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Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan [2004] GENDND 676 (29 June 2004)

1. The Parties

The Complainant is Brooke Bollea, a.k.a Brooke Hogan, an individual residing in Orlando, Florida, United States of America, represented by Michael Ferderigos, Orlando, Florida, United States of America.

The Respondent is Robert McGowan, an individual residing in Tampa, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <brookehogan.com> (the “Disputed Domain Name”) is registered with NameSecure.com (a VeriSign Co.) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2004. On May 26, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 27, 2004, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 May 28, 2004.

In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2004.

The Center appointed Richard G. Lyon as the sole panelist in this matter on June 22, 2004. 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.

4. Factual Background

Complainant is an up-and-coming stage entertainer and recording artist in the field of country and western type music. She is the sixteen-year old daughter of Hulk Hogan, a world-renowned professional wrestler and actor. Complainant was raised in Tampa, Florida. According to the Complaint, both Complainant and her father are “very known [sic]” in the Tampa area because of the father’s fame and the daughter’s “recent accomplishments.” Complainant supports these allegations with examples of local (Florida to Tampa-Orlando area, Florida), national (United States), and international media articles about her fledgling singing career. The earliest article submitted is dated April 2004. Complainant has engaged a prominent impresario and a leading publicity agent to assist in furthering her career.

Complainant holds a United States trademark for BROOKE HOGAN in various classes. She applied for this trademark on November 24, 2003.

The only information about Respondent comes from the Complaint and the Registrar’s verification response. His registration includes a Tampa, Florida address.

Respondent registered the Disputed Domain Name on October 4, 2002. He currently uses it to sell vitamins and food supplements under the trade name “Blue Sky Nutrition.” There is no reference to Complainant on Respondent’s website.

5. Parties’ Contentions

A. Complainant

The Panel summarizes the Complainant’s allegations as follows:

The Disputed Domain Name is identical to Complainant’s registered mark. Furthermore, Complainant has common law rights in the trademark BROOKE HOGAN because of her concert performances, radio interviews in New York City and Miami and Tampa, Florida, and her appearance in “various publications” that have nationwide and worldwide circulations.

Complainant has not licensed or otherwise authorized Respondent to use her trademark. Respondent has never been known by the name Brooke Hogan. Respondent’s use of the Disputed Domain Name is for commercial gain. By using Complainant’s mark as his web address, Respondent misleads persons seeking information about Complainant to his own website that is used for commercial purposes, or, alternatively, implies that Complainant has endorsed his wares. These same arguments make out bad faith in registration and use under the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant must prove the elements set out in paragraph 4(a) of the Policy. These elements are as follows:

(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect to the Domain Name; and

(iii) Respondent’s Domain Name has been registered and is being used in bad faith.

The Complainant bears the burden of proof on each of these elements. Respondent’s default does not automatically result in judgment for the Complainant and does not constitute an admission of any pleaded matter. To be more precise, Respondent’s default does not mean that the Panel must accept as true factual allegations in the Complaint that are unsupported by evidence.

Since the Disputed Domain Name is identical to the mark in which the Complainant asserts rights, the Panel’s inquiry under Paragraph 4(a)(i) of the Policy is the vitality of that claim.

Although there have been exceptions, based usually upon particular facts of the case, panelists have recognized that an individual’s name may serve as a mark that is sufficient to invoke the Policy. Entertainer complainants have successfully used the Policy when they demonstrated that their names were used as commercial, rather than merely personal, identifiers, and that their names have gained sufficient renown or notoriety to serve a trademark’s function of developing a brand or goodwill factor of independent commercial value, comparable to the goodwill attendant to a trademark for a hard good. See, e.g., Celine Dion and Sony Music Entertainment (Canada) Inc. v. Jeff Burgar operating or carrying on business as Celine Dion Club, WIPO Case No. D2000-1838; Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210. An entertainer’s name need not be registered as a trademark to make use of the Policy. Pierce Brosnan v. Network Operations Center, WIPO Case No. D2003-0519; Peter Frampton v. Frampton Enterprises, Inc., WIPO Case No. D2002-0141; see also Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540. As with other marks, common law trademark rights in an entertainer's name may satisfy Paragraph 4(a)(i).

In this proceeding Complainant has submitted uncontested evidence of both a registered trademark and celebrity. Either suffices to establish that today she possesses Policy rights in her name as a trademark, particularly since Respondent resides in the same locale as Complainant and that locale is where Complainant is best known as a performer.

According to Complainant’s evidence, however, her rights did not accrue until at the earliest November 2003, the date of her trademark registration. Respondent registered the Disputed Domain Name more than one year earlier. Complainant makes occasional factual allegations, without evidentiary support, of earlier events in Complainant’s professional career (such as signing with a publicity agent or “famous” stage manager), none of which even if true necessarily signifies the public’s recognition of her as a singer or other public figure. Complainant offers no evidence to support her allegation (Complaint, ¶5(b)) of her desired legal conclusion that “It was not until the Complainant has gained notoriety that the Respondent registered the domain name <brookehogan.com> in bad faith.” While that allegation has no evidentiary value, it does serve as Complainant's recognition that some showing of celebrity (though not necessarily a registered mark) at the date the Disputed Domain Name was registered is required for her to prevail.

Complainant cannot fill this evidentiary gap with her father’s longtime star status. A celebrity’s offspring is not famous just because the parent is. Complainant seeks to enforce rights in her own name as a performer. Even if the daughter received some publicity through her father (a matter not supported by evidence in the record), there is no showing that such publicity related to her career as a singer and thus generated commercial goodwill in her name.

On the evidence in the record, Complainant could not have established rights in a mark had she commenced this proceeding in 2002. While the requirements of Paragraph 4(a)(i) are evaluated as of the date a proceeding is commenced, it is difficult to establish registration in bad faith under Paragraph 4(a)(iii) without proof of a mark’s renown at the date the contested domain name was registered.¹ Without proof to support the allegation quoted above, in order to find registration in bad faith the Panel would have to infer from the other proof that Respondent registered the Disputed Domain Name in bad faith.

The Panel is aware that some panelists in default cases have accepted allegations as true without supporting proof, particularly under Paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, regarding the factors that make out illegitimacy of a respondent’s use or the presence or absence of bad faith, e.g., Luis Cobos v. West, North (Nick Handle: JNMTOKTCQD), WIPO Case No. D2004-0182, either as a tacit admission by the Respondent or as within a panel’s authority under Rule 14(b) (“If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”). See, e.g., Ciba Specialty Chemicals Holding Inc. v. Germciba.com, WIPO Case No. D2003-0717; Microsoft Corp. v. Andrey Tumacov, WIPO Case No. D2002-1039; Plymouth State College v. Domains, Best Domains, WIPO Case No. D2002-0939. When this occurred as to the renown of an entertainer, though, the panel accepted uncontested allegations in support of common law rights as true only after assuring no uncertainty existed as to the extent or timing of the complainant’s name recognition. Michael J. Feinstein v. PAWS Video Productions, WIPO Case No. D2000-0880.

Panelists’ inferring factual or legal conclusions from complainants’ unsupported allegations coupled with no response are occasionally necessary (and appropriate), because matters involving a respondent’s motive, intent, purpose, and other subjective factors determinative under Paragraphs 4(a)(ii) and 4(a)(iii) will not always be susceptible of direct proof, at least without the discovery and cross-examination that are unavailable to a complainant or a panelist in proceedings under the Policy. A complainant must often prove such matters with a prima facie showing that, when unchallenged, a panelist can accept.

In contrast, renown or goodwill of a mark is an objective matter entirely within the knowledge of and documentation available to a complainant. Every plaintiff in an infringement action must prove as an affirmative aspect of his case that his mark has commercial recognition at the date of infringement; a complainant under the Policy must do so to show that the domain name was registered in bad faith. In this proceeding such proof from 2002 – if it exists – could have been found and submitted by Complainant without the need to obtain anything from Respondent. Compare Pierce Brosnan v. Network Operations Center, supra (providing statistics on the number of motion pictures complainant starred in as well as the total box office sales from those motion pictures). In these circumstances no favorable inference is justified from a naked allegation of a legal conclusion, even in the absence of a denial from Respondent.

Complainant has failed to carry her burden of proof under Paragraph 4(a)(iii) that in October 2002 Respondent registered the Disputed Domain Name in bad faith.

In light of the foregoing the Panel need not address Paragraph 4(a)(ii) of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

Richard G. Lyon
Sole Panelist

Date: June 29, 2004

¹ Paragraph 4(a)(iii) is conjunctive; proof of both registration and use in bad faith are necessary under Paragraph 4(a)(iii) of the Policy. See, e.g., Greyson International, Inc. v. William Loncar, WIPO Case No. D2003-0805, and cases cited