Generic Top Level Domain Name (gTLD) Decisions

The Complainant is CMG Worldwide, Inc., Indianapolis, IN, USA ("Complainant") represented by Johnathan Faber, CMG Worldwide, Inc. The Respondent is Naughtya Page, Portland, OR, USA ("Respondent") represented by Anne W Glazer , Lane Powell Spears Lubersky LLP.

The domain names at issue are princessdi.com and princessdiana.com, registered with Network Solutions.

The Panelists certify that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as the panelists in this proceeding.

The Panelists are Merton Thompson, Hon. Herman Michels (Ret.) and Hon. Karl V. Fink (Ret.) as Chair.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on September 20, 2000; The Forum received a hard copy of the Complaint on September 20, 2000.

On September 21, 2000, Network Solutions confirmed by e-mail to The Forum that the domain names princessdi.com and princessdiana.com are registered with Network Solutions and that the Respondent is the current registrant of the name. Netw ork Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 22, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 12, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Re spondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@princessdi.com and postmaster@princessdiana.com by e-mail. Respondent did timely respon d.

Complainant has submitted a reply to Respondent’s response which has been considered by the Panel.

On October 25, 2000, pursuant to Respondent’s request to have the dispute decided by a Three Member panel, the Forum appointed Merton Thompson, Judge Herman D. Michels (Ret.), and Judge Karl V. Fink (Ret.), Chair.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

A. Complainant

Complainant is in the business of representing living and deceased celebrities and the heirs, families and estates of the deceased celebrities for the purpose of licensing to third parties permission to commercially utilize among other things the names of said celebrities together with trademarks and related rights associated with the same. Complainant is the authorized representative for The Diana, Princess of Wales Memorial Fund, the only officially recognized body dedicated exclusively to continuing the work of the late Diana Spencer with the full approval of her estate.

On September 4, 1997, the estate of Diana, Princess of Wales organized The Diana, Princess of Wales Memorial Fund as a charitable entity and to direct the charitable contributions being made to continue the charitable causes of the late princess. In Fe bruary 1998 the estate of Diana, Princess of Wales authorized exclusive use of the princess’ name by The Diana, Princess of Wales Memorial Fund.

The Diana, Princess of Wales Memorial Fund utilizes the internet to inform the public of its activities and relies in large part on its ability to effectively employ the internet. It is therefore, critical that the memorial fund have the use of the mos t obvious and intuitive domain names that are based on the princess’ namesake which are the names at issue, princessdiana.com and princessdi.com.

The Memorial fund’s application is pending for trademark registration in a number of countries, for the marks "Diana", "Diana, Princess of Wales", and other marks.

Respondent is not a licensee of The Diana, Princess of Wales Memorial Fund and has no authority to make use of princessdiana.com and/or princessdi.com.

Respondent has no rights or legitimate interest in respect to the domain name princessdiana.com or princessdi.com. Respondent has not used nor demonstrated any preparation to use the domain names in connection with a bonafide offering of goods or servi ces.

Although the domain names were registered March 24, 1997 they were under construction until after August 17, 2000 when Complainant notified Respondent of its intent to arbitrate. At that time it began some use of princessdiana.com. Princessdi.com is pr ogrammed to direct internet users automatically to a completely unrelated commercial website and therefore Respondent is intentionally diverting consumers for commercial gain. Princessdiana.com which was warehoused until August 2000 now contains inflammat ory and misleading and damaging information about Complainant.

Respondent has methodically engaged in cybersquatting activities by virtue of owning or having owned more than 50 domain names some of which contained the marks of others.

Respondent has registered the domain names in order to prevent the Memorial Fund from utilizing two of the most obvious and common references to the late princess, namely Princess Diana and Princess Di and corresponding domain names.

Respondent has intentionally attracted and thereby siphoned for commercial gain internet users to Respondent’s website or other on-line locations by creating a likelihood of confusion with The Diana, Princess of Wales Memorial Fund as to the source, sp onsorship, affiliation or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

B. Respondent

Complainant lacks standing to bring the complaint, not having offered any evidence of any authority to act for The Diana, Princess of Wales Memorial Fund. Complainant has failed to identify any trademark, service mark, logo or symbol upon which the Com plaint is to be based.

Complainant has offered no proof of applications pending for trademark registration.

Since Complainant has not identified a trademark related to Princess Diana, Complainant can not establish that such marks are confusingly similar to the disputed domain names. Further, prior litigation established that all names by which the late Diana , Princess of Wales, was known are likely to be incapable of acting as trademarks.

Any other personality rights Complainant or the fund may claim in a disputed domain name are not subject to the present arbitration procedure.

Respondent made good faith use of the disputed domains in connection with a bonifide memorial website before notice of this dispute. Respondent used the domains even before the fund came into existence. The names were registered March 24, 1997 with the intent of launching mirror websites and two domains that would feature photo stories and news about the living Diana, Princess of Wales. Design and creative work was done in preparation for the launch of the sites. Respondent’s memorial website containin g substantial content about the funeral of Diana, Princess of Wales, was published on September 8, 1997 at princessdiana.com and princessdi.com.

Diana, Princess of Wales had been killed in an automobile accident August 31, 1997.

The Website at the disputed domain names were maintained through about January of 2000, at which time Respondent determined that the sites were out of date and needed to be redesigned and updated.

Respondent received Complainant’s letter of March 31, 2000, requesting that the domain names be transferred to Complainant. Respondent decided to suspend the updating work and use the domains to publicize the fact that Complainant was seeking to "rever se rehijack" as many as 250 domains with alleged connections with the late Diana, Princess of Wales.

Respondent did not register and use the disputed names in bad faith. The sites were established more than 5 months before the death of Diana, Princess of Wales and before The Diana, Princess of Wales Memorial Fund was established.

At no time has there been any commercial content on the Memorial website and at no time has the Memorial website included any content that might be taken as endorsement from either the late Diana, Princess of Wales, Complainant or the Fund.

Respondent has been the owner of the domain names since before the fund was established on September 4, 1997 more than 3 years ago. Because of the delay, Complainant’s claim is barred by acquiescence and delay.

Complainant is in the business of representing living and deceased celebrities and the heirs, families and estates of the deceased celebrities for the purpose of licensing to third parties permission to commercially utilize among other things the n ames of said celebrities together with trademarks and related rights associated with the same. Complainant is the authorized representative for The Diana, Princess of Wales Memorial Fund, the only officially recognized body dedicated exclusively to contin uing the work of the late Diana Spencer with the full approval of her estate.

The Diana, Princess of Wales Memorial Fund utilizes the internet to inform the public of its activities and relies a large part on its ability to effectively employ the internet. It is therefore, critical that the memorial fund have the use of the most obvious and intuitive domain names that are based on the princess’ namesake which are the names at issue, princessdiana.com and princessdi.com.

Respondent is not a licensee of The Diana, Princess of Wales Memorial Fund and has no authority to make use of princessdiana.com and/or princessdi.com. Respondent had no authority during the life time of Princess Diana to use Princessdiana.com or princ essdi.com.

Princess Diana during her lifetime was well known by a variety of terms using the term Princess Diana or Di.

Respondent has no rights or legitimate interest in respect to the domain names. Respondent has not used or demonstrated any preparation to use the domain names in connection with a bonifide offering of goods or services.

Complainant in its reply has submitted satisfactory proof of its authority to act for and on behalf of The Diana, Princess of Wales Memorial Fund.

Complainant has submitted in its reply proof of trademark registration applications currently pending for The Diana, Princess of Wales Memorial Fund which demonstrates an expansive worldwide approach in asserting and claiming trademark rights in a wide variety of marks relating to the late princess.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(3) the domain name has been registered and is being used in bad faith.

Diana, Princess of Wales before her death had rights to her common law trademarks and the terms specifically at issue, Princess Diana and Princess Di. Those rights now belong to the Complainant. See Monty and Pat Rob erts, Inc. v. Bill Keith, D2000-0299 (WIPO June 9, 2000) (finding that Respondent’s domain name "montyroberts.net" is confusingly similar to Complainant’s pending service mark "Monty Roberts"); Bibbero Systems, Inc. v. Tseu & Assoc., FA 944 16 (finding common law rights in the mark BIBBERO as the Complainant, Bibbero Systems, Inc (Complainant owns a U.S. trademark for its full company name) had developed brand name recognition with this term by which the Complainant is commonly known); Ro berts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name "Julia Roberts" has sufficient secondary association with the Complainant that common law trademark rights exist).

The Panel finds that the domain names at issue are confusingly similar to marks in which the Complainant has an interest.

The ICANN policy sets forth certain circumstances which if found can demonstrate rights or legitimate interest to the domain name. The Panel finds that none of the circumstances have been shown by Respondent and Complainant has satisfactorily prove n that none of the circumstances exist. See Experience Hendrix, L.L.C. v. Denny Hammerton and The Jimi Hendrix Fan Club, D2000-0364 (WIPO Aug. 15, 2000) (finding no rights or legitimate interests where Respondent claime d to be using the domain name <jimihendrix.com> as a fan club site but in reality was using the site to advertise and offer the domain name for sale). The evidence submitted by Respondent was not adequate to establish to the Panel’s satisfact ion that the prior use was entirely non-commercial and without intent to trade on the trademark and publicity rights of Princess Diana and/or her estate.

Complainant has proven and the Panel finds that Princess Diana had and the estate has the common law rights in "Princess Diana" and "Princess Di" as determined by the law applicable in Indiana, the domicile of the exclusive license.

There are two sites at issue: princessdiana.com was not used for almost 3 years and began to be used after notice of the Complainant’s intention to begin arbitration proceedings. That site now contains disparaging information about the Complainant. Pri ncessdi.com is programmed to direct internet users automatically to a completely unrelated commercial site which is not a legitimate non-commercial or fair use of the domain name without intent for commercial gain. Even if the prior use was legitimate the Panel, finds based on the conduct of the Respondent, that there was a transition to illegitimacy and bad faith during the months preceding the filing of the Complaint.

The panel directs that the domain names princessdiana.com and princessdi.com be transferred to Complainant. Respondent shall cease and desist from any and all use of the domain names princessdi.com and princessdiana.com.