WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
James Christian Kimmel v. jimmykimmel aka General Delivery
Case No. D2006-0402
1. The Parties
The Complainant is James Christian Kimmel, Los Angeles, California, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
The Respondent is jimmykimmel aka General Delivery, WebMaster, Georgetown, Grand Cayman GT, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name (herein the “Domain Name in Dispute”) is registered with Address Creation.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2006. On March 31, 2006, the Center transmitted by email to Address Creation a request for registrar verification in connection with the domain name at issue. On March 31, 2006, Address Creation 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. 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”).
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 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April�26,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2006.
The Center appointed J. Nelson Landry as the sole panelist in this matter on May�8,�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
The Complainant is a well known comedian and entertainer who operates under the name JIMMY KIMMEL. Since 1990, he has engaged in and developed a career as comedic television and radio entertainer, first as a morning personality on radio stations, then from 1997 to 2001 as the co-host of the nationally televised cable television game show Win Ben Stein’s Money. Twice he was nominated for an Emmy Award which he won for Best Game Show in 1999.
Then in 1999, the Complainant created and appeared as a co-host until 2003 in The Man Show on Comedy Central which show rapidly became one of the highest watched shows with over 2.5 million viewers. Concurrently from 1999 to 2002, the Complainant has appeared in and contributed to numerous other popular television programs as a comedic football commentator on Fox NFL Sunday, as co-creator, executive producer and a voice talent in the Comedy Central show Crank Yankers and as a celebrity guest on various talk shows, including Live with Regis and Kathie Lee; The Tonight Show with Jay Leno and many others. Finally he has lent his voice talents to the feature films Garfield and Road Trip and hosted The American Music Awards in 2003 and 2004.
At the present time the Complainant is the host of the popular late night network television talk series bearing his professional name, Jimmy Kimmel Live, which started in 2003, is aired weeknights on a major U.S. television network and averages about 1.5 million viewers per night.
The precise identity of the Respondent is unclear, given that the registrant address for the domain name in dispute is General Delivery, Georgetown, Grand Cayman.
The domain name in dispute was registered on November 12, 2001.
5. Parties’ Contentions
A. Complainant
Firstly, the Complainant contends that since 1997, he has acquired much third party commentary, publicity and renown for his comedic work and that as a result of his efforts, under his professional name he has acquired enormous value and goodwill and has thus become known to the public and the trade as the unique and exclusive source of services and products to which his professional name is applied. The Complainant thus submits that JIMMY KIMMEL as a Trade-mark is uniquely associated with him. Therefore the Complainant further contends that he has established common law Trade-mark rights in his professional name JIMMY KIMMEL (herein the ‘Trade-mark”)sufficient to maintain a UDRP proceeding and refers to several decisions in support thereof. See John Tesh v. Payphone Search LLC, WIPO Case No.�D2005�0894; Carmen Electra a/k/a Tara Leigh Patrick v. Network Operations Center, WIPO Case No. D2003-0852; Brosnan v. Network Operations Center, WIPO Case No. 2003-0519; Anderson v. Alberta Hot Rods, WIPO Case No. D2002-1104 and Roberts v. Boyd, WIPO Case No. D2000-0210.
The Complainant submits that the domain name in dispute is identical to and confusingly similar to Complainant’s Trade-mark in that it fully incorporates the Trade-mark and differs only in the addition of the generic top level domain “.com”. Again he relies on UDRP decisions which support his contentions. See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696; Freeman v. Mighty LLC, WIPO Case No. D2005-0263.
The Complainant further submits that considering his notoriety, Internet users, on seeing the domain name in dispute, will reasonably believe that it is related to him. See Turner v. Kyamko, WIPO Case No. D2004-1036 where the panel “has recognized that Internet users expect to find a celebrity on the Internet at a domain name address comprised of the celebrity’s name”.
Secondly the Complainant represents that the registration date of the domain name in dispute is subsequent to the adoption and extensive use of the name JIMMY KIMMEL as a Trade-mark and that, the burden is on Respondent to establish rights or legitimate interests in the said domain name. See PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174. He further represents that where the Complainant’s name and Trade-mark is well-known and recognized, there can be no rights or legitimate use by the Respondent. See Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Willis v. NetHollywood, WIPO Case No. D2004-1030.
The Complainant contends that the Respondent cannot demonstrate or establish any rights or legitimate interests in the domain name in dispute and that there is no relationship between the Complainant and the Respondent since the Complainant has not licensed a right for the Respondent to use his name or Trade-mark, nor given any other permission or consent to use the Trade-mark. The domain name in dispute not being a name or nickname of the Respondent, it cannot in any other way be identified with or related to any rights or legitimate interests of the Respondent.
The Complainant further contends that Respondent appears to have acquired and is using the domain name in dispute solely for commercial gain in that an Internet user browsing on the address of the domain name in dispute will reach a webpage which displays a search engine and web portal site offering links to a number of other websites, including websites relating to entertainment, travel, online dating services, theater tickets, which Internet websites are totally unrelated to Complainant, but many of which offer goods and services competitive with those of Complainant. According to the Complainant, the Respondent derives a financial benefit in the form of click-through advertising revenue from the web traffic that is diverted through the domain name in dispute to this search engine and linking portal, and the Respondent in using the website derives advertising income through this service.
Thirdly the Complainant submits that the Respondent registered and is using the domain name in dispute in bad faith for commercial gain and to profit from the resulting consumer confusion and that bad faith registration or acquisition of the domain name in dispute is established by the fact that the said domain name consists solely of Complainant’s professional name (plus “.com”) and was acquired many years after that name became known as Complainant’s common law Trade-mark. See PepsiCo, Inc. v. Zhavoronkov, WIPO Case No. D2002-0562; Willis v. NetHollywood, WIPO Case No.�D2004-1030; Frampton v. Frampton Enterprises, WIPO Case No. D2002-0141. The Respondent has chosen Complainant’s Trade-mark because of its notoriety in order to capitalize on Complainant’s goodwill which suggests opportunistic bad faith. See Veuve Cliquot Ponsardin, Maison Fond�e en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. This bad faith is further shown by the fact that Respondent has sought to profit in bad faith from the domain name in dispute in using it to divert web traffic to a search engine and linking portal for profit and to advertise websites that compete with the Complainant or which are completely unrelated to Complainant. See Soci�t� des H�tels M�ridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849.
Finally the Complainant submits that the Respondent has engaged in a pattern of registering domain names containing the Trade-marks and names of third parties and then using those domain names to direct web traffic to websites from which it derives a financial benefit. Such pattern is evident in the numerous administrative decisions finding that Respondent registered and used domain names in bad faith in using bogus contact information and the same mailing address as in the present domain name registration.
According to the Complainant, the Respondent’s bad faith stems from the steps it took, steps to conceal its identity in creating a fictitious name which practice he engaged in many times. Providing false contact information when registering a domain name in itself constitutes bad faith. See Vitro, S.A. de C.V., Vitro Vidrio y Cristal, S.A. de C.V. and Vitro Global, S.A. v. ICG, WIPO Case No. Case No. D2005-1150; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No.�D2000-0138; Ticketmaster Corporation v. Dmitri Prem, WIPO Case No.�D2000-1550 and Home Director, Inc. v. HomeDirector, WIPO Case No.�D2000-0111.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a Trade-mark 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.
Prior to engaging in the discussion, the Panel considers appropriate to comment positively on the ample evidence provided and the numerous references to UDRP decisions to support each of the representations made in the Complaint.
A. Identical or Confusingly Similar
For a decade prior to the registration of the domain name in dispute in November 2001, the Complainant James Christian Kimmel has been actively engaged as a comedian and entertainer under the professional name JIMMY KIMMEL as it is particularized in the factual background section. Having won an Emmy Award, appeared in numerous shows as creator, executive producer and co-host as well as a celebrity guest on various talk shows, and been involved in several films, as it appears from the documentary evidence produced, this Panel has no difficulty in determining that JIMMY KIMMEL is a Trade-mark of the Complainant used in association with his comedic work and which Trade-mark benefits from substantial goodwill attached to it.
The Panel finds that the Complainant has established that it has common law rights in the Trade-mark.
The domain name in dispute is made of the Trade-mark to which the generic top level domain “.com” has been added, as also found in earlier UDRP decisions cited by the Complainant in support of his position, this Panel finds that the domain name in dispute is identical to and confusingly similar to the Complainant’s Trade-mark.
The first criterion has been met.
B. Rights or Legitimate Interests
Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks right or legitimate interest in the domain name in dispute by stating that the Respondent has never been known by the name “Jimmy Kimmel” or the domain name in dispute and that its use is not a legitimate, non-commercial or fair use of the domain name in dispute. Furthermore, Complainant has never given a license nor in any way authorized Respondent to make use of Complainant’s Trade-mark. There is no evidence that Respondent has ever engaged is any legitimate business under the Complainant’s Trade-mark.
The evidence of the Complainant clearly demonstrates that the domain name in dispute is used solely for commercial gain upon considering the numerous links appearing on the webpage which redirect the Internet visitor to other websites relating to many different activities which are totally unrelated to the Complainant, even some which offer goods and services competitive with those of the Complainant. Furthermore, the Panel has observed in the evidence provided by the Complainant that the portals on the Respondent’s website appear under a heading “sponsored links” which do confirm the representations of the Complainant that the Respondent’s goal with the domain name in dispute is to use it for commercial gain and to profit from the resulting consumer confusion arising out of the reputation and goodwill associated with Complainant’s Trade-mark. See General Electric Company v. Momm Amed la, WIPO Case No. D2000-1727 where the panel held that such activities in redirecting Internet traffic is likely to deliver a commercial benefit to the Respondent.
The second criterion has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the Respondent has 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 Trade-mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of you’re the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the Trade-mark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on the Respondent website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends rightly in the present case that the domain name was registered and used in bad faith.
It has been held in PepsiCo, Inc. v. Zhavoronkov, WIPO Case No. D2002-0562 that the registration of a domain name which corresponds to the professional name of the Complainant simply with “.com” top level domain name is indicative of bad faith. As held in Veuve Cliquot Ponsardin, Maison Fond�e en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 the fact that the Respondent chose the Complainant’s Trade-mark because of its notoriety amounts to opportunistic bad faith and demonstrates registration in bad faith of the domain name in dispute.
As held in Soci�t� des H�tels M�didien v. LaPorte Holdings, Inc., WIPO Case No.�D2004-0849, the use of the domain name to divert web traffic to a search engine and linking portal for profit and the advertising of sponsored websites clearly show use of the domain name in bad faith.
Finally as the Complainant had put in evidence, it appears that the Respondent has engaged in a pattern of registering domain names containing Trade-marks and names of third parties and providing imprecise contact details or a mailing address similar to that in the registration of the present domain name in dispute. The Complainant has provided references of eight UDRP WIPO cases solely within the years 2004 and 2005.
The Panel finds that the Respondent has registered and used the domain name in dispute in bad faith.
The third criterion has been met.
7. Decision
The Panel concludes that:
(a) the domain name is confusingly similar to the Complainant’s Trade-mark;
(b) the Respondent has no rights or legitimate interest in the domain name in dispute; and
(c) the domain name in dispute has been registered and is being used in bad faith.
Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
J. Nelson Landry
Sole Panelist
Dated: May 22, 2006
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