Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Claimant is Julia Fiona Roberts a United States citizen, with a principal place of business c/o Armstrong Hirsch Jackoway Tyerman & Wertheimer, 1888 Century Park East 18^th Floor, Los Angeles, California 90067 USA.

Respondent is Russell Boyd a United States citizen with a mailing address 189 Carter Road, Princeton, New Jersey 08540 USA.

The domain name at issue is <juliaroberts.com >. The registrar is Network Solutions, Inc. (the "Registrar") 505 Huntmar Park Dr., Herndon, Virginia 20170 USA.

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainant on March 25, 2000 by email and on March 29, 2000 in hardcopy. The Complainant paid the required fee. On March 29, 2000, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant.

On March 27, 2000, the Center sent to the Registrar a request for verification of registration data. On March 28, 2000, the Registrar confirmed, inter alia, that it is the registrar of the domain name in dispute and that <juliaroberts.com> is registered in the Respondent's name.

Having verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center on March 29, 2000 sent to the Respondent, with a copy to the Complainant, a notification of the administrative proceeding together with copies of the Complaint. This notification was sent by the methods required under paragraph 2(a) of the Rules. The formal date of the commencement of this administrative proceeding is March 29, 2000.

In a series of correspondence with the Center, Respondent requested and was granted an extension of time to file his Response. On May 8, 2000, the Center received Respondent’s Response. On May 18, 2000, after receiving their completed and signed Statements of Acceptance and Declarations of Impartiality and Independence, the Center notified the parties of the appointment of a three member Administrative Panel consisting of Mr. Richard W. Page as the Presiding Panelist, Ms. Sally M. Abel as Complainant’s party-appointed panelist and Mr. James Bridgeman, as Respondent’s party-appointed panelist.

On May 8 and 9, 2000, Complainant tendered a Reply by fax and email. The acceptance of a Reply is subject to the discretion of the Panel.

The Panel met by telephone conference call on May 25, 2000. During the telephone conference call the Panel decided not to accept or consider Complainant’s Reply.

The Complainant, Julia Fiona Roberts, is a famous motion picture actress. She has appeared in such movies as Erin Brockovich, Notting Hill, Runaway Bride, Stepmom, My Best Friend’s Wedding, Conspiracy Theory, Everyone Says I Love You, Mary Reilly, Michael Collins, Something to Talk About, I Love Trouble, Ready to Wear, The Pelican Brief, The Player, Dying Young, Hook, Sleeping With the Enemy, Flatliners, Pretty Woman, and more. A partial filmography for the Complainant is found at Yahoo! Movies. The Complainant is widely featured in celebrity publications, movie reviews, and entertainment publications and television shows, and she has earned two Academy Award nominations. Her latest film, Erin Brockovich (released nationwide on March 16, 2000), is currently ranked #1 at the box office.

Respondent registered the subject domain name on November 9, 1998. As of March 24, 2000, the website www.juliaroberts.com featured a photograph of a woman named "Sari Locker". The Respondent has placed the domain name up for auction on the commercial auction website, "eBay," specifically at http://cgi.ebay.com/aw-cgi/eBayISAPI.dll?ViewItem&item=285891617.

The Respondent has also registered over fifty (50) other domain names, including names incorporating other movie stars names within <madeleinestowe.com> and <alpacino.com> and a famous Russian gymnast’s name within <elenaprodunova.

com>. Respondent lists his email address as mickjagger@home.com. Respondent was offered US$2,550 in the eBay auction for the domain name registration.

1. Complainant contends that the domain name <juliaroberts.com> is identical to and confusingly similar with the name "Julia Roberts" and the common law trademark rights which she asserts in her name pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the domain name <juliaroberts.com> pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the domain name <juliaroberts.com> in bad faith in violation of the Policy paragraph 4(a)(iii).

B. Respondent does not contest that the domain name <juliaroberts.com> is identical with and confusingly similar to Complainant’s name. Respondent does contest whether Complainant has common law trademark rights in her name. Respondent admits that he selected the domain name <juliaroberts.com> because of the well known actress.

Respondent contends that he has rights and legitimate interest in <juliaroberts.com> because of his registration and use of the domain name.

Respondent contends that his registration and use of <juliaroberts.com> is in good faith.

Identity or Confusing Similarity

The initial consideration of the Panel was whether Complainant had sufficiently alleged the existence of common law trademark rights in her Complaint. On page 5 of her Complaint, Complainant alleges that "The Respondent’s use of www.juliaroberts.

com infringes upon the name and trademark of Complainant and clearly causes a likelihood of confusion as defined by Section 2(d) of the United States Lanham Act, Section 2(d), 15 U.S.C. Section 1052(d)." From this allegation, the Panel understood that Complainant asserted common law trademark rights in her name. The Panel further decided that registration of her name as a registered trademark or service mark was not necessary and that the name "Julia Roberts" has sufficient secondary association with Complainant that common law trademark rights do exist under United States trademark law.

A recent decision citing English law found that common law trademark rights exist in an author’s name. The Policy does not require that the Complainant should have rights in a registered trademark or service mark. It is sufficient that the Complainant should satisfy the Administrative Panel that she has rights in common law trademark or sufficient rights to ground an action for passing off. See Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235, May 22, 2000.

Having decided that Complainant has common law trademark rights in her name, the next consideration was whether the domain name <juliaroberts.com> was identical to or confusingly similar with Complainant’s name. The second level domain name in <juliaroberts.com> is identical to the Complainant’s name. Therefore, the Panel finds that the requirement of the Policy paragraph 4(a)(i) is satisfied.

Rights or Legitimate Interest

Respondent has no relationship with or permission from Complainant for the use of her name or mark. The domain name was registered with the Registrar on November 9, 1998. At this time Complainant has already been featured in a number of motion pictures and had acquired common law trademark rights in her name. Respondent admits at page 13 of his Response that "I registered JuliaRoberts.com because, after seeing several of her movies, I had a sincere interest in the actor…"

In the conclusion of the Response on page 16, the Respondent elaborates that "If Julia Roberts had picked up a phone and said, ‘Hi Russ, can we talk about the domain name juliaroberts.com?’ she would own it by now." Then Respondent concludes "But as I mentioned at the beginning of this response, I still think Julia is nifty crazy wacko cool."

The original content posted on the website www.juliaroberts.com had little if anything to do with Julia Roberts. It was not until this dispute arose that her likeness was posted.

In addition, Respondent admits that he has registered other domain names including including other well-known movie and sports stars and having placed the disputed domain name <juliaroberts.com> for auction on eBay

The Complainant has established a prima facie case that the Respondent has no rights or legitimate interest in the domain name and the Respondent has not provided any evidence to rebut this. It is clear from the submissions and evidence provided to this Administrative Panel that Respondent 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 noncommercial or fair use of the domain name, or (d) any other basis upon which he can assert rights or a legitimate interest.

Therefore, the Panel finds that Respondent has no rights or legitimate interest in the domain name <juliaroberts.com> and that the requirement of the Policy paragraph 4(a)(ii) is satisfied.

Bad Faith

Paragraph 4 of the Policy provides that evidence of bad faith registration and use includes circumstances showing:

(ii) you have 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 you have engaged in a pattern of such conduct.

The Respondent admits that he has registered other domain names including several famous movie and sports stars. Such actions necessarily prevent Complainant from using the disputed domain name and demonstrate a pattern of such conduct.

Therefore, the Panel finds that Respondent has registered and used the domain name <juliaroberts.com> in bad faith and that the requirement of the Policy paragraph 4(a)(iii) is satisfied.

In addition, the Respondent has placed the domain name up for auction on the commercial website eBay. When considered in conjunction with the pattern of registrations described above, the Panel finds that such action constitutes additional evidence of bad faith.

The Panel concludes (a) that the domain name <juliaroberts.com> is identical to Complainant’s common law trademark in her name "Julia Roberts," (b) that Respondent has no rights or legitimate interest in the domain name and (c) that Respondent registered and used the domain name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <juliaroberts.com> be transferred to Complainant Julia Fiona Roberts.

Richard W. Page
Presiding Panelist

Sally M. Abel James Bridgeman
Panelists

Dated: May 29, 2000