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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC

Case No. D2009-0057

1. The Parties

The Complainant is The Jennifer Lopez Foundation, New York, New York, United States of America, represented by Loeb & Loeb, LLP, United States of America.

The Respondent is Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, Phoenix, Arizona, United States of America, represented by The Julie Turner Law Firm, United States of America.

2. The Domain Names and Registrar

The disputed domain names <jenniferlopez.net> and <jenniferlopez.org> are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 15, 2009. On January 16, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On January 16, 2009, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint.¹ The Center sent an email communication to the Complainant on January 21, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 22, 2009. 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" or "UDRP"), 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 January 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2009. The Response was filed with the Center on February 13, 2009.

The Center appointed William R. Towns as the sole panelist in this matter on February 24, 2009. 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.

On March 8, 2009, the Panel accessed eNom`s WhoIs database to confirm the registrant information provided to the Center on January 16, 2009. At that time, the Panel discovered that the registrant information in the registrar`s WhoIs database had been changed for a second time since the filing of the Complaint with the Center, to reflect the registrant of record for both disputed Domain Names as Whois Agent.

The Panel on March 9, 2009, issued a Procedural Order No. 1, requesting that the Center contact eNom to verify the registrant information currently in the registrar`s WhoIs database. The Panel indicated that eNom should identify the date upon which the disputed Domain Names were transferred to the current listed registrant, and, if known to the registrar, disclose without delay the identity of any underlying registrant or "real party in interest". In response to the Panel`s Procedural Order No. 1, eNom indicated that WhoIs Agent was a privacy protection service and disabled the service. According to eNom`s current WhoIs records, Jeremiah Tieman is the registrant of the disputed Domain Names.

4. Factual Background

The Complainant is a charity founded in 2008 by Jennifer Lopez to promote increased access to healthcare for women and children. Ms. Lopez, widely referred to by the nickname J.Lo, is internationally known as an actress, entertainer, performing artist, and film and television producer. The record reflects that since 1987 Ms. Lopez has appeared in some 30 films and television shows, garnering awards for her performances in several of them. Ms. Lopez also had produced nine films since 2000, and has performed on the soundtracks of thirteen additional films. As a performing artist, Ms. Lopez since 1999 has sold over 48 million albums worldwide. Ms. Lopez also is known for her entrepreneurial activities, having launched a clothing line in 2003 under the name "J.LO by Jennifer Lopez", and late several jewelry and fragrance lines.

An application to register JENNIFER LOPEZ as a trademark and service mark was filed by Ms. Lopez with the United States Patent and Trademark Office (USPTO) on May 21, 1999, for which a registration issued on October 5, 2004. The goods and services for which registration was sought include music and music video recordings, biographical information and information about Ms. Lopez` performances, recordings, and appearances, and providing a website featuring information about performances, recordings, appearances, and other related information. An official Jennifer Lopez website and online store is located at "www.jenniferlopez.com". In addition, there is a pending application filed with the USPTO to register THE JENNIFER LOPEZ FOUNDATION as a mark for charitable fundraising, which has been approved by the USPTO for publication. The USPTO records reflect that Ms. Lopez has consented to the use and registration of her name with this mark.

The Respondent is listed as the current registrant of the disputed Domain Names <jenniferlopez.net> and <jenniferlopez.org> in the eNom`s WhoIs database, which further indicates that the disputed domain names were first registered in November 1999 and February 2000, respectively. The <jenniferlopez.net> domain name was registered approximately five (5) months after the debut of Ms. Lopez first album, a commercial success which included several songs nominated for Grammy awards. The <jenniferlopez.org> domain name was registered shortly after Ms. Lopez received these Grammy nominations in early 2000.

Archived web pages accessible at "www.archive.org", commonly referred to as the Internet Archive, reflect the use of the disputed Domain Names with the Respondent`s website going back as far as 2001. A review of the Respondent`s current website and available archived webpages from the site reveals content consistent with a "fan site" regarding Ms. Lopez, but also reveals the presence of paid advertising under Google`s AdSense program ("Ads by Google"), other links to commercial websites, including one or more dating services, as well as links to sites displaying provocative photographs of other popular female actresses and performance artists.

After receiving the Complainant`s cease and desist letter providing the Respondent with notice of this dispute, the Respondent through his counsel initially offered to sell the disputed domain names to the Complainant for $80,000, and later for $45,000. By way of explaining this asking price, the Respondent indicated that the website to which the disputed Domain Names resolve had been developed as a source of income.

5. Parties` Contentions

A. Complainant

The Complainant maintains that the disputed Domain Names are identical to the JENNIFER LOPEZ mark, in which the Complainant asserts rights. The Complainant contends that the Respondent`s use of the disputed domain names with a purported fan site concerning Ms. Lopez does not bestow upon the Respondent rights or legitimate interests in the disputed Domain Names. According to the Complainant, the Respondent has not been authorized to use the JENNIFER LOPEZ mark, and the incorporation of the mark in the disputed domain names creates a likelihood of initial interest confusion.

The Complainant further contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed Domain Names. The Complainant asserts that the Respondent is not making a legitimate noncommercial use of the disputed Domain Names because the Respondent is using them to divert Internet traffic to the Respondent`s website in order to generate pay-per-click advertising revenue. According to the Complainant, the Respondent is not making any fair use of the disputed Domain Names because the Respondent`s website, while purporting to be a Jennifer Lopez fan site, provides information and links concerning a variety of other celebrities and contains other material not specifically tied to "Jennifer Lopez".

In view of the foregoing, the Complainant argues that the Respondent registered the disputed Domain Names with the intent of exploiting and profiting from the Complainant`s rights in the JENNIFER LOPEZ mark. According to the Complainant, the Respondent is using the disputed domain names to drive traffic to the Respondent`s website in order to generate paid advertising revenues, has offered to sell the disputed Domain Names to the Complainant first for $80,000 and then $45,000, and is also offering the disputed Domain Names for sale to the general public. The Complainant maintains that these circumstances establish the Respondent`s bad faith registration and use of the disputed Domain Names.

B. Respondent

The Response has been submitted on behalf of Jeremiah Tieman, who indicates that he initially registered the disputed Domain Names in 1999, and formed Vaca Systems, LLC in 2007 to operate the disputed Domain Names. The Respondent² concedes that the disputed Domain Names are identical to the "Jennifer Lopez", but denies being aware that the Complainant had developed or was claiming trademark rights until he received notice of this dispute some nine (9) years after initially registering the disputed Domain Names.

The Respondent claims rights or legitimate interests in the disputed Domain Names by virtue of their use with a website that the Respondent asserts is primarily a fan site devoted to providing news and information about Ms. Lopez. According to the Respondent, he is making a legitimate noncommercial or fair use of the disputed Domain Names in connection with this fan site. The Respondent argues that the advertising revenues generated by the website are incidental in comparison to the substantial noncommercial use of the website and do not defeat the Respondent`s assertion of legitimacy or to establish bad faith. The Respondent further argues that the Complainant`s nine-year delay in bringing its Complaint herein tends to show both that Respondent has a legitimate interest in the disputed Domain Names and that Complainant`s charges of confusion or harm are unfounded, citing Chivas USA Enterprises, LLC, et al. v. Cesar Carbajal, WIPO Case No. D2006-0551 (delay of 15 months a reason for denying the Complaint); and Dogan Gazetecilik A.S. v. Internet Amele Birligi, WIPO Case No. D2008-0751 (nine year delay a reason for denying the Complaint).

The Respondent asserts that the Complainant cannot establish bad faith registration or use, because the Respondent registered the disputed Domain Names for use with a website devoted to Ms. Lopez and her fans, and has only used the disputed Domain Names in connection with this website. In addition, the Respondent asserts that he did not register the disputed domain names with the intent of selling them to the Complainant, and that no bad faith otherwise should be inferred from an offer to sell. Further, the Respondent, raising the issue of a laches, argues that the Complainant`s nine-year delay in filing raises questions of the Complainant`s bad faith.

6. Preliminary Issues

A. Respondent Identity

The Complaint originally named Jeremiah Tieman as the sole Respondent, consistent with the registrant information for the disputed Domain Names in eNom`s WhoIs database as of January 15, 2009, when the Complaint was filed with the Center. But on January 16, 2009, when eNom responded to the Center`s request for registrar verification, the registrant information in the registrar`s WhoIs databases had been changed to include the organization "Jennifer Lopez Net" as the registrant of <jenniferlopez.net> and the organization "Jennifer Lopez" as the registrant of <jenniferlopez.org>". Subsequently, on March 8, 2009, the Panel accessed eNom`s WhoIs database to confirm the registrant information reported to the Center on January 16, 2009, at which time the registrant for both domain names shown in the WhoIs database was "Whois Agent".

As noted earlier, in response to the Panel`s Procedural Order No. 1 or March 9, 2009, eNom identified Whois Agent as an affiliated privacy protection service and disabled the privacy service. The current WhoIs database identifies the registrant of the disputed Domain Names as Jeremiah Tieman. As indicated earlier, Mr. Tieman was also listed as the registrant of the disputed Domain Names in the WhoIs records on January 15, 2009, when the Complaint was filed.

The Panel notes eNom`s prompt disclosure of the privacy protection service and identification of Mr. Tieman as the underlying registrant in response to the Panel`s Procedural Order No. 1. Given that Jeremiah Tieman was identified as the WhoIs registrant of the disputed Domain Names at the time the Complaint was notified by the Center, is also identified in the registrar`s current WhoIs registrant information, and is the individual on whose behalf the Response was submitted, the Panel finds that Mr. Tieman is the proper Respondent in this administrative proceeding.

B. Laches

The Respondent points out that he had registered and used the disputed Domain Names for nine years before the filing of the Complaint herein. The Respondent`s argues that the Complainant`s failure to timely file or otherwise object to the Respondent`s use of the disputed Domain Names should prevent the Complainant from now contesting such use. This argument raises the issue of laches.

The parties are both located in the United States, where, as the Respondent observes, courts recognize the doctrine of laches (undue delay in asserting a legal claim, resulting in prejudice to the respondent). However, the Panel concludes that the equitable defense of laches does not properly apply in this Policy proceeding. The remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services. See The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy`s purposes). See also Tom Cruise v. Network Operations Center/ Alberta Hot Rods, WIPO Case No. D2006-0560 (finding no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint).³

7. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests with respect to the domain name; and

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

Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed Domain Names are identical to the JENNIFER LOPEZ mark. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. That is clearly the case here.

The Complaint is brought in the name of the Jennifer Lopez Foundation, a charity established by Ms. Lopez. The record reflects that Ms. Lopez has established trademark and service mark rights in her name through registration and use as a source indicator. At a minimum, the JENNIFER LOPEZ mark is entitled to a presumption of validity by virtue of its registration with the USPTO. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Ms. Lopez has authorized the use of the JENNIFER LOPEZ mark with the charity that she founded in her name. Accordingly, the Panel concludes that the Complainant has rights in the JENNIFER LOPEZ mark for purposes of bringing this action under the Policy. The Panel further notes that the Respondent has not directly challenged the Complainant`s rights in the mark, but has instead claimed not to have been aware that the "Jennifer Lopez" name was being used as a mark.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is undisputed that the Respondent has not been authorized to use the Complainant`s JENNIFER LOPEZ mark. Nevertheless, the Respondent registered two domain names that are identical to the Complainant`s mark, and has used those domain names to attract Internet users to a website from which the Respondent generates pay-per-click advertising. The Respondent makes not claim to have ever been commonly known by either of the disputed domain names.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent`s 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) the respondent has been commonly known by the domain name, even if it 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.

The Respondent argues that he has established rights or legitimate interests in the disputed Domain Names under paragraph 4(c)(iii) of the Policy based on the use of the disputed Domain Names with a "fan site" regarding Jennifer Lopez. The language of paragraph 4(c)(iii) of the Policy unambiguously requires a respondent to be "making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers." The Panel further notes that Paragraph 4(c)(iii) of the Policy only concerns active websites that practice genuine, noncommercial criticism,⁴ and only deals with fan sites that are clearly active and noncommercial.⁵ See C.S. Lewis (PTE.) Ltd. v. Richard Saville-Smith, WIPO Case No. D2008-0821.

The Respondent asserts that so long as the primary purpose of the website is a fan site, the generation of advertising revenue is incidental to the noncommercial use. The Panel does not find the commercial exploitation of the disputed Domain Names as reflected on the Respondent`s website to be "incidental", however, nor insubstantial. As noted earlier, the Respondent`s website contains paid advertising under Google`s AdSense program ("Ads by Google"), other links to commercial websites, including in the past one or more dating services, as well as links to sites displaying provocative photographs of other popular female actresses and performance artists.

There is no question that the Respondent has generated pay-per-click advertising revenue from links and advertisements on his website, which the Respondent does not deny. This clearly constitutes a commercial use of the disputed Domain Names, and the Panel is not prepared to accept the Respondent`s unsubstantiated averment that the paid advertising generated thereby is merely "incidental" to the asserted noncommercial use. Further, as noted earlier, when the Respondent offered to sell the disputed Domain Names to the Complainant for $80,000, he supported that asking price by pointing out that the website to which the disputed Domain Names resolve had been developed as a source of income.

In view of the foregoing, the Respondent has failed to demonstrate that the disputed Domain Names are being used without intent for commercial gain, and as such the Respondent in the Panel`s opinion cannot successfully invoke paragraph 4(c)(iii) of the Policy. See Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000. For the reasons discussed above the Panel does not believe that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names within the contemplation of paragraph 4(c)(iii) of the Policy. See Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560.

The Respondent also claims rights or legitimate interests based on the registration and use of the disputed domain names prior in time to the registration of the JENNIFER LOPEZ mark. However, there is evidence in the record of the Ms. Lopez` use of her name as an indicator of her goods and services prior to the Respondent`s registration of the disputed Domain Names. In any event, the Panel also is persuaded by the circumstances surrounding the domain name registrations that the Respondent`s aim was to take advantage of existing or prospective trademark rights in the JENNIFER LOPEZ mark. See e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845.

Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent`s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is "to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another". Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed above, the Panel does not consider that the Respondent is making a legitimate noncommercial or fair use of the disputed Domain Names. To the contrary, the Panel is persuaded from the totality of the circumstances in the record that the Respondent registered the disputed Domain Names with the aim of taking advantage of existing or prospective rights in the JENNIFER LOPEZ mark. The record further reflects the Respondent`s use of the disputed Domain Names to attract Internet users to the Respondent`s website in order to generate pay-per-click advertising revenues. The Panel concludes for the foregoing reasons that the Respondent registered and is using the disputed Domain Names in bad faith.

The Panel also believes it is appropriate to draw a further inference of bad faith from the Respondent`s manipulation of the registrar`s WhoIs database to reflect fictitious organizations as the registrants of the disputed Domain Names, and the Respondent`s use of a privacy protection service to conceal his identity. While the Panel generally does not consider a registrant`s use of a privacy service in and of itself to constitute bad faith, the Panel has observed in prior decisions that privacy services are subject to manipulation by a registrant seeking to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy or elsewhere. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. In the circumstances of this case, the Respondent`s manipulation of the WhoIs database, including the resort to a privacy service, occurring after the filing of the Complaint, are strongly evocative of cyberflight, and appear to have been calculated to obstruct or delay this proceeding under the Policy. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, supra. See also The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438.

For all the foregoing reasons, the Panel finds the Respondent`s registration and use of the disputed Domain Names to be in bad faith, and concludes that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

8. 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 names, <jenniferlopez.net> and <jenniferlopez.org> be transferred to the Complainant.

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William R. Towns
Sole Panelist

Dated: March 24, 2009