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Vanessa Minnillo v. Mike Morgan [2005] GENDND 1595 (27 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vanessa Minnillo v. Mike Morgan

Case No. D2005-0813

1. The Parties

The Complainant is Vanessa Minnillo, Santa Monica, California, United States of America, represented by Barnes Morris Klein Mark Yorn Barnes & Levine, United States of America.

The Respondent is Mike Morgan, Topsail, New Foundland, Canada.

2. The Domain Name and Registrar

The disputed domain name <vanessaminnillo.com> is registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2005. On August 1, 2005, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On August 1, 2005, Dotster, Inc. 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 August 8, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 28, 2005. The Response was filed with the Center on August 29, 2005.

The Center appointed Debrett G. Lyons as the Sole Panelist in this matter on September 16, 2005. 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

The Complainant was the “Miss Teen USA” pageant winner in 1998, and is now an actress, television host and correspondent. She has been a host on the MTV network since 2003 and is the New York correspondent for the most watched and recognized entertainment news television show in the United States, “Entertainment Tonight”. Her photograph has appeared in and on numerous national and international magazines and publications and she has received considerable unsolicited media attention.

In addition to appearing on “Entertainment Tonight”, the Complainant has starred in and hosted television programmes including “High School Stories”, “The Shady National Convention”, “2 Punk Rock 4 This: The Real World San Diego Reunion”, “Spring Break Celebrity Fantasies”, “Total Request Live”, “Morning After”, “The 50^th Annual Miss USA Pageant”, “Miss Teen USA”, “Children of the Bride”, and “Big Brother Jake”. She has also made a number of guest appearances in the following television shows: “The View”, “The Tony Danza Show”, “Good Day Live”, “Maybe It’s Me”, “That’s Life”, and “City Guys”.

The Respondent is an individual residing in Canada. The disputed domain name was first registered on October 17, 2001, and the Respondent is the current registrant. There is no active website attached to the domain name.

On June 10, 2005, the Complainant’s counsel sent a letter by registered mail and via email to the Respondent claiming infringement of the Complainant’s name rights and demanding that the Respondent cease and desist using the domain name and requiring the Respondent to transfer the name to the Complainant.

On June 10, 2005, the Respondent replied via email refusing to give up the name under duress.

There was contemporaneous email correspondence at a more amicable level between the Complainant’s talent manager, Jai Khanna of Brillstein-Grey Entertainment, Beverly Hills, California, and the Respondent concerning possible purchase of the domain name which remained unresolved at the time the Complaint was filed.

5. Parties’ Contentions

A. The Complainant

The Complainant argues that she has common law trademark rights in her name by virtue of her extensive commercial activities in the entertainment industry, as well as under the Lanham Act, Section 2(d), 15 U.S.C.A. 1052(d). She argues that the disputed domain name is identical to her common law mark “Vanessa Minnillo” but for the addition of “.com”. She concludes that the domain name is therefore identical or confusingly similar to a name in which she has rights.

The Complainant states that the Respondent is not licensed by the Complainant and has not obtained permission, either express or implied, from the Complainant to use and/or register her name or mark in any domain name. The Complainant argues that she had already featured in numerous television programmes and had acquired common law trademark rights in her name before the Respondent registered the domain name on October 17, 2001.

The Complainant submits that the Respondent is not using the domain name in connection with a bona fide offering of goods or services, nor is there evidence of preparation for such use.

The Complainant goes on to argue that the Respondent’s registration of the domain name prevents the Complainant from using it and “wastefully restrains the legitimate and proper use of the Domain Name and unlawfully tarnishes Complainants [sic] name or mark”. The Respondent has thus registered the domain name in order to prevent the owner of the mark from reflecting the mark in a corresponding domain name.

The Complainant reasons that the Respondent knew or should have known of the Complainant prior to registering the domain name and so acted in bad faith. Moreover, the Complainant alleges that the Respondent provided a false name and address to the Registrar. The U.S. and Canadian postal authorities have confirmed that neither the Respondent’s name nor the address provided exist. The Complainant argues that the provision of false, incomplete or inaccurate registration information is another indicator of bad faith registration.

Finally, the Respondent has made a monetary demand of 5000 United States dollars for transfer of the domain name and has refused to provide any documentation verifying the Respondent’s out-of-pocket costs.

B. The Respondent

The Response was filed out of time. The Response due date was August 28, 2005.

The Center received the Response at 5.03 a.m. on August 29, 2005. The Respondent is located in Newfoundland, Canada, which means that the Response was submitted at 12.33 a.m. on August 29, 2005. The Panel observes that it is the spirit and intention of the Policy and Rules to see that parties are treated fairly and are not prejudiced by very minor procedural defaults which will not significantly delay the decision nor alter their positions vis-à-vis each other. The Panel has therefore considered the Response.

The Respondent submits that his intention was to develop a not for profit fan website attaching to the disputed domain name. He states that, contrary to the Complainant’s allegations, he did not register the name in October 2001, but purchased the name for 500 United States dollars on April 19, 2005.

The Respondent retorts that he did not give a false or misleading address to the Registrar when he took possession of the disputed domain name and so did not act in bad faith.

The Respondent argues that his dealings with the Complainant’s representatives were in good faith since he was not prepared to be bullied by the Complainant’s attorneys when he was already in dialogue with the Complainant’s talent manager. In particular, he argues that the talent manager had agreed that, “I should be reimbursed for any out of pocket costs. It was not my intention to sell this name but if I were to sell the name to Jai all I wanted was monies I had initially paid. The $5000 should have been $500 therefore was merely a typo, however I am still open to accepting out of pocket costs as Jai Khanna as [sic] stated to me on a number of occasions”.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(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.

Having considered the submissions of the parties and the available evidence, the Panel finds the following:

A. Identical or Confusingly Similar

There is no indication that the Complainant has any registered trademark rights. Accordingly, in this case there are two questions to be considered under this heading. Does the Complainant have unregistered trademark rights? If so, is the trademark identical or confusingly similar to the disputed domain name?

The question of rights in a personal name has been the subject of numerous UDRP panel decisions. Paragraph 4(a)(i) of the Policy speaks of trademarks or service marks. Merely being famous, per se, is not enough if there is no trade or commerce conducted under or in connection with the name. The Complainant must show that the name has become a distinctive identifier associated with the Complainant’s good or services. In the case of Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 it was said:

“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 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 regard to the evidence put to this Panel by the Complainant, it is decided that unregistered trademark rights have been established.

Although more relevant under the third element (bad faith), the Panel moves on to decide whether these rights accrued before the Respondent registered the domain name. On the Complainant’s construction of the facts, that question would be tested as at October 17, 2001, when the domain name was registered. Whether the Complainant could be said to have enjoyed unregistered rights in her name then is an open question. She had won the “Miss Teen USA” pageant in 1998, but was still two years away from appearances on MTV. The Panel has however taken the view that it is unnecessary to resolve that question. The Respondent states that he purchased the domain name through “www.sedo.com” on April 19, 2005. That website promotes itself as “the leading marketplace for buying and selling domain names and websites”. Amongst other things, it offers a brokering service for those wishing to acquire a specific domain name already registered to another. From the available evidence, it seems that the Respondent acquired the domain name for 500 United States dollars by purchasing it from an earlier registrant. The evidence submitted by the Respondent shows that he did so on April 19, 2005, and so the proper question is whether the Complainant had common law or unregistered trademark rights in her name on that date. The Panel is of the view that her trademark rights were clearly established by that time.

Finally, on the question of confusing similarity, it is well established that the mere addition of a gTLD suffix such as “.com” to a trademark does nothing to dispel confusion and so the Panel finds that the requirements of paragraph 4(a)(i) of the Policy are satisfied.

B. Rights or Legitimate Interests

Having taken into full account the arguments presented by both parties this Panel endorses and applies the reasoning in Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210, where it was held that:

“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.”

Nonetheless, this Panel is aware that in this case there is a short time interval between the Respondent’s acquisition of the domain name and the Complainant’s demand letter. In particular, the Respondent’s evidence shows that whilst agreement to purchase the domain name was concluded on April 19, 2005, it was not until May 10, 2005, that the Respondent was formally recorded as the current registrant. It was then less than one month before the Respondent was contacted by the Complainant’s representatives.

The Respondent claims to have purchased the domain name for the purpose of establishing a fan site. Although panelists differ in their views as to whether a fan site might constitute a right or legitimate interest in a domain name that includes another’s trademark, what is clear is that it would have helped the Respondent’s case if the site was active. That is not the case here, and there is no other compelling evidence from the Respondent. Accordingly, the Panel finds that the Complainant has also satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant argues that the Respondent gave false address data to the Registrar. This might have been an indication of bad faith, however the case file shows that the Center successfully consigned a courier package to the Respondent’s given street address in Canada and that the package was delivered and signed for by an S Morgan on August 12, 2005. The Panel therefore rejects this argument of bad faith.

In this case, the Respondent has shown an act of bad faith, clearly identified by paragraph 4(b)(i) of the Policy, when he offered to sell the domain name to the Complainant’s talent manager for 5000 United States dollars. That amount is tenfold the Respondent’s out-of-pocket purchase costs for the domain name four weeks earlier.

The Respondent argues that this was a typographical error and that the amount should have been the 500 United States dollars purchase price. The evidence against acceptance of that claim must be (i) the fact that the Respondent did not provide the proof of purchase paperwork although the Complainant’s agent called for it more than once, and (ii) the language of the email dialogue where in reply to the second request from the Complainant’s agent to “provide documentation of your purchase and we will send you a check”, the Respondent replied, “I don’t care if you send a check or not. These are costs”.

On balance the Panel rejects the Respondent’s claim of a typographical error and finds sufficient circumstantial evidence that the Respondent acquired the domain name principally for the purpose of selling it to the Complainant for a consideration in excess of his documented out-of-pocket costs.

Accordingly the Panel finds that the Complainant has satisfied the third and final element of the Policy.

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, <vanessaminnillo.com> be transferred to the Complainant.

Debrett G. Lyons
Sole Panelist

Dated: September 27, 2005