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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Jeffrey Archer v. Alberta Hotrods tda CELEBRITY 1000

Case No. D2006-0431

 

1. The Parties

The Complainant is Jeffrey Archer, London, England, represented by Harbottle & Lewis Solicitors, England.

The Respondent is Alberta Hotrods tda CELEBRITY 1000, Alberta, Canada.

 

2. The Domain Name and Registrar

The disputed domain name <jeffreyarcher.com> is registered with CORE Internet Council of Registrars.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2006. On April 6, 2006, the Center transmitted by email to CORE Internet Council of Registrars a request for registrar verification in connection with the domain name at issue. On April 11, 2006, CORE Internet Council of Registrars transmitted by email to the Center its verification response. 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 18, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2006.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on May 18, 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 a well-known politician, novelist, playwright, actor, screenwriter, public speaker and charity fundraiser of international repute. The Complainant has sold in excess of one hundred and twenty million (120,000,000) copies of his twelve novels, five collections of short stories, and three children’s books, all under his name.

His work has been translated into Bulgarian, Chinese, Croatian, Czech, Danish, Dutch, Estonian, Finnish, French, German, Greek, Hebrew, Hungarian, Indonesian, Italian, Japanese, Korean, Latvian, Marathi, Norwegian, Polish, Portuguese, Romanian, Russian, Serbian, Slovak, Slovene, Spanish, Swedish, Thai, Turkish and Vietnamese.

 

5. Parties’ Contentions

A. Complainant

i. The <jeffreyarcher.com> domain name is identical or confusingly similar to a trademark mark in which the Complainant has rights

The domain name <jeffreyarcher.com> solely comprises words which are identical to the Complainant’s trade mark with no relevant or distinguishing matter. The domain name is therefore identical or confusingly similar to the trade mark in which the Complainant has common law trade mark rights. Accordingly, the provisions of paragraph 4(a)(i) of the Policy are satisfied.

ii. The Respondent has no rights or legitimate interests in respect of the <jeffreyarcher.com> domain name

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name <jeffreyarcher.com> pursuant to the Policy paragraph 4(a)(ii) as evidenced by the fact that:

- the Respondent has no relationship with or permission from the Complainant for the use of the mark Jeffery Archer nor has the Complainant consented to the Respondent’s application for or use of any domain name incorporating that mark;

- as far as the Complainant is aware, there is no evidence of the Respondent’s proposed use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. The domain name is being used to re-direct web users to the website <celebrity1000.com> which is wholly unconnected to the Complainant. The Complainant believes that there is in fact no genuine proposed use or preparation to use the domain name and it is being used merely to boost traffic to the website shown at <celebrity1000.com>;

- as far as the Complainant is aware the Respondent is not commonly known by the domain name and submits that this is unlikely bearing in mind the substantial goodwill established by the Complainant in his use of his name to date and that no one by the name “Jeffrey Archer” appears to be associated with the Respondent’s site;

- the Respondent has a history of taking advantage of the goodwill in the names of well-known personalities by registering domain names containing their names. The Respondent’s activities in registering many “.com” domain names containing the name of certain well-known celebrities have been the subject of previous complaints before the Center with the decisions being held against the Respondent and a transfer of the domain name in suit being ordered. These decisions referred to the domain names:

<larryking.com>

<piercebrosnan.com>

<celinedion.com>

<pamelaanderson.com>

<carmenelectra.com>

<michaelcrichton.com>

<juliebrown.com>

The Complainant is not aware that the Respondent is making a legitimate non-commercial or fair use of the domain name or without intent for commercial gain and the Complainant submits that any use of the domain name by the Respondent is likely to misleadingly divert consumers or to tarnish or otherwise dilute the Complainant’s unregistered trade mark.

iii. The <jeffreyarcher.com> domain name was registered and is being used in bad faith

The Complainant contends that the Respondent has registered and is using the domain name in bad faith in violation of the Policy at paragraph 4(a)(iii) on the following grounds:

The domain name re-directs web-users to the website “www.celebrity1000.com”, which appears to contain no information pertaining either to the Complainant’s political or literary careers. In fact, the website hosts material related solely to Hollywood celebrities and it therefore seems wholly implausible that the website ever did, or will, contain any information pertaining to the Complainant or to either of his careers.

The Complainant has reason to believe that the domain name was registered in order to prevent the Complainant as owner of the trade mark from reflecting the mark in a corresponding domain name. This is evidenced by the facts that the Respondent has engaged in a pattern of such conduct the domain name <jeffreyarcher.com> is not being used by the Respondent as a fan site or otherwise and that the content of the website hosted at ”www.celebrity100.com” makes no reference to the Complainant whether directly or indirectly.

The Complainant also has reason to believe that the domain name was registered to attract for financial gain Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Complainant relies on the following decisions of the Administrative Panel in accordance with the Policy in respect of the present Complaint as follows:

The Respondent in the present case has failed to demonstrate a legitimate interest in the domain name and has failed to show (a) use of the domain name in connection with the offering of any goods or services (b) common knowledge that he is known by the domain name (c) legitimate non-commercial or fair use of the domain name or (d) any other basis upon which he can assert rights or a legitimate interest, as set out in decision in Julia Roberts v. Russell Boyd, WIPO Case No. D2000-0210.

The Complainant also relies on decision Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235, in which it was held that the Respondent had registered a domain name which was identical to the Complainant’s (unregistered) mark “under and by which the Complainant’s literary works had come to be recognised by the general public as indicating an association with works written and produced exclusively by her”. Accordingly, the Complainant relies on the unregistered, common law rights in the name JEFFREY ARCHER.

The Complainant relies on the decision in J. Crew International Inc v. crew.com, WIPO Case No. D2000-0054, which states that the registration of domain names for speculative purposes constitutes bad faith registration and use when:

(1) the respondent has no demonstrable plan to use the domain name for a bona fide purpose prior to registration or acquisition of the domain name;

(2) the respondent had constructive or actual notice of another’s rights in a trade mark corresponding to the domain name prior to registration or acquisition of the domain name and;

(3) the respondent engages in a pattern of conduct involving speculative registration of domain names.

Furthermore, the Complainant relies on various UDRP decisions concerning the current Respondent and the following domain names: <larryking.com>, <piercebrosnan.com>, <celinedion.com>, <pamelaanderson.com>, <pamelaanderson.net>, <pamelalee.com>, <carmenelectra.com>, <michaelcrichton.com>, and <juliebrown.com>, in which in each case it was held that the Respondent had registered a domain name which was identical to a personal name and which itself had been used commercially in a trade mark sense and which had therefore acquired goodwill as an unregistered trade mark.

Further still, the Complainant relies on the decision in Margaret Drabble v. Old Barn Studios Limited, WIPO Case No. D2001-0209, concerning the domain name <margaretdrabble.com>. In this case the panel held that, although on the face of it, paragraph 4(a)(i) of the Policy refers to “a trade mark or service mark in which the Complainant has rights”, which is prima facie a barrier to a Complainant relying on unregistered trade mark rights (since they are a common law right and therefore do not confer rights in anything), a broad interpretation of the paragraph is preferred. The panel held that the phrase “rights in a trade mark” ought to be interpreted as including common law rights in unregistered trade marks enforceable according to the laws of passing off, because they were typically referred to as “rights in” something rather than the true position in law namely the right to bring an action.

The Complainant further cites the decision of Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121) which covered the same ground as that in the Margaret Drabble decision, in that Mr. Barnes sought to assert his unregistered trade marks rights in securing the transfer of the domain name <julianbarnes.com>. The Administrative Panel followed the analysis of paragraph 4(a)(i) as set out by the panel in the Margaret Drabble decision, adopting a broad interpretation of paragraph 4(a)(i) stating that it was intended to refer to common law rights in an unregistered trade mark.

Finally, the Complainant cites the decision of Louis De Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122 which followed the same reasoning as set out in the decisions of the panels both in the Margaret Drabble case and the Julian Barnes case as set out above.

Complainant notes that Margaret Drabble, Julian Barns and Louis De Bernieres are well-known British authors.

The Complainant has also relied on a number of cases from UK law.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

For the purposes of the Policy common law rights are sufficient and a complainant thus need not hold a registered trademark to establish rights in a mark. The Policy is thus broad in scope in that the reference to a trademark or service mark in which complainant has rights means that ownership of a registered mark is not required and unregistered or common law trademark or service mark rights will suffice to support a domain name complaint under the Policy; see also British Broad. Corp. v. Renteria, WIPO Case No. D2000-0050.

To establish common law rights in a personal name, it is necessary to show use of that name as an indication of the source of goods or services supplied in trade or commerce and that, as a result of such use, the name has become distinctive of that source. See Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. D2002-0874 (finding that the Policy is not intended to apply to personal names that have not been used commercially and acquired secondary meaning as the source of goods and/or services).

Furthermore, a celebrity’s name can serve as a trademark when used to identify the celebrity’s performance services. See Kevin Spacey v. Alberta Hot Rods, NAF Case No. FA0205000114437; see also Roberts v. Boyd, WIPO Case No. D2000-0210 (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association that common law trademark rights exist); see also Jagger v. Hammerton, FA95261 (Nat. Arb. Forum September 11, 2000) (Complainant held common law trademark rights in his famous name Mick Jaggger).

Jeffrey Archer is an internationally known writer. There can be no dispute that there is goodwill in the name Jeffrey Archer.

The Panel therefore finds that Jeffrey Archer has common law trademark rights to his name.

The “.com” suffix denoting the first-level domain status in Respondent’s domain name does not affect the fact that the domain name is identical to Complainant’s mark pursuant to paragraph 4(a)(i) of the Policy.

In view of the above it is the Panel’s opinion that the domain name <jeffreyarcher.com> is identical to the trademark, in which the Complainant has rights.

B. Rights or Legitimate Interests

Given the Respondent’s failure to submit a Response, the Respondent has not proven that it has any prior rights or legitimate interests in the domain name. The Complainant has asserted that it has not authorized the Respondent’s activities, nor does it have any control over these activities.

The Panel notes that none of the circumstances mentioned in paragraph 4(c) are present in this case. The domain name is used to mislead Internet users looking for Jeffrey Archer to a commercial website for Respondent’s benefit. Such use cannot be considered bona fide.

Based on the record the Respondent has no rights or legitimate interest in the domain name, and the Panel finds that the prerequisites in the Policy, paragraph 4(a)(ii) are fulfilled.

C. Registered and Used in Bad Faith

The circumstances mentioned in paragraph 4(b) of the Policy, if found by the Panel to be present, are examples of facts which constitute evidence of the registration and use of a domain name in bad faith.

The Respondent has engaged into a pattern of conduct of registering the names of famous people in order to prevent them from reflecting their name and trade mark in a corresponding domain name. The Respondent has been confronted with findings of bad faith in a number of domain name disputes involving famous people such as e.g. <larryking.com>, <pamelaanderson.com> and <michaelcrichton.com>.

Under the circumstances, the Panel infers that the Respondent was aware of the Complainant and of the goodwill the Complainant’s name/trademark had generated and thus the domain name was registered in bad faith.

Further, the domain name at issue is being used to attract web users to the Respondent’s website displaying content which is wholly unconnected to the Complainant. The Panel finds the Respondent has used the disputed domain name intentionally to attempt to attract, for financial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.

Thus, the Panel finds that the domain name at issue has been registered and used in bad faith.

The Complainant has requested transfer of the domain name.

 

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 <jeffreyarcher.com> be transferred to the Complainant.


Jonas Gulliksson
Sole Panelist

>Dated: June 1, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0431.html

 

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