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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Silvie Tomčalovб, a.k.a. Sylvia Saint v. Global Access

Case No. D2006-0399

 

1. The Parties

The Complainant is Silvie Tomčalovб, a.k.a. Sylvia Saint, Prag, Czech Republic, represented by Lafortune Cadieux, L.L.P., Canada.

The Respondent is Global Access, Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Paul Raynor Keating, Spain.

 

2. The Domain Name and Registrar

The disputed domain name <silviasaint.com> is registered with Fabulous.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2006. On March 31, 2006, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On April 3, 2006, Fabulous.com 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. The Center verified that 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2006. Respondent requested an extension of the deadline to file the Response until May 23, 2006 on April 25, 2006. Since Complainant did not object to the extension of the deadline the Center granted an extension of the deadline until May 23, 2006. The Center notified Respondent’s default on May 23, 2006. On the same day Respondent requested another extension of the deadline of three days until May 26, 2006. The Response was filed with the Center on May 25, 2006.

The Center appointed Torsten Bettinger as the sole panelist in this matter on June 7, 2006. 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 is an actress in the adult entertainment industry. In the mid-1990s the Complainant started to perform and to provide professional entertainment services and related goods under the stage name “Silvia Saint”. The Complainant has performed under this name since at least 1997.

The Complainant has appeared under her stage name in over 150 video productions during the last 10 years. The Complainant has also featured, under the same names, in numerous printed magazines and e-zines, including Arena Magazine, Hustler and Penthouse, and has appeared on the cover and/or in the centrefold in many of these publications. The Complainant also received a number of awards and acknowledgements in the adult entertainment sphere over the same period.

The Complainant was Penthouse Pet of the Year in 1997 in the Czech edition of Penthouse magazine and in 1998 in the US edition of the magazine. The Complainant’s first movie was filmed in Prague. After that, the Complainant went through an intense production period in the US to build her career before launching a website, <clubsilviasaint.net>, in 2002.

In addition to further film productions, the Complainant has since 2003 modelled underwear for Cottelli Collection, granted licences to a German company, Orion, for use of the Complainant’s name and image in association with various erotic goods, and has promoted the annual SEXPO in Australia in 2005.

The disputed domain name <silviasaint.com> was registered in 1999.

 

5. Parties’ Contentions

A. Complainant

Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

In reference to the element in paragraph 4(a)(i) of the Policy, Complainant contends that she has common law trademark in her stage name “Siliva Saint”. Complainant argues that her stage name is not registered as a trade mark and asserts that this is not necessary for the purposes of establishing rights in a trade mark under the terms of the Policy. Complainant cites the following panel decisions in support of this contention: Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235; Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 and Pamela Anderson v. Alberta Hot Rods, WIPO Case No. D2002-1104. Complainant also contends that the disputed domain name is identical to the stage name in which she asserts common law trade mark rights.

In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. In support of this assertion Complainant argues that (1) she has never granted to the Respondent any right in and to her stage name, (2) she is in no way associated with the Respondent, (3) Respondent has never been commonly known by the disputed domain, (4) the disputed domain name is not being used in connection with a bona fide offering of goods or services and (5) Respondent is not making a legitimate non-commercial or fair use of the disputed domain.

In reference to the element in paragraph 4(a)(iii) of the Policy Complainant submits that the Respondent’s only intention is to misleadingly divert consumers and that the disputed domain is not being used in connection with a bona fide offering of goods or services. Furthermore, the Complainant contends that the Respondent is in breach of the Registrar’s Terms of Services which provide that it is illegal to register a domain name which infringes the legal rights of third parties, in this case, the rights of the Complainant. The Complainant cites the following extract from the Registrar’s terms and conditions:

“10. Third Party Rights

10.1. The Registered Name Holder hereby warrants that, to the best of the Registered Name Holder’s knowledge and belief, neither the registration of the Registered Names nor the manner in which they are or shall be used, either directly or indirectly, infringes the intellectual property rights or other legal rights of any third party.”

B. Respondent

Respondent does not comment on the issue of whether the disputed domain name is confusingly similar to Complainant’s trademark but disputes that Complainant has established that Complainant had common law trademark rights at the time the domain name was registered.

Respondent argues that the establishment of a common law trademark requires that Complainant provides substantial details of trading under the name and that the evidence submitted by Complainant is not sufficient meet this requirement.

In support of this assertion Respondent argues that that

- much of the evidence of fame provided by Complainant are reproductions websites that list titles of movies, none of which bear the name of the Complainant;

- there is no evidence at all that Complainant’s name was in any manner associated with or appeared in any of the asserted films or “projects”;

- there is no evidence of the actual use of the name in connection with anything

- Complainant never pursued the registration of a domain name other than in the”.NET” extension.

- Complainant failed to provide any evidence of her involvement with Penthouse – such as a copy of a contract establishing her claim;

- Complaint has relinquished control over the use of the asserted mark and thus abandoned the asserted trademark by licensing her stage name in an artist agreement with her producer;

- if Complainant has any degree of fame at all, it began after the domain name was registered and that even that “use” does not equate to the required degree of fame necessary to establish a common law trademark

Respondent also disputes that it has no rights or legitimate interest in the disputed domain name. In support of this assertion Respondent argues that:

- Complainant has not established common law trademark rights in her stage name;

- Respondent’s use of the domain name has been consistent since the date of registration in 1999;

- The registration of the domain name predates any notice or knowledge of the Complaint.

Finally, Respondent disputes that it registered and is using the disputed domain name in bad faith. In support of this assertion Respondent argues that:

- Complainant has provided no evidence showing that Respondent has intentionally registered and is using the domain name for the purposes of competing with Complainant;

- Complainant made an unsupported statement that the domain name is used by a third party to compete with Complainant’s own website and other professional activities;

- the reference in the domain name to “saint” is an play on words for adult entertainment;

- Complainant is not the owner of the website at <clubsilviasaint.net>

 

6. Discussion and Findings

A. Rights in a trademark which is Identical or Confusingly Similar to the domain name

Complainant relies on the common law trade mark rights which she claims in her stage name “Silvia Saint” and its derivative “Sylvia Saint”. The Complainant refers to various WIPO Panel decisions in support of the assertion that registered rights are not required in order to fall within Paragraph 4(a)(i) of the Policy.

In fact, it is undoubtedly the case that numerous UDRP decisions can be identified in which the panel held that unregistered or common law trade mark rights in a jurisdiction that recognises such rights were sufficient for the purposes of bringing a complaint under the Policy and that such rights can extend to a personal name. Examples include Patricia Ford and Online Creations Inc. v. Damir Kruzicevic WIPO Case No. D2001-0059; Serena Williams and Venus Williams v. Eileen White Byrne and Allgolf consultancy WIPO Case No.D2000-1673; Bob Avila v. B&B Productions WIPO Case No. D2004-0013; Monty and Pat Roberts, Inc. v. Bill Keith WIPO Case No. D2000-0299.

These decisions show that UDRP panels have accepted a complainant’s claim that the names were protected as common law trademarks in the United States if complainant commercially exploited the name and provided sufficient evidence that shows that complainant’s name has received a certain degree of recognition and has come to be associated in the minds of the public with complainant’s commercial activities.

Complainant has not explicitly specified the jurisdiction in which she claims to have common law trademark rights and whether she already acquired such protection at the time of the registration of the disputed domain in 1999. However, Complainant submitted evidence of lists of film titles, magazine publications and awards received which clearly show that Complainant started on her career in the adult entertainment industry, using the various aspects of her stage name, in 1997, and that since that date she has been involved in numerous films of that genre, many of which were produced in the United States. The Panel therefore has no doubt that Complainant had gained considerable recognition in the adult entertainment industry, at least in the United States, before 1999 when Complainant had been the recipient of at least two adult entertainment industry film awards and was “Penthouse Pet” in the U.S. edition of the magazine.

The Panel refers to the Panel decision Silvie Tomčalovб a.k.a. Sylvia Saint v. Juan Campos, WIPO Case No. D2006-0379 in which the Panel also found that Complainant had established common law trademark rights in the United States before 1999.

The Panel therefore accepts that the Complainant has put forward a prima facie case that the Complainant had common law rights in her stage name under U.S. law that are recognised under the Policy and which arise from the Complainant’s activities in the United States. The fact that Complainant has granted the right to use Complainant’s stage name in an artist agreement with a film producer does not invalidate Complainant’s rights in the common law trademark “Silvia Saint”.

The Panel also accepts that the disputed domain is identical to Complainant’s stage name in which common law rights reside. The disputed domain name wholly incorporates Complainant’s common law trademark “Silvia Saint”. The addition of the top level “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

Accordingly, the Panel concludes that the Complainant has established both elements of Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is consensus view among Panelists that if Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and Respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the Respondent may lack a legitimate interest in the domain name.

Complainant asserted that the Respondent has neither a license nor any other permission to use the Complainant’s common law trademark “Silvia Saint”. The Respondent has registered a domain name which is identical to Complainant’s common law trademark. The Panel thus finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interest in the disputed domain name which wholly incorporates Complainant’s mark.

Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.

Complainant asserted that Respondent has used the domain name for a third party website that “competes” with the Complainant. Respondent denies these assertions.

The Panel notes that Complainant has provided details of the URL of the website to which the disputed domain name redirects but has not explained the content of Respondent’s website or provided any print-outs. However, it is consensus view among Panelists that a panel may visit the Internet site linked to the disputed domain name in order to obtain more information about the Respondent and the use of the domain name and that the panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision. (see Sociйtй des Produits Nestlй SA v. Telmex Management Services, WIPO Case No. D2002-0070 <nestlefoods.com>; Hesco Bastion Limited v. The Trading Force Limited WIPO Case No. D2002-1038 <hescobastion.com>; Howard Jarvis Taxpayers Association v. Paul McCauley WIPO Case No. D2004-0014 <hjta.com>).

The Panel has visited the website linked to the disputed domain name in order to verify Complainant’s allegation. The Panel’s visit on this website has revealed that, indeed, Respondent uses the disputed domain name for a website offering for sale adult entertainment DVDs and thus capitalizes on Complainant’s mark in her stage name “Silvia Saint”.

The Panel therefore finds that Respondent’s use of the domain name is not a use in connection with a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy.

Further, nothing in the record suggests that Respondent trades under the domain name or the name “Silvia Saint”, or is commonly known by said domain name or the name “Silvia Saint”.

Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.

C. Registered and Used in Bad Faith

The Panel is also convinced that Respondent registered and has been using the domain name in bad faith.

Complainant has gained a considerable recognition in the adult entertainment industry before the registration of the disputed domain name in 1999. It is therefore inconceivable that Respondent registered the domain name unaware of Complainant.

Respondent registered a domain name which is identical to Complainant’s trademark. That and the nature of the website Respondent maintains makes it clear that his purpose is to divert traffic intended for Complainant’s site to his own, and thus capitalize on Complainant’s mark in the name Silvia Saint. Respondent’s allegation that domain name was registered because the reference in the domain name to “saint” is a play on words for adult entertainment was a mere pretext given the publicity of the Complainant and the fact that the Respondent offered for sale numerous adult entertainment DVDs featuring the Complainant on the website to which the <silviasaint.com> domain name resolves.

This qualifies as bad faith under paragraph 4(b)(iv) of the Policy in that the Respondent’s use of the domain name attempts to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website.

The assumption that registered the domain name <silviasaint.com> in bad faith is not refuted by the fact that Complainant did not object to the registration and use of the disputed domain name until over six years after it was registered for the first time.

It has generally been held that laches or estoppel do not provide a separate defense in proceedings under the Policy, although they may sometimes be relevant in considering whether the requirements of the Policy have been satisfied (see e.g. The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616 <alberteinstein.com>; Deutsche Telekom AG v. Oded Zucker, WIPO Case No. D2004-0749 – <t-shops.net>; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 <commercialappeal.com>; Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453 <paulekacreations.com>).

However, even if laches or estoppel could provide a separate defense, the Panel considers that it is not made out in this case, in the absence of any evidence that the Respondent has, apart from the registration fees, incurred any expenditure or other detriment in reliance upon the Complainants’ acquiescence.

The Panel therefore concludes that Respondent registered and is using the domain name <silviasaint.com> in bad faith and that the requirement of the paragraph 4(a)(iii) of the Policy is satisfied.

 

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, <silviasaint.com> be transferred to the Complainant.

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Torsten Bettinger
Sole Panelist

Dated: June 24, 2006