WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Isabelle Adjani v. Second Orbit Communications, Inc.
Case No. D2000-0867
1. The Parties
The Complainant is Mlle. Isabelle Adjani of Geneva, Switzerland.
The Respondents are Second Orbit Communications Inc and Mr. Shi Young both of Mountain View, CA 94043, United States of America.
2. The Domain Name and Registrar
The domain name at issue is:
Isabelle-A
and the Registrar is:
Alabanza, Inc
d/b/a BulkR
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on July 25, 2000, [electronic version] and on July 26, 2000, [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is
August 16, 2000.
On August 3, 2000, the Center transmitted via email to Alabanza Inc a request for registrar verification in connection with this case and on the same day Alabanza Inc transmitted by email to the Center Alabanza Inc's verification response confirming that the registrant is Second Orbit Communications Inc and that the contact for both administrative and billing purposes is Mr. Shi Young at Second Orbit Communications, Inc.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on August 16, 2000, to
postmaster@isabelle-a; and to
shiyung@
this Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by September 4, 2000. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to:
Shi Young
Second Orbit Communications, Inc
2672 Bayshore Parkway
Suite 820
Mountain View, CA 94043
United States of America
No Response was received from the Respondents by the due date of September 4, 2000. On September 13, 2000, Notice of Respondent Default was sent to the Complainant and to the Respondents using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings. No reply by the Respondents to the Notification of the Respondents' Default was received.
Having received on September 25, 2000, Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was October 9, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from the Respondents.
4. Factual background
4.1 The Complainant
The Complainant, Isabelle Adjani, is a well-known film actress, whose films include:
Diabolique (1996): La Reine Margot (1994): Toxic Affair (1993): Camille Claudel (1988): Ishtar (1987): Subway (1985): L'Et� Meutrier [One Deadly Summer] (1983): Mortelle Randeonn�e [Deadly Circuit] (1983): Antonieta (1982): Quartet (1981): Possession (1981): L'ann�e Prochaine si tout va bien [Next year, if all goes well] (1981): Tout feu, tout flamme [All fired up] (1981): Clara et les chics types (1980): Les Soeurs Bront� [The Bronte Sisters] (1979): The Driver (1978): and L'Histoire d'Ad�le H [the Story of Adele H] (1975).
The Complainant is widely featured in celebrity publications, movie reviews, entertainment publications and television shows. She has achieved a number of prestigious awards, including:
h two Academy Award nominations for Camille Claudel (1988) and The Story of Adele H (1975);
h the Cannes Film Festival Best Actress Award for Quartet (1981);
the Best Actress Silver Berlin Bear at the Berlin International Film Festival for Camille Claudel (1988);
h 4 French C�sar Awards for Possession (1981): L'Et� Meutrier (1983); Camille Claudel (1988); and La Reine Margot (1995); and
h the New York Film Critics Circle Best Actress Award for The Story of Adele H (1975).
4.2 The Complainant's Mark
The Complainant relies on her rights in her real name, Isabelle Adjani, under which she has achieved international recognition and acclaim for the activities identified in paragraph 4.1 above. Use of that name has come to be recognised by the general public as indicating an association with the Complainant and her activities as an actress. As a result, the Complaint asserts that she has rights in her name.
4.3 As a resident in Switzerland, the Complainant claims a right to her name under Arts. 28 and 29 of the Swiss Civil Code. Art. 29.2 provides:
"Where a person assumes the name of another to the latter's prejudice, the latter can apply for an injunction to restrain the continuation of this assumption, and can in addition claim damages if the act is proved to be wrongful, and moral compensation if this is justified by the nature of the wrong suffered."
4.4 In the Jeanette Winterson case [Case No. D2000-0235] this Panel decided that a trademark for the purposes of paragraph 4a(i) of the Policy is not required to be a registered trademark. That decision was followed by the three party tribunal in the Julia Roberts Case [Case No. D2000-0210]. Applying English law in the Jeanette Winterson Case this Panel further decided that a proper name was protectable other than by an action for trade mark infringement citing, inter alia, the Glaxo case [Glaxo plc .v. Glaxo-Wellcome Ltd (1996) FSR 388 and the One in a Million case [British Telecommunications plc & Others, v, One in a Million Ltd (1999) FSR 1 (C.A.).
4.5 In the Julia Roberts case the Complainant alleged that unauthorized use of her name amounted to an infringement of her common law trade mark rights by likelihood of confusion [United States Lanham Act 15 USC Section 105(d)]. The Panel found that the name Julia Roberts has sufficient secondary association with the Complainant that common law trademark rights do exist under United States trademark law. This is consistent with the earlier Decision of the National Arbitration Forum in Cedar Trade Associates Inc .v. Greg Ricks [File No: FA002 000093633 of February 25, 2000].
4.6 The Respondents
In the absence of a Response, the only information relating to the Respondents is contained in the Complaint. This is that the Respondent Company has its place of business in Mountain View, California and that the Respondent Mr. Shi Young, the Administrative and Billing contact for the domain name in issue, is located at the same address.
4.7 The domain name in issue was registered on April 25, 2000, and the Complaint states that it does not resolve to an active website. The Panel can confirm that there is no active website from its own search against the domain name made on September 29, 2000.
5. Parties' Contentions
A. The Complainant
The Complainant contends that the Respondents have registered as a domain name a mark which is identical to the Complainant's name in which the Complainant has trademark rights, that the Respondents have no rights or legitimate interests in respect of that domain name and that the Respondents have registered and are using that domain name in bad faith.
B. The Respondents
No Response or any communication relating to the Complaint has been received from the Respondents or either of them.
6. Discussions and Findings
6.1 The Policy paragraph 4a provides that the Complainant must prove each of the following:
h that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
h the Respondent has no right or legitimate interests in respect of the domain name; and
h the domain name has been registered and is being used in bad faith.
6.2 Identical or Confusingly Similar
The Rules paragraph 15(a) provide that a Panel shall decide a Complaint on the basis, inter alia, of
"� any rules and principles of law that it deems applicable."
The Complainant is resident in Switzerland and the Respondents give an address in the United States of America. To the extent that it assists in determining whether the Complainant has met her burden under paragraph 4a(i) of the Policy to establish that she has trademark rights in her name Isabelle Adjani, the Panel can look at applicable decision and laws of both countries. From the Julia Roberts case it seems clear that under the law of the United States of America it is possible for a well known actress to have protectable common law trademark rights in her name. Under Swiss law it appears that the Complainant has protectable rights, akin to trademark rights, in her name. Applying case law developed under the Policy the Panel refers to its own Decision in the Jeanette Winterson case, the Cedar Trade Associates case [paragraph 4.6 above] and, again, to the Julia Roberts case.
6.3 The Panel is, therefore, satisfied that the Complainant has, for the purposes of the Policy, trademark rights in her name. The domain name in issue is identical to the Complainant's mark. The Complainant, therefore, meets the requirements of paragraph 4a(i) of the Policy.
6.4 Rights or Legitimate Interests
Paragraph 4(c) of the Policy identifies circumstances which, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented shall demonstrate the Respondents' rights or legitimate interests for the purposes of paragraph 4a(ii) of the Policy.
6.5 No Response has been filed. There is, therefore, no evidence before the Panel to indicate that the Respondents' could bring themselves within one or more of the circumstances set out in paragraph 4(c) of the Policy or could otherwise establish rights or legitimate interests in the domain name in issue. Indeed, because the domain name in issue does not resolve to an active website, indications are that the Respondents are incapable of satisfying any of those circumstances. Further, the Complainant has not licensed or otherwise permitted the Respondents to use the ISABELLE ADJANI name / mark or to apply for or use any domain name incorporating that mark.
6.6 In the circumstances, the Panel can find no evidence that would tend to establish that the Respondents have rights or legitimate interests in respect of the domain name at issue. The Complainant, therefore, succeeds in establishing the requirements of paragraph 4a (ii) of the Policy.
6.7 Registered and Used in Bad Faith
Paragraph 4b of the Policy sets out circumstances which, if found by the Panel to be present ... shall be evidence of the registration and use of a domain name in bad faith". These circumstances are not exhaustive of the circumstances indicating registration and use in bad faith.
6.8 Registration in Bad Faith
Unlike the Jeanette Winterson and Julia Roberts cases there is no evidence in this case that the Respondents have engaged in a pattern of registering domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. However, it has been held that failure to file a Response entitles the Panel to draw an inference adverse to the Respondents [Talk City .v. Michael Robertson Case D2000-0009]. This is consistent with paragraph 14(b) of the Rules. In the Panel's view, there is no basis for finding that the Respondents in this case can have had any good faith reason for registering the domain name in issue.
6.9 Bad Faith
Again, unlike the Jeanette Winterson and Julia Roberts cases there is no evidence in this Case that the Respondents have offered to sell the domain name in issue for valuable consideration in excess of their documented out of pocket costs directly related to the domain name such as, for example, putting up the domain name for auction. However, it has been held that inaction (i.e. passive holding) can amount to bad faith use [Case D2000-003 Telstra Corporation .v. Nuclear Marshmallows]. Again, in the Panel's view, there is a total absence here for any finding of good faith use by the Respondents.
6.10 The Panel, therefore, finds that the Complainant has succeeded in fulfilling the third leg of the requirements under paragraph 4a of the Policy.
7. Decision
For all the foregoing reasons, the Panel decides that the Complainant has satisfied each of the three elements of paragraph 4a of the Policy. Accordingly, the Panel requires that the registration of the domain name isabelle-a be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: October 4, 2000
Full & Egal Universal Law Academy