WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Helen Fielding v. Anthony Corbert aka Anthony Corbett
Case No. D2000-1000
1. The Parties
The Complainant is Helen Fielding, an individual, with address in Los Angeles, California, USA.
The Respondent is Anthony Corbert, also known as Anthony Corbett, with address in Plantation, Florida, USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain name is "".
The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
a) Complainant initiated the proceeding by the filing of a complaint by e-mail received by the WIPO Arbitration and Mediation Center ("WIPO") on August 9, 2000, and by courier mail received by WIPO on August 10, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On August 16, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc (with the Registrar�s Response received by WIPO on August 21, 2000). On August 16, 2000, WIPO completed its formal filing compliance requirements checklist.
b) On August 21, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail. WIPO also transmitted such notification to Complainant�s Technical Contact via e-mail, telefax and courier mail.
c) On August 21, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail, telefax and courier mail.
d) On September 11, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On September 11, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
e) On September 12, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by September 25, 2000. On September 12, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent�s default in responding to the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant has registered the word trademark "BRIDGET JONES" in the United Kingdom, Reg. No. 2,149,373, dated October 28, 1997, covering, inter alia, pharmaceutical preparations; sound recordings, video recordings and cinematographic films; artists� materials; furniture; clothing, and; various foods (Complaint, Annex 6). This registration is valid and subsisting. The "BRIDGET JONES" mark has been used in connection with the marketing and sale of literary works since at least 1995 (based on the initial date of serialized publication of such works), and continues to be used in commerce. The "BRIDGET JONES" mark has been used by Complainant in at least 32 countries, including the United States (id., Annex 5). Approximately one million literary works marketed under the name "BRIDGET JONES" have been sold in the United States (id., para. 12(c)).
According to the registrar�s verification response to WIPO, dated August 21, 2000, "Anthony Corbert" is the listed registrant of the domain name "BRIDGETJONES.COM". The Administrative Contact is "Corbett [sic], Anthony". The addresses listed for the registrant and the Administrative Contact are identical. (Registrar�s Response, supra). A Network Solutions� WHOIS database search indicates that the record of registration was created on October 8, 1998, and that the record was last updated on October 8, 1998 (Complaint, Annex 1).
On February 23, 2000, Complainant�s legal representatives sent a cease and desist letter to Respondent, demanding transfer of the disputed domain name to Complainant (letter from Harbottle & Lewis to Anthony Corbert, id. Annex 8). Respondent did not respond to this letter or to a subsequent e-mail message from Complainant�s counsel (id.)
Complainant subsequently contacted Respondent by telephone to discuss her interest in the disputed domain name. She reported her conversation with Respondent to her counsel as follows:
"Hi Elizabeth
have spoken to anthony corbett who actually seemed quite reasonable.
He said he was a fan and was planning to set up a fan club.
I said had he done anything yet.
He said a couple of friends had written some stuff.
I said I wanted to do a Bridget Jones site and would he give me it back?
He said well e-mail me and tell me �what you're proposing�
I said what do you mean.
He said � are you expecting me to give it back?
I said �Yes! why what did you have in mind?�
He said �well let me think about it. My friends have done quite a bit of work, um, e-mail me with your proposal.
I said �what information do you need.�
He said well let me think about it.
I said I'd really like to have it back as Bridget Jones is my baby and I'm really excited about the site. Maybe they could call theirs something else like bridget Jones fans.
He said OK he'd think about it. and said he'd met me at a reading I did a couple of years ago.
I said it would be nice if we could sort it out without going through lawyers.
He said Ok he'd think about it. It was all very friendly so I'll e-mail him on Monday and see how we go!
�
All best � Helen"
(E-mail from Helen Fielding to Elizabeth Kiernan Earl of July 8, 2000, Complaint, Annex 8).
A follow-on e-mail was sent from Complainant to Respondent, under supervision of Complainant�s counsel, as follows:
"hello anthony,
It was good to make contact with you on saturday.
As you know, I've been creating Bridget Jones for over five years now, and have put hours and hours and years and years into making her who she is, and carefully guarding the unique atmosphere around her, not least by registering various trade mark rights. She is very precious to me. I've been doing a lot of work building her website and trying to make it really funny and true to her.
B is the obvious and right name for Bridget's site. I would so much appreciate it if you would let me take the name back. I know that you've registered it, but I'm sure you'll understand my feeling that it is she - and me - who in a bigger, fairer sense have the real right to it.
If you do want to start a fan site that would be great and I'm sure there are lots of other names we could come up with that would do the job.
Will you now e-mail me back to confirm that you are happy to transfer the domain name to me?
All the best
Helen Fielding"
(Text as recorded in e-mail from Fielding to Kiernan Earl of July 10, 2000, Complaint, Annex 8. Underlining indicates counsel�s recommendations to proposed text by Complainant.)
Respondent replied as follows:
"Dear Helen,
It was good speaking with you and I was interested to read your e-mail. I understand your investment, both financial and emotional in Bridget, and
I agree that would be a logical home on the web for her.
My colleagues and I have spent considerable time and expense formulating our plans
for a web-based fan site, and we are excited about the possibilities such a site offers,
especially in view of the upcoming film.
I would consider an offer in the region of $15,000 to be appropriate compensation.
I look forward to hearing from you
Sincerely
Anthony Corbett"
(E-mail from Anthony Corbett to Helen Fielding of July 13, 2000, Complaint, Annex 8)
Complainant responded with the following message:
"Thanks for your e-mail. I was extremely surprised at the price you want for the domain name. I understand that domain names generally cost no more than about $70 to register and it is not as if your material will go to waste, as it can be easily hosted at another domain name. You yourself agree that is the right and logical place for her on the web.
Can you let me know and see examples of the work which you and your colleagues have done?
I hope we can come to an amicable arrangement about this without having to resort to the ICANN or some other legal action.
I look forward to hearing from you.
HF"
(E-mail prepared for Complainant by counsel and transmitted by Complainant to Respondent on or about July 14, 2000, Complaint, Annex 8)
Respondent did not reply to Complainant�s e-mail message of July 14, 2000.
Other than Respondent�s asserted preparations to use the disputed domain name to host a "Bridget Jones" fan club, there is no evidence on the record of this proceeding of any use or preparations to use the disputed domain name.
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions� dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)).
5. Parties� Contentions
A. Complainant
Complainant alleges that she is the well-known author of literary works featuring a fictional female character "Bridget Jones." Complainant�s literary works have been marketed widely in many countries, including the United Kingdom and the United States. The title of the first novel concerning this fictional character is "Bridget Jones� Diary: A Novel", and that title has sold approximately three million five hundred thousand (3,500,000) copies worldwide in its hardback and paperback editions combined. Complainant has registered the name "Bridget Jones" as a trademark in the United Kingdom, and has applied for registration in other countries, including the United States. A motion picture based on Complainant�s "Bridget Jones" fictional character is in production, and is reported on by the press.
In addition to transmitting a cease and desist letter and follow-up e-mail, Complainant�s counsel attempted to contact Respondent by telephone, but was unsuccessful in so doing. Complainant successfully contacted Respondent by telephone, and the results of that conversation are included in the Complaint (see Factual Background, supra).
Complainant alleges that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent does not have Complainant�s authorization to use the name, the name was already in use by Complainant when Respondent registered the disputed domain name (and was known to Respondent), Respondent has not provided evidence of demonstrable preparations to use the name in connection with a bona fide offering of goods or services, Respondent is not commonly known by the disputed domain name, and Respondent is not making a legitimate non-commercial or fair use of the name.
Regarding the issue of Respondent�s bad faith, Complainant states in its own words:
"11.5 The Complainant contends that the Respondent has registered and is using the domain name in bad faith in violation of the Policy at paragraph 4(a)(iii) on the following grounds:-
(i) At the time of the registration of the domain name by the Respondent the mark was well known both in the UK and the US. The Complainant had substantial goodwill in the mark since 1995 and had registered trade mark rights since October 1997;
(ii) In November 1999 the sequel Bridget Jones novel �The Edge of Reason� was published in the UK and later published in the US in February 2000 and in other parts of the world. It strains belief that the Respondent would not have known about the Complainant's legitimate interest in the mark and in the domain name and therefore had actual knowledge or should have reasonably known that the Complainant had prior rights in the mark;
(iii) The Respondent has asked for $15,000 (US Dollars) from the Complainant for the transfer of the domain name. This represents a significant uplift in the original cost of registering the name and a cynical attempt to exploit the value of the intellectual property rights in the name particularly in view of the upcoming film as evidenced by the Respondent writing �We are excited about the possibilities such a site offers, especially in view of the upcoming film,�
(iv) The Complainant has reason to believe that the domain name was registered in order to prevent Complainant as owner of the trade mark from reflecting the mark in a corresponding domain name. This is evidenced by the fact that the Respondent admits in correspondence with the Complainant at Annex 8 � is the right place for her�; and
(v) the Complainant has reason to believe that the domain name was registered primarily to attract for financial gain Internet users to the Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site." (Complaint, para. 11.5)
Complainant refers to precedents of various administrative panels established under the Policy. Complainant refers to precedents of United Kingdom and United States courts in support of its legal arguments.
Complainant requests that the Panel ask the registrar to transfer the domain name "" from Respondent to it (id., para. 11.12).
B. Respondent
Respondent did not reply to Complainant�s contentions.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion 1. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. E-mail exchanges between Complainant and Respondent indicate that Respondent receives e-mail messages at the address used by WIPO to transmit documents to him (see Factual Background, supra).
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(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 of the domain name; and
(iii) Respondent�s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, para. 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant�s undisputed representations (id., para. 15(a)).
Complainant is the holder of a trademark registration for the word mark "BRIDGET JONES" and has used that mark in commerce (see Factual Background, supra). Complainant�s registration of the "BRIDGET JONES" mark in the United Kingdom constitutes prima facie evidence of its validity in United Kingdom law 2. Complainant also has made out a prima facie case for common law trademark rights in the "BRIDGET JONES" mark in the United States 3, and Respondent has not challenged this case. The Panel determines that Complainant has rights in the trademark "BRIDGET JONES". Based on the October 28, 1997, date of Complainant�s registration of the trademark "BRIDGET JONES" in the United Kingdom, and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainant�s rights in the mark arose prior to Respondent�s registration, on October 8, 1998, of the disputed domain name "".
Respondent has registered the domain name "". This name is identical to Complainant�s trademark "BRIDGET JONES", except that (1) the domain name eliminates the space between the words "Bridget" and "Jones", (2) the domain name adds the generic top-level domain name ".com", and (3) the domain name employs lower case letters, while the mark is generally used with initial capital letters.
Insofar as domain names are not case sensitive, and the elimination of space between terms is dictated by technical factors and common practice among domain name registrants, the Panel concludes that use of the lower case letter format in "", and the elimination of a space between the words "Bridget" and "Jones" to form that name, are differences without legal significance from the standpoint of comparing "" to "Bridget Jones" 4. Similarly, the addition of the generic top-level domain (gTLD) name ".com" is without legal significance since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific service provider as a source of goods or services 5.
For purposes of this proceeding, it is unnecessary to decide whether, in light of these factors, Respondent�s domain name is "identical" to Complainant�s trademark, since Respondent�s domain name "" is without doubt confusingly similar to Complainant�s trademark "Bridget Jones".
Complainant has met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to a trademark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.
The second element of a claim of abusive domain registration is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, para. 4(a)(ii). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, para. 4(c))
There is no evidence on the record of this proceeding to suggest that Respondent has used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services, nor is there any suggestion that Respondent has been commonly known by the disputed domain name.
In telephone conversation and an exchange of e-mail correspondence initiated by Complainant (following the transmission of a cease and desist demand from her counsel and attempts by her counsel to contact Respondent by telephone), Respondent indicated that he intended to use the disputed domain name to establish a fan club devoted to Complainant�s fictional "Bridget Jones" character. In the abstract, the use of a domain name incorporating a trademarked literary name to establish a fan club might constitute legitimate noncommercial or fair use of that name. However, there are several factors that persuade the Panel that a finding of legitimate noncommercial or fair use of Complainant�s trademark is not warranted in this proceeding.
First, the Panel notes that while paragraph 4(c)(i) of the Policy refers to "preparations to use" a domain name in the context of offering goods or services, paragraph 4(c)(iii) refers only to the active "making" of a "legitimate noncommercial or fair use". The express language of the Policy indicates that its drafters intended to limit the circumstances in which legitimate noncommercial or fair use could successfully be claimed. Applying the express language of the Policy to Respondent�s claim of legitimate noncommercial or fair use, the Panel finds that Respondent is not "making" such legitimate non-commercial or fair use of Complainant�s mark in the disputed domain name.
The Panel recognizes that there are contexts in which the registrant of a domain name should not be expected to make immediate use of that name, including for legitimate noncommercial or fair use purposes. For example, this sole panelist on a previous occasion has observed that a requirement of immediate use in hosting websites critical of trademark holders might stifle free expression by allowing such trademark holders to initiate abusive domain name proceedings before such domain names could effectively be put to active use 6. Also, this sole panelist has recognized that a delay in using a domain name for a legitimate noncommercial or fair use purpose in response to a cease and desist demand might be justified 7.
In the present proceeding, Respondent registered the disputed domain name approximately two years ago. He has not made active use of the disputed domain name to host a web-based fan club, nor has he made any other apparent use of the name. Although Respondent has asserted that he and his "friends" or "colleagues" have worked on plans for such a fan club, in response to Complainant�s request and in response to the initiation of this proceeding, he has not provided any evidence of such plans. In concrete terms, the only evident use by Respondent of the disputed domain name has been to offer it for sale to Complainant at a substantial price. Under these circumstances, the Panel considers it appropriate to apply the express language of the Policy. Respondent is not "making" a legitimate non-commercial or fair use of the disputed domain name, and has not established a legitimate non-commercial or fair use of Complainant�s mark. Consequently, Complainant has established the second element necessary to succeed on a claim of abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a respondent "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent�s] documented out-of-pocket costs directly related to the domain name" (Id., para. 4(b)(i)); (2) that a respondent has registered the domain name "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)), and (3) that a respondent "by using the domain name, � [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of [respondent�s] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).
In this case, Respondent offered to sell the disputed domain name to Complainant in response to a cease and desist demand from Complainant�s counsel, followed by a direct request from Complainant to transfer the name to her. Standing alone, an offer to sell a domain name in response to a demand from another party does not constitute bad faith within the meaning of the Policy. There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks of others without their consent.
Respondent in this case has offered to sell to Complainant, at a substantial price, a domain name corresponding to a trademark in which Complainant has rights. Respondent was demonstrably aware of Complainant�s interests in the "Bridget Jones" name and mark when he registered the disputed domain name. Respondent was (and is) aware of the commercial value of Complainant�s mark as the means to distinguish Complainant�s literary works and related products from those of other authors. Under these circumstances, it is reasonable to infer that Respondent registered the disputed domain name with the intention of selling it to Complainant for valuable consideration in excess of his out-of-pocket expenses directly related to the name. This constitutes bad faith within the meaning of paragraph 4(b)(i) of the Policy.
Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.
The Panel will therefore request the registrar to transfer the domain name "" to the Complainant.
Decision
Based on its finding that the Respondent, Anthony Corbert (also known as Anthony Corbett), has engaged in abusive registration of the domain name "" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "" be transferred to the Complainant, Helen Fielding.
Frederick M. Abbott
Sole Panelist
Dated: September 25, 2000
Footnotes:
1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
2. See FIRST COUNCIL DIRECTIVE of 21 December 1988 to approximate the laws of the Member States relating to trade marks (89/104/EEC), OJ L 040 , 11/02/1989 P. 0001 � 0007, and Section 72 of the Trade Marks Act 1994 (UK). See, e.g., Aktiebolaget Volvo v. Heritage (Leicester) Ltd, Chancery Division (UK), May 7, 1999. See also W.R. Cornish, Intellectual Property, at 17-09 (4th ed. 1999).
3. In the United States, the title of a literary or artistic work may acquire (at least) common law trademark status. See, e.g., Dr. Seuss Enterprises v. Penguinbooks USA, 109 F.3d 1394 (9th Cir. 1997). See also J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition ��10:1-10:4 (4th ed. 1996 and updated).
4. See Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1055 (9th Cir. 1999).
5. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498, (2d Cir. 2000), citing Brookfield, id. For purposes of its decision, the Panel need not address whether ".com" may be capable of acquiring secondary meaning in another context.
6. Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, Case No. D2000-0477, decided July 20, 2000.
7. Apple Computer, Inc. v. DomainH, Inc., Case No. D2000-0341, decided July 5, 2000.
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