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and Mediation Center
Tom Cruise v. Network Operations Center / Alberta Hot Rods
Case No. D2006-0560
1. The Parties
The Complainant is Tom Cruise, United States of America, represented by Greenberg Glusker Fields Claman Machtinger & Kinsella, LLP, Los Angeles, California, United States of America.
The Respondent is Network Operations Center / Alberta Hot Rods, High Prairie,
Alberta, Canada, represented by ESQwire.com Law Firm, Cherry Hill, New Jersey,
United States of America.
2. The Domain Name and Registrar
The disputed domain name <tomcruise.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 May 4, 2006. On May 4, 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 May 5, 2006, CORE Internet Council of Registrars 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 zone contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 12, 2006. 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced May 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2006. The Response was filed with the Center on June 6, 2006.
The Center appointed Frederick M. Abbott, Sally M.
Abel and David Sorkin as panelists in this matter on June 21, 2006. The Panel
finds that it was properly constituted. Each member of 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
Complainant is an actor who has appeared in numerous commercially successful films. His name, TOM CRUISE, is recognized around the world in connection with his performing services. Among the films in which Complainant has appeared are: “Endless Love” (1981), “The Outsiders” (1983), “Risky Business” (1983), “Top Gun” (1986), “Cocktail” (1988), “Rain Man” (1988), “Born on the Fourth of July” (1989), “Days of Thunder” (1990), “Far and Away” (1992) “A Few Good Men” (1992), “The Firm” (1993), “Interview with a Vampire” (1994), “Mission: Impossible I” (1996), “Jerry Maguire” (1996), “Magnolia” (1999), “Eyes Wide Shut” (1999), “Mission: Impossible II” (2000), “Vanilla Sky” (2001), “Minority Report” (2002), “The Last Samurai” (2003), “Collateral” (2004), and “War of the Worlds” (2005). Complainant has received or been nominated for numerous awards in connection with his performing services. Complaint, para. 13.
According to the Registrar’s verification report, Respondent is the registrant of the disputed domain name <tomcruise.com>. According to that same report, the record of registration for the disputed domain name was created on November 6, 1996.
Until approximately April 2006, the disputed domain name directed Internet users to Respondent’s website located at “www.celebrity1000.com”(the Celebrity 1000 website). As of November 2005, the homepage for that website, on which the computer user landed after entering “www.tomcruise.com” in his or her browser, was headed “Celebrity 1000, Your Ultimate Entertainment Source”, followed by the disclaimer in substantially smaller font size: “Information on this site is for information purposes only. Nothing on this site is to be construed as an endorsement by any celebrity or personality, unless explicitly identified, for this site or for any information here.” The website included internal links to “Celebrity Sites”, including for Tom Cruise. The sub-pages for Tom Cruise included an eight paragraph biography of the actor. The information in the biography does not appear in any way defamatory. Complaint, Annex 14. Respondent indicates that the Tom Cruise section of the Celebrity 1000 website has been active since at least 2001. Response, Exhibit 1, Declaration of Jeff Burgar.
The Celebrity 1000 website included links to services and products that do not appear connected with Complainant. This included a “Featured Product” (an MP3 player identified by the manufacturer), advertisement for a storage service, a “Featured DVD” and “Featured Software”.
The Celebrity 1000 homepage includes a general link to “merchandise”. This link presently directs Internet users to the homepage of Amazon.com (visited by Panel, June 28, 2006).
As of May 1, 2006, the disputed domain name resolved to a website headed “Tomcruise.com”, followed by the disclaimer: “This is an UNOFFICIAL Tom Cruise fan site. This site is not affiliated or endorsed in any way by Tom Cruise or any other party.” That site included links to “Tom Cruise”, “Entertainment”, “Video Game”, “Music”, “DVD”, “Movie”, “TV”, “MP3 Player”, “Concert Tickets”, “Music CD”, and “Concert”. In addition, a section for “Sponsored Results” included links to a database offering free biographical information and a site offering “Tom Cruise DVDs”. Related links appeared for various vacation cruise lines. Complaint, Annex 14.
Respondent indicates that it intended to link the “www.tomcruise.com” website to the Tom Cruise fans section of the “Celebrity 1000” website, but on May 9, 2006, Respondent disabled the “www.tomcruise.com” website pending resolution of this dispute. Response, Exhibit 1, Declaration of Jeff Burgar.
Respondent in this proceeding has been complained against in a number of earlier
disputes under the Policy. See, e.g., Celine Dion and Sony Music Entertainment
(Canada) Inc. v. Jeff Burgar,1
WIPO Case No. D2000-1838; Dr. Michael
Crichton v. Alberta Hot Rods, WIPO Case
No. D2002-0872; Kevin Spacey v. Alberta Hot Rods, NAF Case No. FA114437;
Jeffrey Archer v. Alberta Hotrods tda CELEBRITY 1000, WIPO
Case No. D2006-0431. In these cases, Respondent was found to have
engaged in abusive domain name registration and use, and Respondent’s
claim to fair use on the basis of its Celebrity 1000 link was rejected. Previous
panels have determined that Respondent has engaged in a pattern of registering
the trademarks of third parties, preventing them from registering their marks
in domain names. In The Hebrew University of Jerusalem v. Alberta Hot Rods,
WIPO Case No. D2002-0616, Respondent
prevailed against a claim of abusive domain name registration and use. The panel
in that case found that Respondent had no reason to believe that the disputed
domain name <alberteinstein.com> was associated with a commercial trademark,
and that Internet users would not have reasonably expected the domain name to
connect them with a commercial website. In Bruce Springsteen v. Jeff Burgar
and Bruce Springsteen Club, WIPO Case
No. D2000-1532, the majority of a three-member panel decided in favor of
Respondent in a factual setting similar to here on grounds the complainant failed
to establish a lack of rights or legitimate interests, and bad faith. The presiding
panelist in that case (who was part of the panel majority), later joined against
the Respondent in the Kevin Spacey decision, supra, on similar
facts. (See further discussion of prior decisions involving Respondent, infra.).
The Registration Agreement in effect between Respondent and CORE Internet Council
of Registrars subjects Respondent to dispute settlement under the Policy. The
Policy requires that domain name registrants submit to a mandatory Administrative
Proceeding conducted by an approved dispute resolution service provider, of
which the Center is one, regarding allegations of abusive domain name registration
and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts ownership of common law trademark and service mark rights in the term “Tom Cruise”. Complainant states that the public has come to recognize and associate the name “Tom Cruise” as a symbol that identifies and distinguishes the entertainment services provided exclusively by him, and that through long and continuous use, international recognition and extensive advertising and promotion, TOM CRUISE has acquired distinctiveness and secondary meaning as a trademark and service mark. Complainant refers to previous panel decisions under the Policy which accepted that non-registered celebrity names or marks maintain common law trademark rights when used in connection with celebrity personalities and the services provided therewith.
Complainant alleges that the disputed domain name <tomcruise.com>is identical or confusingly similar to the trademark in which he has rights.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not been authorized by Complainant to use the TOM CRUISE mark, expressly or by implication. Complainant alleges that Respondent is using the TOM CRUISE trademark to attract attention and Internet traffic to its website, thereby increasing revenues for Respondent. Complainant states that this is not a bona fide offering of goods or services or legitimate noncommercial or fair use under the Policy. Complainant states that Respondent has not been commonly known by the disputed domain name. Complainant indicates that the disclaimers used by Respondent are inadequate to dispel the initial interest confusion which drives Internet users to Respondent’s website.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith. Complainant argues that Respondent was well aware of his famous name when the disputed domain name was registered in 1996, approximately 15 years after Complainant began using his name as a service mark, so that Respondent had knowledge of Complainant’s rights in its mark. Until recently, the disputed domain name redirected Internet users to Respondent’s website at “www.celebrity1000.com”. While that website purported to be an “entertainment source”, it contained several banner advertisements and third-party links that presumably generated revenue for Respondent. More recently, Respondent has directed the disputed domain name to a website “which is almost entirely comprised of third party advertisements that have no relation to, or affiliation with, Tom Cruise…the one link on the Site entitled ‘Tom Cruise’ links to inactive or cached pages provided by third parties that do not appear to be updated, reviewed or modified by the Registrant [sic].” Complainant argues that Respondent is using the disputed domain name for commercial gain by creating a likelihood of confusion as to Complainant’s sponsorship, affiliation with or endorsement of Respondent’s website.
Complainant further refers to previous disputes under the Policy involving Respondent in which Respondent was found to have engaged in a pattern of registering the names of famous people to prevent the owners of trademarks or service marks from reflecting those marks in corresponding domain names. Complainant argues that Respondent has continued this pattern of bad faith registration in connection with the disputed domain name.
Complainant requests the Panel to order the registrar to transfer the disputed domain name to Complainant.
Respondent expressly disclaims a challenge to Complainant’s rights in a trademark, and expressly disclaims a challenge to an identity or confusing similarity between the disputed domain name and the mark. (“Respondent does not dispute this element of the Policy.”)
Respondent asserts that it has rights and a legitimate interest in the disputed domain name. Respondent contends that its website is a “fan site” dedicated to Tom Cruise, and that the right for individuals to operate “non-misleading commercial” or “non-commercial” informative websites is recognized and establishes a legitimate interest in the domain name under the Policy. Respondent refers to several panel decisions which have recognized rights or legitimate interests in such uses. Respondent further argues that the right for individuals to operate celebrity fan sites is protected by the First Amendment of the United States Constitution, citing Anna Nicole Smith c/o CMG Worldwide v. DNS Research, NAF Case No. FA220007.
Respondent claims that having advertisements on its website that generate revenue does not make its use illegitimate. Respondent argues that disclaimers on the “Celebrity 1000” and “Tom Cruise” websites support the legitimacy of its use.
Respondent observes that the most recent use in connection with the Tom Cruise fan site does not include biographical information, but does contain a primary link that generated search results for “Tom Cruise”, along with other general entertainment links. Respondent asserts that it intended to link that site to the Tom Cruise section of the Celebrity 1000 website, but did not do so before it disabled the site pending resolution of this dispute. Respondent asserts that the website at “www.celebrity1000.com” is a legitimate fan website network in which Respondent has invested hundreds of thousands of dollars and substantial effort, which use also establishes Respondent’s legitimate interest. Respondent notes that this site involves a bona fide offering of goods and services, and that it “has been recognized as a legitimate website network in other UDRP and court decisions.”
Respondent states that a crucial issue in deciding whether there is legitimate interest is whether Internet users are being misleadingly diverted. Respondent observes that it has operated a fan website with information about Tom Cruise and used the disputed domain name in connection with “Celebrity 1000” which posts biographical information about Tom Cruise, along with links to other fans sites. It argues that Internet users will get what they expect, that is, information, and not products or services, when entering the disputed domain name into a browser.
Respondent states that it is “irrelevant” whether Complainant has authorized use of his mark in the disputed domain name.
Respondent states that it has in no way sought to tarnish the reputation of the Complainant.
Respondent observes that in a number of cases under the Policy in which respondents were found to lack legitimate interests in fan websites, this was because they had only planned to create a website. In this case, Respondent has long operated its fan website.
Respondent states that it is not engaged in bad faith registration or use. Respondent has made no effort to sell the disputed domain name to Complainant, to disrupt his business or to profit by creating a likelihood of confusion. It notes that at the time Respondent registered the disputed domain name the Policy had not been adopted. Accordingly, Respondent could not have acted in bad faith when registering the disputed domain name “because the only law available suggested that such use was lawful”.
Respondent argues that while previous panels have found it to have engaged in a pattern of registering the trademarks of third parties to prevent them from registering those marks in domain names, this Panel should not be prejudiced by those decisions. It should engage in an independent review of the facts.
Respondent contends that if the maintenance of its fans sites is disreputable, then so too are numerous popular magazines and television shows focused on celebrity news.
The Respondent argues that Internet users entering “www.tomcruise.com” in their browsers are not seeking the actor in person, nor would they expect that the actor is endorsing the website. Instead, the Internet user is looking for information about the actor. Respondent provides such information. For this reason, Respondent is not misleading Internet users.
Respondent argues that Complainant’s 10-year delay in initiating this action indicates that Complainant “did not believe Respondent truly had been acting in bad faith”. Respondent cites prior cases under the Policy in which failure to act was taken as evidence that a complainant was not suffering harm or did not believe the respondent was intentionally diverting Internet users. Respondent refers to one case in which a panel indicates that failure to act may constitute a waiver of rights to request a domain name be transferred (Anna Nicole Smith, supra, but see discussion infra).
Respondent argues that, to the extent prior decisions under the Policy may support a finding of abusive domain name registration and use here, those cases may have been wrongly decided. The Panel is urged to follow the minority of decisions which support its position, which Respondent believes are better decided.
Respondent requests the Panel to reject Complainant’s
request for a finding of abusive domain name registration and use.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Respondent has filed a comprehensive Response to the Complaint, and the Panel concludes that Respondent had adequate notice of these proceedings and a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be proved by a complainant to obtain relief under the Policy. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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 the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant Tom Cruise, a well-known actor, asserts trademark and service mark rights in his name (see Factual Background and Parties’ Contentions, supra). Respondent, through counsel with experience and expertise in representing clients in proceedings under the Policy, has expressly waived a challenge to Complainant’s rights in a trademark and service mark, as well as to identity or confusing similarity between the mark and the disputed domain name.
The Panel accepts the pleading of the parties and finds that Complainant has trademark and service mark rights in the name “Tom Cruise” for purposes of this proceeding, and that the disputed domain name <tomcruise.com> is identical to the Complainant’s TOM CRUISE mark for purposes of the Policy.2
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 or 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 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.” (Policy, paragraph 4(c)).
Respondent claims rights or legitimate interests in the disputed domain name. Respondent’s principal argument for rights or legitimate interests is that it is engaging in “legitimate noncommercial or fair use” of the name.
Respondent’s use of celebrity names in domain
names in connection with its Celebrity 1000 website (in circumstances very similar
to those found here) has been found by several panels established under the
Policy not to constitute legitimate noncommercial or fair use. Already in February
2001, a panel found “So long as the admitted bunch of celebrity domain
names were all directed to the “www.celebrity1000.com” site, the
Respondent’s conduct must be characterized as a stockpiling of leading
artistes’ names, their only substantial function then being to attract
people to view advertising on the site.” Celine Dion and Sony Music
Entertainment (Canada) Inc. v. Jeff Burgar operating or carrying on business
as Celine Dion Club, WIPO Case No. D2000-1838.
The panel went on to consider Respondent’s claim that it intended to sever
the individual celebrity domain name and establish a stand-alone site for the
artist and asked whether that could alter the situation, concluding “Are
they not seeking merely to achieve their previous position by less transparent
In 2002, a panel considered very similar conduct to that here in Kevin Spacey
v. Alberta Hot Rods, NAF Case No. FA114437. The panel concluded on the subject
of the Respondent’s assertion of legitimate noncommercial or fair use,
“Respondent’s use of the <kevinspacey.com> domain name for
an unauthorized fan site, as an apparent stratagem after previously using the
site to direct Internet traffic to its own commercial site, demonstrates that
Respondent is not making fair use of the domain name within the meaning of the
Policy …” It is worth noting that the three-member panel which decided
unanimously against Respondent in that case included the presiding panelist
in Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club,
WIPO Case No. D2000-1532, which had previously
rendered a majority opinion in favor of Respondent. Regarding that panelist’s
change of views, the unanimous decision stated “Furthermore, two years
after the Springsteen case, the persistent behavior of this Respondent in the
registration of celebrity names militates against the ‘benefit of the
doubt’ which the Panelist afforded the Respondent in the previous case.”
Kevin Spacey, supra.
A three-member panel in Dr. Michael Crichton v. Alberta Hot Rods, WIPO
Case No. D2002-0872, rejected Respondent’s assertion of legitimate
noncommercial or fair use on essentially the same grounds as the panels in Celine
Dion and Kevin Spacey.
Respondent’s use of the disputed domain name <tomcruise.com> to
link to the “Celebrity 1000” website was not a legitimate noncommercial
or fair use. It was not “noncommercial” because the use was predominantly
for the purpose of generating advertising revenues. It was not “fair”
because Internet users were brought to a general website with information about
a wide variety of celebrities and related matters that were not specifically
tied to “Tom Cruise”. The TOM CRUISE trademark was effectively being
used to promote other celebrities and, predominantly, advertising of third-party
products. See, e.g., HBP, Inc. v. Front and Center Tickets, Inc.,
WIPO Case No. D2002-0802 and Pfizer
Inc v. Van Robichaux, WIPO Case No. D2003-0399,
for discussion of fair use elements.
This Panel thus agrees with the finding in the Celine Dion, Kevin Spacey and Dr. Michael Crichton proceedings that Respondent’s use of celebrity names in connection with the “Celebrity 1000” website is principally directed to driving Internet users to a website which is a vehicle for generating advertising revenues. The advertisements on the “Celebrity 1000” website are not a minor incident to the provision of information. They form a substantial part of its operation. The individual celebrity names are not used principally to provide information to the public. The information provided at the website for individual celebrities is rather limited. The principal purpose is to channel Internet users to a series of advertisements.
Respondent’s recent shift to linking the disputed domain name directly to a “Tom Cruise” website does not cure the problem of failure to establish legitimate noncommercial or fair use. This tactic already was rejected in the Celine Dion and Kevin Spacey decisions. In any event, because the “Tom Cruise” website was almost wholly devoted to third-party advertisement links, it is difficult to see how this would better qualify as fair use of Complainant’s mark (even with an intended link to the “www.celebrity1000.com” website).
Respondent has made reference to a decision which supported its use of a “celebrity”
name in connection with it’s “Celebrity 1000” website,
The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO
Case No. D2002-0616 <alberteinstein.com>. The facts and the reasoning
of the panel in that case are distinguishable from those here. The subject of
the disputed domain name in that case did not, during his lifetime, use his
name for commercial purposes. The public did not and, for the most part does
not connect, the name “Albert Einstein” to a type of commercial
service. After his death, family members were able to register the “Albert
Einstein” name as a trademark in France, and that allowed the first element
of the Policy to be satisfied. However, the panel in the Hebrew University
case held that Respondent in Canada would have had no reasonable expectation
that trademark rights in “Albert Einstein” existed, and so did not
register or use the disputed domain name in bad faith. Moreover, Internet users
would not have expected a domain name relating to the deceased scientist to
take them to a website promoting or providing his commercial services, so they
were not misled.
Respondent has referred to its right of free speech under the First Amendment to the United States Constitution. Respondent effectively relies on a reference to the First Amendment in the Anna Nicole Smith decision, supra. The exclusive rights granted to trademark holders, like the exclusive rights granted to copyright holders, by their nature impose a certain limitation on freedom of expression. The right of free speech is recognized under the Policy, inter alia, in paragraph 4(c)(iii), further to which Respondent is allowed to make legitimate noncommercial or fair use of a domain name. The Panel is well aware of the importance of the First Amendment and freedom of expression. By limiting Respondent’s use of Complainant’s trademark in the disputed domain name, the Policy by definition effects some limitation on Respondent’s scope of expression. However, it does this in a way consistent with the balancing of interests inherent in the general recognition of trademark rights. Free speech does not by definition entail a right to take unfair commercial advantage of a trademark.
Respondent has also referred to a federal district court decision as speaking “favorably” of Respondent’s “Celebrity 1000” website (Kevin Spacey v. Jeff Burgar, 207 F. Supp. 2d 1037 (CD Cal. 2001)). The quote from the district court decision provided by Respondent is, in the view of this Panel, neutrally descriptive. The district court dismissed the subject cause of action on jurisdictional grounds, and the decision does not further Respondent’s defense here.
Respondent also argues that the disputed domain name was used prior to notice of a dispute in connection with a bona fide offering of services.
The Panel accepts that provision of information regarding celebrities may constitute
services, and that services may be provided either on a commercial or noncommercial
basis within the meaning of paragraph 4(c)(i) of the Policy (see discussion
in 2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO
Case No. D2004-0001, referring also to Estate of Gary Jennings and Joyce
O. Servis v. Submachine and Joe Ross, WIPO
Case No. D2001-1042).
Respondent has used the disputed domain name to direct Internet users to a website, which for five years (according to Respondent) did not include biographical information about Complainant, but substantial advertisement of third-party products. From 2001, Respondent’s general Celebrity 1000 website included eight paragraphs of information about Complainant on an internally-linked subpage, but the homepage remained substantially devoted to third-party products and links. Most recently, the disputed domain name has identified a site almost wholly devoted to third-party products and advertisement. The Panel does not consider this pattern of usage of the disputed domain name to constitute a bona fide offer of services (whether or not “prior to notice” of a dispute). The Panel considers that Respondent has attempted to take unfair advantage of Complainant’s rights in his mark by using it to attract Internet users to a website largely devoted to third-party advertisement and links. Respondent’s alleged bona fide use of the disputed domain name is a pretext for attracting Internet users to its advertising and revenue-generating site. See, e.g., DJR Holdings, LLC v. Paul Gordon a/k/a IQ Management Corporation, NAF Case No. FA141813.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, among others, shall be evidence of the registration and use of a domain name in bad faith: 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 the respondent has engaged in a pattern of such conduct (paragraph 4(b)(ii)); or, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 or location or of a product or service on the respondent’s website or location (paragraph 4(b)(iv)).
Respondent has been found by previous panels under the Policy to have engaged in a pattern of registering domain names to prevent the owners of marks from registering them. See Celine Dion and Kevin Spacey, supra. Respondent’s similar course of conduct here with respect to Complainant’s trademark and service mark justifies an adverse finding under the terms of paragraph 4(b)(ii).
There is one question outstanding: does the fact that Complainant delayed for 10 years following registration of the disputed domain name to bring this action against Respondent act as a bar to a finding in favor of Complainant?
Respondent in its pleadings argued that Complainant’s authorization or lack thereof for its use of the disputed domain name is “irrelevant” to the Panel’s decision whether Respondent has engaged in abusive domain name registration and use. To the extent Respondent has argued that Complainant’s delay constitutes an implicit authorization or approval of Respondent’s conduct, the fact that authorization is irrelevant, in Respondent’s view, effectively moots the issue of implicit authorization.
Respondent refers to certain decisions which it says stand for the proposition
that a delay of even two years in initiating a claim under the Policy acts as
a waiver of rights. The panel in Anna Nicole Smith c/o CMG Worldwide v. DNS
Research, NAF Case No. FA220007, suggested that failing to act within a
reasonable time constitutes a waiver. The cases cited by the panel in that case
do not lend much support to that proposition. Its first citation was to XFM
Limited v. Intervid Limited, WIPO Case
No. D2000-1298. In that case, the panel said that the complainant’s
delay in bringing a claim was one in a series of factors that tilted a delicate
balance in favor of the respondent, where certain factual assertions of the
respondent were difficult to disprove and the panel considered that the complainant
had not generally satisfied its burden of proof. The decision does not stand
for the proposition that delay in bringing a claim generally acts as a waiver
of the right to do so. The reference by the panel in Anna Nicole Smith, supra,
to Jeremy Grodberg v. Rugly Enterprises LLC, NAF Case No. FA092975, is
mystifying. In that case, the complainant had failed to act to establish rights
in a trademark or service mark “in a timely manner” so as to be
able to protect his alleged (but non-existent) mark under the Policy. It is
difficult to understand the reference to delay in bringing a claim. This Panel
does not accept that there is meaningful precedent under the Policy for refusing
to enforce trademark rights on the basis of a delay in bringing a claim following
use of a disputed domain name. The panel in The Hebrew University, supra,
much relied on by Respondent here, in fact rejects the notion that there is
a doctrine of laches or limitation period in the Policy.
To the extent that it may be relevant, Respondent has made no credible argument that it has or will suffer injury because of Complainant’s delay in initiating this proceeding. While Respondent claims to have invested hundreds of thousands of dollars in its “Celebrity 1000” website, it does not assert that it did so specifically based on the disputed domain name. Respondent registered a substantial number of celebrity name-based domain names, and over the past several years, it has lost a number of those as a consequence of proceedings under the Policy. There is no evidence that Respondent has altered its behavior as a result of Complainant’s delay, or that Respondent has suffered because of it.
With that said, the Panel considers that it would be relevant to its decision
if there was some firm indication, express or tacit, that Complainant had consented
to Respondent’s use of its trademark in the disputed domain name (cf.,
2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO
Case No. D2004-0001). In this proceeding, there is no indication of any
correspondence between Complainant and/or any representative of Complainant,
on one side, with Respondent, on the other, or similar evidence, to suggest
or imply that Complainant may have approved of or condoned Respondent’s
use. Without some substantial evidence to indicate that Complainant approved
of or condoned Respondent’s use of his mark in the disputed domain name,
the Panel is not prepared to import a bar against his cause of action.
The Panel finds that Complainant has proved the three elements necessary to
obtain relief under the Policy and that accordingly the disputed domain name
should be transferred to Complainant.
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, <tomcruise.com>, be transferred to the Complainant.
Frederick M. Abbott
Sally M. Abel
Dated: July 5, 2006
1 Jeff Burgar is president of Alberta Hot Rods. See, Declaration of Jeff Burgar, Response, Exhibit 1.
2 The Panel notes that there might be proceedings under the Policy where the pleadings of the parties could not be accepted as the basis for a determination, such as where those pleadings are manifestly inconsistent with the terms of the Policy. There is no such manifest inconsistency or other extraordinary factor operating against acceptance of the will of the parties here. The Panel does not consider it necessary to further examine the subject issue.