WIPO Domain Name Decision D2008-0342 for genekelly.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Gene Kelly Image Trust v. BWI Domain Manager

Case No. D2008-0342

 

1. The Parties

The Complainant is Gene Kelly Image Trust of California, United States of America, represented by Lavely & Singer PC, United States of America.

The Respondent is BWI Domain Manager, of Cayman Islands, Overseas Territory of United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name is registered with R Services Corp.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2008. On March 7, 2008, the Center transmitted by email to R Services Corp a request for registrar verification in connection with the domain name at issue. On March 10, 2008, R Services Corp transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 18, 2008. The Center verified that the Complaint together with the amendment to 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 March 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2008.

The Center appointed John Swinson as the sole panelist in this matter on April 18, 2008. 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

Gene Kelly was a dancer, choreographer, actor, and movie director, born in the United States of America in 1912, dying in 1996.

The Complainant is a trust entity which has been granted the right to use the name, voice, signature, photograph, likeness and persona of Gene Kelly, pursuant to a Declaration of Trust signed by Gene Kelly before his death.

The disputed domain name was first registered on April 13, 2003.

The website operating from the disputed domain name contains links to search results for categories such as “Gene Kelly”, “Gene Kelly Fan Club”, “DVD movie”, “Photo Gallery” as well as “Ringtones”.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

Gene Kelly is an internationally recognised film actor, director and producer. He appeared in over 40 feature films, including iconic films such as “Singin’ in the Rain” and “An American in Paris”. He also directed more than ten films, and produced six films.

From 1952 onwards, Gene Kelly developed and cultivated his name as a distinctive mark. The disputed domain name is identical or confusingly similar to this mark.

There is no evidence that the Respondent has used, or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has never been commonly known by the disputed domain name, and is not making a legitimate non-commercial or fair use of the disputed domain name.

The Respondent appears to have registered the disputed domain name to disrupt the Complainant’s business and to misdirect Internet traffic. Internet users are likely to be confused and believe that the content of the Respondent’s website is connected with the Complainant.

The Respondent has a history of cyber squatting and typo squatting, which is a clear indication that the Respondent has engaged in a pattern of illicit behaviour, and also indicates registration and use of the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy provides that the complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or a service in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

In the Complaint, the Complainant has not referred to any registered trademark rights in the name “Gene Kelly”. The Panel conducted a search of the United States Patent and Trademark Office database and did not find any registered trade or service marks over “Gene Kelly”. The Complainant must therefore rely on common law rights in this name.

As noted in the Center’s overview of panel views, the UDRP does not specifically protect personal names. However, in situations where an unregistered personal name is being used for trade or commerce, it will be sufficient if the complainant can establish common law trademark rights in the name or adequate rights to ground an action for passing off. See Jeanette Winterson v. Mark Hogarth,WIPO Case No. D2000-0235.

There have been a number of previous panel decisions where authors, athletes and entertainers (both living and deceased) have been successful in having domain names which contain their person name transferred to them or their estates under the UDRP. However, there have also been various previous decisions where a famous name alone was not sufficient to establish trademark rights. See Israel Harold Asper v. Communication X Inc.WIPO Case No. D2001-0540.

To establish common law rights in a personal name, it is necessary to show use of the name as an indication of a source of goods or services supplied in trade or commerce and that, because of such use, the personal name has become distinctive of that source of goods or services. In this way a celebrity’s name can serve as a trademark when used to identify the celebrity’s performances. See Kevin Spacey v. Alberta Hot Rods, NAF Case No. 114437. So the first issue for the Panel to determine is whether the name Gene Kelly is sufficiently used in trade or commerce to such an extent that it has acquired common law trademark rights.

Gene Kelly appeared in a large number of Broadway plays and feature films. He won an Academy Award in 1951 for his performance in “An American in Paris” and is most often remembered for a dance scene from the film “Singin’ in the Rain” which he choreographed, performed and directed. His films are still viewed and distributed today. The Panel is satisfied that Gene Kelly had, through extensive and prolonged use, acquired common law trademark rights in his name. The rights in this mark were transferred to the Complainant upon Gene Kelly’s death in 1996 pursuant to the Declaration of Trust. The Panel therefore finds that the “Gene Kelly” name and trademark is still used substantially in trade to promote his performance services.

The Panel also finds the disputed domain name is identical to the Complainant’s mark.

Accordingly, the Complainant has satisfied the first element.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

To succeed on this element, the complainant must make out an initial prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.

The Respondent (BWI Domain Manager) does not appear to be commonly known as Gene Kelly or anything similar. The Complainant has not licensed or permitted the Respondent to use the Gene Kelly name.

The Respondent does not appear to be making a bona fide offering of goods or services from the website which operates from the disputed domain name. The website provide links under a broad subject heading (some related to Gene Kelly, and some not), which then redirects to another page with sponsored listings relating to that subject. The Panel finds that such use does not of itself constitute a bona fide offering of goods or services.

The existence of sponsored links on the website also clearly demonstrates that the Respondent is not using the disputed domain name as a legitimate non-commercial fan site. On the contrary, it appears plain that the Respondent is using the disputed domain name to make a commercial gain.

The Complainant has presented a prima facie case indicating that the Respondent does not have any rights or legitimate interests in the disputed domain name. As the Respondent has not filed any Response, it has failed to adequately answer the Complainant’s prima facie case.

Accordingly, the Panel finds that the second element is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the Complaint, the Complainant makes reference to subparagraphs (ii) and (iv).

Subparagraph (ii) provides for circumstances where the respondent has engaged in a pattern of conduct of registering domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. Subparagraph (iv) includes circumstances where the respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.

The Respondent was also a respondent in the following proceeding: Det Berlingske Officin A/S v. BWI Domain Manager,WIPO Case No. D2007-1717 (where the domain name was transferred to the Complainant). In that case the panel noted:

“Furthermore, Respondent’s use of an alias name, shown by Complainant, combined with Respondent’s history of cyber squatting and typo squatting (see, for instance: King Pharmaceuticals, Inc. v. Whois ID Theft Protection, WIPO Case No. D2007-0009; E, Inc. v. Whois ID Theft Protection, WIPO Case No. D2007-0016; Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435; The Chancellor, Masters, and Scholars of the University of Cambridge v. Whois ID Theft Protection,WIPO Case No. D2006-1188; Soci�t� des Produits Nestl� v. Whois ID Theft Protection, WIPO Case No. D2006-1154; The Hartz Mountain Corporation v. Whois ID Theft Protection,WIPO Case No. D2006-1319; Fifth Third Bancorp v. Whois ID Theft Protection,WIPO Case No. D2006-1209; Sports Holdings, Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1146; Mannheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; and others) is a clear indication of registration and use in bad faith. Respondent who has been the subject of numerous domain name complaints, obviously is engaged in a pattern of illicit behavior.”

The Complainant has not demonstrated in its Complaint that the Respondent has used an alias, and that the Respondent and Whois ID Theft Protection are in fact the same entity. However the Panel is willing to infer from the previous panel’s decision in Det Berlingske that this is the case. The number of previous decisions referred to above shows a clear pattern of cyber squatting and typo squatting behaviour.

The disputed domain name contains the personal name of a famous actor who is well known throughout the world, despite his death over ten years ago. The Panel infers that the Respondent knew of the popularity and renown of Gene Kelly, and registered and used the disputed domain name to attract Internet users to its website. As the disputed domain name contains the correct spelling of Gene Kelly’s name and nothing more, it is extremely likely that Internet users will be confused and believe the Respondent’s website is somehow sponsored, affiliated or endorsed by the Complainant’s trademark. As mentioned above, the fact that the Respondent’s website contains sponsored links (the majority of which relate to movies or Gene Kelly) demonstrates that the Respondent is using the website to attract Internet users for commercial gain. The Panel finds that paragraph 4(b)(iv) is present in this case.

Accordingly, the Panel finds that the third element has been satisfied.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.

John Swinson
Sole Panelist

Dated: April 22, 2008

Full & Egal Universal Law Academy