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Morgan Freeman v. Mighty LLC [2005] GENDND 276 (28 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Morgan Freeman v. Mighty LLC

Case No. D2005-0263

1. The Parties

The Complainant is Morgan Freeman, Santa Monica, California, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.

The Respondent is Mighty LLC, Charlestown, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <morganfreeman.com> is registered with GKG.Net, Inc. (formerly GK Group LLC).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2005. On March 14, 2005, the Center transmitted by email to GKG.Net, Inc. a request for registrar verification in connection with the domain name at issue. On March 15, 2005, GKG.Net, 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 March 17, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2005.

The Center appointed Peter G. Nitter as the sole panelist in this matter on April 14, 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 the world famous actor Morgan Freeman doing business c/o Revelations Entertainment LLC. In the last 40 years he has appeared in more than 50 movies, numerous television shows, and plays. Since 1971, Mr. Freeman has appeared in 37 movies. Mr. Freeman’s name is used in ads to promote these films. Mr. Freeman’s movies are available internationally in theaters, on home video and DVD, pay TV, on airlines and on hotel/motel pay-per-view systems. Mr. Freeman has been nominated to, and has won, many awards for his work with the movies. Mr. Freeman is ranked number 31 on Empire Magazine’s “top 100 Movie Stars of All Time” list.

Mr. Freeman has also had a long presence on television. He has participated in children’s programs, drama, different shows and voiceovers. Mr. Freeman has also had many stage appearances.

Mr. Freeman has, since 1993, also worked behind the camera. Currently he has several projects in development including projects for Disney, Paramount and Dreamworks.

Mr. Freeman is frequently profiled in the press.

In 1964, Mr. Freeman registered his name with the Screen Actors Guild and has maintained his membership since then. In addition, on December 13, 2004, Mr. Freeman filed an application to register “MORGAN FREEMAN” as a trademark in connection with entertainment services, in the United States Patent and Trademark Office. The application (serial number 75/531,828) is currently pending.

On December 8, 2004, January 6, 2005, and February 9, 2005, Complainant sent demand letters to Respondent and required Respondent to transfer the domain name to Complainant. On February 10, 2005, Respondent responded by email stating: “Your client isn’t the only Morgan Freeman. Why do you think he/she is entitled to the domain name?”

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

As a result of Mr. Freeman’s performances, promotion, critical acclaim and industry and public recognition, the name and common law mark MORGAN FREEMAN has become well known to the public. The name has enormous value and goodwill and identifies Mr. Freeman uniquely and exclusively as the source of services and products to which his name is applied. Complainant has established strong common law trademark rights in MORGAN FREEMAN based on his extensive use of the name in connection with entertainment services for more than 40 years.

The Policy does not require that marks at issue be registered. Common law rights in general are recognized and names of celebrities are protected under the Policy.

The domain name at issue is identical to Complainant’s MORGAN FREEMAN mark save for the “.com” suffix. This addition does not serve to distinguish the domain name from the mark.

Rights or Legitimate Interests

The domain name was registered after Complainant had established strong rights in his name and mark.

There exists no relationship between Complainant and Respondent that would give rise to any license, permission or authorization by which Respondent could own or use the name.

Respondent has never received any consent from Complainant to use the mark. Respondent has no connection to the Complainant, and Respondent is not known by the name “Morgan Freeman”.

The domain name leads to a website that contains a search engine portal with sponsored links of third parties that provide Respondent with a commercial benefit. There is no bona fide authorized offering of goods and services. Respondent is using Complainant’s mark to induce Internet users to come to his website by creating a likelihood of confusion.

Respondent lacks the right to use Complainant’s MORGAN FREEMAN mark in the domain name since it suggests that Complainant is or may be authorizing or sponsoring a website associated with the domain name or that the domain name is a means of contacting the Complaint.

The mark is so well known that it is not reasonably possible for Respondent to demonstrate any bona fide legitimate interest in a domain name that includes Complainant’s mark.

Registered and Used in Bad Faith

Respondent has registered and used the domain name in bad faith.

Respondent is using the domain name for its commercial benefit to lure Internet users to its website. Internet users entering the domain name of a celebrity expect to find a site offering goods or services associated with the celebrity’s trademark. Here they find a site that has no association with Complainant or his mark. The domain name is thus being used in bad faith.

Respondent owns in excess of 400 domain names including <jamesstewart.com>, <lizaminelli.com>, <denvernuggets.com>, <nyyankees.com> and <disneychannelgames.com>. This shows that Respondent has engaged in a pattern of registering domain names to prevent the trademark owner from registering a domain name corresponding to his mark.

The fact that Respondent has taken Complainant’s very mark as its domain name also is evidence of bad faith. The name is obviously connected with Complainant. The use by Respondent, who has no connection with the Complainant, in connection with a website that has no connection with the Complainant suggests “opportunistic bad faith”.

The very fact that Respondent registered the domain name establishes bad faith use and registration.

B. Respondent

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

Previous correspondence between Respondent and Complainant is referred to section 4 above.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant’s mark MORGAN FREEMAN is unregistered. The Complainant predicates its case on common law rights it has acquired through use of its mark MORGAN FREEMAN in commerce and specifically in connection with movies and entertainment.

To establish rights in a personal name for the purposes of Paragraph 4(a) of the Policy it is necessary to show that the name has been used as an indication of the source of goods or services supplied in trade or commerce and as a result of such use the name has become distinctive of that source.

In this case the Panel finds it evidenced that the public associates the name “Morgan Freeman” with the Complainant’s movies and entertainment services. Moreover, albeit more relevant under the bad faith discussion below, Complainant’s common law rights in the mark MORGAN FREEMAN existed long before the domain name at issue was registered.

Numerous panels have, when faced with unregistered marks, upheld their protectable status under the Policy. See e.g. True Blue Productions, Inc. v. Chris Hoffmann, WIPO Case No. D2004-0930, and the cases cited therein.

The suffix “.com” does not distinguish the domain name at issue from Complainant’s mark.

Therefore the Panel finds that the domain name <morganfreeman.com> is identical to Complainant’s mark MORGAN FREEMAN.

B. Rights or Legitimate Interests

The Panel has considered Complainant’s allegation that the Respondent does not have any rights or legitimate interests in respect of the domain name at issue. Since Respondent is in default, these allegations have not been contested, and the Panel finds it very unlikely that Respondent could be in a position to claim any rights in the domain name at issue.

Because it is generally difficult for Complainant to prove the fact that Respondent does not have any rights or legitimate interests in the domain name at issue, while Respondent at the same time is given ample opportunity to demonstrate any such rights or legitimate interests pursuant to paragraph 4(c) of the Policy, previous decisions under the UDRP have found it sufficient for Complainant to make a prima facie showing of its assertion.

The Panel finds that the circumstances mentioned and evidenced by Complainant clearly establish a prima facie showing that Respondent has no rights or legitimate interests in the domain name at issue.

As Respondent has not at all demonstrated any of the three circumstances that constitute rights to or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy, the Panel concludes that the Respondent does not have any rights or legitimate interests in respect of the domain name at issue.

C. Registered and Used in Bad Faith

The Panel has considered Complainant’s assertions and evidence with regard to the Respondent’s registration and use of the domain name in bad faith. By not submitting a response, Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the domain name at issue in bad faith.

The Respondent must have known of the Complainant’s well-known mark MORGAN FREEMAN when the disputed domain name was registered. The Panel finds it likely that Respondent registered the domain name in order to misleadingly divert traffic to its site.

On this background the Panel accepts the Complainant’s assertion that the Respondent’s registration of a domain name similar to the trademark of the Complainant is an attempt to unfairly benefit from the Complainant’s trademark. The fact that the Internet website corresponding to the domain name at issue until recently consisted of a search engine that listed an array of available searches, some of which related to entertainment, shows that Respondent is aware of Complainant and his mark. So does the email sent from Respondent to Complainant on February 10, 2005.

The Panel furthermore finds it evidenced that the Respondent previously has been found to be involved in certain registrations of various domain names that include famous trademarks in an annex to the Complaint. The Panel sees this as further indication of bad faith.

The Panel concludes that the Respondent registered and used the domain name in bad faith.

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 <morganfreeman.com> be transferred to the Complainant.

Peter G. Nitter
Sole Panelist

Dated: April 28, 2005