WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Scarlett Johansson v. Tristan Dare Case No. D2008-1650 1. The Parties
The Complainant is Scarlett Johansson, c/o Periwinkle Entertainment, Inc., Los Angeles, California, United States of America, represented by Silver & Freedman, APLC, United States of America.
The registrant of the disputed domain name (as listed in the Whois particulars provided by the Registrar, and as named in the Complaint) is “Scarlett Johansson” of the United States of America. Following the notification of the Complaint in this proceeding, an individual identifying himself as “Tristan Dare”, of “900 Pound Guerrilla Way, Gibraltar” volunteered that he was the registrant of the disputed domain name referred to below, and filed a Response in the proceeding. The Panel finds it appropriate to refer to the Respondent as either “Tristan Dare” or “the Respondent”. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with Network Solutions, LLC (“the Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2008. On October 30, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 30, 2008, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent named in the Complaint is listed as the registrant, and providing the contact details for the Domain Name. 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 October 31, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2008.
On November 7, 2008, the Center received an email from “Tristan”, advising that he was the Respondent in this proceeding and that, although he had received a communication regarding the Complaint, he had not been supplied with an “actual copy” of the Complaint. On November 7, 2008, the Center confirmed to the Respondent that an electronic copy of the Complaint had been provided to him, and that a hardcopy of the Complaint had been sent via courier service to the registrant's mailing address as confirmed by the Registrar. Notwithstanding, the Center attached a .pdf version of the Complaint in its reply to the Respondent on this point.
A Response was filed with the Center by Tristan Dare as Respondent on November 17, 2008. The Respondent provided in the “Respondent's Contact Details” section of the Response, a physical address at “900 Pound Guerrilla Way, Gibraltar”, and a contact email address.
The Center appointed Warwick Smith as the sole panelist in this matter on December 2, 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.
By email dated November 24, 2008, the Respondent contacted the Center to complain about the way the Respondent was being described in the Center's communications to the parties. In particular, the Respondent objected to the Respondent being described as “Tristan Dare/Scarlett Johansson”. In the November 24, 2008 email, the Respondent asked the Center to delete all references to the contact “Scarlett Johansson”, at an address in New York, United States of America (the Registrant's address as provided to the Center by the Registrar and as set out in the public WHOIS record). The Respondent noted that “that name is obviously the name of the Complainant (and not the Respondent) and that address is for whatever reason incorrect to begin with”. The November 24, 2008 email went on to advise that the Respondent's address as provided in the Complaint was also incorrect. The Respondent reiterated that the Center should refer to the contact details provided by him in his Response filed in the proceeding.
The Panel notes that the first emails which the Center received from the Respondent came from the email address which the Registrar advised is the contact email address of the administrative contact for the Domain Name. On the evidence, it appears that Tristan Dare and the named Registrant “Scarlett Johansson” are one and the same person. Accordingly, any decision the Panel might make to order transfer or cancellation of the Domain Name would apply equally to the registrant “Scarlett Johansson” as listed in the Registrar-provided WHOIS particulars. 4. Factual Background The Complainant
The Complainant Scarlett Johansson is a world-famous actress and celebrity. Since 1994 she has appeared in over 25 movies, including a number of box office hits. She is a four-time nominee for Golden Globe awards. The Complainant says in the Complaint, and the Respondent does not dispute, that Ms. Johansson has been widely featured in celebrity publications, movie reviews, entertainment publications, and a variety of television shows. Searches on “Scarlett Johansson” run on the three major international search engines, Google, Yahoo!, and MSN, all listed sites relating to the actress Scarlett Johansson as the first “hits”.
According to the uncontested allegations in the Complaint, Ms. Johansson has spent substantial time, effort and money promoting her image and name throughout the United States and the world, and has gained the ability to use a “Scarlett Johansson” mark for the purposes of the commercial promotion of a variety of goods and services. The Complaint notes in particular that Ms. Johansson has been hired to endorse and promote Disneyland, The Gap, L'Oreal, and Louis Vuitton, as well as many other world-wide corporations.
The Complainant alleges, and the Respondent does not contest, that Ms. Johansson's long and continued use of a SCARLETT JOHANSSON mark, together with the extensive advertising and promotion of Ms Johansson and the movies she stars in, has resulted in “SCARLETT JOHANSSON” acquiring distinctiveness and secondary meaning as a trademark and service mark. Ms. Johansson's services as an actress and celebrity promoter are said to have caused the public to associate the expression “Scarlett Johansson” as a service mark under which Ms. Johansson's services are provided.
The Complainant does not rely on any registered trademark. The Respondent and the Domain Name
The Domain Name was registered on April 12, 2007. At least that is the “record creation” date provided by the Registrar in response to the Center's request for confirmation of details relating to the registration of the Domain Name. However, the Respondent asserts in his Response that the Domain Name was originally registered as long ago as 1998, when it was used as a website promoting Ms Johansson in the early stages of her acting career. That appears to be the case. The Respondent referred in his Response to numerous pages from websites which have been established at a domain name or names corresponding to the Domain Name, over the years since 1998. Some were archived on the “Wayback Machine” at “”, but the Panel was unable to access any of the web pages dated after April 12, 2007, being the date on which the Registrar says that the record for the Domain Name was created.
The Complainant says that the Domain Name was registered without the Complainant's consent, authorization, or knowledge.
In August 2008, the Domain Name pointed to a website (“the Respondent's website”), which prominently featured a picture of Ms Johansson, in what the Respondent describes as a “femme fatale” pose, with text enquiring if the site visitor was “up for a threesome with Scarlett”. Immediately beneath that inquiry, the text on the Respondent's website explained that the “threesome” was to help launch and promote the United States release of Ms Johansson's new movie, “Vicky, Cristina, Barcelona”, which was scheduled to open in movie theatres on August 15, 2008.
The text of the invitation on the Respondent's website went on to say that “SCARLETT JOHANSSON cordially invites you to JOIN HER in a SMOKING-HOT THREESOME with one more (2+1) unbelievably darn LUCKY bastard WINNER”. The site visitor was invited to “e-mail her your most personal and creative response as to why YOU WISH to be included in such an awesome treat, and you will be entered for a chance to win this opportunity!”
On two occasions where the expression “threesome” was used in upper case lettering, it was accompanied by an asterisk directing the site visitor's attention to a small disclaimer at the foot of the web page reading: “threesome refers to the moviegoing date experience consisting of three people”.
According to the Complaint, Ms. Johansson has had no relationship with the Respondent's website, and never agreed to participate in the “contest” described on the Respondent's website. The Complainant says that the Respondent has taken down the content formerly posted on the Respondent's website, and that, as at the date of the Complaint, the Domain Name resolved to an MSN search engine with “Scarlett Johansson”-related links. (According to the Response, that is “incorrect to the point of being ridiculous”. The Response says that, ever since the content of the Respondent's website was taken down, the Domain Name has been pointing to RedC servers.)
The Respondent has offered no explanation for his choice of the Domain Name, nor any confirmation that he acquired the Domain Name in April 2007, when, according to the Registrar's Whois particulars, the record for the Domain Name was created.
The Respondent says that he is involved with “Internet Art” and “(new) media arts circles”. He says that, in early August 2008, he was contacted via email by an anonymous source offering to pay a sum of up to US$10,000 in exchange for the Respondent devising a promotional concept/campaign in support of the upcoming United States release of “Vicki, Cristina, Barcelona.” According to the Response, Ms. Johansson's character in the movie engages, “although implicitly”, in a sexual threesome with characters played by Ms. Penelope Cruz and Mr. Javier Bardem.
The Respondent says that he responded to the anonymous approach advising that, as an independent (new) media artist, he did not do corporate gigs. He says that he then received another email from the same source containing an increased offer of $20,000, and instructions that he was free to do anything that suited his fancy, as long as he identified the movie and its United States release date. The Respondent did not produce copies of these emails.
The Respondent says in the Response that, based on his “strong ethical beliefs”, he rejected accepting any money, but agreed to “conceptualize a postminimal (new) media artwork surrounding this particular issue for free specifically as a challenge to [the Respondent's] creative urges, as well as a challenge against various constraints that are placed upon our society's construction of our inherited and assumed identities (both physical and metaphysical).”
The Respondent says that he proceeded to create the Respondent's website, with the picture of Ms. Johansson in her “femme fatale” pose, and the accompanying text.
The Respondent says that the “contest” ran on the Respondent's website for two days before the release of the movie, and for two days after its release. The Respondent asserts that, during those four days, around 100,000 fans of Ms. Johansson visited the Respondent's website, and that the Respondent received nearly 10,000 fan emails in support of the “project”.
The Respondent's website did attract some online media coverage around the time of the United States release of the movie. The Respondent produced a copy of a humorous piece published on a movie fan site, which referred to the Respondent's “contest”. The Respondent says that the “contest” posted on the Respondent's website, and the publicity it generated, resulting in a Y figure showing that Ms. Johansson was the most-searched celebrity on the Y website in the 48 hours immediately preceding the movie release date. Pre-commencement Correspondence between the Parties
According to the Complaint, the Complainant's counsel sent the Respondent an email on August 14, 2008, indicating that the Respondent had wrongfully registered and used the Domain Name. The email demanded that the Domain Name be transferred to the Complainant. The Respondent does not deny receiving this letter. According to the Complaint, the Respondent made no response to the letter. 5. Parties' Contentions A. Complainant The Complaint contends:
1. The Complainant has trademark or service mark rights in the mark SCARLETT JOHANSSON. A personal name may be a common law trademark where it acts as an indication of a source of goods or services supplied in trade and commerce, and the personal name has become distinctive of that source of the goods or services. In this case, the name “Scarlett Johansson is sufficiently used in trade or commerce that it has acquired common law trademark rights the public has come to recognize and associate the name “Scarlett Johansson” as a symbol that identifies and distinguishes the entertainment and promotional services provided exclusively by Ms. Johansson.
2. The Domain Name is identical to the Complainant's SCARLETT JOHANSSON mark.
3. The Respondent has no rights or legitimate interests in respect of the Domain Name:
(i) The Respondent has engaged in a use of the Domain Name which intentionally trades on the fame of the Complainant. Such a use cannot constitute a “bona fide” offering of goods or services (citing Madonna Ciccone p/k/a Madonna v Dan Parisi and “M”,WIPO Case No. D2000-0847).
(ii) The Respondent is not offering goods or services through the Respondent's website. Rather, the Respondent attempted to confuse the Complainant's fans who visit the Respondent's website, by making them believe that the Respondent's website emanated from or was otherwise connected with, Ms Johansson. Such activities represented an intentional attempt by the Respondent to trade on the fame of the Complainant.
(iii) The Respondent has never been commonly known by the Domain Name, and the Respondent has no demonstrable interest in the words “Scarlett Johansson”.
(iv) The Respondent has no affiliation with the Complainant in any way. The Respondent has never had any license or other authorization from the Complainant to use the SCARLETT JOHANSSON mark.
4. The Respondent registered and has been using the Domain Name in bad faith:
(i) The Domain Name can only refer to the Complainant. When a disputed domain name is so obviously connected with a well-known name, its very use by someone with no connection with that well-known person suggests opportunistic bad faith (citing Veuve Cliquot Ponsardin, Maison Fondée en 1772 v The Polygenix Group Co.,WIPO Case No. D2000-0163).
(ii) The Respondent's registration of the Domain Name prevents the Complainant as owner of the SCARLETT JOHANSSON mark from exercising her rights in that mark and managing her presence on the Internet.
(iii) The Respondent used the Domain Name to attract Internet users to the Respondent's website by creating a likelihood of confusion as to whether the Complainant was the source, sponsor, affiliate, or endorser of the Respondent's website. The Respondent's website directly implied that Ms. Johansson sponsored the contest, and Internet users who were looking for information about Ms Johansson were misled by the Respondent's website.
(iv) When the Complainant informed the Respondent of his wrongful acts, the Respondent refused to transfer the Domain Name to the Complainant. Such acts dilute the goodwill invested in the Complainant's mark.
(v) The Respondent used the Domain Name to collect email addresses and personal information about the Complainant's fan base, in an attempt to use such information for commercial gain. The only possible inference that can be drawn from such a practice is that the Respondent intended to wrongfully misappropriate the goodwill symbolized by the Complainant's mark, and to interfere with the Complainant's rights to profit from the Complainant's mark in commerce.
(vi) The Respondent's bad faith in both registering and using the Domain Name can also be presumed from the extent to which the Complainant's mark is widely used and well-known (citing Taco Bell Corporation v Michael Pelley,WIPO Case No. D2000-0850). B. Respondent
The Respondent contends as follows:
1. The Respondent does not challenge the trademark or service mark rights asserted by the Complainant.
2. The “contest” published on the Respondent's website was published in an obvious, overt, tongue-in-cheek manner, and as such was not meant to be real or serious. The Respondent did not mean to claim, specify, or allege Ms. Johansson's “willingness or awareness” to participate in the “contest”, which was in any event a “faux” contest it was nothing but a light-heartedly executed work of absurdist post-modernist (new) media art, that attempted to parody the typical Hollywood advertisement for a movie promotion in an engaging, interactive, and humorous way.
3. The “contest” reflected the Respondent's “nihilistic” approach, and was intended to question, examine, and highlight the nature of corporate greed, whereby an “anything goes” attitude trumps anything else as long as it serves a bottom-line agenda. The “contest” was also intended to highlight the “un-wisdom of the crowd”, the current state of our obsession with the cult of celebrity, the superficial appeal of the famous, desired flesh, and the ultimate futility of human reasoning viz-a-viz spontaneous effort when presented by an appealing stimulus.
4. The Respondent had no intent whatsoever for commercial gain. The Respondent's use of the Domain Name was for the fair and legitimate non-commercial purposes described above (which the Respondent summed up as “artistic investigations of the human behavior in certain contextual situations”).
5. Contrary to the Complainant's contentions, the publication of the “contest” on the Respondent's website has contributed to the profile of Ms Johansson, her “bankability” as an actor, and her likeability as a “brand”. The Complainant's assertion that the Respondent has somehow “diluted” the “goodwill invested” in the Complainant's brand is misleading and inaccurate, especially in light of the view that, despite the fact that the Complainant is a talented, fine actor, a sizeable chunk of her professional career consists of her being photographed and filmed in scantily clad poses, and/or within sexually suggestive contexts.
6. The question whether the Domain Name was used in bad faith, is “pragmatically speaking, beside the point, since bad faith is an arbitrary qualitative identifier that is neither culturally, neither structurally universally applicable.”
7. The Domain Name was registered as far back as 1998, and it has had a continuous existence ever since. It is preposterous for the Complainant to assert rights in the Domain Name now, when for 10 straight years the Complainant and her management team were well aware of the Domain Name, and did absolutely nothing to exercise the rights now claimed, and obtain the Domain Name for their own uses. The Complainant and her management team have ignored the Domain Name all along; they did not care about it, and did not want anything to do with it. For all practical purposes, they have abandoned their interests in the Domain Name.
8. There are dozens of other domain names in existence that contain Ms. Johansson's full name e.g., , , , , , , etc. The Complainant is being hypocritical in picking on the Domain Name, when so many other domain names exist which consist of or incorporate her name.
9. With respect to the Complainant's assertion that the Domain Name was used for commercial gain, it is sad but not surprising to hear this tired, blind belief in the notion that nothing exists outside of Capitalism. Such beliefs do not allow for any deviations from the prescribed form, which was precisely the ultimate point of the Respondent's artwork. The Domain Name was never used for any commercial gain.
10. The artwork comprised in the “contest” was a clear and obvious case of parody, which is allowed as a legitimate right of use with respect to domain names and websites. The Respondent has established not only legitimate artistic rights and a non-commercial interest in the Domain Name, but also the Complainant's lack of the same. 6. Discussion and Findings A. What the Complainant must prove – General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”. B. Identical or Confusingly Similar
The Complainant relies upon claimed rights in her personal name, Scarlett Johansson. There is no registered trademark.
The Center's online document, “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, summarizes the consensus view of WIPO Panels on the question of whether a complainant is entitled to show rights in a personal name, as follows:
“Consensus view: While the UDRP does not specifically protect personal names, in situations where an unregistered personal name is being used for trade or commerce, the Complainant can establish common law trademark rights in the name. Reference can be made to the test required for the common law action of passing off. Personal names that have been trademarked are protected under the UDRP. Relevant decisions:
Julia Fiona Roberts v Russell BoydWIPO Case No. D2000-0210, Transfer.
Jeanette Wintersom v Mark HogarthWIPO Case No. D2000-0235 among others, Transfer.
Dr. Michael Crichton v In Stealth ModeWIPO Case No. D2002-0874, Transfer.
However. The name in question should be actually used in trade or commerce to establish unregistered trademark rights. Merely having a famous name (such as a businessman, or religious leader) is not necessarily sufficient to show unregistered trademark rights. Relevant decisions:
Israel Harold Asper v Communication X IncWIPO Case No. D2001-0540 among others, Denied. Chinmoy Kumar Ghose v ICDS and Maria SliwaWIPO Case No. D2003-0248, Transfer.”
It is understandable that the Respondent did not make any challenge to the service mark rights asserted by Ms Johansson in this case. On any view of it, the Complainant's name has been used extensively in trade and commerce, including as an indicator of the acting services which she provides under that name. She has appeared in over 25 movies, including a number of box office hits, and has achieved world fame as an actress. She is a four-time nominee for Golden Globe Awards. Whenever the name “Scarlett Johansson” appears on a large sign at a movie theatre, it is being used in a trademark sense, to denote the entertainment services provided by Ms Johansson as an actress in the advertised movie.
The Domain Name is identical to the SCARLETT JOHANSSON mark. Furthermore, the Panel is satisfied that Ms. Johansson has established common law rights in her name for the purpose of the Policy.
For the foregoing reasons, the Panel is satisfied that the Domain Name is identical to the mark SCARLETT JOHANSSON, in which the Complainant, Ms Johansson, has rights. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to rebut this and show that he does have a right or a legitimate interest in the Domain Name.
That approach is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Domain Name is identical to the service mark in which the Complainant has rights, and the Complainant has not authorized the Respondent to use that mark. The Respondent does not claim to be commonly known by the Domain Name, so the “commonly known by” defense at paragraph 4(c)(ii) of the Policy cannot have any application.
The foregoing combination of circumstances sufficiently establishes a prima facie case of “no rights or legitimate interests”, so the evidentiary burden of proof shifts to the Respondent.
The essence of the Respondent's position seems to be that the posting of the “contest” on the Respondent's website was a tongue-in-cheek, light-hearted exercise, which was intended to parody a typical Hollywood movie promotion advertisement, in an “engaging, interactive, and humorous way”. The Respondent disavows any intention to derive commercial gain from his use of the Domain Name, and therefore disavows any claim or suggestion that the Domain Name may have been used in connection with a bona fide offering of goods or services (such as might have afforded a right or legitimate interest in the Domain Name under paragraph 4(c)(i) of the Policy). The Respondent relies, in effect, on the “legitimate non-commercial or fair use … without intent for commercial gain” safe harbor, which is provided by paragraph 4(c)(iii) of the Policy.
In the Panel's judgment the Respondent has failed to make out his case under this part of the Policy. The Panel has come to that view for the following reasons:
1. The “contest” to which the Respondent referred, ran for only a few days in August of 2008. However, the Complainant clearly asserted that the Domain Name had been registered, by the Respondent, as long ago as April of 2007. The Respondent did take issue with that allegation, but only to claim that the Domain Name was originally registered as long ago as 1998, and that the Complainant had effectively abandoned any rights in it. Whether or not an identical domain name was registered by some other registrant or with some other registrar before April 2007, it is quite clear that somebody registered the Domain Name on April 12, 2007. In the absence of any credible denial from the Respondent (e.g., a properly supported statement that he acquired the Domain Name on some later date), the Panel concludes for present purposes that the Respondent registered the Domain Name on April 12, 2007.
2. The Respondent apparently is not known as “Scarlett Johansson” (he professed to be irritated when the Center included those words in its description of the Respondent in this case), but he has asserted that he is the correct Respondent. Why, then, was the Domain Name registered in the name of “Scarlett Johansson”? The effectiveness of the Respondent's “contest” published on the Respondent's website in August 2008 did not require that he register the Domain Name under a false name. If the Registrar (or some person in the Respondent's employ) had made some administrative mistake in registering the Domain Name in the name of “Scarlett Johansson”, surely the Respondent could have ascertained the details of the mistake and explained it to the Panel. The reason for the registration of the Domain Name in the name “Scarlett Johansson” was obviously something which called for an explanation from the Respondent, but he has elected not to provide one.
3. The Respondent has provided no explanation of why he acquired the Domain Name. He claims to have received emails from an anonymous source offering up to US$10,000 for him to devise a promotional concept/campaign in support of the United States release of the Complainant's new movie, but that email correspondence is said to have been received in early August 2008, some 16 months after the Respondent had acquired the Domain Name. The false “contest” which the Respondent posted on the Respondent's website in August 2008 therefore does not provide any explanation for the choice of a Domain Name which, on the evidence, the Respondent appears to have registered in April of 2007.
4. The Respondent has provided no evidence of how the Domain Name was used in the period between April 2007 and early August 2008. He has directed the Panel's attention to certain web pages from the Respondent's website which are to be found on the Wayback Machine at “”, including some pages from the period after April 2007, but the Panel was unable to access those pages.
5. In his Response, the Respondent has provided the address “900 Pound Guerrilla Way”, but in his correspondence with the Center, he requested that any communications with him should be by email only. The Panel is bound to note that the address provided by the Respondent seems an improbable one. The “address” looks to the Panel to be more like a clever play on words, where the Respondent has merged the concept of a “900 Pound Gorilla” (in some quarters, used as a slang, and disparaging, reference to a major corporation), and the concept of “Guerrilla marketing” (a reference to particular marketing strategies for small businesses expounded in a well-known book by Jay Levinson). The apparent play on words in the “address”, the “contest” posted on the Respondent's website, and the apparent anti-capitalism references in the Response, together suggest that the Respondent's real motivation may have been some sort of attack on big-money (in this case Hollywood) interests. Or, perhaps, the Respondent may simply have been interested in the revenue that he could or did generate by the unauthorized use of Ms. Johansson's name in a domain name.
6. The claim that someone would have sent an anonymous email to the Respondent offering him US$10,000 to devise a promotional concept/campaign in support of the upcoming United States release of “Vicky, Cristina, Barcelona”, seems unusual, to put it mildly. The claim that the Respondent received a further email from the same source, increasing the offer to $20,000, and saying that the Respondent could do anything that suited his fancy as long as he identified the movie and its United States release date, seems equally far-fetched. Why would this person wish to remain anonymous? Why would anyone want to pay US$20,000 without having any idea or commitment as to what he or she would receive for his/her money? Those are obvious questions, and it must have been obvious to the Respondent that the Panel could find the Respondent's claims difficult to believe. The obvious thing for the Respondent to have done if he did in fact receive these emails, would have been to attach copies to the Response. He has not done so.
7. The Respondent says that, although he turned down the money, he agreed to “conceptualize a postminimal (new) media artwork surrounding this particular issue”, specifically as a challenge to his creative urges, as well as a challenge against “various constraints that are placed upon our Society's construction of our inherited and assumed identities (both physical and metaphysical)”. The English used in this part of the Response is dense to the point of obscurity. For example, it is not at all clear to the Panel what the “particular issue” referred to was, nor what the “various constraints” were. The Panel can readily understand the concept of “art for art's sake”, but even the most diligent art or philosophy scholar would have found it difficult to make anything of the Respondent's “explanation” in this particular part of the Response.
8. The Panel is not prepared on the present record to accept the Respondent's “parody” explanation. First, the Respondent appears to offer differing explanations for the publication of the “contest”. At one point in the Response, parody was offered as the explanation. Elsewhere in the Response, the intention was described as “artistic investigations of human behavior in certain contextual situations”. Possibly those explanations may be reconciled in some way, but if they can, it is not clear to the Panel how that might be done. The wording of the Response appears to be more directed at obfuscation than clarity. Secondly, to be even moderately effective, parody needs to allow the audience to identify the target of the parody. In this case, the Panel considers that very few people would have identified “the typical Hollywood advertisement for a movie promotion” as the target of parody in the “contest”. Many visitors to the Respondent's website, once they had picked up the fact that the “contest” was not in fact proposing a sexual “threesome” with Ms. Johansson, would have thought that the “contest” was a genuine, if “racy”, promotion, involving Ms. Johansson herself accompanying the lucky winners to a screening of the movie. It would seem from the Respondent's own account that a great many site visitors must have been in that category the Respondent said that nearly 10,000 fans sent emails responding to “the project”. Those 10,000 fans clearly did not appreciate that the “contest” was only intended to be a parody of a typical movie-promoting commercial. Other site visitors may have been more skeptical, but in the Panel's assessment few if any would have recognized the “contest” as a parody of the kind described by the Respondent.
9. Thirdly, and more fundamentally, the “contest” appeared on a website at a domain name which most Internet users would assume was operated by, or at least affiliated with, the Complainant. There was nothing on the Respondent's website to make it clear that the Respondent's website was not owned or operated by Ms. Johansson or interests associated with her, and on its face the “contest” quite clearly offered a “threesome” with Ms. Johansson. The only element of humor, or light-heartedness, apparent to the Panel was that a careful reader, following the asterisks, would work out that he or she would only get to go to the movie with Ms. Johansson and the other lucky winner, and would perhaps derive some amusement on realizing that he or she had been “led on” by the photograph and the wording of the text.
10. Having regard to the foregoing circumstances, it seems to the Panel that one probable explanation for the “contest” is that it was launched as some sort of prank, designed to embarrass Ms. Johansson (and possibly to provoke an offer of cash from her to have the “contest” taken down from the Respondent's website, or for the website itself), and also to have some fun at the expense of the individuals who responded to the contest in the belief that it was genuine. Those circumstances could never be described as “fair” or “legitimate” in terms of paragraph 4(c) (iii) of the Policy. Hard-hitting criticism sites, which are non-commercial in nature, will in appropriate circumstances come within the paragraph 4(c)(iii) safe-harbor. But this is not such a situation. The Respondent has played on the Complainant's famous reputation in her mark to lure Internet users to the Respondent's website. At very least, there should have been a prominent disclaimer on the Respondent's website, making it clear to all who arrived at the Respondent's website that the site was not approved or endorsed in any way by Ms. Johansson. Even then, there would have been a difficult “initial interest confusion” issue to address. The Panel concludes that the Respondent has not proved that the circumstances fall within paragraph 4(c) (iii) of the Policy.
11. The Respondent's statements regarding the Complainant's failure to take steps to secure the Domain Name for herself over the 10 years since 1998 do not assist the Respondent's “rights or legitimate interest” argument. The Policy does not contain any “laches”, or “delay”, defense, and in any event each acquisition of a domain name is deemed to be a new registration for the purposes of paragraph 4 of the Policy. In this case the evidence shows that the Domain Name was registered in April 2007, and any delay in the period since then would not bring into play any possible defense based on the Complainant's inaction, or failure to assert her rights. Similarly, the Respondent's reference to other domain names incorporating the words “Scarlett Johansson” do not assist. Once a complainant has proved that a disputed domain name is identical or confusingly similar to a trademark in which he or she has rights, the focus switches to the respondent. Unless there is evidence of express or implied consent for the respondent to register the particular disputed domain name, what the complainant may or may not have done with regard to other, similar domain names owned by third parties, cannot assist the respondent. In this case, there is no evidence that the Complainant has, expressly or impliedly, authorized the Respondent to register and use the Domain Name.
12. For all of the foregoing reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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's] website or location.
The Panel also finds this part of the Complaint proved, substantially for the reasons which are set out in section 6.C of this decision.
Quite clearly, the Respondent was aware of the Complainant and her famous mark when he registered the Domain Name. He does not suggest to the contrary. He has offered no explanation for registering the Complainant's mark as a domain name, nor any explanation of why he acquired the Domain Name, or how it was used between the date of registration and the publication of the “contest” in August of 2008. There are suspicions over the existence of the physical address provided by the Respondent, and his apparent dismissal of the entire concept of bad faith a concept which he described in his Response as “pragmatically speaking, beside the point, since bad faith is an arbitrary qualitative identifier that is neither culturally, neither structurally universally applicable” – does nothing to inspire confidence in the credibility of the Response.
In essence, the Respondent has used the Complainant's mark to confuse Internet users into visiting the Respondent's website, believing that they would be visiting a website owned by or associated with the Complainant. The Respondent says that he did not act for commercial gain, and, despite the Panel's substantial doubts about the Respondent's claim that he received and rejected two substantial anonymous cash offers, there is no evidence that he was paid to create and publish the “contest” on the Respondent's website. However, the Panel thinks it more likely than not that, even if the Respondent did create the “contest” for no immediate financial reward, he did so with a view to enhancing his commercial reputation among those in the “new” media art field who were prospective customers for his work. The Respondent claimed that he does not do “corporate gigs”, but the mere fact that he says he was approached with a substantial offer of money to design the promotion/campaign suggests, in the absence of any other evidence, that the Respondent does create media artwork for money, at least for those clients whose money he is prepared to take. The impression the Panel has from the Response, is that the Respondent regards himself as a non-conformist, who takes pride in “pushing the boundaries”. In all the circumstances, the Panel thinks it more likely than not that the Respondent had in mind some ultimate commercial gain by creating and posting on the Respondent's website a work that would enhance his reputation as a “maverick”, someone who makes an impact by creating controversial works. That objective would be achieved in no small part by creating confusion in the Internet community over the ownership, sponsorship, affiliation, or endorsement of the Domain Name and the Respondent's website. Those circumstances fall squarely within paragraph 4(b) (iv) of the Policy, and the Panel so finds.
For the foregoing reasons, the Panel finds that the Domain Name has been registered and used in bad faith. The Complainant having established all three elements of paragraph 4(a) of the Policy, the Domain Name must be transferred to the Complainant. 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.
Warwick Smith
Sole Panelist
Dated: December 16, 2008
Full & Egal Universal Law Academy