WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Patricia Ford and Online Creations Inc. v. Damir Kruzicevic
Case No. D2001-0059
1. The Parties
The Complainants are Patricia Ford and Online Creations Inc., a Californian company having its principal office in La Jolla, California, USA.
The Respondent is Damir Kruzicevic, an individual with an address at Vukovarska 43, Split, / 21000 HR, Yugoslavia.
2. The Domain Names and Registrar
The domain names at issue are and . The domain name registrar is Network Solutions, Inc.
3. Procedural History
Complainants filed their Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") which was received by email on
January 11, 2001, and in hard copy on January 16, 2001.
On January 22, 2001, the Center transmitted a request for register verification to Network Solutions, Inc. in connection with this case.
On January 23, 2001, Network Solutions, Inc. sent via email to the Center a verification response confirming that the Respondent is the registrant as well the administrative and billing contact and that the technical and zone contact is Superb Internet Corporation.
On January 23, 2001, 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 (the "Supplemental Rules").
On January 23, 2001, the Center located active web sites at and .
On January 23, 2001, the Center formally commenced this proceeding and notified Respondent that its response would be due by February 11, 2001. The notification was sent to the Respondent by courier, fax and by email. The Center received an "undeliverable" notice indicating that two emails were not transferred successfully. The third email appears to have been transferred without receipt of any "undeliverable" notice.
Respondent did not file a response by the due date. The Center sent a notification of respondent default to the Respondent by email on February 15, 2001.
Complainants elected a three-member Panel. On February 27, 2001, after clearing for potential conflicts, the Center appointed Thomas H. Webster as the Presiding Panelist, Mr. David H. Bernstein and Mr. K Szamosi as Panelists and set March 12, 2001 as the deadline for issuance of a decision.
4. Factual Background
Because there is no Response, the following facts are taken from the Complaint and are accepted as true in the circumstances of this case.
"Patricia Ford, a U.S. citizen, is a model of world renown and former Playboy model�
Patricia Ford is a name associated with the modeling services, photographs, images and videos of Patricia Ford. Throughout her career, Patricia Ford has appeared in widely known publications, including Playboy Magazine�
An internet user who conducts a search through popular search engines using the terms "patricia ford" is given an extensive list of a multitude of websites�These results show that the Complainant�s name, Patricia Ford, is widely known and widely used, especially on the Internet, and associated with certain content�
is not owned or operated by Patricia Ford, but by Respondent�
The Respondent, Damir Kruzicevic, has registered the disputed domain names" with Network Solutions, Inc. on October 15, 1998 and November 16, 1998.
5. Parties Contentions
Complainants make the following allegations. The factual elements of such allegations are generally accepted as true in the circumstances of this case in light of the Complainants' supporting documents and in the absence of a response from the Respondent. The legal issues are discussed in the next section of this decision.
In respect of the domain names being identical or confusingly similar to a trademark or service in which the Complainants have rights, Complainants allege that:
"The popularity of Complainant�s name on the web demonstrates that the name Patricia Ford indicates a source of photographs, videos and story lines of the model Patricia Ford.
Patricia Ford has developed a reputation as a model of stellar beauty and has developed significant goodwill in association with her name.
Patricia Ford has rights to her name as a common law service mark under United States trademark law. Patricia Ford has privacy and publicity rights under the laws of numerous states�
The disputed domain names contain the entire legal name of Patricia Ford, who has expended great time and effort in promoting and advertising her name and likeness.
Patricia Ford has suffered and continues to suffer irreparable harm by Respondent�s use of her name."
Complainants contend that the Respondent has no rights or legitimate interests in the domain names and rely on the following elements:
"The Respondent is not a licensee of Complainant, nor has he received any permission or consent to use the name, image or trademark of Complainant.
The Respondent does not use the disputed domain names as part of his legal name, corporate name or any other commonly known identifier."
Complainants further allege that the domain names were registered and used in bad faith by the Respondent based on the following elements:
"Respondent�s use and misappropriation of Patricia Ford�s name is for purely commercial purposes.
When Internet users go to the disputed domain name URL , they are taken to a web page with a hyperlink entitled "Enter Here for PANTIES Pictures."�
Upon selecting this hyperlink "Enter Here for PANTIES Pictures," the Internet users are forwarded to a webpage entitled "Kara�s Adult Playground,"also known as (hereinafter ). None of these pages are owned or authorized by Complainant...
When Internet users go to the disputed domain name URL they are taken to a web page with text containing the name "patricia ford" repeated twelve (12) times and a hyperlink entitled "ENTER patricia ford nude pix PLUS SPECIAL Pamela Anderson FREE VIDEO BY CLICKING HERE!"�
Upon selecting the fore-mentioned hyperlink, Internet users are forwarded to the following pages: (hereinafter ) and �
According to Network Solutions� Whois Database, is owned and registered by Respondent, Damir Kruzicevic�
The website provides links to and other pornographic websites, but it does not provide any pictures or images of Patricia Ford.
According to Network Solutions� Whois Database, is registered by RJB Telcom, Inc�RJB Telcom, Inc., d/b/a RJBT Inc., is an Arizona corporation with its principal place of business at 13771 Fountain Hills, Blvd., #247, Fountain Hills, AZ 85268�
According to Network Solutions�Whois Database, RJB Telcom, Inc. also has registered the domain name (hereinafter )�
According to "Main Page" of , Maximum Cash is a program owned by RJB Telcom, Inc. that pays commissions to webmasters of sites that promote adult websites owned by RJB Telcom, Inc., such as , through the use of banners and text links.
Upon information and belief, Respondent has made a linking agreement with RJB Telcom, Inc. through the Maximum Cash program.
Respondent has registered the domain name for the purpose of luring Internet users to the site by causing confusion as to its source and content so that it could profit when those Internet users click through to the link to sexually explicit web sites.
Such conduct constitutes bad faith under � 4 (b) (iv) of the Policy."
The Respondent did not contest the above allegations of the Complaimants.
6. Discussion and Findings
The burden for the Complainants under paragraph 4(a) of the Policy is to prove:
(i) That the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) That the domain names have been registered and used in bad faith.
A. Similarity of the Domain Name and Trademark.
The Complainants base their Complaint on an allegation that they hold rights to a common law trademark under U.S. trademark law, rather than on a registered trademark in any jurisdiction.
There are a number of panel decisions that have held that common law trademarks are sufficient to base a Complaint under the Policy: See Jeanette Winterspoon v. Mark Hogarth, Case No. D2000-0235 (WIPO, May 22, 2000); Julia Fiona Roberts v. Russell Boyd, Case No. D2000-0210 (WIPO, May 29, 2000); Rita Rudner v. Internetco Corp., Case No. D2000-0581 (WIPO, August 3, 2000). Briefly stated, common law rights in the United States arise out of use of a mark in commerce in connection with goods or services. That is true whether the mark is a traditional mark on goods or a personal name that has come to be associated with particular services.
The key element in a number of these decisions is the fact that the person in question has become renown and that use of the name has become an indication of source: See, for example, Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, Case No. D2000-1415 (WIPO, January 23, 2001).
On review of the material, the Panel is satisfied that at least one of the Complainants has common law rights to the name "Patricia Ford".
The domain names in question are identical in one case and identical with the addition of a hyphen in the second case to the name in question.
Therefore, the Complainants have satisfied the first requirement of the Policy.
B. Respondent's Rights and Legitimate Interests.
The Complainants have established that there are common law trademark rights in the name "Patricia Ford" under U.S. law.
The Complainants do not appear to have licensed or otherwise authorized the Respondent to use its trademark or to apply for any domain name incorporating the trademark. Therefore prior to any notice of this dispute, the Respondent had not used the domain names in connection with any bona fide offering of goods or services within the meaning of Paragraph 4 (c) (i) of the Policy.
Nor is there any evidence that the Respondent is commonly known by the domain names or is making a legitimate noncommercial or fair use of the domain names within the meaning of Paragraph 4 (c) (ii) or (iii) of the Policy. As discussed below, the Complainants' evidence suggests that the Respondent has attempted to use the domain names for commercial gain.
By not submitting a response, the Respondent has failed to demonstrate, pursuant to paragraph 4(c) of the Policy, that it has rights or a legitimate interest in the domain names. See Document Technologies, Inc. v. International Electronic Communications Inc., Case No. D2000-0270 (WIPO June 6, 2000) (once complainant makes a prima facie showing that respondent lacks a legitimate interest, the burden of production shifts to respondent to rebut that prima facie showing).
Therefore, this Panel concludes on the basis of the evidence of the Complainants that the Respondent has no rights or legitimate interests in the domain names.
C. Bad Faith Registration and Use.
It is clear from the Complaint that Patricia Ford was well known from as early as 1997. The domain names were registered with Network Solutions, I October and November 1998.
Based on the facts as outlined above, it appears that the Respondent registered and is using the domain names in question to attract consumers so that they will access sites operated by the Respondent.
Those sites in turn are linked to pornographic sites, which appear to derive revenue by, inter alia, selling subscriptions to the sites.
Therefore, it appears clear to the Panel that the Respondent has sought to increase the number of "hits" to its sites by using Patricia Ford's name as a domain name. That increases the commercial value of the Respondent's sites, but at the expense of misuse by the Respondent of the name in which the Complainants hold rights. That is evidence of bad faith within the meaning of Paragraph 4 (b) (iv) of the Policy.
Therefore, the Panel is satisfied that the Respondent in this case registered and is using the domain names in bad faith.
7. Decision
For the foregoing reasons, the Panel holds:
(a) that the domain names are confusingly similar to the common law trademark in which the Complainants have rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain names; and
(c) the Respondent registered and has used the domain names in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel decides that the domain names and must be transferred to the Complainants.
Thomas H. Webster
Presiding Panelist
David H. Bernstein
Panelist
K Szamosi
Panelist
Dated: March 20, 2001
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