s name is often advertised prominently with the title of the films, indicating the perceived market value of the name, as is often the practice with celebrity actors in the film industry. See WIPO Overview 3.0, section 1.5; Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560.
The material portion of the Domain Name is identical to the Complainant’s WES ANDERSON mark except for the intervening space between the first and last name, which is not technically possible to include in a URL address in the DNS system. The first element of a UDRP complaint “serves essentially as a standing requirement” and entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. See WIPO Overview 3.0, section 1.7. The Panel concludes under this test that the Domain Name is confusingly similar for purposes of the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
Here, the Complainant has demonstrated common law trademark rights and confusing similarity, and the Complainant denies authorizing the Respondent to use the WES ANDERSON mark in the Domain Name, so the burden falls to the Respondent to demonstrate rights or legitimate interests in the Domain Name. The Respondent has failed to do so, and a review of the record does not suggest that such rights or legitimate interests exist. There is no evidence that the Respondent is known by a corresponding name, for example, or that the Respondent has used, or has made demonstrable preparations to use, the Domain Name for a legitimate “Wes Anderson” fan site or criticism site. Therefore, the Complainant prevails on the second element of the Complaint.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(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 …
(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.”
As noted above, the Domain Name was initially registered not long after the Complainant gained wide renown for the film Rushmore. The first and last name taken together is distinctive, and it appears that the Domain Name has never been used for a generic purpose or for someone else with the same name. The Panel finds it probable, therefore, that the Respondent was aware of the Complainant and the trademark value of the Domain Name.
The Complainant cites the example of bad faith articulated in paragraph 4(b)(i), even though there is no evidence in the record showing that the Respondent ever contacted the Complainant in an effort to sell the Domain Name. It is plausible that the Respondent hoped ultimately to attract the attention of the Complainant, for whom the Domain Name logically would have greater value than for any other. It is difficult to conclude that the Domain Name was registered “primarily” for ultimate sale to the Complainant, however, because the Respondent made no effort to contact the Complainant, despite apparently holding the Domain Name at least as early as 2002.
Even if an extortionate sale was not the Respondent’s primary motivation, however, the facts readily fit another example of bad faith as set forth in paragraph 4(b)(iv): misleading Internet users for commercial gain. The Domain Name, matching the Complainant’s mark, has long been used to attract visitors and generate PPC advertising revenues. Given this use of a Domain Name confusingly similar to the Complainant’s mark, and the Respondent’s failure to come forward with any alternative explanation for selecting and making such use of the Domain Name, the evidence on this record is sufficient to infer bad faith within the meaning of the Policy.
The Panel concludes that the Complainant has established the third element of the Complaint.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <wesanderson.com> be transferred to the Complainant.
W. Scott Blackmer
Date: March 12, 2018