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Harrice Simons Miller v. H Rheyne [2004] GENDND 1237 (3 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Harrice Simons Miller v. H Rheyne

Case No. D2004-0504

1. The Parties

The Complainant is Ms. Harrice Simons Miller, of New York City, New York, United States of America, represented by the law firm Cowan, DeBaets, Abrahams & Sheppard, LLP.

The Respondent is H Rheyne, a/k/a Harriet R. Jaffie, of Bethlehem, Pennsylvania, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <harrice.com>, is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2004. On July 12, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On July 12, 2004, Go Daddy Software transmitted by email to the Center its verification response, confirming that H Rheyne is the registrant of the disputed domain name and providing the contact details for the administrative, billing, and technical contacts. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 13, 2004. The Center subsequently 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 on July 16, 2004. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 5, 2004. The Respondent filed a Response with the Center on August 2, 2004.

The Center appointed D. Brian King as the Sole Panelist in this matter on August 9, 2004. The Panel finds that it was properly constituted. The Sole Panelist has submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

Pursuant to the Panel’s Procedural Order No. 1, dated August 11, 2004, the Complainant submitted a supplemental filing containing additional documentary evidence. Although the Panel’s Order had invited the Respondent to file a supplemental response on or before August 23, 2004, the Respondent did not do so.

4. Factual Background

The facts relevant to the current dispute are set out in the Complaint, the Response and the supplemental filing by the Complainant. Considering the evidence submitted, the Panel finds the following facts to have been established.

The Complainant, Harrice Simons Miller, is a recognized author, lecturer and dealer in the field of vintage costume jewelry, a field in which she has been active for over twenty years. Since 1990, the Complainant has authored four books on the topic of costume jewelry (see Complaint Exhibit B), and her vintage costume jewelry collections have been featured in many leading publications (see Complaint Exhibit C).

In addition to writing and lecturing about costume jewelry, the Complainant is also in the business of selling costume jewelry, including on-line. She is the current registrant of three domain names using the name “Harrice”: <harricemiller.com>, <harricemillerauctions.com> and <harrice.net>. The first two were registered by the Complainant in October 2002, and the third in March 2004.

The disputed domain name, <harrice.com>, was registered by the Respondent on January 2, 2004. The Respondent subsequently established a website at that same URL to sell, market and promote costume jewelry (see Complaint Exhibit E).

It is admitted by the Respondent that her given name is not “Harrice” and that she chose this name for use in connection with a costume jewelry business, called Syd Harrice Jewels.

5. Parties’ Contentions

A. Complainant

The Complainant relies on the above facts and contends, inter alia, that the three elements of Paragraph 4 (a) of the Policy have been met.

First, the Complainant argues that on the basis of her widespread and continuous use of her own name in the vintage costume jewelry business, the name “Harrice” has acquired distinctiveness and secondary meaning, such that the Complainant has rights in the name that should be afforded the same protection as a trademark. The Complainant goes on to contend that the contested domain name is identical to her protected mark, and that the Respondent has no prior rights in the mark. In support of this contention, the Complainant notes that the Respondent’s website using the name “Harrice” is intended to sell, market and promote goods that are similar to the Complainant’s products, i.e., costume jewelry. The Complainant further alleges that consumers will assume that the Respondent’s domain name is related to the Complainant, such that a likelihood of confusion will arise.

Second, the Complainant argues that the Respondent has no legitimate rights or interests with respect to the disputed domain name. In this regard, the Complainant asserts that the Respondent’s real name is Heather Rheyne, and that she has adopted the assumed name “Syd Harrice” for use in her business ventures. The Respondent did so, the Complainant contends, solely for the purpose of gaining an unfair commercial advantage, with the result that she has no legitimate right to use the name or register the disputed domain name.

Finally, the Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. In this context, the Complainant states that for over six years, the Complainant has maintained and moderated JewelCollect, an online jewelry forum, and that the Respondent has been a member of JewelCollect. The Complainant contends that the Respondent thus had first-hand knowledge of the Complainant and of her reputation in the world of vintage costume jewelry. The Respondent’s purpose in registering and using the domain name, the Complainant contends, is wrongfully to attempt to capitalize and trade off the Complainant’s name, identity, reputation and business.

B. Respondent

The Respondent contends in the Response that the three elements of Paragraph 4(a) of the Policy have not been met.

First, the Respondent argues that there is no evidence that the word “Harrice”, which is also the Complainant’s first name, is a trademark or a service mark. This name has, in the Respondent’s submission, acquired no universal distinctiveness or secondary meaning, nor has it been registered as a trademark by the Complainant.

Second, the Respondent argues that the Complainant has not proved that the Respondent has no rights or legitimate interests with respect to the disputed domain name. In this regard, the Respondent denies that her real name is Heather Rheyne. She explains that she chose the name Syd Harrice Jewels for her business by using a combination of family names. As set out by the Respondent in an email addressed to another participant in JewelCollect (produced by the Complainant with her supplemental filing): “My name is Harriet but I use my initials. I do not want my first name publicly published. I am named after Harris Simon. I also have an uncle Syd and a cousin Miller.” Thus, according to the Respondent, she legitimately and in good faith adopted the name “Harrice” for use in her business.

Finally, the Respondent states that after deciding to use the name “Harrice” in commerce, she conducted a domain name search, found the domain name <harrice.com> was available and purchased it in good faith. Prior to receiving the Complaint, the Respondent allegedly had no knowledge of the Complainant’s alleged notoriety in the field of costume jewelry. She further contends that she has expended substantial time, effort and resources in building up the reputation of Syd Harrice Jewels, and argues that the Complainant is improperly trying to deprive her of that name.

Notably, the Response is signed by an individual who identifies herself as Harriet R. Jaffe.

C. Complainant’s supplemental filing

In her supplemental filing, the Complainant restates and provides additional evidence for several of her factual contentions. In particular, the supplemental filing includes numerous magazine and newspaper articles referring to the Complainant and her notoriety in the field of costume jewelry. On this basis, the Complainant argues that the Respondent could not possibly have been unaware of the Complainant’s acquired rights in the name “Harrice” when registering the disputed domain name and using it for business activity in competition with the Complainant.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements in order to obtain relief:

(i) The domain name 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 in respect of the domain name; and

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

The Complainant bears the ultimate burden of proof on each of these elements. They will be examined in turn below.

A. Identical or Confusingly Similar

A preliminary issue to be addressed is whether the Complainant has rights protected under the Policy in the name “Harrice”. The Panel has little difficulty in finding this to be the case. The evidence shows that the Complainant has used her name in the costume jewelry business for many years and has attained sufficient notoriety that the name has acquired distinctiveness and secondary meaning in that industry, as being associated with the Complainant and her business and professional activities. Previous Panels have recognized that in such circumstances an individual can obtain rights in his or her name that are protected by the Policy, even absent registration of the name as a trademark. See, e.g., Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 (May 22, 2000). Accordingly, the Panel finds that the name “Harrice” constitutes a “mark “in which the complainant has rights” within the meaning of Paragraph 4(a) of the Policy.

With that question resolved, the result on the first element of the Complainant’s case follows naturally. The disputed domain name is identical to the Complainant’s mark, and the Respondent’s use of the mark for business activities substantially similar to those of the Complainant is likely to cause consumer confusion.

B. Rights or Legitimate Interests

The Panel is further satisfied, on the evidence presented, that the Respondent has no rights or legitimate interests in the domain name at issue. In particular, the Panel finds that none of the three circumstances identified in Paragraph 4(c) of the Policy as indicative of legitimate rights or interests is present here.

First, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Panel finds that the Respondent must have known of the Complainant, and of her legitimate rights in the name “Harrice”, at the time of registering and beginning to use the disputed domain name. The evidence establishes that the Complainant has substantial notoriety in the (relatively confined) world of the costume jewelry industry, and that the Respondent, through her participation in that industry and her contacts with JewelCollect, must have been aware of the Complainant’s notoriety and the close association of the name “Harrice” with the Complainant’s professional activities and products. Thus, while the Respondent has indeed used the disputed domain name in connection with an offering of goods, that offering was not bona fide. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (October 12, 2000), at pages 3-4.

Second, there is no evidence to suggest that the Respondent has “been commonly known” by the disputed domain name. The Respondent concedes that her name is not “Harrice” and that she assumed this name for purposes of her costume jewelry business. The explanation proffered by the Respondent for her choice of that name is not credible. Accordingly, the Panel concludes that the name “Harrice” has no apparent association with the Respondent, her business or the goods and services offered.

Third, the disputed domain name is being used by the Respondent for commercial purposes and hence does not meet the “non-commercial or fair use” criterion.

On the basis of the foregoing, the Panel concludes that the Complainant has satisfied the second element under Paragraph 4(a) in the present case.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four non-exclusive indicia of bad faith:

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

(ii) the 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; or

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

(iv) 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 website or location.

Paragraph 4(a)(iii) of the Policy requires that the domain name “has been registered and is being used in bad faith.” This requirement is conjunctive, and therefore the Complainant must establish both bad faith registration and bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000), at paragraphs 7.4 to 7.6.

For purposes of the Policy, a finding of any of the four circumstances listed in Paragraph 4(b) will be sufficient to establish registration and use in bad faith. Those four circumstances are, furthermore, not exclusive, and other circumstances may likewise lead, in a particular case, to a finding of bad faith registration and use. See CCA Industries, Inc v. Bobby R. Dailey, WIPO Case No. D2000-0148 (April 26, 2000), at page 3.

The Panel is satisfied in this case that the Respondent’s conduct falls within the circumstance identified in Paragraph 4(b)(iv) of the Policy. It has been established that the disputed domain name is confusingly similar to a mark in which the Complainant has rights, and that the Respondent herself has no rights or legitimate interests in the domain name. Furthermore, the Respondent has used the disputed domain name for commercial purposes in the same line of business as the Complainant. The logical inference, sufficiently supported by the evidence here, is that the Respondent registered and used the disputed domain name with the purpose of attracting Internet users to her website by creating a likelihood of confusion with the Complainant’s name and mark as to source or affiliation. In other words, the evidence supports the conclusion that the Respondent has intentionally attempted to trade off the Complainant’s goodwill in the “Harrice” mark, a prime example of bad faith registration and use.

7. 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 name <harrice.com> be transferred to the Complainant.

D. Brian King
Sole Panelist

Dated: September 3, 2004