WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Silvie Tomčalov� a.k.a. Sylvia Saint v. Juan Campos
Case No. D2006-0379
1. The Parties
1.1 The Complainant is Silvie Tomčalov� a.k.a. Sylvia Saint, Prague, Czech Republic, represented by Lafortune Cadieux, L.L.P., Montr�al (Qu�bec), Canada.
1.2 The Respondent is Juan Campos, Carazo, Nigaragua.
2. The Domain Name and Registrar
2.2 The disputed domain name (the “Disputed Domain”) is registered with Intercosmos Media Group, Inc d/b/a directNIC.com (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2006. On March 27, 2006, the Center transmitted by email to Intercosmos Media Group, Inc. d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On March�27,�2006, Intercosmos Media Group, Inc. d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
3.2 The Center 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”).
3.3 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 April 3, 2006. In accordance with the Rules, Paragraph 5(a), the due date for Response was April 23, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2006.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on May�1,�2006. The Panel finds that it was properly constituted. 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.
4. Factual Background
4.1 The Complainant is an actress in the adult entertainment industry. In the mid-1990s the Complainant started to perform and to provide professional entertainment services and related goods under the stage name “Silvia Saint” and its derivatives “Sylvia Saint”, “Silvia” and “Sylvia”. The Complainant has performed under these names since at least 1997.
4.2 The Complainant has appeared under her stage name in over 150 video productions during the last 10 years. The Complainant has also featured, under the same names, in numerous printed magazines and e-zines, including Arena Magazine, Hustler and Penthouse, and has appeared on the cover and/or in the centrefold in many of these publications. The Complainant also received a number of awards and acknowledgements in the adult entertainment sphere over the same period.
4.3 The Complainant was Penthouse Pet of the Year in 1997 in the Czech edition of Penthouse magazine and in 1998 in the US edition of the magazine. The Complainant’s first movie was filmed in Prague. After that, the Complainant went through an intense production period in the US to build her career before launching a website, , in 2002.
4.4 In addition to further film productions, the Complainant has since 2003 modelled underwear for Cottelli Collection, granted licences to a German company, Orion, for use of the Complainant’s name and image in association with various erotic goods, and has promoted the annual SEXPO in Australia in 2005.
4.5 The Respondent appears to be based in Carazo, Nigaragua.
4.6 The Disputed Domain is and was registered on or around June�1, 1998.
5. Parties’ Contentions
5.1 The Complainant’s factual and legal contentions can be summarised as follows.
A. Complainant
Identical or Confusingly Similar
5.2 The Complainant contends that she has used her stage name, “Silvia Saint” and its derivatives “Sylvia Saint”, “Sylvia” and “Silvia”, as a common law trade mark in association with entertainment services and related goods since at least 1997.
5.3 The Complainant states that her stage name is not registered as a trade mark and asserts that this is not necessary for the purposes of establishing rights in a trade mark under the terms of the Policy. The Complainant cites the following panel decisions in support of this contention: Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235; Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 and Pamela Anderson v. Alberta Hot Rods, WIPO Case No. D2002-1104.
5.4 The Complainant further contends that the Respondent has registered a domain name which is identical to the stage name in which she asserts common law trade mark rights.
5.5 Therefore, the Disputed Domain is identical to a trade mark in which the Complainant has rights in accordance with Paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
5.6 The Complainant asserts that she has never granted to the Respondent any right in and to her stage name and that she is in no way associated with the Respondent.
5.7 According to the Complainant, the Respondent has never been commonly known by the Disputed Domain.
5.8 The Complainant contends that the Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain and that the Respondent’s only intention is to misleadingly divert consumers. The Complainant submits that the Disputed Domain is not being used in connection with a bona fide offering of goods or services.
5.9 In addition, the Complainant contends that the Respondent is in breach of the Registrar’s Terms of Services which provide that it is illegal to register a domain name which infringes the legal rights of third parties, in this case, the rights of the Complainant. The Complainant cites the following extract from the Registrar’s terms and conditions:
“12) Representations and Warranties
a) You represent and warrant that:
ii) each time you register a domain name that, to the best of your knowledge and belief, neither the registration of the domain name nor the manner in which it is directly or indirectly used infringes the legal rights of a third party, and that the domain name is not being registered, used or facilitated for any unlawful purpose: and
iii) in applying for a domain name, the registration is not made in bad faith and that the domain name does not conflict with another domain name or any rights of anyone other than you.”
5.10 As a result, the Respondent has no rights or legitimate interests in respect of the Disputed Domain.
Registered and Used in Bad Faith
5.11 The Complainant’s contentions in this regard are extracted directly from the Complaint and are as follows:
“The only purpose of the Domain name is to redirect traffic to an address owned by a third party. Such third party web site competes with Complainant’s own web site and other professionals activities. In the case of State of Wisconsin v. Pro-Life Domains, Inc. WIPO Case No. D2003-0432 the Panel stated that:
‘It appears that Respondent registered and used the domain name for the purpose of misdirecting Internet users to a commercial site based on confusion with Complainant’s name. The domain name redirects Internet users to a commercial site selling prescription drugs. Using a party’s name to redirect Internet users to an unrelated commercial site for profit is recognized under the Policy as evidence of bad faith registration and use. Policy, Paragraph 4(b)(iv)’ (our underlines)
Consequently, the Disputed Domain was registered and is being used in bad faith.”
Remedies requested
5.12 For the reasons described above, the Complainant requests that the Panel issue a decision requiring that the Disputed Domain be transferred to the Complainant.
B. Respondent
5.13 The Respondent did not file a Response and is therefore in default pursuant to Paragraph 5(e) and Paragraph 14 of the Rules.
6. Discussion and Findings
6.1 Under Paragraph 5(e) of the Rules, if the Respondent does not submit a Response and in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. In addition, under Paragraph 14 of the Rules, where a party fails to comply with any provision or requirement of the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
6.2 This Panel does not find there to be any exceptional circumstances within Paragraph 5(e) of the Rules which would prevent the Panel from determining the dispute.
6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to establish her case in accordance with Paragraph 4(a) of the Policy and prove that:
(i) the Disputed Domain 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 interests in respect of the Disputed Domain; and
(iii) the Disputed Domain has been registered and is being used in bad faith.
6.4 It is worth referring in this respect to paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. As that paragraph makes clear, the respondent’s default does not automatically result in a decision in favour of the complainant. It is for the complainant to establish each of the three elements required by Paragraph 4(a) of the Policy. While a panel may draw negative inferences from the respondent’s default, Paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in a complaint under the terms of the Policy.
6.5 With this is mind the Panel has reviewed the Complaint together with annexes and its findings are set out below.
A. Identical or Confusingly Similar
6.6 The Complainant must establish two separate elements under Paragraph 4(a)(i) of the Policy. Firstly, the Complainant must provide evidence that she has rights in a trade mark or service mark. Secondly, the Complainant must show that the Disputed Domain is identical or confusingly similar to the trade or service mark in which she has rights.
6.7 The Complainant is seeking to rely, inter alia, on the common law trade mark rights which she claims in her stage name “Silvia Saint” and its derivative “Sylvia Saint”. The Complainant cites the Jeanette Winterson, Julia Fiona Roberts and Pamela Anderson decisions in support of the assertion that registered rights are not required in order to fall within Paragraph 4(a)(i) of the Policy.
6.8 It has been held in numerous panel decisions that unregistered or common law trade mark rights in a jurisdiction that recognises such rights are sufficient for the purposes of bringing a complaint under the Policy and that such rights can extend to a personal name (see this Panel’s decisions in Antonio de Felipe v. R, WIPO Case No. D2005-0969 and Joe Cole v. Dave Skipper, WIPO Case No. D2003-0843 in addition to the decisions cited by the Complainant).
6.9 The evidence submitted by the Complainant consists predominantly of lists of film titles, magazine publications and awards received by the Complainant. It appears from this that the Complainant embarked on her career in the adult entertainment industry, using the various aspects of her stage name, in 1997 and that since that date she has been involved in numerous films of that genre, many of which were produced in the United States.
6.10 The Complaint does not specifically address whether the Complainant had rights in a trade mark at the time of the registration of the Disputed Domain. However, it appears to be reasonably clear from the evidence provided that the Complainant had gained a considerable reputation in the adult entertainment industry, at least in the United States, by mid-1998, the time at which the Disputed Domain was registered. Indeed by mid-1998 the Complainant had been the recipient of at least two adult entertainment industry film awards.
6.11 The Panel is therefore prepared to accept that the Complainant has put forward a prima facie case that at the time of registration of the Disputed Domain, the Complainant had common law rights in her stage name that are recognised under the Policy and which arise from the Complainant’s activities in the United States.
6.12 It is in any event clear from the evidence before the Panel that the Complainant’s career continued to progress subsequent to the registration of the Disputed Domain and that the Complainant has gained a significant reputation in the United States. The Panel also notes that the majority view of panelists appears to be that rights in existence at the time of the Complaint are sufficient (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions at paragraph 1.4).
6.13 Therefore, disregarding the “.com” suffix, the Panel has little difficulty in concluding that the Disputed Domain is either identical or confusingly similar to the Complainant’s stage name in which common law rights reside.
6.14 Accordingly, the Panel concludes that the Complainant has established both elements of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.15 In the absence of a Response, the Panel accepts that the Respondent registered the Disputed Domain and used the Complainant’s name without having obtained the consent or permission of the Complainant.
6.16 The Panel also accepts that there is no evidence to suggest that the Respondent owns any trade marks or service marks which correspond with the Disputed Domain. Nor is there any suggestion that the Respondent has ever been known or commonly known by a name incorporating “Sylvia Saint”.
6.17 So far so good. However, the Complainant then contends that the Respondent has not used the Disputed Domain in connection with a bona fide offering of goods or services; that the Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain; and that the Respondent’s only intention is to misleadingly divert consumers.
6.18 In doing this the Complainant is essentially asserting that none of the factors set out in Paragraph 4(c) of the Policy apply. Paragraph 4(c) provides a non-exhaustive list of circumstances which, if found by the panel to be proven, will demonstrate rights or legitimate interests. It might be said that this is something for the Respondent to show. Nevertheless, assertions by a complainant in a complaint that none of these circumstances apply are common. The logic behind such assertions is that although a complainant bears the burden of proof of the various elements of the Policy, if this is taken too far so far as rights and legitimate interests are concerned, there is a risk that the complainant is required to prove a negative. Therefore, by asserting that the respondent has no registered rights, has not been authorised by the complainant and that the respondent’s activities do not fall within any of the categories described in Paragraph 4(c) of the Policy, a complainant hopes to make out a prima facie case under this heading. Having made out such a prima facie case the burden of proof will then pass to the respondent.
6.19 In many cases this may well be the only sensible way for a complainant to proceed. However, there is a danger that such phrases simply become a mantra recited by a complainant in every case in the belief that this somehow automatically relieves the complainant of its burden of proof. The Panel does not believe this to be so. It depends on the circumstances of the case.
6.20 Turning back to the case currently before the Panel, this is not a case where the Disputed Domain is not being used. Indeed, the Complainant positively maintains in the context of her submissions as to bad faith that the Disputed Domain links to a “third party web site” that “competes” with the Complainant. It would not have been difficult for the Complainant to go on and at the very least explain the nature of that “competing” use from which conclusions as to legitimate rights and interests could sensibly be drawn. However, as the Panel discusses in greater detail under the heading of bad faith below, no further information is given. It may well be that the Complainant is right when she asserts that this site does not involve a bona fide offering of goods or services. However, without further explanation as to why this is the case, this is essentially little more than an assertion that we are left to take on trust. The Panel does not think that this is sufficient.
6.21 The Complainant’s reference to the Registrar’s terms and conditions takes matters no further. Whilst they provide that the registration of the Disputed Domain must not have been made in bad faith, they provide no evidence of the Respondent’s actual intentions and activities.
6.22 In the absence of further explanation from the Complainant in this respect the Panel finds that the requirements of Paragraph 4(a)(ii) of the Policy have not been made out by the Complainant.
C. Registered and Used in Bad Faith
6.23 Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the Disputed Domain has been registered and is being used in bad faith. Furthermore, Paragraph 4(b) of the Policy sets out a number of situations which (in particular but without limitation) shall, if found to be present by the Panel, be considered as evidence of registration and use in bad faith.
6.24 The Complainant’s contentions in this regard are set out in their entirety in paragraph 5.11 above and consist of the assertion that “the only purpose of the Domain name is to redirect traffic to an address owned by a third party. Such third party web site competes with Complainant’s own web site and other professionals activities.” The Complainant then cites the decision of State of Wisconsin v. Pro-Life Domains, Inc, WIPO Case No. D2003-0432 and quotes a passage from that decision which is also set out in paragraph 5.11 above.
6.25 The State of Wisconsin case involved the domain name . This domain name was used by the respondent first to link to an anti abortion website and then to a commercial website for the retail sale of prescription drugs. In the circumstances of that case the panel held that the respondent’s use of the name of a government department to link to “an unrelated commercial site for profit” was an activity that fell within the scope of Paragraph 4(b)(iv) of the Policy, which states that the following shall be evidence of the registration and use of a domain name in bad faith:
“by using the domain name you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your web site or location or of a product or service on your website or location.”
As the State of Wisconsin case did not involve a “competing” web site, it seems unlikely that it is of relevance to this case.
6.26 What then is the basis of the allegation of bad faith in this case? This is where the Panel immediately faces a difficulty. The Complainant does not describe the nature of her own website nor does she provide any evidence of the content of the website to which the Disputed Domain resolves. Nor is any explanation provided as to the way in which the two web sites compete.
6.27 Should this be fatal to the Complainant’s claim? Perhaps it would take little imagination on the part of the Panel to guess what the Complainant’s web site might sell or promote. Indeed, the Complainant provides details of the URL for her website and it was open to the Panel to verify the contents itself (see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, in this respect). Similarly, it is not difficult for the Panel to make it own enquiries as to the website to which the Disputed Domain currently resolves.
6.28 Although the Complainant may consider this harsh, the Panel does not think it appropriate to proceed in this fashion in this case. There is the practical issue that websites change over time. The parties can not be certain what the panelist sees and what the panelist sees may not represent the true position at the relevant time. However, there is a more fundamental objection here. The Complainant must prove her case. It is not for the Panel to make the Complainant’s case for her. It is one thing for a panelist to view a web site to verify a parties’ assertions and quite another to embark upon an independent investigation as to what a complainant’s case may be.
6.29 Of course UDRP proceedings are not court proceedings nor should they be treated as such. The UDRP does not provide for formal rules of evidence nor should they be grafted on to the UDRP procedure. This Panel at least is prepared to accept that assertions of fact made in a complaint endorsed by the appropriate certificate may be regarded as evidence for the purposes of the Policy (although the fact that it is unsupported by other evidence may mean that a Panel will attach it with little weight under Paragraph 10(d) of the Rules). However, there is a distinction between describing in a complaint how another website competes and simply making an abstract assertion of “competition” without further explanation.
6.30 Further, it should be remembered that Paragraph 4(a)(iii) requires not just bad faith use but registration in bad faith. Of course, frequently one can be inferred from the other, but the Panel would expect the Complainant at least to address the point. This is particularly so in this case where the Disputed Domain was not registered recently. It was registered nearly eight years ago. The Complainant is in a much better position to address these issues than the Panel. The Complaint does not do so. Instead it baldly asserts that there has been bad faith registration and use without further explanation.
6.31 In short, the Complainant expects the Panel to investigate too much and speculate too much. It is for the Complainant to prove her case. So far as bad faith registration and use are concerned, the Complainant has failed to do so.
6.32 The Panel therefore finds that the requirements of Paragraph 4(a)(iii) of the Policy have not been made out by the Complainant.
7. Decision
7.1 For all the foregoing reasons, the Complaint is denied.
Matthew S. Harris
Sole Panelist
Dated: May 5, 2006
Full & Egal Universal Law Academy