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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
R. E. ‘Ted’ Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi
Case No. D2002-0251
1. The Parties
The Complainants are: (a) Mr. R.E. ‘Ted’ Turner of Atlanta G.A., United States of America and; (b) Ted Turner Film Properties LLC, a Georgia corporation with its principal place of business at Atlanta, GA, United States of America (TTFP). The Complainant is represented by Mr. J. Rutherford Seydel, II and Mr. Cory B. Thompson of Lawson, Davis, Pickren & Seydel, LL.P of Atlanta, GA, United States of America.
The Respondent is Mr. Mazen Fahmi, of Pierrefonds, Québec, Canada. He represents himself.
2. The Domain Name and Registrar
The domain name at issue is <tedturner.com>. The domain name is registered with Network Solutions Inc. of Dulles, Virginia, United States of America ("the Registrar"). The domain name was first registered with the Registrar on March 14, 1999.
3. Procedural History
The Complaint submitted by the above Complainant was received on March 14, 2002, (electronic version) and March 19, 2002, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On March 20, 2002, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:
- Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
- Confirm that the domain name at issue is registered with the Registrar.
- Confirm that the person identified as the Respondent is the current registrant of the domain name.
- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.
- Confirm that the Uniform Domain Dispute Resolution Policy ("UDRP") is in effect.
- Indicate that, under the Registration Agreement, the registrant submitted to the jurisdiction of the Courts as provided in the Policy.
- Indicate the current status of the domain name.
- Indicate the language of the Registration Agreement.
By email dated March 25, 2002, the Registrar advised WIPO Center that:
- It had received a copy of the Complaint from the Complainant.
- The domain name was registered with it. The Respondent was the registrant as well as the administrative, technical and billing contacts. The UDRP applied to the domain name, which was in ‘active’ status. The language of the agreement was English and an appropriate acknowledgement of Court jurisdiction was found in the registration agreement.
The Registrar has currently incorporated in its agreements the UDRP adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").
The advice from the Registrar that the domain name in question is in ‘active’ status indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. He has not sought to terminate the agreement with the Registrar.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on March 20, 2002, transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. Copies of the same documents were also emailed to both Registrars and to ICANN.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days in accordance with the Rules, by four sets of hard copy and by email.
A Response was received by the WIPO Center from the Respondent on April 15, 2002 (electronic), and April 16, 2002 (hard copy).
The Complainant requested a three-person Panel and has paid the sum due to the WIPO Center.
WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Presiding Panelist in the case. It invited Mr. Richard W. Page of San Diego, CA, United States of America and Mr. D.J. Ryan of Melbourne, Vic., Australia, to be Panelists. It transmitted to each of them a statement of acceptance and requested a declaration of impartiality and independence.
All Panelists duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On May 8, 2002, WIPO Center forwarded to the Panel by courier the relevant submissions and the record.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
4. Factual Background
The Complainant Mr. Turner is an entrepreneur. In 1980, he founded ‘CNN’ (Cable News Network), a comprehensive news organization which has coverage in the United States and in many other countries. He has founded television stations some of which use the name "Turner" (e.g. Turner Broadcasting System"). He has owned major professional sports teams in the United States. He owns 1.75 million acres of real estate throughout the United States. In 1997, he donated $1 billion to the United Nations which is claimed to be the largest philanthropic gift ever made by an individual. He was named the 25th most wealthy man in the United States by Forbes Magazine in 2001 and "Man of the Year" in 1991 by Time Magazine.
He is known internationally as ‘Ted Turner’. Because of all his various activities, his name is frequently cited in the media throughout the world. Many citations are given in the annexures to the Complaint.
Mr. Turner is the sole owner of the Complainant TTFP which owns a pending US Trademark application for the trademark ‘Ted Turner Pictures LLC’ which application was filed in November 2001. The drawing associated with this mark features a reproduction of Mr. Turner’s signature appearing above the words "Ted Turner Pictures, LL.C". TTFP alleges in its Complaint that it conducts business under the name "Ted Turner Pictures LL.C."
The Respondent has posted no content on the website address of the disputed domain name.
On February 11, 2002, the Complainant’s attorney requested the Respondent by letter to transfer the domain name to Mr. Turner on payment of out-of pocket expenses. Although there has been correspondence between attorneys for the parties, that transfer has not occurred. The Respondent proposed that the Complainants should wait until the website had been developed at which stage Complainants might consider acquiring the domain name and the website. Complainants have rejected that suggestion.
5. Parties’ Contentions
Mr. Turner has a common law mark by reason of his reputation as one of the world’s most prominent and successful entrepreneurial philanthropists. Numerous WIPO decisions accord common law trademark status to prominent people such as actors, authors and sports people and to businessmen (see Barry Diller v Internet Corp, WIPO Case No. D2000-1734.)
The disputed domain name is identical to Mr. Turner’s common law mark and is confusingly similar to the trademark applied for by TTFP.
Respondent was given no rights to the disputed domain name by either Complainant. Respondent does not come within paragraph 4(c) of the Policy. Respondent must have registered and is using the disputed domain name in bad faith. He has held the name for 3 years and has made no attempt to develop a website. He has not established any legitimate use and has indicated that he wishes to profit from the name.
‘Ted Turner’ is a common name. TTFP applied to register a design not the name. Its application for trademark registration was filed only in November, 2001 – long after the domain name had been registered.
Whilst studying at the University of Montreal for a degree in computer science in 1999, Respondent decided to write a text about a successful person. He chose to call his completed work: "You may not build an Empire like Ted Turner’s but you may still own a Castle." The name ‘Ted Turner’ was selected because the Complainant, Mr. Turner, "symbolizes success and business-smarts in North America. I did not tarnish nor do I intend to tarnish the Ted Turner name."
At the same time, Respondent wished to establish a website dedicated to his work. Although he preferred to register <castle.com>, he found that name already registered. He therefore registered <tedturner.com> which was then available.
Respondent has been a full-time student since registering the name and has not had enough time to write his text "I have not had much to write about yet, although in 2001 I started working on a children’s game and I intend to share the experience of going through such a project with others through my text."
He has made preparations to use the name but there saw no point in placing material on the site until the project is finished. As a student, he would not want to pay hosting fees for a blank page. He is not diverting customers from Mr. Turner by the use of the name.
He did not register and is not using the domain name in bad faith because:
(a) He is writing a text which he plans to distribute through the use of the domain name. The title of the work includes the words ‘Ted Turner’ which gives him a legitimate interest in the name.
(b) Sharing thoughts and life experiences in a non-defamatory way, as Respondent envisages, is a good faith activity.
(c) He had no intention of using the name in order eventually to transfer it to Mr. Turner.
(d) He has not engaged in a pattern of conduct of registering domain names. Complainants have registered various names incorporating ‘tedturner’ without objection from him.
(e) TTFP’s proposed mark did not exist at the time of registration of the name.
(f) He is not a competitor of the Complainants. His use of the name is real but is not yet public.
(g) Various WIPO cases show that non-use is not necessarily evidence of bad faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- That the Respondent has no legitimate rights or interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
In the view of the Panel, the disputed domain name is identical to any common law mark held by the Complainant, Mr. Turner. The question is whether he has such a trademark.
The evidence shows that Mr. Turner was a well-known personality worldwide at the time the name was registered and since. His name is generally associated with business acumen and commercial success. Respondent himself admits that: "the name ‘Ted Turner’ … ‘symbolizes success and business smarts in North America’." Mr. Turner’s numerous business activities and his huge donation to the United Nations must have given him universal coverage throughout the world. However, there is insufficient evidence that his personal name has been used commercially as a trademark to promote goods and services, other than the incorporation of "Ted Turner" into the name TTFP. The inclusion of the Turner name in that of several media companies is not enough to make the name ‘Ted Turner’ a trademark at common law.
The majority of the Panel is assisted by careful analysis of the learned Panelist in Asper v. Communication X Inc., WIPO Case No. D2001-0540. There, the Panelist listed and categorized previous decisions where a disputed domain name had been held to have been identical or confusingly similar to a Complainant’s common law mark found to exist in the Complainant’s professional personal name. In cases involving entertainers, authors, professional sports people, the Complainant had usually succeeded, especially where it could be shown that the Complainant had either used his/her name as a marketable commodity or had allowed the name to be used for a fee to promote either the Complainant’s own or someone else’s goods and services. The Panelist noted other one-off categories; one concerning royalty and one concerning a politician. Many of the cases involving entertainers, authors, etc were referred to in the Complainant’s submissions.
Of the fewer cases involving the names of business persons, the Panelist in the Asper case had this to say:
"The pure business cases are more problematic. An obvious difference between them and the above situations is that it is less likely that a business person will use his or her name to market their own goods or services, and very unlikely that they will do so to market someone else’s. Take, by way of examples, Henry Luce, Kenneth Thomson, Conrad Black and Rupert Murdoch. Are their publications marketed as a product connected to the person in question? Not likely. It is also not likely that someone would pay a fee to use these names in the promotion of a good or service with which they have no connection. Yet, each of these gentlemen is or was a famous businessman with a very high profile in the publishing business and held in high regard by many. This doesn’t mean that a businessperson’s name is not entitled to protection as a Domain Name. As demonstrated in the Supreme Court of Canada decision in Hurlbut Co. Ltd v Hulburt Shoe  2 D.L.R. 121 a person may be able to use his personal name to prevent its improper use if he or she can show that if "all persons whom in any way it concerns" has come to know that a particular article associated with his or her name means that he or she is responsible for its source. Under this circumstance, the personal name takes on a secondary meaning. Probably, when the T. Eaton Co. was owned by Timothy Eaton and Macy’s owned by someone of that name, their names could have been protected on the basis. There is no evidence in the Complaint that the name of the Complainant has formed a part of the name of any of his companies."
The Panelist in Asper found that the Complainant, a prominent Canadian businessman and philanthropist, had not shown that he had used his personal name for the purpose of merchandizing or for any other commercial promotion of goods or services. He found that the Complainant had a deservedly famous name and that he may have had a remedy in a national court, but that, as the Policy was currently worded, he could not succeed on a complaint under the Policy.
The situation differs in this present case in that (a) the "Turner" name but not the "Ted Turner" name does form part of the name of several major companies owned by Mr Turner (e.g. Turner Network Television, Turner Classic Movies and Turner Broadcasting System) and (b) the words "Ted Turner" appear in the name of the Complainant TTFP. However, no evidence was given by TTFP of use of the name as a trademark.
As further support for his decision, the learned Panelist in the Asper case referred to the Interim Report on the Second WIPO Domain Name Process thus:
"6.12 The Interim Report of the Second WIPO Internet Domain Name Process further noted that there were four important aspects, including certain commonalties and differences with respect to the protection afforded under trademark law and under the law of personality rights, which may be relevant to the discussion of protection of personal names in the DNS. These included:
(iii) Infringement of both trademark or personality right occurs through unauthorized use by a third party. However, under trademark law the right is infringed only if a third party’s use of the mark is likely to cause a likelihood of confusion and among consumers as to the source of goods or services. The personality right, on the other hand, does not require the demonstration of any confusion; instead, it is infringed when the public can identify the person in question from the third party’s unauthorized commercial use.
(iv) Both are concerned with a commercial exploitation by a third party that infringes upon the right. However, under trademark law, the mark itself for which protection is sought must be used in commerce as a precondition to relief, whereas the personality right may protect a person who does not commercially exploit his or her own identity, but nevertheless desires to prevent others from doing so."
To that statement should be added the following extract from the WIPO Final Report on the Second WIPO Domain Name Process dated September 3, 2001. "Persons who have gained eminence or respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registration. The UDRP is thus perceived by some as implementing an excessively materialistic conception of contribution to Society".
That quotation was used by the Panel in Falwell & Anor v Cohn & ors, WIPO Case No. D2002-0184 to deny the Complaint under the UDRP of the Reverend Jerry Falwell, a well-known preacher in the United States. The Panel held that, well-known and all as he was, Mr. Falwell had failed to show that his name had been used in a trademark sense as a label for particular goods and services. He failed to provide any marketing brochures, trade advertisements or other evidence of use of his name as a mark.
The Panelist in Asper referred to other UDRP cases involving business people thus:
"6.25 The cases involving claims by or on behalf of business people, shown in paragraph 6.17 above, do not demonstrate a pattern. The Monty and Pat Roberts cases (WIPO Case Nos. D2000-0299 and D2000-0300) clearly show a commercial attachment to the use of their names. Similarly, in the case of Steven Rattner, WIPO Case No. D2000-0402, he provided investment banking and corporate advisory services under his own name and therefore would have an obvious interest in protecting that name for commercial uses. There is no evidence on the record in this case that Izzy Asper has ever used his name as part of a corporate name. In Harrod’s Limited v. Robert Boyd, WIPO Case No.D2000-0060, it should be noted that the Complainant was not the person whose name was in question, but Harrod’s Limited, the well-known British department store on whose Board Dodi al-Fayed served, thus the Panel in that case concluded that "The commercial impression is that domain name is associated with goods and services sponsored by or affiliated with the late Dodi Fayed or his estate". This distinguishes that case from the one before this Panel. Further, the case was one of the very early ones decided without benefit of the subsequent material available to this Panel which reserves the right to disagree with the reasoning in an appropriate subsequent matter.
6.26 There are two dominant concerns inducing the protection of marks. The first is the protection of consumers who associate the name with goods and services of a known source and quality. The second is to preserve the value of goodwill built up over time by the owner of the mark. In the case of those (primarily entertainers and professional athletes) who sell their goodwill to others in the marketing of goods and services not directly associated with the holder, the first rationale, above, is likely to be dominant. This is much less likely to be the case with other personal name marks, particularly those, which have not obtained a secondary meaning. It is the view of this Panel that the name of the Complainant falls within the latter category."
The majority of the present Panel does not necessarily agree with the Asper panelist regarding the Harrod’s case. In that case, the Complainant owned the registered trademark for the name Dodi Al-Fayed so that considerations of common-law marks were not necessary.
Since the Asper decision was given, the Diller decision (supra) upheld a common-law service mark in the personal name of a well-known businessman whose name, like Mr. Turner’s, was frequently cited in the media. The facts as recited in the decision showed that Mr. Diller was heavily involved with cable television and movies. He also owned a domain name <barrydiller.com>. The disputed domain name was <barrydiller.org> which was linked to pornographic sites. In its discussion section, the Panel merely recited Mr. Diller’s claim to be an unusually successful and knowledgeable business executive and inventor plus the fact of his frequent citings in the media. Without going into any discussion of the extent of common law trademark rights, the Panel merely found the domain name identical to Mr. Diller’s common-law mark.
In the present case, as in the Asper case, there is insufficient evidence of Mr. Turner’s name having acquired a secondary meaning as a trademark. Mr. Turner is a person whose reputation both in business and philanthropy is well-known universally.
The distinction between names and trademarks is also recognized by the authorities both in Anglo-Australasian law and in United States law, see for example Shanahan, Australian Law of Trademarks and Passing Off at page 1:
"A trademark must be distinguished from a trade name, that is to say the name whether it be a personal name or a business or company name under which a person carries on business. Where goods or services are provided under a trade name, that name functions also as a trademark; but a trademark need not be a trade name, and indeed a trademark may indicate some definite trade source, although the public are otherwise ignorant as to the identity of that source."
McCarthy on Trademarks and Unfair Competition (2nd Edition) at pages 578 and 579 states the U.S. position thus:
"Personal names (surnames and first names) have been placed by the common law into that category of non-inherently distinctive terms which require proof of secondary meaning for protection. Thus, since personal names are not regarded as being inherently distinctive marks, they can be protected as trademarks only upon proof that through usage, they have acquired distinctiveness and secondary meaning … … that is, the public has come to recognize the personal name as a symbol which identifies and distinguishes the goods or services of only one seller."
As early as 1908, the High Court of Australia, in Attorney General for New South Wales v Brewery Employees Union, 6 CLR 469 identified a trademark (in respect of goods) as involving five distinct elements:
"1. A right which is in the nature of property;
2. The owner of the right must be a person, natural or artificial, engaged in trade;
3. The right is appurtenant or incident to the dealing with goods in course of his trade.
4. The owner has such an independent dominion over the goods to which the mark is to be affixed as to entitle him to affix it to them …
5. The mark distinguishes the goods as having been dealt with by some particular person or persons engaged in trade: …"
The majority of the Panel imagines the legal situation in Canada, where Respondent resides, is similar.
The majority considers that there is insufficient evidence produced in the Complaint that the Complainant, Ted Turner, has ever offered goods or services under that name, or that that name has acquired any secondary meaning in relation to any goods or services.
In the Diller case (supra), the Panel seems to have based its conclusion that the Complainant had a common law service mark only on the basis that he has shown "inter alia, that his name is cited in the U.S. media with great frequency". It may be that the "inter alia" refers to some evidence of trademark use or rights which is not spelt out in the decision. Similarly, the Princess Diana case, FA95641 CMG Worldwide, Inc. v Naughtya Page, states without analysis that:
"Diana, Princess of Wales before her death had rights to her common law trademarks".
The Panel contrasts these statements with the careful reasoning in the Asper case. The recent decision in the Falwell case, though not dealing with an entrepreneur but with a prominent person, gives further support to the majority’s view.
The rationale in the majority of the UDRP cases in which panelists have found a complainant to have trademark rights in a real or fictitious personal name has been, as pointed out in the Asper case at paragraph 6.22:
"Where the Complainant was successful he or she either used the personal name in question as a marketable commodity, allowing his or her name or image to be used for a fee, to promote someone else’s goods or services, or for direct commercial purposes in marketing of his or her own goods and services".
It may be that Ted Turner could have claimed to have done that, but there is insufficient evidence of it in the Complaint. Indeed, the Complaint itself seems to suggest otherwise where it states, at paragraph 13, that:
Complainant Turner has well established common law trademark rights in his name by virtue of his reputation as one of the world’s most prominent and successful entrepreneurs".
Plainly that is not enough on the authorities cited. Nor is it sufficient to establish trademark rights that Mr. Turner has established a number of companies, some of which include the word "Turner" in their name, owned a number of sporting teams and a large land holding in the United States, or that he has given large donations or been featured in Time Magazine. None of these facts amounts to evidence that the name ‘Ted Turner’ is a trademark or service mark, so that Mr. Turner has not satisfied Paragraph 4(a)(i) of the Policy in the view of the majority.
TTFP’s trademark registration was filed long after the Respondent’s domain name registration. In Audiopoint Inv. v. eCorp aka Folkening, WIPO Case No. D2001-0509 a WIPO panel ruled that a Complainant’s trademark rights are determined at the time a complaint is filed and not at the time a domain name is registered. There, as here, the Complainant had applied for registration of a mark (in June 1999) after the domain name had been registered by the Respondent (in February 1999). As at the date of registration of the name <audiopoint.com> the Complainant had not offered or promoted any services under the Audiopoint mark. The Respondent swore that it had no knowledge of the Complainant as at date of registration. The Panel found that the Complainant was using the mark in connection with the sale of goods and services as at the date the Complaint was filed. The Panel held that the Respondent’s focus on Complainant’s uncertain trademark rights at the date of the domain name registration was misplaced. The Complaint failed because the Complainant had not proved bad faith registration because Respondent had not heard of Complainant or its mark at the time of registration and Complainant did not develop any protectable common law trademark rights until well after registration of the domain name.
In other cases where this question of timing has been in issue, the Panel has been at pains to point out that the evidence showed that at the date of filing of the complaint, the complainant had use sufficient to establish common law rights. In Audiopoint the domain name was registered in February 1999, first use and application for registration of the trademark occurred in June 1999, and the complaint was filed in April 2001. In Document Technologies, Inc. v. International Electronic Communications Inc, WIPO Case No. D2000-0270 the domain name was registered in April 1999. The first use of the trademark in commerce and application for registration occurred in May 1999, and the complaint was filed in April 2000.
In Aspen Grove, Inc. v. Aspen Grove, WIPO Case No. D2001-0798, the Complaint was filed in June 2001 and was based on a pending U.S. trademark application filed in 1999. In that case, the three-member Panel said:
"While the disputed domain name is identical to the trade/service mark the Complainant is claiming in its application, the Panel does not accept that the Complainant has demonstrated any rights in the trademark it has applied to register. The Panel is not aware of any rights conferred by a trademark application either under the Policy or at U.S. law. Certainly, under the Policy, while Panels have been willing to recognize that proof of a valid and subsisting trademark registration is prima facie evidence of trademark rights, no such presumption arises from a pending application to register a mark. There being no other evidence of the Complainant’s trademark rights in the disputed domain name, the Panel finds the Complainant has failed to meet its burden of proof under para 4(a)(i) of the Policy."
In the present case, Complainant TTFP had not established rights in the mark at the time that the Complaint was filed. TTFP does not disclose prior use of its mark. The Panel is unable to infer that the mark was used not later than the date of the Complaint. The application was filed on November 7, 2001, and as at March 13, 2002, the application was still pending in the face of an outstanding official report. The application was filed on the basis not of actual use in commerce, but on the basis of the intention to use ("ITU"). From this it seems to be evident, that at the time of filing the application, TTFP was not in a position to claim registration based on use and there is no evidence that there had been any use of the mark prior to the filing of the Complaint.
The Panel has difficulty in holding that the disputed domain name is confusingly similar to the mark in which TTFP claims to have rights. Descriptive words appended to a mark in a domain name have been held not to affect the concept of confusing similarity. See Sony Kabushiki Kaisha v Inja, Kil, WIPO Case No. D2000-1409. The Panel there found that the addition of descriptive words to the word "Sony" did not detract from the impression that the domain names were connected to the owner of the trademark. Also Biersdorf AG v Nivea International, WIPO Case No. D2001-0178, <niveainternational.com> held confusingly similar to mark Nivea. The question in those cases was the opposite to the present. Those cases, and many others, deal with the effect of the addition in the domain name of descriptive words to the trademark. Here, we have a consideration of the effect in the trademark, of descriptive words and other features which are not present in the domain name. Those additional features must be taken into account in considering the effect of the trade mark as a whole. The mark cannot be equated to the name or signature alone.
The majority of the Panel therefore is unable to find for the Complainant TTFP because it has failed to prove the first criterion under Paragraph 4(a) of the Policy. Having reached its conclusion in relation to paragraph 4(a)(i), it is unnecessary to consider the remaining criteria. It does so however for the reason that it considers that this case demonstrates the unfortunate limitation of the Policy in relation to famous names which are not shown to be used as trade marks. The Panel considers that the other two criteria have been satisfied, but that is not enough to uphold either Complaint in the view of the majority.
The Complainant TTFP gave the Respondent no rights or legitimate interests in the disputed domain name. He has no trademark or service mark registrations for it. That finding can sometimes be sufficient for the Complainant to discharge the initial evidential burden for the second criterion. Paragraph 4(c) of the Policy indicates that a Respondent can demonstrate rights or legitimate interests in the domain name. Thus:
(i) before any notice to you of the dispute, your 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 and services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly direct customers or to tarnish the trademark or service mark at issue.
In the view of the Panel, the Respondent does not, as he claims, come within paragraph 4(c)(i). He has given no evidence of demonstrable preparations to use the name in connection with a bona fide offering of goods and services, other than his self-serving statements about a somewhat nebulous work which has yet to be written.
The Panel finds the second criterion proved.
As to bad faith, the Respondent clearly knew of the fame of Ted Turner at the date of registration. Yet he registered the name of this internationally well-known person as a domain name for what can only be described as a specious reason. He must surely have known that he had no right to use this name.
Bad faith use is further evidenced by Respondent’s failure to develop a website for over three years. The reasons alleged for non-use are hardly convincing. Users of the internet wishing to access information about Mr. Turner and typing in <tedturner.com> will be met with a dormant website.
Respondent has documented other aspects of his case such as his studies at University of Montreal and McGill University (response annexure 3), his website searches (annexures 2, 4 and 5) but has not documented in any way or shown any material in support of his alleged "Ted Turner" project or for the children’s game which he alleges he has commenced to produce. It may be true that he did not wish to post unfinished work on his website, but that does not stop him from producing evidence of it to support his claim. The Panel therefore finds the Respondent’s assertions in this respect unconvincing.
Like the categories of negligence, the categories of bad faith under the Policy are never closed. For the purposes of paragraphs 4(a)(iii) of the Policy, TTFP and Mr. Turner can rely on Respondent’s brazen attempt to use the name of a famous person in a domain name when Respondent had no justification at all for doing so. Respondent must have known that he had no right to use the name ‘ted turner’ in a domain name because such use would inevitably suggest an association with Mr. Turner.
The evidence of negotiations between the parties suggests that Respondent hopes to benefit financially in the long run out of the use of the domain name.
In the view of the majority, this is just another in a line of cases where a domain name registrant has sought to capitalize on the fame and reputation of an internationally well-known person. Unfortunately, the Policy does not give Mr. Turner or TTFP a remedy in this case. They may have some remedy in a national court.
The majority of the Panel therefore finds that both Complaints be denied and no order be made transferring the domain name <tedturner.com>:
Hon Sir Ian Barker QC Mr. D. J. Ryan AM
Dated: July 4, 2002
The majority has wrongly decided that the name "Ted Turner," although known throughout the world as a symbol of business acumen and commercial success, has not been used commercially to promote goods and services. The name "Turner" has been used in the names of several media companies, in addition to its inclusion in the name of the Complainant Ted Turner Film Properties. The majority needs numerous pages of explanation to dispel the obvious and lose the forest for the trees. This evidence is sufficient to find the existence of a common law trademark or service mark in the name "Ted Turner."
The majority further fails to infer, or request further clarification, that the name "Ted Turner Film Properties" was used prior to the application for its registration as a mark.
The majority invites Complainants to file an action against this individual respondent in a national court in order to further develop proof of Complainant Ted Turner’s common law rights and the rights of the Complainant Ted Turner Film Properties. The reality of such litigation is that it will financially destroy the respondent and result in vindication of Complainants’ rights, which are sufficiently shown in this proceeding. The Policy is not so limited as to require this result.
Richard W. Page
Dated: July 4, 2002