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Janine Turner v. Mercedita Kyamko [2005] GENDND 21 (27 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Janine Turner v. Mercedita Kyamko

Case No. D2004-1036

1. The Parties

The Complainant is Janine Turner, c/o Terri Lacy, Houston, Texas United States of America, represented by Andrews & Kurth, LLP, United States of America.

The Respondent is Mercedita Kyamko, CSEZ Clarkfield, Angeles City, Pampagna Philippines.

2. The Domain Name and Registrar

The disputed domain name <janineturner.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2004. On December 8, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On December 3, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com 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 December 16, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2005.

The Center appointed Jacques A. Léger as the sole panelist in this matter on January 13, 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

Complainant is an actress who has appeared in several movies and television series. Her list of movie credits includes; No Regrets, The Curse of the Inferno, Leave it to Beaver, Cliffhanger, The Ambulance, Steel Magnolias, Monkey Shines and Knights of the City, to name a few. She also had a starring role in the well-known television series Northern Exposure, which led to a nomination for an Emmy Award for Outstanding Lead Actress in a Drama Series, and to a nomination for a Golden Globe Award for Best Performance by an Actress in a TV-Series – Drama. Her other television credits include Beauty, Santa Barbara, and General Hospital. Complainant does not own a trademark registration for the mark “JANINE TURNER”.

Respondent is an individual who registered the disputed domain name, and is today using it to redirect Internet traffic to another website, “www.clubpink.com”.

5. Parties’ Contentions

A. Complainant

Complainant claims that, as a well known actress, she possesses common law trademark rights in her name, “Janine Turner”. She argues that through an extended period of continuous use, she has developed extremely valuable goodwill in connection with her name. Complainant also alleges that she has expended substantial amounts of time, effort, and money to ensure that the public associates her name exclusively with her. As a result, Complainant argues that her name has acquired sufficient secondary meaning and common law trademark rights to be enforced through this UDRP proceeding.

Complainant also argues that Respondent has no legitimate interest in the name “Janine Turner” since no services are offered by Respondent under the name “Janine Turner”, and that it is highly unlikely that Respondent is commonly known by the name “Janine Turner”. Complainant alleges that Respondent is not using the disputed domain name in any legitimate non-commercial manner, nor in a manner that constitutes fair use. Complainant adds that Respondent currently has configured the disputed domain name to direct users to a pornographic website, which has the effect of confusing internet users and tarnishing the reputation of Ms. Turner. Moreover, Complainant contends that Respondent has no legitimate interest in the disputed domain name since it is advertised as “for sale”.

Complainant argues that Respondent registered the disputed domain name in bad faith because it replicates Complainant’s mark and is used solely to attract users to a pornographic website. Complainant adds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy the Complainant must convince the Panel of three elements. In order to have the Domain Name transferred, it is incumbent upon the Complainant to cumulatively show that:

(i) the Domain Name is identical or confusingly similar to a trademark in which it holds rights; and

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

(iii) the Domain Name was registered and used in bad faith.

Generalities

Paragraph 4(2) in fine of the Policy states that “in the administrative proceeding, the complainant must prove that each of these three elements are present”. Therefore, there is a burden on Complainant to demonstrate and prove each one of these three elements to the Panel’s satisfaction. Normally, mere allegations do not constitute sufficient proof. In this case, the Panel has taken note of the assertions made by the Complainant but also noted that the Complainant has provided little, if any, supporting evidence. Moreover, the area of unregistered rights is less clear than that of registered rights and the extent to which the UDRP affords protection to personal names that have not been registered as a trade or service mark, is a somewhat unsettled area. Had the Respondent contested the Complaint, made assertions, and/or file supporting evidence, the Panel would not have had the same latitude to make the same findings it did in the present case. However, by failing to respond, the Respondent has allowed greater latitude to the Panel in considering Complainant’s allegations in light of a negative inference to be drawn by such failure. The Complainant is perhaps rather fortunate in this respect. See, for example, Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service. (WIPO Case No. D2004-0108, July 22, 2004), wherein the Panel decided that “If the Complainant does not provide such evidence then it runs a serious risk that the Respondent may be able to sufficiently muddy the waters and prevent a transfer. In this instance the Complainant was perhaps fortunate that the Respondent defaulted and did not reply, indeed the Respondent’s behaviour on receipt of the Complaint assisted the Complainant’s case”. Therefore, had Respondent not defaulted in this case, the lack of evidence in the Complaint beyond the mere allegations made may well have been fatal to the Complaint. However, since Respondent has failed to even attempt to challenge Complainant’s assertions and allegations, given the circumstances (a personal name case; re-direction of disputed domain name to a website with pornographic content; proprio motu internet search by Panel on fame of Complainant, etc.), the Panel, after much deliberation, came to the conclusion that a negative inference can be drawn to the effect that these uncontested assertions may constitute sufficient evidence to qualify for relief under the Policy. See Pivotal Corporation v. Discovery Street Trading Co. Ltd. (WIPO Case No. D2000-0648, August 14, 2000).

(i) Identical or Confusingly Similar

Complainant’s Rights in the mark

Although well-known personal names may benefit from protection under the UDRP based upon unregistered trademark rights, as other unregistered trademarks, Complainants should by no means assume that such protection exists automatically. For instance, in Gordon Sumner, p/k/a Sting v. Michael Urvan, (WIPO Case No. D2000-0596), the Panel found that the well known rock singer Sting did not necessarily have rights in the name “Sting” as a trademark simply because he was well known by that name. In Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, (WIPO Case No. D2000-1532), the Panel stated “In the view of this Panel, it is by no means clear from the UDRP that it was intended to protect proper names of this nature”.

Perhaps even more instructively, in the case of Israel Harold Asper v. Communication X Inc, (WIPO Case No. D2001-0540), the Complainant, Israel Harold Asper, was a businessman and claimed widespread public recognition throughout Canada and indeed internationally as the founder of CanWest Global Communications Corp, together with being an accomplished lawyer, politician, and philanthropist. However the Panel, whilst it accepted that the Complainant had a deservedly famous name, which may provide him with a remedy before a national court, this did not extend to protection under the UDRP and he did not have sufficient rights in a trademark or service mark. The UDRP should not be, and indeed has not been, extended to all personal names regardless of their degree of celebrity or fame, which, in any event, is highly subjective. See also the above-mentioned case Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service, WIPO Case No. D2004-0108 wherein the Panel found that, in such disputes, “the case needs to be made by the Complainant each and every time, if it is not and a Respondent makes a sufficiently robust argument in defense then such a Complaint may well fail if there is a lack of clear, cogent and convincing evidence”. Simply put, the default of the Respondent does not remove the burden that Complainant needs to meet to establish the three criteria in paragraph 4(a) of the Policy.

While Complainant does not own a registered trademark on the name “Janine Turner”, it is widely recognized that extensive use of and reputation in a name can confer upon a complainant common law rights over a given name. See Stephanie Seymour v. Jeff Burgar d/b/a Stephanie Seymour Club (Nat. Arb. Forum Claim Number FA0104000097112, May 29, 2001) (wherein the Panel found that “although Complainant’s name is not presently registered as a trademark, her fame as a supermodel and actress evidences a reputation worthy of protection under common law trademark laws against passing off or misappropriation”) and Kevin Spacey v. Alberta Hot Rods (Nat. Arb. Forum, August 1, 2002) (wherein the Panel found that “a celebrity may have sufficient proprietary rights in their name to satisfy the standing requirement of Policy 4(a)(i)” in this respect. However, as it has been found in the above-mentioned Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service,

“The assertion that someone is well known or famous is subjective, but certainly easier to prove in the case of celebrities known worldwide such as Nicole Kidman and Julia Roberts and in the Complaints concerning these celebrities such assertions were also evidenced and thus clearly proven. However when someone has a lesser degree of renown, there is a greater need for this evidence, and thus in the view of the Panel, the lesser the degree of fame the greater the evidential burden becomes. One might say that the level and quality of the evidence necessary should be inversely proportional to the notoriety of the person concerned. In any event it needs to be clear, cogent and convincing.”

(emphasis added)

In that case, the Panel found that Complainant was fortunate that the degree of fame of “Tony Snow” was easily verifiable by entering “Tony Snow” as a search term on “www.google.com”, and therefore concluded that there was clear, cogent and convincing evidence that common law trademark rights exist in the personal name Tony Snow. In the present case, for lack of supporting evidence by Complainant, the Panel has took it upon itself to conduct a similar search of information and images related to the name “Janine Turner” on “www.google.com”, and it has instantly noticed that Complainant does indeed possess, at least that can be found through internet search engines, a degree of fame which can lead one to an inference that she has developed common law trademark rights in her personal name.

In addition, it has been asserted in the Complaint, and has not been contested thereafter, that Complainant is an actress who has appeared or starred in many movies and television series. She has been nominated for an Emmy Award for Outstanding Lead Actress in a Drama Series and for a Golden Globe Award for Best Performance by an Actress in a TV-Series for her work in the television series Northern Exposure. These uncontested assertions, together with the Panel’s own internet search allow it to conclude that common law trademark rights exist in the personal name Janine Turner, and the Panel so finds in the present case.

Identical or Confusingly Similar

The disputed domain name is identical to Complainant’s “JANINE TURNER” mark, except for the “.com” generic top-level domain which does not serve to distinguish the disputed domain name from Complainant’s trademark. See: Pierce Brosnan v. Network Operations Center (WIPO Case No. D2003-0519, August 27, 2003), Toronto Star Newspapers Limited v. Virtual Dates Inc. (WIPO Case No. D2000-1612). The Panel finds it reasonable to apply the same reasoning as in Pomelatto S.p.A. v. Tonetti , D2000-0493 (WIPO July 7, 2000), where the panel found <pomelatto.com> to be identical to Complainant’s mark because the generic top-level domain “.com” after the name POMELATTO was not relevant.

Therefore, the Panel finds that the disputed domain name is virtually identical and confusingly similar to Complainant’s trademark.

(ii) Rights or Legitimate Interests

While the lack of supporting evidence by Complainant has been duly noted by the Panel for the arguments made in the Complainant with respect to this element, the Panel finds that, in the present circumstances, adopts the principle of negative inference resulting form Respondent’s failure to respond, and refers to the case Pivotal Corporation v. Discovery Street Trading Co. Ltd. (WIPO Case No. D2000-0648, August 14, 2000), wherein the Panel found that “although there may not be a reversal of burden of proof as such, the failure by the Respondent to adequately address this, once alleged, is a factor which the Panel may take into consideration when judging the existence of a legitimate right or interest”.

It has been alleged in the Complaint, and the Panel has verified proprio motu, that Respondent’s only use of the website located at the disputed domain name is to redirect Internet users to another website which features pornographic material, “www.clubpink.com”. It is the Panel’s opinion that, in the current state of affairs, the Respondent cannot claim to “use” the disputed Domain Name in connection with a bona fide offering of goods and services, as it is merely attempting to attract and divert online traffic to its other website¹ and this cannot constitute a bona fide offering of goods and services. In addition Respondent has not submitted any evidence demonstrating that it has been commonly known by the disputed Domain Name², and therefore cannot benefit from Par 4(c)(ii) of the Policy.

Furthermore, no attempt was made by Respondent to demonstrate that it is making a legitimate noncommercial or fair use of the disputed Domain Name (which could have been an exception), and the Panel nonetheless finds that this is not the case, as Respondent is clearly using the disputed domain name to redirect internet traffic to another site for commercial gain. The fact that the disputed domain name is advertised as “for sale” reinforces the Panel’s finding herein.

Moreover, it has been recognized that Internet users expect to find a celebrity on the Internet at a domain name address comprised of the celebrity’s name. See Dr. Michael Crichton v. Alberta Hot Rods (WIPO Case No. D2002-0872, November 25, 2002). The Panel sees no reason, given the circumstances and the evidence filed before it, not to apply this principle to the case at hand.

For all these reasons, the Panel finds that Complainant has satisfactorily discharged its burden to prove that Respondent has no rights or legitimate interests in the disputed domain name.

(iii) Registered and Used in Bad Faith

Showing actual bad faith with positive evidence can be quite difficult, particularly given the limited scope of the inquiry in these proceeding. While good faith is to be presumed, it is the Panel’s understanding of the Policy is that although the initial burden to prove Respondent’s bad faith in the registration or the use of the disputed domain name lies squarely on the shoulders of Complainant, once a prima facie case of bad faith has been made by Complainant, as the Panel finds in the present case, it is up to Respondent to either justify its business conduct, explain it, or demonstrate satisfactorily the contrary. See, to this effect: The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez (WIPO Case No: D2002-0823, December 3, 2003); AT&T Corp. v. Linux Security Systems (WIPO Case No. DRO2002-0002, October 11, 2002).

It is the Panel’s view that Complainant has satisfactorily discharged its initial burden of making a case of registration and use in bad faith in the case at hand. The Panel can see no reason for the current use of the disputed domain name other than the attraction, for commercial gain, of Internet users to another, unrelated website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, the whole in contravention of Paragraph 4(b)(iv) of the Policy. Respondent has submitted no evidence demonstrating that it would have any other reason to incorporate the mark “JANINE TURNER” in the disputed domain name, especially since it is used solely for redirection to another website. Moreover, Complainant has asserted, and Respondent has not disputed, that Respondent has a history of registering celebrity domain names, and that at in least one instance, such domain names have been transferred from Respondent or a parent company back to a Complainant. See Shelton J. Lee v. Mercedita Kyanmco (WIPO Case No. D2004-0483, August 17, 2004).

In fact, Respondent has not even attempted to rebut the prima facie case of bad faith made by Complainant in its Complaint.

For these reasons, the Panel finds, after much deliberation, and through the benefit of the reverse onus, since Respondent has not even attempted to discharge herself from, that Complainant has discharged her burden of demonstrating that the registration and use of the disputed domain name by Respondent was made in bad faith.

The Panel deems it appropriate to reiterate that since it was faced with a case involving a person’s name, where there has been no Response, and since the website operated at the disputed domain name is used strictly to redirect internet users to a pornographic website, it has found it compelling to find in favor of Complainant. However, had these circumstances been any different, counsel’s failure to submit supporting evidence might have been fatal to the Complaint.

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, <janineturner.com> be transferred to the Complainant forthwith.

Jacques A. Léger Q.C.
Sole Panelist

Dated: January 27, 2005

² See Guardian Industries Corp. V. Siam Plate Glass Industry Ltd. (Nat. Arb. Forum, March 25 2002).