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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kellie Martin v. Domains, Best Domains

Case No. D2003-0043

 

1. The Parties

The Complainant is Kellie Martin, a United States citizen, with a principal place of business c/o Gang, Tyre, Ramer & Brown, 132 South Rodeo Drive, Beverly Hills, California 90212, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC of United States of America.

The Respondent is Domains, Best Domains, an entity with a mailing address of 5444 Arlington Ave. g14, Bronx, New York 10471, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is <kelliemartin.com> (the "Disputed Domain Name"), registered with eNom (the "Registrar").

 

3. Procedural History

Complainant filed a Complaint (the "Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on January 22, 2003, via e-mail and on January 27, 2003 via hardcopy. The Center sent Complainant an Acknowledgement of Receipt of Complaint on January 23, 2003.

On January 23, 2003, the Center transmitted by email to eNom a Request for Registrar Verification in connection with the Disputed Domain Name. On January 27, 2003, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact for the Disputed Domain Name.

On January 28, 2003, the Center sent Complainant a Complaint Deficiency Notification via e-mail and on January 30, 2003, via hardcopy, because the Complaint did not list the correct Registrar and did not submit to the jurisdiction at the location of the Registrar’s principal office. In response, the Complainant filed an amendment to the Complaint on January 28, 2003, by e-mail, and on January 30, 2003, by hardcopy.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 Paragraph 4(a) of the Uniform Rules and Paragraph 5 of the Supplemental Rules, the Administrative Panelist (the "Panel") is satisfied that the Complaint satisfied the Rules and the Supplemental Rules.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and commencement of proceedings on January 29, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2003. The Respondent did not submit any response. Accordingly, notification of the Respondent’s default was given on February 19, 2003, by e-mail, at the Respondent’s address given in the Amended Complaint. The Panel is satisfied that the notification of the Respondent’s default was effectively given.

The Complainant has elected to designate a single-member Administrative Panel in accordance with Paragraph 3(b)(iv) of the Uniform Rules. The Center appointed a sole Panelist in this matter on February 26, 2003. 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.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers, or extensions of deadlines. The Panel has not found it necessary to request any further information from the parties. The date scheduled for the issuance of the Panel’s decision is March 12, 2003.

 

4. Factual Background

Under Paragraph 5(e) of the Uniform Rules, [i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the panel shall decide the dispute based on the Complaint." In the present case, Respondent failed to respond to the Complaint, and the Panel, in accordance with Paragraph 5(e) of the Uniform Rules, adopts the facts as asserted in the Complaint.

(i) Complainant, Kellie Martin is an actress. She has appeared in such movies as Open House, Malibu’s Most Wanted, All You Need, Matinee, Troop Beverly Hills, Body Slam and Jumpin’ Jack Flash. She has appeared in television series’ such as ER, Crisis Center, Christy, Life Goes On, Thirtysomething, The Hogan Family and The Tracy Ullman Show. Complainant has been featured in celebrity publications, television show reviews, entertainment publications and has received an Emmy nomination. Additionally, Complainant is the national spokesperson for the American Autoimmune Related Diseases Association.

(ii) The Complainant registered the name Kellie Martin with the Screen Actors Guild in 1982, the American Federation of Television and Radio Artists in 1986, and the Writers Guild of America West in 1994. The Complainant has maintained her membership in each of these organizations since the respective registration dates.

(iii) The Complainant has not authorized Respondent to use the mark "Kellie Martin" nor is Complainant affiliated with Respondent in any way.

(iv) The Respondent registered the Disputed Domain Name on March 18, 2002.

(v) As of January 15, 2003, the website "www.kelliemartin.com" was used to divert Internet traffic to an anti-abortion website, "www.abortionismurder.org."

(vi) The Respondent is a fictitious entity used by John Barry. John Barry has used fictitious names on numerous occasions in the past to register domain names.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the domain name <kelliemartin.com> is identical or confusingly similar to Complainant’s name and mark "Kellie Martin."

Complainant contends that Respondent has no rights or legitimate interest in the domain name <kelliemartin.com>.

Complainant contends that Respondent registered and is using the domain name <kelliemartin.com> in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. The Panel is therefore forced to determine the case on the basis of the Complainant’s submissions only and to determine whether the Complainant has established its Complaint.

 

6. Discussion and Findings

Under Paragraph 4(a) of the Policy, transfer of a disputed domain name is justified when three elements have been established:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondent’s domain name has been registered and is being used in bad faith.

Each of these elements is addressed below.

A. Identical or Confusingly Similar

The Complainant relies upon her alleged common law trademark in her name in asserting that the Disputed Domain Name is identical to or confusingly similar to the Complainant’s name and mark, Kellie Martin. In the Complaint, Complainant cites Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 and Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235, to support the contention that Complainant’s common law rights in her name and mark satisfy the first element.

The Policy does not require that the Complainant have rights in a registered trademark or service mark. The Complainant may satisfy the requirement of having rights in a trademark by establishing that she has rights in a common law trademark. See Julia Fiona Roberts. In the case of well known celebrities, their names can acquire a secondary meaning that gives rise to rights equal to unregistered trademarks. See Jeanette Winterson v. Hogarth; Julia Fiona Roberts; Helen Folsade Adu v. Quantum Computer Services; WIPO Case No. D2000-0794; Nicole Kidman v. John Zuccarini, WIPO Case No. D2000-1415.

The Complainant has shown that she has common law trademark rights in her name by virtue of her successes in both television and film. The Complainant has achieved celebrity and the use of her name in connection with entertainment services has secondary meaning and association with Complainant.

The domain name in dispute is identical or confusingly similar to the name and mark in which Complainant has rights. It is broadly accepted that the addition of the suffix ".com" does not make an essential difference nor does the combining of two names into a single domain name. The Disputed Domain Name is thus identical or confusingly similar to the name and common law mark of Kellie Martin.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides examples of circumstances that may demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) of the Policy. The examples include:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name in issue or a name corresponding to the said 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 said 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Under the facts as presented in this case, Respondent does not have any rights or legitimate interest in the disputed domain name. Respondent is using the disputed domain name to divert traffic to an anti-abortion website. The Disputed Domain Name does not appear to have any connection with the content of the website, nor does such use appear to implicate any free speech rights. Accordingly, this type of behavior is incongruous with a bona fide offering of goods or services. Additionally, Respondent’s diversion of Internet users to the "abortionismurder.org" website cannot be considered a legitimate noncommercial or fair use of the domain name. There is no evidence that Respondent has been commonly known as <kelliemartin.com> or Kellie Martin as an individual, business or other organization.

The Respondent has no rights or legitimate interest in the domain name pursuant to the Policy Paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides examples of circumstances in which a Respondent’s actions may be construed as bad faith registration and use of a domain name, but is not limited to the listed examples. Paragraph 4(b)(ii) of the Policy provides that evidence of bad faith registration and use may be found where the Respondent registers "the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding name, provided that" Respondent has engaged in a pattern of bad faith registration and use of domain names.

In the present case, Respondent, Domains, Best Domains, is a fictitious entity, created by John Barry, an individual known for his cybersquatting activities. On numerous occasions, Barry, using various entities (Domains, Best Domains, Domains for Sale, Buy This Domain, and Good Domains) has been found to have registered and used domain names in bad faith. See The George Washington University v. Domain World a/k/a Domains for Sale a/k/a John Barry, National Arbitration Forum Case No. FA0208000122140; The Rittenhouse Development Co. v. Domains for Sale, Inc., National Arbitration Forum Case No. FA0202000105211; Nielsen Media Research, Inc. v. Domain for Sale, Inc., WIPO Case No. D2002-0020; Marie Claire Album S.A. v. Buy This Domain, WIPO Case No. D2002-0677; The American Red Cross v. Domains a/k/a Best Domains a/k/a John Barry, National Arbitration Forum Case No. FA0301000143684.

Based on Respondent’s pattern of registering domain names, it can be inferred that Respondent was aware of Complainant’s rights in the Disputed Domain Name. See The George Washington University. It has been consistently held that where a party registers a domain name using a well known mark and subsequently links said domain name to a website that depicts offensive images, such action is evidence of bad faith registration and use. See Ty, Inc. v. O.Z. Names, WIPO Case No. D2000-0370.

Based on all of the evidence presented, Respondent registered and is using the Disputed Domain Name in bad faith under the Policy, Paragraph 4(a)(iii).

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <kelliemartin.com> be transferred to the Complainant.

 

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Timothy D. Casey
Sole Panelist

Dated: March 12, 2003