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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Julie Brown v. Julie Brown Club
Case No. D2000-1628
1. The Parties
The Complainant: Julie Brown, of 1040 Las Palmas Building 18, Hollywood, CA 90038, USA.
The Respondent: Julie Brown Club, PO Box 2570 4901 51st Avenue, High Prairie, AB, T0G 1EO Canada.
2. The Domain Name and Registrar
The domain name in issue is <juliebrown.com>, registered with Network Solutions Inc, of Herndon, Virginia, USA, on March 6, 1995.
3. Procedural History
(1)The Amended Complaint in Case D2000-1628 was filed on December 8, 2000 and was notified to the Respondent on December 27, 2000.
(2)The WIPO Arbitration and Mediation Center has found that:
-the Complaint (as amended) was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;
-payment for filing was properly made;
-the Complaint complies with the formal requirements;
-the Complaint was properly notified in accordance with the Rules, paragraph 2(a);
-a Response to the Complaint was filed in due time; and that
-the Administrative Panel was properly constituted.
As Panelist, I accept these findings.
(3)As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4)There has been a communication from the representative of the Complainant, dated January 26, 2001, requesting permission to make a supplemental reply to the Response. I do not find it necessary to accede to this request in reaching this decision. The Respondent has subsequently drawn my attention to the recent decision in Case No. D2000-1532, Springsteen v. Burgar; and the Complainant to the decisions, NAF file: FA 0002000093564, Hewlett Packard Co v. Burgar; US District Court of Massachusetts, Northern Light TechnologyInc. v. Northern Lights Club, et al. 97 F Supp. 2d 96; and US District Court of New York, The Coalition to Advance the Protection of Sports Logos v. Burgar. So far as these cases are matters of public record, I accept that it is proper for either party to draw the Panel's attention to them at any stage before submission of the Decision to the Dispute Resolution body.
(5)The date scheduled for issuance of a decision is: February 11, 2001.
(6)No extensions have been granted or orders issued in advance of this decision.
(7)The language of the proceedings is English.
4. Factual Background
This dispute, which raises contentions on many issues, is described in the ensuing paragraphs of the Decision.
5. Parties' Contentions
The Complainant asserts
-that she is well-known by her given name, Julie Brown, as a television and film actress, scriptwriter and producer of music videos including of her own performances;
-that the Respondent has not, since securing registration of the domain name in dispute in 1999, run a Julie Brown Fan Club but instead the domain name is being used to point to the Celebrity 1000 website;
-that the registration was made in bad faith in that it misleads internet users in search of information about the Complainant; additionally it suggests endorsement by her of the site. No preparations have been made bona fide to offer goods or services;
-that the billing correspondent for the Respondent, Jeff Burgar, owns many celebrity domain names and uses them to point to the Celebrity 1000 site, thus showing a pattern of behaviour amounting to cybersquatting.
The Respondent asserts, in a lengthy submission, much of which appears rhetorical:
-that its use of the juliebrown.com site has changed so as to provide pages for a legitimate Fan Club pages;
-that the Complainant was never approached to buy the domain name or site;
-that the Complainant remains free to adopt other domain names incorporating her name;
-that there is no evidence of registration primarily for the purpose of disrupting a competitor's business;
-that the Complainant's name was used merely in a descriptive fashion and attracted users to the site only by such references;
-that the Fan Club was prominently stated to be "Unauthorised" and therefore could not mislead -- moreover it was not commercial;
-that the Fan Club has been linked for two years to Celebrity 1000 and this has given the Respondent an association with the domain name;
-that the Respondent made non-commercial and fair use of the name, which did not produce confusion with the Complainant nor any tarnishing of her name.
6. Discussion and Findings
(1) Requirement that the Domain Name in dispute is identical or confusingly
similar to a trade mark or service mark in which the Complainant has rights.
The UDRP posits this requirement as the initial threshold which the Complainant must satisfy. The requirement defines the condition under which there is a potential conflict of interests between the Complainant as a trade mark holder and the Respondent as a Domain Name registrant. It does not of itself entitle the Complainant to any relief. That will happen only when the Respondent is shown to be acting, or to have acted, in bad faith, and when, in all the circumstances, the Respondent has not demonstrated rights and legitimate interests in the Domain Name.
The threshold inquiry is accordingly not to determine whether the Respondent has engaged in actual conduct which is or is not improper. It is at this stage irrelevant to determine what his or her object has been or will be in obtaining the particular registration. In particular, in light of the Respondent's assertions, it is not for the Panel at this juncture to consider whether the domain name is open to uses which are descriptive or which otherwise do not act to identify the source of products or services. The great bulk of marks are capable both of trade mark use (i.e. use in trade for the purpose of identifying source) and also of uses which will not be understood in this way. This is not a characteristic confined to the names of authors, performers and other celebrities. "Coke", when used to sell a drink, is a trade mark use; the sentence in a novel, "He drank a Coke", is not. The Policy requires the Panel to consider, first, whether the Complainant has rights in a relevant trade mark; and secondly, whether the Domain Name is the same as, or is confusingly similar to, that mark.
It has been accepted in a succession of UDRP decisions that authors and performers may have trade mark rights in the names by which they have become well-known: notably Case D2000-0235, Winterson v. Hogarth; D2000-0210, Roberts v. Boyd; D2000-0598, Marino v. Video Images Productions; D2000-0794, Adu (Sade) v. Quantum Computer Services. The majority of the Panel in Case D2000-1532, Springsteen v. Burgar has cast doubt on this view, but their dictum is in no way necessary to their Decision. Authors and performers can establish trade mark rights either by showing that they have registered their names as marks for certain goods or services, or because, through deployment of the names as source indicators in commerce, they have unregistered or "common law" rights to protection against misleading use. Such use amounts to unfair competition of the kind defined in the Paris Industrial Property Convention, Article 10bis. As was, for instance, accepted long ago by the English Court of Appeal, in order to protect the copyright in a work, its author must have an action against passing off so as to prevent false attribution: see Samuelson v. Producers Distributing (1932) 48 RPC 580. A defendant cannot be permitted to supply goods or put on performances which the consuming public are led to believe consist of the author's work when they consist of a substitute. The same must apply to the rights related to copyright which performers enjoy in their performances in many countries, and video-makers enjoy in their products.
While the Complainant in this case has not yet registered her name as a trade mark, it is clear that her fame as a performer, video producer and author establishes the kind of reputation which can warrant protection against passing off. There is much in the course of the Response which shows acceptance of the view that the Complainant has in her career attained the status of a celebrity.
The Domain Name, <juliebrown.com>, falls to be treated as the same as the Complainant's name, since it is well settled that the addition of the suffix makes no essential difference. Accordingly the Complainant has satisfied the requirements of the initial threshold.
(2) Complainant's demonstration of the Respondent's Bad Faith
The Complainant's allegations of bad faith are made in somewhat general terms. No evidence is proffered that the Respondent demanded payment for the transfer or rental of the domain name Nor has it been clearly shown that the Respondent's purpose was to disrupt a competitor's business. Moreover, partly due to the Respondent's changed use of the domain name as a pointer, it is uncertain how far it can be said that Internet users were or now are being confused about the site to which they are drawn for the improper commercial purposes identified in the UDRP Paragraph 4(b)(iv).
However, the second ground establishing bad faith (Paragraph 4(b)(ii)) is that the Respondent has 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 he has engaged in a pattern of such conduct.
The Respondent seeks to deflect the Complainant's submission that it has shown this form of bad faith by pointing out that the registration of the star's name plus .com does not preclude her from a great many other gTLD registrations. The question is thus what is meant by the phrase "reflecting the mark in a corresponding domain name" and above all what is meant by "a". Does "a" mean "any", or does it mean "a particular"? If the meaning is the former, as the Respondent asserts, then this form of bad faith can scarcely ever be established. There are many choices of suffix, just as there are of variations in hyphenation, spelling, added words and so on. On the Respondent's construction, there would only be bad faith if the domain squatter had sought to register them all.
In my view the Policy cannot have been drafted with such a narrow intent. I therefore differ from the opinion on this matter taken by the Majority in the Decision D2000-1532, Springsteen v. Burgar. As that Majority noted, their own view represents a departure from previous decisions. It has been clearly demonstrated, partly through the Respondent's admissions, that the Billing Correspondent, Jeff Burgar, obtained a succession of celebrity .com domain names, and this gives rise to an evident pattern of conduct in which he stockpiled similar registrations. These prevented the celebrities concerned from securing the straightforward .com registration for their name. They therefore could not reflect their mark in that particular corresponding domain name. Such conduct falls within the second form of bad faith identified in the UDRP, Paragraph 4(b). It cannot be open to the Respondent to dissociate itself from Mr Burgar's conduct as a whole, since it is merely a name chosen for the registration of this particular site. The Response does not appear to make such an argument and indeed speaks at one point of Mr Burgar's ownership of <juliebrown.com> and other domain names (by his admission, 75 in all).
(3) Respondent's demonstration that he has rights or legitimate interests
in respect of the Domain Name
Paragraph 4(c) of the UDRP lists specific (but non-exclusive) circumstances which will entitle the Respondent to retain the Domain Name in issue. Where these circumstances arise, the Respondent is entitled to retain its name without qualification and in a sense these rights or legitimate interests override findings of bad faith. But in practical terms they must be read as the opposites of what constitutes bad faith. They are moreover grounds which it is for the Respondent to establish sufficiently.
The Respondent claims the protection of Paragraph 4(c)(i), i.e. that it was using the domain name, before notice of the dispute, for a bona fide offering of goods or services. It relies upon the services available at Celebrities 1000 but is at the same time stating that, because of the advertising on that site, it has had to establish The Unauthorised Julie Brown Site instead. The Respondent does not say when this change was made. The Complainant asserts that the connection is to Celebrities 1000, a site which simply allows users to vote for their favourite stars. Thus the Respondent has failed to provide sufficient evidence under this head. As to the reliance on Paragraph 4(c)(ii), it is unclear in what way it can be said that it has been commonly known by the domain name, since until very recently the name acted purely as a pointer to Celebrities 1000.
The Respondent also relies on Paragraph 4(c)(iii), viz, that he is making a legitimate non-commercial 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 interpretation of this justification calls for careful attention, since it consists of a positive requirement and (from "without intent" onwards) an exclusionary statement. First, t requires that the Respondent prove legitimate non-commercial or fair use of the domain name; then it states that no such use could arise where, for commercial gain, consumers are misleadingly diverted or the mark is tarnished. It does not say, that any use (let alone failure to use) is justified where the second, exclusionary, statement is not established. It is for the Panel to decide whether in all the circumstances the Respondent has sufficiently established a case of legitimate non-commercial or fair use of the domain name.
The Complainant has asserted that the Respondent uses the domain name only to point to one of Mr Burgar's websites, <www.celebrity1000.com> where users can vote for their favourite star. It is then claimed that Mr Burgar owns some 1500 domain names and that among them many celebrity domain names point to this same site. Four examples are given. The Respondent objects to what it says are exaggerations in the number of cases, but admits that Mr Burgar owns 75 celebrity names and that the <celebrity 1000> site carried advertising of some kind. It demonstrates that <www.juliebrown.com> now points to "The Unauthorized Julie Brown Web Site", which comprises the following pages: home, biography, message board, opinion poll (of favourite movies) and links. As already pointed out, the Respondent does not explain when or why the change was made, or whether similar treatment has been applied to all or any of Mr Burgar's other similar sites.
Is this course of conduct, so far as it has been explained, to be characterised as legitimate non-commercial or fair use of the domain name? So long as the admitted bunch of celebrity domain names were all directed to the <celebrity 1000> site, Mr Burgar's conduct must be characterised as a stock-piling of leading artiste's names, their only substantial function then being to attract people to view advertising on the site. The Respondent asserts that Mr Burgar has been accumulating such names in order to develop fan-club websites for them, but that it has taken time to set up these sites. So long as this remained only an intention it could not in itself amount to a use. Nor could any such use be substantiated by the fact that the registration was made (as in the present instance) in the name of a Fan Club bearing the celebrity's name, when there was no evidence of the Club having any substantial existence.
Even if undertaken in due time, can the severing of the link to Celebrity 1000 and the establishment of The Unauthorized Julie Brown Site alter the situation? Respondents who have engaged in use of a domain name which does not amount to legitimate use must expect to bear a substantial burden when they seek to demonstrate that their changed activity has acquired this character. Are they not seeking merely to achieve their previous position by less transparent means? In this case, is Mr Burgar not seeking to retain a stockpile of celebrity domain names? The circumstances are that there is trade-marking potential in those names. Accordingly, he (as the Respondent's operator) must demonstrate positively a legitimate interest in retaining them, as for instance by providing an established fan club, or for that matter a site for criticism or satire. It is for him to show that the new use of the site is substantial and genuine, rather than merely a colourable continuation of his former stockpiling activity. Given the successive ways in which this registration has been employed, I am completely unsatisfied that he has made out any sufficient justification under Paragraph 4(c)(iii).
In support of his demonstration of rights and legitimate interests, the Respondent also asserts in general terms that it has common law rights from two years use of the domain name; that its use of the domain name is legitimate; that it has kept the domain name in good financial repair; and that because Mr Burgar's business is in building websites he has a legitimate interest in registering domain names for future development. In large measure these are mere repetitions of assertions made under the specific heads of the Policy. It is hard to detect any other element in these claims which could possibly override my view that the registration in suit was made and maintained in bad faith.
The Panel decides, in accordance with the Uniform Domain Name Dispute Resolution Policy, Paragraph 4:
-that the domain in dispute is identical to or confusingly similar with the trade mark comprising the Complainant's given name;
-that the Respondent has no right or legitimate interest in respect of that domain name; and
-that it has been registered and is being used in bad faith.
The Panel accordingly requires that the domain name,<juliebrown.com>, be transferred forthwith to the Complainant.
William R Cornish
Dated: February 13, 2001