WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Celine Dion and Sony Music Entertainment (Canada) Inc. v. Jeff Burgar operating or carrying on business as Celine Dion Club
Case No. D2000-1838
1. The Parties
The Complainants: Celine Dion and Sony Music Entertainment (Canada) Inc., both of 1121 Leslie Street, Toronto, M3C 2J9, Canada.
The Respondent: Jeff Burgar, operating or carrying on business as Celine Dion Club, PO Box 2570, 4901 51st Avenue, High Prairie, Alberta, T0G 1EO, Canada.
2. The Domain Name and Registrar
The domain name in issue is <celinedion.com>, registered with Network Solutions, Inc, of Herndon, Virginia, USA, on March 6, 1995.
3. Procedural History
(1) The Complaint in Case D2000-1838 was filed on December 28, 2000 and was notified to the Respondent on January 10, 2001.
(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) The Respondent has subsequently drawn my attention to the recent decision
in Case No. D2000-1532, Springsteen v. Burgar. The case being a matter
of public record, it is proper for a party to draw the Panel's attention to
it at any stage before submission of the Panel's Decision. After submission
of the present Decision to the WIPO Mediation and Arbitration Center for final
formatting, the Center received a further request from the Respondent to submit
arguments criticising my Decision in Case D 2000-1628, Julie Brown v. Julie
Brown Club. The Respondent was in substance the Respondent in that case,
the facts in both bear striking similarity and, in my opinion, the issues of
interpretation of the UDRP raised by those facts are the same. Accordingly,
the Repondent's request seeks to reopen with me the decision which I reached
in Case D 2000-1628 and which, as will be seen below, I have considered to be
equally correct in the present case. The UDRP paragraph 4(K) provides that any
such decision is subject to the institution of proceedings in a prescribed court.
There is thus a mechanism available for the overturning of a Panel decision.
It is that course which it is appropriate for the Respondent to follow in the
present dispute if he wishes to challenge my Decision.
(5) The date scheduled for issuance of a decision is: February 21, 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
The first Complainant is extremely well-known by her given name, Celine Dion, as a top-selling performing artist of pop music, with numerous albums to her credit, certifications indicating the very large numbers of sales achieved and awards that attest to her fame.
The second Complainant has an exclusive recording contract with the first Complainant. In consequence, it holds in trust for her ten domain names through which it runs the official Celine Dion Website. These include <celindion.com> and <celinedeon.com>. This Website is used by the second Complainant inter alia to sells "Celine Dion" merchandise, on which the first name is written in cursive script and the surname in capital letters. The same format has been used on two of her albums, while the name appears in a variety of scripts on the others.
The registrant of the domain name in suit is "Celine Dion Fan Club" at an address now given as that of Mr. Jeff Burgar.
5. Parties' Contentions
The Complainants assert
- that the domain name in dispute is identical to the "Celine Dion" famous name and trade mark, which were extremely well established in association with CD music recordings, videos, live performances and other merchandise, well before the Respondent first registered the domain name in suit on March 16, 1997.
- that the Respondent has not, since securing registration of the domain name in dispute in 1999, used the Celine Dion trade marks or any variant thereof with any legitimate offering of wares or services, has no public reputation or association with those marks and has not become commonly known by them.
- 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 no bona fide business is being conducted by the named Registrant, "Celine Dion Club", which amounts only to an operating name for the Respondent, Jeff Burgar, the address now given for the Club being his. Previously an address for the Club at 1350 East Flamingo Road, #57, Las Vegas, Nevada, 89119, USA, proved, on investigation, not to exist.
- that when first approached in October 1997 about his domain name registration, Mr Burgar stated to the Complainants' legal representative that he would relinquish the registration, but not without "negotiating." A later letter, of June 12 2000, seeking transfer of the domain name in return for payment of Mr. Burgar's out-of-pocket expenses, went unanswered.
- that the Respondent, Mr. Burgar, pursues a pattern of behaviour in which he registers famous trade marks as domain names under the ownership of a "Club" with the same name as the trade mark, as is attested by the judgments in the cases, T-768-98 Canada Post Corporation v. Burgar, Federal Court of Canada, May 15, 1998; and NAF Case 0002000093564, Hewlett-Packard Company v. Burgar; and also by registrations using the names of a famous country music artist and famous American actors.
- that Internet users are likely to assume that Ms Dion's official website is at the address <celinedion.com> and that the address has been used in this way on two Websites not associated with the Respondent; and,
- that the Respondent deliberately registered the domain name in suit for the purpose of attracting Internet users to his <Celebrity1000> website for commercial purposes.
In a lengthy submission, much of which appears rhetorical, the Respondent's main assertions may be summarised thus:
- that there is no confusing similarity between the Complainants' trade marks and the domain name in dispute;
- that his use of the <celinedion.com> address has recently changed so as to link to a site which provides pages for a legitimate Fan Club;
- that he did not indicate to the Complainant that he was willing to transfer the domain name after negotiations;
- that the Complainants remain 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 first Complainant's name was used merely in a descriptive fashion and attracted users to the site only by such references;
- that the Fan Club now developed is prominently stated to be "Unauthorised" and therefore could not mislead -- moreover it was not commercial;
- that in one of the two cases of alleged actual confusion, an honest error had occurred;
- that the domain name in suit and so the Celine Dion Fan Club has been linked for at least two years to <Celebrity1000> 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 Complainants nor any tarnishing of Ms. Dion's name.
6. Discussion and Findings
(1) Identification of Respondent
The Complainants are justified in identifying the Respondent as Jeff Burgar, operating or carrying on business as Celine Dion Club. The Response at various points identifies Mr. Burgar as the Respondent.
(2) 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. As the Response acknowledges:
"People have reasonable expectations when they buy a car, a music CD, a soft drink, a newspaper or a magazine. If the car says "Ford" on it, they expect it to actually be a Ford. If the CD says "The Beatles" on it, they expect it to be a CD of their work. If the soft drink says "Coca-Cola" they do not expect beer."
Equally, as the passage points out at length, such words can be used in descriptive ways.
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 and I have not accepted
it in deciding Case D2000-1628, Julie Brown v. Julie Brown Club. 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. The Respondent's
example of a Beatles CD is a case in point. 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 Complainants in this case have not yet registered Ms. Dion's name as a trade mark, it is clear that her fame as a performing artist 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, <celinedion.com>, falls to be treated as the same as the Complainant's name, since it is well settled that the addition of the gTLD suffix makes no essential difference. Accordingly, in the practice of incorporating the names of famous performers into domain names, which the Respondent admits to having done in 75 cases, Complainants have satisfied the requirements of the initial threshold.
(3) Complainants' demonstration of the Respondent's Bad Faith
The Complainants' allegations of bad faith relate to the UDRP, Paragraph 4(b)(i),(ii) and (iv). As to the first of these (acquiring in order to transfer for more than expenses), there is only ambivalent and contested evidence that the Respondent sought payment for the transfer or rental of the domain name. This ground is therefore note made out.
Paragraph 4(b)(ii) concerns the case where a 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.
Here the Respondent seeks to deflect the Complainants' submission that they have shown this form of bad faith by pointing out that the registration of the star's name plus .com does not preclude her from obtaining a great many other gTLD registrations, and indeed the second Complainant has done just that. 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.
As I have already decided in Decision D2000-1628, Julie Brown v. Julie
Brown Club, 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 he 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 as it is correctly spelled. They, therefore, could not reflect
their mark in that particular corresponding domain name. Such conduct falls
within the form of bad faith identified in the UDRP, Paragraph 4(b)(ii).
As to the form of bad faith covered by the UDRP, Paragraph 4(b)(iv), there
are two actual instances of others seeking to use the domain name in suit as
a link to the official Celine Dion site. The Respondent's explanation of one
of these as the result of an honest mistake does not demonstrate that there
was no confusion, and he does not deny the other case. Contrary to his lengthy
arguments that a domain name address is or must be understood by users as no
more than an indication that something about the named person will be found,
this evidence suggests that by no means all users treat domain name listings
solely in this way. As is found in the dissenting opinion in D2000-1532, Springsteen
v. Burgar, it is particularly likely that an address which is the proper
spelling of an artist's name in the .com gTLD will be treated by some as pointing
to an official site. So long as the link was to <Celebrity1000> it is
far from clear that a person visiting that site would be disabused of any connection
with the Complainants. That was the case at least until a few days before the
complaint was submitted. But he offers no explanation of when this change occurred
and it is unclear exactly why it was made. I accordingly find that this form
of bad faith has arisen in the circumstances.
(4) 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 <Celebrity1000>, but is, at the same time, stating that at some recent point in time it has felt it necessary to establish The Unauthorised Celine Dion Site instead. The Complainants assert that the connection is to <Celebrity1000>, 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 <Celebrity1000>.
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, it 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 Complainants have asserted that the Respondent uses the domain name only to point to <www.celebrity1000.com> where users can vote for their favourite star. The Respondent admits that he owns 75 celebrity names and that the <Celebrity1000> site carried advertising of some kind. He demonstrates that <www.celinedion.com> now points to "The Unauthorized Celine Dion Web Site." 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 the Respondent'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 <Celebrity1000>
site, the Respondent's conduct must be characterised as a stock-piling of leading
artistes' names, their only substantial function then being to attract people
to view advertising on the site. The Respondent asserts that he 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 <Celebrity1000> and the establishment of The Unauthorized Celine Dion 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 the Respondent 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 he has common law rights from two years use of the domain name; that his use of the domain name is legitimate; that he has kept the domain name in good financial repair; and that because his 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 name in dispute is identical to or confusingly similar with the trade mark comprising the Complainant's given name;
- that the Respondent has no rights or legitimate interests 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,<celinedion.com>, be transferred to the Complainant.