WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Billy Connolly v. Anthony Stewart
Case No. D2000-1549
1. The Parties
The Complainant is Billy Connolly of The Boathouse, Crabtree Lane, London SW6 6TY, United Kingdom.
The Respondent is Anthony Stewart of 9 Hilltop Crescent, Gourock, Renfrewshire PA19 1YW, United Kingdom.
2. The Domain Name and Registrar
The domain names at issue are , .
The Registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on November 10, 2000 [electronic version] and on November 13, 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 November 30, 2000.
On November 21, 2000 the Center transmitted via email to Network Solutions a request for registrar verification in connection with this case and on the same day Network Solutions, Inc transmitted by email to the Center Network Solutions' verification response confirming that the registrant is Anthony Stewart and that the contact for both administrative and billing purposes is also Anthony Stewart.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on November 30, 2000, this Notification of Complaint and Commencement of Administrative Proceeding. The Center advised that the Response was due by December 19, 2000. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to Anthony Stewart, 9 Hilltops Crescent, Gourock, Renfrewshire PA 19 1YW, and to Domain Registration , Network Commerce Inc., 411 First Avenue South, Suite 200, Seattle WA 98104, United States of America.
A Response was received from the Respondent by the due date of December 19, 2000. Acknowledgement of Receipt of Response was sent by the Center on December 20, 2000 to the Respondent by e-mail.
Having received on January 26, 2001 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 January 30, 2001. 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 Response, the Policy, the Rules and the Supplemental Rules.
4. Factual background
4.1 The Complainant
4.1.1 The Complainant is the well known comedian and actor, Billy Connolly.
The Complainant's Trade mark
4.1.2 The mark BILLY CONNOLLY is not a registered trade mark. The Complainant, however, claims rights in that mark by virtue of his notoriety as a comedian and actor established over nearly 30 years and cites in support of that claim a number of Decisions made under the Policy where unregistered names and marks have been held to constitute rights in a trademark for the purposes of paragraph 4(a)(i) of the Policy.
The Complainant's Career
4.1.3 Since 1972 the Complainant has used the mark BILLY CONNOLLY in pursuit of his career as an actor and comedian and in connection with sales of records, compact discs, videos, tickets for live performances, advertising and promotion, clothing and other merchandising. As such the Complainant claims to have acquired very substantial trading goodwill in that mark, not only in the United Kingdom but also in other jurisdictions, including the United States of America, Canada, Australia, New Zealand and elsewhere. His activities have included film and television drama and documentaries, live performances and audio and video recordings. The Complaint exhibits illustrative Press Cuttings featuring the Complainant's work both in live performances and as a film actor.
4.1.4 The Complaint highlights 14 television dramas, documentaries and light entertainments in which the Complainant has appeared, 11 films including playing the role of John Brown opposite Dame Judy Dench as Queen Victoria in "Mrs Brown", 10 videos which have sold together in excess of 3 million copies at a sales value of more than �27 million, and 11 records which together have sold more than 450,000 copies. The Complaint also lists some of the Complainant's live performances, not only in the United Kingdom and Ireland but also in Australasia, North America, The Middle East and Hong Kong.
4.1.5 The Complaint lists the Complainant's awards as including the Scottish BAFTA awards for Best Entertainment Programme (1995) Best Drama (1995) Best Arts Programme (1995) and the People's Award for Outstanding Contribution to the Arts (2000).
4.1.6 Sales of the BILLY CONNOLLY merchandise since 1994 are estimated at �175,000.00.
Applicable Laws
4.1.7 The Complainant relies upon, inter alia, the name of a famous film actress, Julia Roberts, having common law rights under United States trademark law [WIPO Case No. D2000-0210]; the name of a well known contemporary author, Jeanette Winterson, having rights under English common law to restrain unauthorised use of her name sufficient to constitute a trade mark for the purposes of paragraph 4(a)(i) of the Policy [WIPO Case No. D2000-0235]; and the names of famous singers, songwriters and recording artists, SADE [WIPO Case No. D2000-0794] and MADONNA [WIPO Case No. D2000-0847]. Whose reputation was also held to constitute rights in a trade mark for the purposes of paragraph 4(a)(i) of the Policy.
4.2 The Respondent
4.2.1 The Respondent has established a website under the domain name in issue featuring a Labrador puppy which has been renamed Rougemar Billy Connolly and captioned Available now for study duty. The Respondent is, clearly, not a fan of the Complainant as the following extracts from the web page illustrate.
"In any case why should I give up my place on the worldwide web to a banjo playing, ex-shipyard welder from Partick who makes a good living from among other things verbally abusing people, while using language in the public arena which is normally found on the walls of the public toilet?"
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"If Mr Connolly gets his mits on this site what will his intentions be for its use? After all since he uses his public platforms to throw abuse in all directions, it seems reasonable to assume that he will, if he gets his way, use this site to hurl more of his abusive epithets in the direction of those less fortunate than himself."
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"Is it right that a banjo playing, former shipyard welder from Partick who happens to have a very foul mouth and a genius for throwing insults at all and sundry, be permitted to take-over web sites that just happen to have a name he shares with many hundreds of people around the globe."
4.2.2 Neither the Response nor the correspondence between the parties [referred to below] indicate anything about the Respondent or his activities other than his dislike of the Complainant's activities.
5. The Parties' Contentions
5.1 The Complainant
Identical or Confusingly Similar
5.1.1 The Complaint contends that the domain name is identical, but for the .com suffix, to the name and mark of the Complainant
5.1.2 The Complaint contends that the domain name is confusingly similar to the name and mark BILLY CONNOLLY differing only in the substitution of an "e" for an "o", a common misspelling of the name and illustrative of a practise sometimes described as typo-squatting. The Complaint refers in that respect to three decisions under the Policy, being a misspelling of Encyclopaedia Britannica [WIPO Case No. D2000-0330]; being a misspelling of Altavista [WIPO Case No. D2000-0849]; and a misspelling of the "RUS" family of trade marks and service marks owned by the Toys "R" US Inc Group, namely [WIPO Case No. D2000-1011].
No Rights or Legitimate Interests
5.1.3 That the Respondent can claim no rights as owner or licensee of the mark BILLY CONNOLLY which, as described in paragraph 4.1 above, is the sole property of the Complainant.
5.1.4 That until the Respondent was contacted by the Complainant's solicitors, no use had been made by him of either of the domain names. The 2 domain names in issue were registered on April 29, 1999 [] and on January 29,. 1998 [], the first contact with the Complainant's company, Tickety-Boo Ltd, being by letter dated June 14, 2000. As at June 20, 2000 resolved to an "Error 502" message and as at November 2, 2000 resolved to what appears to be a website hosting service, the Respondent's Labrador Rougemar Billy Connolly website was established on September 14, 2000.
5.1.5 The Respondent cannot bring himself within any of the circumstances set out in paragraph 4(c) of the Policy as demonstrating rights or legitimate interests. Since neither of the domain names was in use before notice of this Complaint, there is no evidence of its use in connection with the bona fide offering of goods or service s[paragraph 4(c)(i) of the Policy].
5.1.6 There is no evidence that the Respondent has been commonly known by either of the 2 domain names in issue [paragraph 4(c)(ii) of the policy].
5.1.7 The Respondent's website for the domain name is not legitimate or fair since it makes unauthorised use of the Complainant's name and mark. Further, it is apparent from the content of that website - extracts from which are set out in paragraph 4.2.1 above - that the Respondent's intent is to tarnish the Complainant's name and mark [paragraph 4(c)(iii) of the Policy].
Registered and Used in Bad Faith
5.1.8. The Complaint points to the fact that it was only after being put on notice of the Complainant's rights that the Respondent apparently changed the name of the dog depicted and featured on his website to . The Respondent stated in his email of June 20, 2000 that he intended to depict his pet Labrador called Oskar Billy Connolly of Heather Hill, on a website resolving to the website.
5.1.9 In that email, the Respondent stated that he had also registered as a domain name. The Big Yin is a nickname commonly applied to the Complainant, as illustrated by certain of the Press Cuttings exhibited to the Complaint [see paragraph 4.1.3 above].
5.1.10 In the same email the Respondent indicated his belief that the Complainant had no protectable rights in his name, BILLY CONNOLLY. This was echoed in a subsequent letter from the Respondent's solicitors dated July 7, 2000 which stated:
"As your clients will also appreciate, the name "Billy Connolly" is a fairly common name in Scotland and we would submit that not one of these individuals has an exclusive right to registration of this domain name."
5.1.11 By email dated June 25, 2000 the Respondent wrote to the Complainant's company, Tickety-Boo Ltd, in the following terms:
"I have read with interest the efforts of Billy Connolly to improve the lot of 50 orphaned children.
We support projects where ethical production and marketing means fair wages for those involved.
Billy Connolly's Tickety-Boo Tea is a scheme worthy of merit and deserves to succeed. Here is a suggestion which will increase the profile of the Tickety-Boo Tea in the world media and hopefully help increase sales of the Tea and save on lawyers' fees.
I will relinquish all title to the domain name Billy C provided that a press release is formulated along these or similar lines.
DOT COM WRANGLE SORTED OVER A VERY NICE ETHICAL CUPPA.
Hollywood megastars spend dozens of thousands in lawyers fees claiming ownership of their dot com domain names Not Billy Connolly the Scottish comedian. He offered a five year supply of his own ethical brand Tickety-Boo Tea to the original registrant of the domain name . The original registrant accepted and all is well - or as they say in Scotland, Tickety-Boo. Tickety-Boo Tea is produced in India where fair wages are paid to local people for a fair days work. Ticket-Boo Tea is available from �.
Is this a solution?"
The Complainant made a counter-offer of �202.80, being the cost of 120 boxes of Tickety-Boo Tea @ �1.69 per box, which equates with 5 years' supply at 160 tea bags per month. The Complainant's letter dated July 13, 2000 went on:
"Your client can then purchase the tea for himself from a retail outlet, thereby ensuring that 25p of the purchase price of each box of tea is donated to charity. The difficulty with your client's proposal is that the charitable objective would not be met simply by providing him with free tea."
The Complainant's counterproposal was rejected by the Respondent. The Complainant then offered to pay the Respondent �750.00 for the domain name ; the Complainant was not aware at this time of the other domain name now in issue, . The Respondent countered by asking a price of �7,500.00 plus his legal expenses.
Since the Respondent has not objected to the Complainant making reference to the above captioned "without prejudice" exchanges - indeed they are specifically relied on in the Response - the Panel considers that they can be referred to in the context of the circumstances set out in paragraph 4(b) of the Policy evidencing registration and use in bad faith.
5.1.12 The Respondent is offering the other domain name in issue, , for sale on 3 websites, namely ; ; and . Also offered for sale or lease is the Respondent's domain name [see, paragraph 5.1.9 above].
5.1.13 The Complaint contends that the domain name was registered in order to prevent the Complainant from reflecting his name / mark in a corresponding domain name. A pattern of conduct is established by the Respondent's registration of the domain name and , the latter having been registered on January 29, 1998 the same date as the domain name [see, paragraph 5.1.4 above]. These actions constitute circumstances provided by paragraph 4(b)(ii) of the Policy evidencing registration and use in bad faith.
5.1.14 The Complaint contends that it is apparent from the content of the Respondent's website [see, paragraph 4.2.1 above] that his use of the domain name is actuated by malice and is calculated to cause embarrassment and distress to the Complainant, to damage his reputation and to dilute and tarnish the name and mark BILLY CONNOLLY of which the Complainant owns the goodwill.
5.1.15 The Complaint contends that the Respondent is also within paragraph 4(b)(iv) of the Policy. Whilst the Respondent may intend to use the website to vent his displeasure at certain of the Complainant's activities, there is nothing on the website which indicates to the Panel an intention by the Respondent to attract internet users to that site for commercial gain by creating a likelihood of confusion with the Complainant's name and/or mark. This contention is therefore, rejected by the Panel.
5.1.16 The Complaint points to 59 domain names of which the Respondent is the registrant, all of which are offered for lease or sale. It then identifies 6 of those domain names, in addition to the 2 domain names in issue, as being marks owned by third parties.
5.2 The Respondent
The Respondent's case is as follows.
5.2.1 Identical or Confusingly Similar
- The Complainant has no established goodwill in the name CONNELLY. It is a common surname in the United Kingdom, particularly in Scotland. For example, there are 330 listings for CONNELLY in the Glasgow telephone directory, of whom 14 have the initial "W".
- Both and differ from the domain name by only one letter, yet the Complainant could not claim rights in or a likelihood of confusion with .
- The Respondent accepts however that, as a well known comedian, the Complainant has established goodwill in the name BILLY CONNOLLY. However, the Respondent's case is that this is not a comparable passing-off situation to that in the One in a Million case [1999] 1WLR 903 (C.A.). There has been no false misrepresentation by the Respondent, nor does the Complainant have exclusive goodwill in the name and mark BILLY CONNOLLY.
- Finally, there can be no likelihood of confusion between the Rougemar Billy Connolly website and the Complainant. Any user would immediately know they were not at the Complainant's website. The Response relies upon the Decision in WIPO Case No. D2000-1104.
5.2.2 Rights or Legitimate Interests
Because of his dog's name, Rougemar Billy Connolly - which he says is so registered with the Kennel Club of Great Britain - the Respondent states that he has rights and legitimate interests in the domain name.
5.2.3 Registration and Use on Bad Faith
- The Respondent has not registered the domain name to prevent use by the Complainant from reflecting his BILLY CONNOLLY name and mark in a corresponding domain name.
- The Respondent has not tried to exploit that domain name commercially and is causing no loss or damage to the Complainant.
- The Respondent made no unsolicited attempt to sell the domain name to the Complainant. He merely responded to the Complainant's request to transfer that domain name. The Respondent points in particular to his opening offer, the letter of June 25, 2000 set out in paragraph 5.1.11 above.
- The offers by the Respondent to "lease or sell" other domain names is not relevant to this dispute.
6. Discussion and Findings
6.1 The Policy, paragraph 4(a) provides that the Complainant must prove each of the following:
- that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
6.2 The Complainant's rights in the trade mark BILLY CONNOLLY
The Panel is, on the evidence, satisfied that the Complainant has trademark rights for the purpose of the Policy.
6.3 Identical or Confusingly Similar
6.3.1 As to the domain name , there is identity with the Complainant's name and mark. The .com suffix is not relevant in this context.
6.3.2 As to the domain name it represents a common misspelling of CONNOLLY, the names are phonetically equivalent and a likelihood of confusion must exist. The reputation of the Complainant in his name is such as, in the Panel's view, to make association of the domain name more likely. WIPO Case No. D2000-1104 does not assist the Respondent in this respect. The Panel refers to the earlier Wal-Mart Case also involving Mr Kenneth Harvey [WIPO Case No. D2000-0477] on the issue of confusing similarity. In any event, the issue here is not one of criticism or parody where a suffix such as sucks has been appended to the Complainant's trademark as in WIPO Case No. D2000-1104. Here the domain name and the mark are visually and phonetically identical for all practical purposes.
6.4 Rights or Legitimate Interests
6.4.1 No evidence has been submitted by the Respondent of demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. As to the domain name , that name was first used in relation to a website on September 14, 2000 and there is no evidence of use or demonstrable preparations to use that name before June 14, 2000 when the Respondent was first put on notice of this dispute.
6.4.2 Nor is there any evidence that the Respondent was commonly known by either of the domain names in issue.
6.4.3 The Panel does not consider that the use being made of the domain name is legitimate or fair having regard to the notoriety of the Complainant's name. The Panel also finds that the Respondent's intent was to tarnish that name by registration of the 2 domain names in issue.
6.4.4 The Complainant has not licensed or otherwise authorised the Respondent use of the BILLY CONNOLLY name / mark.
6.4.5 The Respondent has failed to bring himself within any of the circumstances set out in paragraph 4(c) of the Policy as evidencing rights or legitimate interests in either of the domain names, nor has he advanced any other evidence to demonstrate such rights. Certainly, changing the name of his Labrador to Rougemar Billy Connolly does not assist him.
6.4.6 The Complainant, therefore, succeeds in satisfying the requirements of paragraph 4(a)(ii) of the Policy.
6.5 Registered and Used in Bad Faith
6.5.1 The Panel has rejected the contention advanced under this head in paragraph 5.1.15 above.
6.5.2 But, the Panel finds there is ample evidence to support a finding in the Complainant's favour under paragraph 4(a)(iii) of the Policy. For example, the Respondent offers "for sale or lease" both domain names in issue along with another name associated with the Complainant. As to the domain name , the Respondent's asking price of �7,500.00 is very considerably more than his out-of-pocket costs directly related to that name. Further, it is apparent that the Respondent is in the business of selling or leasing domain names generally, some of which incorporate the names / marks of third parties.
6.5.3 The Respondent has failed to produce evidence of rights or legitimate interests in either of the domain names. First use of the domain name only began some 3 months after the Respondent was put on notice of this dispute. The domain name has never been used for a website.
6.5.4 The evidence also points to registration of the domain names by the Respondent with a view to preventing the Complainant, owner of the BILLY CONNOLLY name and mark, from reflecting that name in a corresponding domain name. There is also evidence of a pattern of such conduct by reference to registration of the Complainant's nickname, the BIG YIN, as a domain name.
6.5.5 Finally, whether or not the Respondent's website and use of the 2 domain names in issue disrupt the Complainant's business, they were clearly intended to tarnish and damage his name and mark. The Panel refers in this respect to the extracts from the Respondent's website set out in paragraph 4.2.1 above. Whilst the Respondent is entitled to his own views as to the propriety or acceptability of the Complainant's style of comedy, this does not extend to registration and use of the domain names in issue, contrary to the provisions of the Policy.
7. Decision
For all the foregoing reasons, the Panel decides that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. Accordingly, the Panel requires that the registrations of the domain names and be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: February 5, 2001
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