WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lou Taylor v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Free, Free Britney
Case No. D2020-0080
1. The Parties
The Complainant is Lou Taylor, United States of America (“United States”), represented by Sperry IP Law dba Vivid IP, United States.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Free, Free Britney, France.
2. The Domain Name and Registrar
The disputed domain name <loumtaylor.net> is registered with Hostinger, UAB (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2020. On January 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2020, the Registrar transmitted by email to the Center its verification response disclosing
(a) it is the Registrar for the disputed domain name;
(b) registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint; 1
(c) the Respondent registered the disputed domain name on June 29, 2019;
(d) the language of the registration agreement is English;
(e) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center sent an email communication to the Complainant on January 20, 2020, 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 24, 2020.
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 31, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2020.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 4, 2020. 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 has been providing business management services in the sports and entertainment industries since 1992 and is CEO of Tristar Sports and Entertainment, which has offices in Los Angeles and Nashville in the United States.
Amongst others, the Complainant represents Britney Spears, Jennifer Lopez, Florida Georgia Line, Gwen Stefani, Pryanka Chopra, Jack Huson, and a number of North American football and baseball players.
Amongst other things, the Complainant has been recognized personally in annual listings of “top business managers” including by Billboard in 2017 and 2019, Billboard’s Women in Music 2018: Executives of the Year, in Variety magazine’s “Business Managers Elite” for 2015, 2016, 2018 and 2019, the Hollywood Reporter in 2016 and 2017, and recognized as The Hollywood Reporter’s Business Manager Icon 2019. The Complainant has also been featured in an article in MarieClaire as one of the two female executives on the Recording Academy’s Diversity Task Force.
The Complainant operates her own website from <loutaylor.net>. The Complainant also has Twitter and Instagram accounts under the name “LouMTaylor”. Her Twitter account has 5,410 followers; the Instagram account, over 35,000 followers.
On January 10, 2020, the Complainant filed a trademark application in the United States for LOU TAYLOR in respect of a range of services in International Classes 35, 36, and 39; Trademark Application No. 88,754,609. The application is still pending.
The disputed domain name was first registered on June 29, 2019.
It appears that at or around the same time, another domain name, <loumtaylor.com>, was also registered. This domain name resolved to a website headed “Your #1 source for the gay demon exorcist.”
The disputed domain name resolved to a website “Your 2nd source for the gay demon exorcist.” Since the Complaint was filed, the website appears to have become inactive.
Annex 9 to the Complaint is a print out of the website before the Complaint was filed. It shows the website consisted of extracts from, or links through to, articles on other publications highly critical of the Complainant. There were nine articles in total (although one of the nine was repeated.) The last post is dated July 11, 2019. Most of the articles, if not all, appear to have been published many years before that date.
The Complainant strenuously denies the veracity of the content of the articles.
In July 2019, the Complainant commenced proceedings in the Federal District Court for the Northern District of Georgia (in the United States) against one Bryan S […] in respect of both <loumtaylor.com> and the disputed domain name. During the discovery processes in that proceeding, it emerged that Mr […] was not the owner of the disputed domain name. Subsequently, the domain name <loumtaylor.com> has been transferred into the name of the Complainant’s company.
5. Discussion and Findings
No response has been filed. The Complaint has been notified, however, to the Respondent at the physical and electronic coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his/her or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
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.
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, the Complainant’s trademark 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’s pending trademark application, as an inchoate right, does not qualify as a trademark for the purposes of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0"), section 1.1.4.
While the Complainant has not sought to prove reputation in a conventional manner, the media reports in mainstream magazines that have been submitted in the Complaint clearly demonstrate that the Complainant personally is widely recognised in the sports, entertainment, and business circles relevant to her business activities. That renown supports a conclusion that the Complainant has developed a sufficient reputation in her field to establish rights in her name as an unregistered or common law trademark for purposes of the Policy.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties, and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See, e.g., WIPO Overview 3.0, sections 1.7 and 1.11.
Disregarding the “.net” gTLD, the disputed domain name differs from the Complainant's name by the inclusion of her middle initial, “M”. That is of course the same as her Twitter handle and Instagram account.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is at least confusingly similar to the Complainant’s trademark 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., WIPO Overview 3.0, section 2.1.
The Complainant states that the Respondent is not affiliated with her in any way. Nor has she authorised the Respondent to use the disputed domain name. The disputed domain name is plainly not derived from the Respondent's name as advised by the Registrar.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification.
The content of the website to which the disputed domain name resolved raises the potential that the disputed domain name was being used as a criticism site. The Complainant disputes that the website is properly characterized in this way. The Complainant contends that the disputed domain name is being used illegitimately to malign and disparage the Complainant with false, vulgar and disparaging comments to deliberately cause actual and potential customers from dealing with the Complainant and her business.
The Complainant says this does not qualify as a legitimate noncommercial or fair use under paragraph 4(c)(iii) as the intent and effect is to tarnish the trademark. It appears under the Policy, however, that “tarnish” has a fairly specific meaning. In a frequently cited decision, the panel in Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 explained:
"As for Complainant's assertion of "tarnishment," that phrase, too, has a specific meaning that does not apply here. Tarnishment in this context refers to such unseemly conduct as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark. See, e.g., Nicole Kidman v. John Zuccarini d/b/a Cupcake Party, WIPO Case No. D2000-1415 (January 23, 2001); cf. Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654 (January 31, 2001). In contrast, fair-use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy, the primary concern of which is cybersquatting. Cf. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (September 19, 2000) (protection for genuine criticism sites is provided by Policy's legitimate interest and bad faith prongs). Claims sounding in commercial libel must be brought in other legal venues."
See also Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014.
It is no part of the Panel’s role, therefore, to assess or adjudicate on the veracity of the allegations that were being made on the website formerly. Nor, if the disputed domain name is being used for the purposes of a legitimate criticism, is it appropriate to assess whether the criticism is fair, expressed in reasonable terms or intemperately.
In the present case, the disputed domain name does not include an additional term signalling that it is being used for criticism. For all practical intents and purposes, the disputed domain name is just the Complainant‘s name. In such a situation, section 2.6.2 of the WIPO Overview 3.0 explains:
“Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., <trademark.tld> (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation. In certain cases involving parties exclusively from the United States, some panels applying US First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest.”
The address given by the Respondent is not in the United States. In those circumstances, the predominant view among panels is that use of a domain name identical to a complainant’s trademark for a criticism site does not qualify as a right or legitimate interest under the Policy. The address, however, is obviously fake.
In the present circumstances, the Panel considers the following matters are significant. First, the Respondent has not sought to rebut the prima facie case or advance any claimed entitlement. In particular, the Respondent has not come forward claiming that the Respondent registered the disputed domain name for use as a criticism site. (Although the Complainant appears to have accepted that Mr […] is not the holder of the disputed domain name, Mr […] apparently sought to justify his similar website as some form of “parody”.)
Secondly, there were only nine posts on the website in a very short timeframe. There does not appear to have been any activity on the website once the Complainant initiated her court action.
Thirdly, the website appears now to be inactive.
Fourthly, as already noted, the Respondent provided obviously fake information in registering the disputed domain name.
One can readily imagine that a genuine “whistleblower” might wish to take steps to conceal their identity in many situations where the disclosure of some wrongdoing or misfeasance could subject the discloser to unwarranted harassment or physical danger. Taken together, however, the factors set out above do not lead the Panel to a conclusion that the website in question was (let alone is) a genuine criticism site. In any event, the Panel finds that the disputed domain name creates an impermissible risk of user confusion through impersonation.
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. These are conjunctive requirements; both must be satisfied for a successful complaint: See, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
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 nature of the disputed domain name – the Complainant’s personal name – and the content of the website to which the disputed domain name resolved leave no room for doubt that the disputed domain name was registered with knowledge of, and to target, the Complainant. In circumstances where the Complainant has established on the record in this administrative proceeding that the Respondent does not have rights or legitimate interests in the disputed domain name, therefore, it follows that the Respondent registered, has used, and is continuing to use the disputed domain name in bad faith.
Accordingly, the Complainant has established all three requirements under the Policy.
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 <loumtaylor.net> be transferred to the Complainant.
Warwick A. Rothnie
Date: March 19, 2020
1 As the first named respondent is a privacy proxy service, the Panel will refer to the second-named respondent as the Respondent for simplicity.