WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allee Willis v. NetHollywood
Case No. D2004-1030
1. The Parties
The Complainant is Allee Willis, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
The Respondent is NetHollywood, Hollywood, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December�7,�2004. On December�7,�2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On December�9,�2004, Tucows transmitted by email to the Center its verification response confirming Tucows as the registrar of the disputed domain name, that Respondent is listed as the registrant thereof, and that the Policy is in effect in respect of the domain name, and providing details for the administrative, billing, and technical contacts.
The Center next 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 December�14,�2004. Pursuant to the Rules, paragraph 5(a), Respondent was required to submit a response no later than January�3,�2005.
By emails dated December 26 and�27,�2004, Respondent requested from the Center a sixty-day extension within which to submit its response to the Complaint. By email dated December 27, the Center invited Complainant to comment on Respondent’s request for additional time, which Complainant did. Based on the submissions of the parties, the Center granted Respondent a one week extension, through January�10,�2005, within which to respond to the Complaint.
The Respondent did not submit a response within the extended time period but did, by email dated January�10,�2005, the same date the response was due, request a further extension “as close to February as possible.” By email dated January�10,�2005, the Center denied Respondent’s request for a further extension and, on January�12,�2005, notified the Respondent’s default.
The Center appointed Seth M. Reiss as the sole panelist in this matter on February�2,�2005. 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. The Panel is required to forward its decision to the Center, in accordance with paragraph 15 of the Rules, by February�16,�2005.
The Panel has examined the communications of the Center, the Complainant and Respondent, and the Complaint. The Panel confirms that each complies with the formal requirements of the Policy, the Rules and the Center’s Supplemental Rules, and that the Administrative Panel was properly constituted.
The language of the proceeding is English.
4. Factual Background
Complainant Allee Willis, an individual, is a well known song writer and recipient of numerous music awards including a Grammy Award, multiple BMI awards, a Cable Ace Award, and Emmy nomination. Ms. Willis’ musical compositions have been recorded by a variety of well-known and top-selling musical artists including Earth Wind & Fire, Bonnie Rait, Ray Charles, Diana Ross, Aretha Franklin, Bette Midler, Tina Turner, The Pointer Sisters, and Sheena Easton, to name a few. Combined, Complainant’s songs have sold more than 50,000,000 copies worldwide. Among Ms.�Willis’ best-known compositions are “I’ll Be There for You,” the theme song of the very well-known and long running ‘Friends’ television series.
In addition to being a songwriter, the Complainant has been active in an assortment of film, television and video projects, as script writer, director, art director, set designer, and creator, has done extensive work and received recognition in the field of new media, is a magazine columnist, and a recognized visual and performance artist. Ms.�Willis also claims public recognition for hosting art theme parties that feature kitsch memorabilia from the 1950s, 1960s and 1970s, and her name is mentioned in an on-line dictionary reference to “kitch”.
In November 2004, Complainant discovered that Respondent had registered the domain name (“disputed domain name”) when Complainant asked her Internet consultant to secure the name for Complainant. Complainant, through her consultant, contacted Respondent for the purpose of obtaining a transfer of the domain name. Complainant’s agent offered to purchase the name from Respondent, initially for Respondent’s out-of-pocket cost. Respondent’s principal replied that he was a domain name collector and was not interested in selling the domain. Complainant’s agent then offered to purchase the disputed domain name for $1,000, and then $5,000, at which point Respondent’s principal indicated he would sell the domain name to Complainant for $25,000. Complainant’s agent replied that he would pass the offer on to Complainant, whereupon Complainant commenced the instant UDRP proceeding.
Respondent registered the domain name on October�11,�2003. Respondent is record holder of a number of other domain names that reflect names of other high profile individuals. Among these are , reflecting the name of a controversial American radio and TV personality; , reflecting the name of an American character actor; , reflecting the name of a British character actor; reflecting the name of a British movie actress; , reflecting the name of a woman whose disappearance and apparent murder prompted an investigation of a U.S. Congressman; and , reflecting the name of the deceased spouse of Robert Blake. At the time of filing of the Complaint, most of these domain names pointed to inactive sites with the exception of the domain name which pointed to a parking page for Respondent NetHollywood, and with the further exception of the domain name, which pointed to a website featuring a photograph of a topless women and the invitation to return to the site for “the real story” concerning Ms. Bakley.
Respondent’s principal met Complainant on one occasion, several years ago. Respondent’s principal characterized the meeting as social, while Complainant describes the meeting as one in which Respondent made a business proposal to Complainant which Complainant had no interest in.
5. Parties’ Contentions
A. Complainant
Although Complainant has never registered her name as a trademark or service mark, Complaint contends that she has developed substantial secondary meaning in the name ALLEE WILLIS for entertainment services based upon her activities, notoriety and success as song writer, script writer, director, art director, set designer, and creator, developer of new media, magazine columnist, visual and performance artist and theme party host. It is by virtue of these commercial activities that Ms. Willis maintains she has developed common law trademark and service mark rights in her name and that such rights have been consistently recognized by UDRP panels in the case of others similarly situated.
Complainant next contends that Respondent’s domain name is identical to the mark ALLEE WILLIS in respect of which Complainant claims rights.
Complainant further contends that Respondent has no rights or legitimate interests with respect to the disputed domain name. Complainant supports this contention by pointing out that Respondent had constructive notice of Complainant by virtue of Complainant having been well known in the entertainment industry since 1974, that Respondent had actual notice of Complainant by having met Complainant on one occasion several years before, and that Respondent has not made a bona fide use of the disputed domain name, commercial or otherwise.
Finally, Complainant asserts that Respondent registered and is using the domain name in bad faith as evidenced by Respondent having known of, and known, Complainant at the time Respondent registered , by virtue of Respondent’s hobby of “collecting” domain names that reflect names of high profile individuals while at the same time failing to use the domain names to point to active websites, and by attempting to sell Complainant the disputed domain at a substantial profit.
By way of relief, and pursuant to the Policy, paragraph 4(i), Complainant asked that the domain name be transferred to her.
B. Respondent
Although Respondent failed to file a formal response to the Complaint, Respondent (through its principal) did address the merits of this action in the context of Respondent’s requests for extensions to file a response. To the extent Respondent’s comments are relevant to the issues raised by Complainant and to Respondent’s evidentiary burdens under the Policy, this Panel has considered them. See Rules, paragraphs 10(a), (b) and (d); MFI UK Limited and MFI Furniture Group plc v. Mr.�Raymond Jones, WIPO Case No. D2003-0102 (May�8,�2003)(wherein the Center and panel considered respondent’s lengthy email communications requesting multiple extensions as the response).
Respondent denies that Ms. Willis is well known or famous. Rather, according to Respondent, “[e]xcept for her inside crowd and some trivia fanatics, no one knows who Allee Willis is, whereby no common law trademark could exist.”
Although Respondent acknowledges knowing who Ms. Willis is, as well as having had personal contact with her on one occasion, Respondent denies having registered or used the domain name in bad faith. Respondent describes himself as a “collector” of domain names which he claims he uses, or intends to use, as fan sites and to assist law enforcement officials with high-profile unsolved crimes. Respondent further claims that the domain names he registered would resolve into active websites but for technical problems which Respondent was not aware of until receiving and reading a copy of the Complaint filed in this matter.
Respondent denies registering the disputed domain name or other domain names for any improper purpose. Respondent maintains that he has never sold nor attempted to sell his domain names to anyone, and points out that his sites do not include banner ads, nor spam, nor do the sites redirect users to other sites owned or operated by the Respondent. Respondent admits having offered to sell to Complainant’s agent the domain name for $25,000, but insists he only did so after Complainant’s agent refused to take no for an answer and kept soliciting from Respondent higher offers.
In one of his requests for extension, Respondent asked the Center to dismiss the Complaint.
6. Discussion and Findings
A. Procedural Issues
Before addressing the substantive issues, this Panel will consider whether the Center’s decision not to grant Respondent more than a one week extension within which to file a response to the Complaint in this case was appropriate.
As described above, Respondent requested from the Center extensions of time within which to respond to the Complaint. Respondent initially requested a sixty day extension. When the Center responded by granting Respondent only a one week extension, Respondent requested a further extension of approximately one month. This further request was denied by the Center.
In support of its request, Respondent cited failing health, administrative burdens consequent to moving offices, and intervening holidays. Respondent further supported his requests by arguing the Complaint lacked merit and that, if the Center provided Respondent with sufficient opportunity to respond, Respondent expected to prevail.
Paragraph 5 (d) of the Rules provides as follows:
“At the request of the Respondent, the Provider may in exceptional cases extend the period of time for filing of the response.”
The Panel notes that Respondent’s multiple requests for extensions were repetitive in their content, lacked credibility in certain respects, and failed to provide the Center with a date certain within which the Respondent expected to be in a position to submit a response. The Panel observes that, considering the number, length and content of Respondent’s requests for extensions, it would appear that Respondent had both the time, ability and energy to compose a responsive document. That is to say, Respondent could have directed his efforts to composing a response instead of requesting multiple extensions. To the extent that Respondent’s requests for extensions are directed to the merits of the case, this Panel has considered Respondent’s arguments to the same extent as a response filed pursuant to paragraph 5 of the Rules.
A primary purpose behind the adoption of “the Policy and Rules [was] providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute. . . .” The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (July�1,�2003) (where, in the interest of expedition, the panel determined not to consider a reply received from the complainant). See also, Nike, Inc. v. Crystal International, WIPO Case No. D2001-0102 (March�19,�2001) (where, also in the interest of expedition, the panel determined not to consider the respondent’s untimely response). “The Panel shall ensure that the administrative proceeding takes place with due expedition.” Rules, paragraph 10(c). Granting a party any significant extension of time, or granting the same party multiple extensions of time, would frustrate this aspect of the Policy and Rules.
Under the circumstances, considering Respondent’s requests for extension and the Policy’s interest in the expeditious resolution of domain name disputes, the Panel finds that the Center acted correctly in granting Respondent a first one week extension to file his response and in denying Respondent any further extension. Benzer v. utureSoft Consulting Inc. and Sunil Bhatia, WIPO Case No. D2000-1648 (April�12,�2001).
A. Substantive Issues
Pursuant to paragraph 4(a) of the Policy, the Complainant has the burden of establishing the existence of the following three elements:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Identical or Confusingly Similar : Policy, paragraph 4(a)(i)
The Domain Name at issue is . There is no question but that, if Complainant can establish that she holds trademark or service mark rights in respect to the ALLEE WILLIS name, the disputed domain name is identical thereto. The Complainant is correct that the dropping out of the space between Ms. Willis’ given and surnames, and the addition of the TLD “.com” ending, does nothing to distinguish the domain name from Complainant’s personal name, nor change the conclusion that the domain name and Complainant’s putative mark are identical for purposes of the paragraph 4(a)(i) of the Policy. Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299 (June�9,�2000); Celine Dion and Sony Music Entertainment (Canada) Inc. v. Jeff Burgar operating or carrying on business as Celine Dion Club, WIPO Case No. D2000-1838 (February�13,�2001).
The more difficult issues raised by this case as respects the first element of paragraph�4(a) of the Policy is whether or not the rights Complainant claims in her name are of a quality and type to be protectable under the Policy.
Complainant acknowledges that she has not attempted to register, and holds no trademark or service mark registrations, for her name. Ms. Willis relies, instead, on numerous UDRP decisions holding that individuals can develop common law trademark and service mark rights in their personal names through use of the name in commerce in conjunction with the offering of goods and services.
Identity is a fundamental attribute of “the inherent dignity of the human person.” See The Final Report on the Second WIPO Internet Domain Name Process, quoting the International Covenant on Civil and Political Rights, Article 10.1. However, finding common law trademark protection in a personal name cannot be commonplace and must, instead, be done on an individual case by case basis.
The issue of whether, and to what extent, unregistered personal names are protectable as trademarks or service marks under the Policy has been the subject of numerous interesting and well reasoned UDRP opinions. These opinions, when considered together, give rise to general guidelines that can be used to determine the circumstances under which the use of a personal name gives rise to common law trademark and service mark rights that are protectable under the Policy, and the circumstances under which the use of a personal name does not give rise to such rights.
One of the seminal and more instructive UDRP decisions on this issue is the case of Israel Harold Asper v. Communication X Incc., WIPO Case No. D2001-0540 (June�11,�2001), a case that arose “in the midst of an active dialogue concerning the issue of the extent to which a person is given a right to use the ICANN Policy and the WIPO Rules to obtain a transfer of a Domain Name or its cancellation.” The Asper panel cited the Final Report of the (First) WIPO Internet Domain Name Process, April�30,�1999, which would restrict the Policy to cases concerning the abusive registration of trademarks and service marks only and not also protect against the abusive registration of trade names, geographical indications or personality rights for the reason that such rights were not well harmonized among nations.
The Asper panel also made reference to the Interim Report of the Second WIPO Internet Domain Name Process, issued on April�12,�2001, which distinguished attributes of personal names from those of trademarks and services by the latter necessarily being used in commerce in conjunction with specific goods and services, and not simply generally, as personal names typically are.
The Final Report on the Second WIPO Domain Name Process, dated September�3,�2001, provides the following further guidance: “Persons who have gained eminence or respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registration. The UDRP is thus perceived by some as implementing an excessively materialistic conception of contribution to Society”.
The decision in Asper sets out four different categories of cases involving personal names having high UDRP success rates simply because of the nature of the activity in which the complainant was involved. Enjoying almost unanimous success is the category of entertainers. Additionally, highly successful categories include authors, professional athletes, a few cases by business people, royalty, and a case involving a politician. UDRP cases following Asper generally adhere to the standard that where a personal name is well known, and has been used in commerce in relationship to specific goods and services, secondary meaning and common law trademark or service mark rights can arise therein which, if recognized in the applicable jurisdiction, are protectable under the Policy. See, e.g., The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, WIPO Case No. D2002-0184 (June�3,�2002); Sibyl Avery Jackson v. Jan Teluch, WIPO Case No. D2002-1180 (March�4,�2003).
This Panel is satisfied that the evidence submitted by Ms. Willis is sufficient to establish that she holds trademark and service mark rights in the name ALLEE WILLIS of the type and quality to be recognized and protected under the Policy. Ms. Willis is clearly a well-known author of musical compositions who works closely with entertainers and in many aspects of the entertainment industry. Ms. Willis’ artistic goods and services are very well known, are offered commercially, and are offered in conjunction with her personal name. That ALLEE WILLIS is not an altogether common name serves to strengthen Complainant’s claim of trademark and service mark rights in her name. It is presumed easier to establish secondary meaning, and therefore trademark and service mark rights, in personal names that are unusual as compared with those that are common.
In addition to demonstrating that a personal name has acquired distinctiveness and secondary meaning through its use in conjunction with the commercial offering of goods and services, a complainant must also demonstrate that the common law rights thereby acquired were in place at the time of filing of the complaint. R. E. ‘Ted’ Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi, WIPO Case No. D2002-0251 (July 4, 2002). Based upon the evidence attached to the Complaint, it appears that Ms. Willis acquired common law trademark and service mark rights in her ALLEE WILLIS name long before the filing of the Complaint in this case.
The Panel therefore finds that Complainant has trademark and service mark rights in her personal name, that the domain name is identical or confusingly similar to Complainant’s ALLEE WILLIS name and mark, and that Complainant has established element (i) of the Policy’s paragraph 4(a).
Rights or Legitimate Interests: Policy, paragraph 4(a)(ii)
Once a complainant establishes that a respondent’s domain name is identical or confusingly similar to complainant’s mark, and that complainant has not authorized respondent to use the mark, the burden shifts to respondent to establish some right or legitimate interest in respect of the domain name. Sony Kabushiki Kaisha v. S, WIPO Case No. D2000-1074 (November�28,�2000). Complainant has alleged that Respondent is not authorized to use Complainant’s name in conjunction with the disputed domain name or otherwise. Respondent’s communications fail to invoke some circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that Respondent holds some right or legitimate interest in the disputed domain name.
This Panel agrees with Complainant that Respondent had constructive notice of Complainant and her name on October�11,�2003, when Respondent first registered the domain name, by virtue of Complainant’s notoriety at that time. Of course, Respondent also had actual knowledge of Complainant and her name as he acknowledged having a face to face meeting with Complainant prior to registering Complainant’s name as a domain name.
That Respondent denies Complainant is well known or famous is of little consequence. Whether or not Respondent agrees, Complainant is well known, Respondent knew Complainant and, obviously, considered Complainant and her notoriety when registering the domain name. Actual notice or awareness of another’s mark can be inconsistent with the possibility of acquiring some right or legitimate interest in respect of a domain name that incorporates the mark. Pfizer Inc. v. Websites, WIPO Case No. D2004-0730 (October�17,�2004).
Respondent does not contend that he is known by or has acquired trademark or service mark rights in the ALLEE WILLIS name, or that he has used the disputed domain name in connection with a bona fide offering of goods and services. Respondent states that he registered the disputed domain because he is a collector of domain names, and claims that other sites in his collection are used, or intend to be used, as fan sites or to help law enforcement solve unsolved crimes. Respondent neither states nor offers evidence that the domain name in question was ever used for anything, nor does Respondent state or offer evidence that Respondent made any preparations to use the domain name for some permissible purpose. As such, none of the circumstances by which a respondent might demonstrate some right or legitimate interest in a domain name set forth in paragraph 4(c) of the Policy is available to the Respondent.
As the record is devoid of evidence demonstrating a right or legitimate interest of Respondent in respect of the disputed domain name, the Panel finds that element (ii) of the Policy’s paragraph 4(a) has also been established.
Registered and Used in Bad Faith: Policy, paragraph 4(a)(iii)
Paragraph 4(a)(iii) of the Policy requires that the complainant demonstrate that the respondent both registered and is using the disputed domain names in bad faith. Paragraph 4(b) of the Policy iterates four non-exclusive circumstances giving rise to an evidentiary presumption of bad faith registration and use on the part of a respondent. A complainant need only demonstrate the existence of one of these circumstances in order to meet its burden under the third element of the Policy, and bad faith registration and use may be demonstrated through other circumstances as well. Complainant claims that it has demonstrated bad faith use and registration on the part of Respondent through the circumstances described in paragraphs 4(b)(i) and (ii) of the Policy.
Paragraph 4(b) of the Policy provides in relevant part that, for purposes of paragraph 4(a)(iii) of the Policy, bad faith use and registration may be established by:
(i) circumstances indicating that respondent registered or acquired the domain name 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; or
(ii) respondent 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 respondent has engaged in a pattern of such conduct; or . . .
Complainant has provided evidence, which is undisputed by Respondent, that Respondent is the record holder of a number of domain names that reflect the personal names of high-profile individuals, almost all of which point to inactive websites. Respondent does not claim to have authority to use any of the personal names in question. Rather, Respondent claims to be a “collector” of domain names and to use these domain names that mirror well-known personal names as fan sites or sites to help law enforcement solve difficult crimes. The available evidence does not support Respondent’s contentions as none of the domain names in question contain content of the type claimed by Respondent.
It is also undisputed that Respondent offered to sell the domain name to Complainant for $25,000, which is very much in excess of Respondent’s out-of-pocket costs to register and maintain the domain in question.
This Panel is somewhat troubled by the circumstances that Respondent’s offer to sell the disputed domain for an amount far in excess of Respondent’s costs to acquire and maintain the domain was specifically solicited by Complainant’s agent, and that the offer was made by Respondent only after Complainant’s agent extended a series of increasingly valuable offers to purchase, most of which were also far in excess of Respondent’s out-of-pocket costs. Because it is commercially most efficient to acquire a disputed domain name through negotiations for the purchase of that name, and not through litigation (including a UDRP proceeding), it is both logical that trademark owners should make offers to buy domain names and that such conduct would lead to offers on the part of the domain name registrants to sell the domain names for amounts that exceed the registrants’ out-of-pocket costs. Such offers on the part of the domain name registrant would not, by itself, be the evidence of bad faith registration and should not be viewed as fitting within the circumstance described by paragraph 4(b)(i) of the Policy. Compare Magnum Peiring, Inc. v. The Mudjackers and Garwood S. Wilson,�Sr., WIPO Case No. D2000-1525 (January�29,�2001) and Life Plan c/o Relationtional Dynamics, Inc. NAF Case No. 94826 (July�13,�2000), discussing whether monetary offers in excess of out-of-pocket costs made in the context of settlement negotiations should be admissible as evidence of bad faith registration and use.
Here, however, given Respondent’s pattern of collecting domain names reflecting personal names of high-profile individuals while failing to use the domain names to point to active websites, this Panel is persuaded that Respondent registered the names in question, included the domain name that is the subject of the instant dispute, for the purpose of selling the names to the individuals whose names are reflected therein, or to someone who would compete with or would in turn offer to sell the names to these individuals, for an amount that exceeds Respondent’s out-of-pocket costs to acquire the domain names, or that Respondent registered these domain names in order to prevent these individuals from reflecting their personal names in the corresponding domain names, or in order to benefit, financially, in some other way through the misappropriation by Respondent of the goodwill these individuals, including Complainant, have built up in their personal names. Therefore, whether or not Respondent was “entrapped” into offering to sell the disputed domain name for an amount in excess of Respondent’s cost to acquire the name in this case, this Panel is satisfied that Respondent registered and is intending to use the disputed domain in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
Other panels have concluded that when a domain name incorporates a famous mark comprised of a coined or fanciful term, no other action, aside from registering the domain name, is required for a finding of bad faith. This is based upon the premise that “it would be difficult, perhaps impossible, for Respondent to use the Domain Name as the name of any business, product or service for which it would be commercially useful without violating Complainant’s rights.” Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (March�10,�2000). This Panels finds an analogous situation in the circumstances of this case, considering that Complainant’s name is well known and that Respondent, at the time he registered Complainant’s name as a domain name, knew Complainant and was familiar with the commercial potential of Complainant’s personal name. While it is conceivable that Respondent could have registered for some legitimate purpose, Respondent has provided no evidence of having done so and it is much more likely that Respondent registered the disputed domain name for one or more of the improper purposes described in paragraph 4(b) of the Policy.
This Panel is therefore persuaded, based upon the record in this case, that Respondent both registered and is using the disputed domain name in bad faith and that element (iii) of the Policy’s paragraph 4(a) has also been established.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel concludes that the relief requested in the Complaint should be granted and orders that the domain name be transferred to Complainant.
Seth M. Reiss
Sole Panelist
Date: February�17,�2004
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