DECISION

CMG Worldwide, Inc. v Bonnie Masterson d/b/a Domain Sale

Claim Number: FA0104000097061

PARTIES

The Complainant is CMG Worldwide, Inc., Indianapolis, IN, USA (“Complainant”).  The Respondent is Bonnie Masterson DomainSale, Tulsa, OK, USA (“Respondent”)  represented by Antony Gold, of Eversheds House.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain names at issue are "EnglandsRose.com", "Englands-Rose.com", "DianasLegacy.com", "DianasRoses.com", "DazzlingDiRose.com", "CandleInTheWindRose.com", "DianasLegacyInRoses.com", "ToMummyRose.com", "ARoyalBrideRose.com", "PrincessCharmingRose.com", "ThePeoplesPrincessRose.com", "LadyDianaRose.com", "PrincessOfWalesRose.com", "ShyDiRose.com", "HerBoysRose.com", registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as Panelist in this proceeding.

Hon. R. Glen Ayers, Hon. Robert S. Brandt, James Bridgeman, Barrister at Law, served as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 13, 2001; the Forum received a hard copy of the Complaint on April 13, 2001.

On April 17, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names "EnglandsRose.com", "Englands-Rose.com", "DianasLegacy.com", "DianasRoses.com", "DazzlingDiRose.com", "CandleInTheWindRose.com", "DianasLegacyInRoses.com", "ToMummyRose.com", "ARoyalBrideRose.com", "PrincessCharmingRose.com", "ThePeoplesPrincessRose.com", "LadyDianaRose.com", "PrincessOfWalesRose.com", "ShyDiRose.com", "HerBoysRose.com" are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 4.0 & 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On April 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 8, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent 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@EnglandsRose.com, postmaster@Englands-Rose.com, postmaster@DianasLegacy.com, postmaster@DianasRoses.com, postmaster@DazzlingDiRose.com, postmaster@CandleInTheWindRose.com, postmaster@DianasLegacyInRoses.com, postmaster@ToMummyRose.com, postmaster@ARoyalBrideRose.com, postmaster@PrincessCharmingRose.com, postmaster@ThePeoplesPrincessRose.com, postmaster@LadyDianaRose.com, postmaster@PrincessOfWalesRose.com, postmaster@ShyDiRose.com, postmaster@HerBoysRose.com by e-mail.

A timely response was received and determined to be complete on May 7, 2001.

On May 16, 2001, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Hon. R. Glen Ayers, Robert S. Brandt, James Bridgeman, Barrister at Law, as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The Complainant asserts it is the authorized representative for “The Diana, Princess of Wales Memorial Fund” (“Fund”).  Complainant, which is in the business of representing living celebrities and the heirs, families and estates of deceased celebrities, acts as a licencing agent, licencing the use of celebrity names, likenesses, etc., to third parties.  Complainant asserts that it has been retained by the Fund, which asserts that it holds all of the “intellectual property rights”, including trademark rights, related to the use of names and terms referencing Princess Diana, the late Princess of Wales.  The Fund itself is a charitable entity, devoted to the causes to which the Princess had been devoted to prior to her death.  The Fund has licensed use of various references to Princess Diana.

The Complainant asserts that the domain names complained of infringing upon the common law rights and publicity rights of the Fund.

Complainant asserts that Respondent is not a licensee and has made improper use of domain names which are confusingly similar to the common law marks held by the Fund.

The Complainant also assets that the Fund has applied for trademarks or registration of trademarks in the United Kingdom, the European Union the United States and other countries.

Complainant asserts that the Respondent has no legitimate interests in the domain names and that it has warehoused most of these domain names in “furtherance of a wider infringing business scheme” designed to appropriate the name and the image of the late Princess of Wales.  Any current use of the domain names is further asserted to infringe, for the domain names and their use in commerce affect the rights of the Fund.

Complainant notes that it and Respondent have had extensive negotiations but there has been no meaningful resolution of their dispute.

Further, Complainant asserts that these domain names have been registered in bad faith with the intent to attract Internet users for the commercial gain (of Respondent) by utilizing domain names which promote the infringing business at the expense of the Fund. 

B. Respondent

Respondent, by and through counsel, points out that she is a vice-patron of an entity known as the Royal National Rose Society (“RNRS”), an English charity. Respondent asserts that she and the RNRS have jointly determined to promote certain roses and rose products; that the RNRS will receive benefits; that the RNRS will in turn pay a portion of the benefits to the Fund.

Respondent asserts that this is “the latest round in a long running battle between the Fund, on one hand, and the Royal National Rose Society and the Respondent on the other which goes way beyond the subject matter of the Complaint...in which the Fund is seeking to frustrate the plans of the Royal National Rose Society to establish, within a memorial garden to be constructed for the use the enjoyment of the public, a section to named after Princess Diana.”

Respondent asserts that the Complainant has no trademark rights in relation to various phrases incorporated in the domain names which may refer to the late Princess.  The Respondent takes great pains to assert, and attempt to show, that there exist no current common law or registered trademarks as to which its domain’s names can be identical or confusingly similar.

Respondent does note that in earlier domain name decisions, Complainant has been successful in asserting common law trademark rights in the names Diana Spencer and Princess Diana and Princess Di.  As a result, Complainant was successful and received  UDRP arbitration decisions transferring the domain names “dianaspencer.com”, “princessdiana.com” and “princessdi.com” to Complainant.  See, CMG Worldwide, Inc. v. Gregory, FA 95645 (Nat. Arb. Forum Nov. 7, 2000) and CMG Worldwide, Inc.  v. Naughtya Page, FA 95641 (Nat. Arb. Forum Nov. 8, 2000).  Irrespective of those decisions, Respondent asserts that there is no explanation in those decisions as to the source of the common law trademark in those names, which obviously refer directly to the late Princess.  (The Panel notes as follows:  No response was filed in the Gregory case; in the Naughtya Page case, the Panel relied on cases dealing with the names of famous persons where the name clearly has a secondary meaning.)

Respondent also assets that it has legitimate interests in the various domain names since Respondent and the RNRS are involved in the production of rose related products.

Finally, Respondent denies any bad faith.  Respondent notes that the RNRS has been in constant correspondence with Buckingham Palace, including correspondence with representatives of both the Queen Mother and her Royal Highness, Queen Elizabeth, II.

C. Additional Submissions

1. Complainant:

In response to Respondent’s pleading, Complainant submitted an additional response which first attempts to showed that it has authority to act on behalf of the Fund.  The additional submission also points out that Respondent is an individual engaged in a  business in the United States for profit.  Respondent operates the various web sites and owns the complained of domain names.  The RNRS is not directly involved in Respondent’s for profit business.

Evidence of trademark applications was also submitted.  Complainant asserts that the applications for trademarks should give it a protectable interest.

2. Respondent:

Respondent, in its additional response, asserts strongly that the UDRP is not the correct body of rules under which this dispute should be decided.  Respondent asserts that this is a complex trademark dispute which can only be resolved by judicial proceedings.

Respondent also points out that other UDRP decisions, including those referenced by Respondent, involve the names of persons whose names have acquired a secondary meaning, particularly in the entertainment industry.  See, e.g., Edward Van Halen v. Morgan, D2000-1313 (WIPO Dec. 20, 2000).

FINDINGS

With the exception of the domain name “ThePeoplesPrincessRose.com”, the Complainant has failed to establish the first limb of the test in paragraph 4 of the Policy:  that the domain names in issue are identical or confusingly similar to a trademark of service mark in which the Complainant has rights.

The Complainant has not provided any evidence of any registrations or common law trade marks which are identical or confusingly similar to these domain names. In paragraph 8 of the Complaint, the Complainant claims to be "the proprietor of certain intellectual property rights, including trademark, right of publicity, sponsorship and association which protect against unauthorized use of (the late) Princess Diana's name, image, or likeness, as well as various titles that refer to the late Princess."   The Complainant, in its “Additional Submission,” does show that trademark applications are pending for “The People’s Princess.”

These Administrative Proceedings are only concerned with the Complainant's trademark or service mark rights, if any. Secondly, the Complainant has not provided any evidence (or even any details) of any ownership of any trademarks which are identical or confusingly similar to the domain names in issue (except for “ThePeoplesPrincessRose.com”).

In sub-paragraph 9.i., the Complainant states that it has been given the exclusive authority to use the intellectual property rights associated with the late Princess Diana. These "intellectual property rights" are not explained. In sub-paragraph 9.j., the Complainant claims to have "developed substantial notoriety and goodwill in both the name, image, and likeness of the late Princess, as well as in references to the late Princess which incorporate or play off of the name, image or likeness of the late Princess." Once again the Complainant does not specify the exact nature of these "intellectual property rights" and if they are trademarks, provides no evidence of any examples of the use of these trademarks in trade.

Taking each of the domain names in turn:

While in a certain context each of the following domain names: “EnglandsRose.com”, “Englands-Rose.com”, “CandleInTheWindRose.com”, “ToMummyRose.com”, “ARoyalBrideRose.com”, “PrincessCharmingRose.com”, “HerBoysRose.com” could easily refer to the late Princess, they could not be said to have any distinctive reference to the late Princess.

In certain contexts “DianasLegacy.com”; “DianasRoses.com”; “DianasLegacyInRoses.com” may well refer to the Estate of the late Princess, but such an assumption is predicated on an appropriation of an exclusive right to the name “DIANA” by the Estate of the late Princess and/or the Complainant in this case. It is clear that the domain name “PrincessOfWalesRose.com” is not a distinctive reference to the late Princess Diana as this domain name could refer to any of the holders of the title “Princess of Wales” .

The domain names “DazzlingDiRose.com”; “LadyDianaRose.com”; “ShyDiRose.com” would seem on balance to clearly refer to the late Princess - the difficulty for the Complainant here is that none of these domain names are identical or similar to the Complainants trademarks.

In paragraph 10 of the Complaint and paragraph 10 (and annexes Q and R) of the Complainant's Additional Submission, the Complainant submits that it has trademark registrations or applications pending in a number of jurisdictions for the marks “Diana, Princess of Wales”; “a signature device mark of the name Diana”, “Signature and Diana, Princess of Wales”, “stylised letter D and Crown device”, “Diana Princess of Wales Memorial Fund” and “The People’s Princess”.

With the exception of the domain name “ThePeoplesPrincessRose.com” none of these registrations and pending applications bear any similarity to the domain names in issue. The Complainant has not satisfied the first limb of the test in paragraph 4 of the Policy and as the Complainant cannot therefore succeed it is not necessary, and in this case it is probably not even appropriate for this Administrative Panel to consider the second and third limbs of the test.

As regards the domain name “ThePeoplesPrincessRose.com,” it is necessary to proceed to consider whether the Complainant has either common law or statutory rights in the trademark “The People’s Princess.”

As to this domain name, the Panel finds, while Complainant has submitted evidence of a trademark application, there is no evidence of registration or use such as to establish rights in the mark.  The Complainant again has not submitted evidence sufficient to meet the first part of the test.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the 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.

Identical and/or Confusingly Similar

The Panel has concluded, as set forth above, that Complainant has failed in its burden on this issue.

However, the Panel members each agree that Respondent is correct.  The UDRP is ill-suited to resolve disputes like this one.

The dispute between the Fund, RNRS, Complainant and Respondent, does not lend to a simple resolution.  In order to determine whether the Complainant holds or represents holders of trademarks ultimately requires an exhaustive evidentiary and analytical process as to common law rights asserted by the Fund.  This case, if it cannot be resolved privately, requires the resources available to the judicial system.

Rights or Legitimate Interests

Because Complainant has failed to establish its rights in trademarks, this issue need not be reached.

Registration and Use in Bad Faith

Again, because Complainant has failed to show that it holds trademark rights in the phrases, this issue also need not be reached.  However, the Panel is certainly critical of strangers who seek to exploit the names of persons, living or dead, for mere commercial gain.

DECISION

The domain names shall not be transferred.  The requested relief is DENIED.

Hon. R. Glen Ayers, Hon. Robert S. Brandt, James Bridgeman, Barrister at Law, Panelists

Dated:

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