WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Francine Drescher v. Stephen Gregory Case No. D2008-1825
1. The Parties
1.1 The Complainant is Francine Drescher of Malibu, California, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
1.2 The Respondent is Stephen Gregory of Angeles City, Pampanga, Republic of the Philippines.
2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with GoD, Inc (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2008. On November 26, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Domain Name. On November 26, 2008, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing contact details. However, it would appear that the Registrar failed to provide billing details as required by paragraph 2(a)(i) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).
3.2 The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “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 December 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 30, 2008.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on January 8, 2009. 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 who is well-known in the United States and elsewhere. Her best known role was as “Fran Fine” in the CBS series “The Nanny”. Approximately 145 episodes of the show were first aired from 1993 to 1999. She has also featured in a number of other television shows and films, including the film “The Beautician and The Beast”, in which she co-starred with Timothy Dalton. She published memoirs under the title “Enter Whining” in 1996. She has been involved with women's health issues and currently serves as Public Diplomatic Envoy for Women's Health Issues for the United States State Department.
4.2 The Respondent appears to be an individual based in the Philippines. The address he gives is not a full address but a P.O. Box number (i.e. P.O. Box 53792, CSEZ Clarkfield, Angels City, Pampanga 2009).
4.3 According to its WhoIs record, The Domain Name was created on March 1, 1999. The registrant field of the WhoIs record also includes the statement “THIS DOMAIN NAME IS FOR SALE”.
4.4 Since at least the date of the Complaint, Internet users typing the Domain Name into a browser are redirected to a website operating from the domain name . This displays a page with the text:
“Warning! No children allowed!
You must be at least 18 years old to enter!
Click here if you are 18 years old or older!”
4.5 A user clicking on the displayed link, is then taken to a page operating under the domain name . That page contains explicit pornographic content.
5. Parties' Contentions A. Complainant
5.1 The Complainant refers to her various acting roles and non-acting activities and asserts that as a consequence of these activities her name “has acquired enormous value and goodwill and has become known to the public and the trade as identifying and distinguishing [the] Complainant uniquely and exclusively as the source of services and products to which her name is applied”. She claims as a consequence to have established common law trade mark rights in her name. The Domain Name is said to be identical to and confusingly similar to the Complainant's common law mark.
5.2 The Complainant further contends that the Respondent has no right or legitimate interest in the Domain Name, asserting, inter alia, that “it cannot reasonably be contended that [the] Respondent is known by the uncommon and distinctive name ‘Fran Drescher'”. Reference is also made to the statement “this domain name is for sale” in the registrant field of the Domain Name. The current use of the Domain Name is also said to involve use for commercial gain that does not involve any right or legitimate interest.
5.3 On the issue of bad faith registration and use, the Complainant asserts that the Domain Name was acquired “long after” the Complainant's name became known as a common law mark. Bad faith use is also said to be demonstrated by the redirection of Internet users to pornographic content.
5.4 The Complainant also claims that her reputation as the star of a family television show and as a Public Diplomatic Envoy for the State Department is being harmed by the fact that the Domain Name redirects users to pornographic material.
5.5 Further, the Complainant asserts that the statement that the “the domain name is for sale” in the registrant field of the Domain Name, indicates that the Domain Name was registered primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant or a competitor within the scope of paragraph 4(b)(i) of the Policy. B. Respondent
5.6 The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6.4 The Complainant relies upon common law rights in the FRAN DRESCHER mark. As this Panel stated in Antonio de Felipe v. R,WIPO Case No. D2005-0969:
“Unregistered trademark rights do not exist in some nebulous way across the breadth of the countries in which a complainant proves it has a reputation. These rights derive from national laws and do not exist divorced from such laws. They therefore depend upon the extent to which the laws of a particular country recognise or do not recognise that the activities of the complainant provide unregistered rights in that country. A personal name is capable of qualifying as an unregistered trademark recognised by the Policy, but in determining whether it does in a particular case a panel will look to the jurisdictions in which those rights are claimed. The panel will then determine whether the complainant can show that the name provides an unregistered right in at least one of these jurisdictions.”
6.5 Although the Complainant in this case does not expressly identify the territory or territories in which she owns common law rights, it is nevertheless clear that these are at least in part claimed in the United States. There are also numerous cases under the Policy in which common law rights in the United States have been recognised in the name of a well-known actor or actress. One of the first of these was Julia Fiona Roberts v. Russell Boyd,WIPO Case No. D2000-0210 and there have been many others since that date. The Panel, therefore, accepts that the Complainant has sufficient common law rights in the United States in the mark FRAN DRESCHER to have trade mark rights for the purposes of the Policy. In coming to this conclusion the Panel also takes notice of the fact that although the Complainant's first name is Francine, she for the most part uses the shortened form of her name “Fran” in connection with her professional activities.
6.6 The Domain Name can only be sensibly understood as the name “Fran Drescher” combined with the “.com” TLD and with the space between first and last names removed. Accordingly, the Panel also accepts that the Domain Name is essentially identical to the Complainant's trade mark. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.7 The Panel accepts that the Domain Name does not reflect the name of the Respondent or that any of the examples of rights or legitimate interests set out in paragraph 4(c) of the Policy apply.
6.8 For the reasons set out in greater detail under the heading of bad faith below, the Panel is of the view that the Domain Name is being used by the Respondent in a manner so as to deliberately take advantage of the goodwill that the Complainant has developed in her name with a view to diverting for his own or another's financial gain Internet users to a website unconnected with the Complainant. Such activity does not provide a right or legitimate interest within the meaning of the Policy.
6.9 In the circumstances the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.10 The Panel has little difficulty in this case in concluding that the Domain Name has recently been used in bad faith. In the absence of any evidence to the contrary, the Panel accepts that the name “Fran Drescher” is uncommon and the degree of the Complainant's fame is such that the name would ordinarily be associated with the Complainant and her past and current activities. The only credible explanation for the current use of the Domain Name is that the Respondent hopes that the fame of the Complainant will lead to Internet users hoping to find information about the Complainant to type her name as a domain name into an internet browser. The Respondent then diverts those users to the webpage operating from the domain name.
6.11 The Complainant contends that this diversion is for the Respondent's commercial gain and the Panel accepts that this is probably correct. Even if it is not the Respondent who personally gains from this diversion, but instead either the operators of the website operating from the domain name or the commercial entities to which that website directs Internet users, it does not matter. As this Panel stated in V&S Vin&Sprit AB v. Corinne, Ducos,WIPO Case No. D2003-0301 (another case in which there was diversion to pornographic content), provided that the respondent intends that someone shall gain from the diversion, then the case will fall within the example of circumstances indicating bad faith set out at paragraph 4(b)(iv) of the Policy.
6.12 However, showing bad faith use is not enough. The Complainant must show bad faith registration. In this case that assessment is hampered by the fact that the Domain Name was registered approximately 10 years ago1. The Complainant has not sought to put any evidence before the Panel as to when the current pornography related use of the Domain Name started or how the Domain Name has been used over the last 10 years. This is to say the least curious. It is difficult to believe that the Complainant and her advisers only recently became aware of a domain name that comprises simply the Complainant's name combined with the “.com”. And yet the Complaint fails to explain why it is that it has taken the Complainant so long to bring these proceedings.
6.13 This sort of unexplained delay can result in a complainant failing to make out the requirements of paragraph 4(a)(iii) of the Policy. As this Panel stated in HRB Royalty, Inc. v. Asif Vadaria,WIPO Case No. D2007-1658:
“..., if a complainant delays in bringing proceedings he will make matters more difficult for himself. First, there is the fact that a complainant must prove not only bad faith use but bad faith registration. Often it is possible to infer bad faith registration from bad faith use, but the longer the delay between registration and the commencement of proceedings, the less likely it is that a panel will be prepared to do so. A complainant may, therefore, need to bring forward direct evidence to address the issue of bad faith registration. Second, there is the possibility that the use that the registrant has made of the domain name since registration may in some cases result in him having developed a right and legitimate interest in the name. ... There is also the more general point that extensive delay without explanation may in certain circumstances result in adverse inferences of fact against a complainant.”
6.13 Nevertheless, the Panel is prepared in this case to make a finding in the Complainant's favour on the issue of bad faith registration. There are a number of reasons for this. First, there is the fact that the Complainant has brought forward compelling evidence to the effect that she had developed significant reputation in her name prior to the date that the Domain Name was registered. There is no evidence of the fact that the reputation extended to the Philippines, but (even leaving aside for one moment the fact that the Respondent appears to have an English rather than a Spanish language name) it is difficult to understand why it is that someone based in the Philippines would have chosen a domain name that can only be sensibly understood as the name “Fran Dresher”, other than because of it potential associations with the Complainant.
6.14 Second, there is the fact that in addition to the use of the Domain Name in connection with pornographic material, the registrant details for the Domain Name include the words “This Domain Name is for Sale”. There is no evidence before the Panel as to when this statement appeared in the WhoIs record and it may be that this has not always been there2. Therefore, the Panel does not accept the Complainant's contention that this provides evidence that at the time of registration the Domain Name was registered “primarily registered for the purpose of selling, renting, or otherwise transferring the domain name registration to the complaint” [emphasis added by the Panel] within the meaning of paragraph 4(b)(i) of the Policy. However, what this material does show is that the Respondent has recently sought to use the Domain Name in a manner that intentionally and unfairly takes advantage in one way or another of the reputation that the Complainant has built up in her name. From this, and in the absence of any argument or evidence from the Respondent as to why and in what circumstances the Domain Name was registered, the Panel is prepared to infer the Domain Name was registered for a similar purpose. Even though the exact purpose of registration cannot be more precisely determined, this is sufficient in this case to justify a finding of bad faith registration.
6.15 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
7.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed Domain Name be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Dated: January 19, 2008
1 This is the date upon which the Domain Name was initially registered. It may not be the date upon which the Domain Name came into the hands of the Respondent. This is significant because if the Domain Name came into the hands of the Respondent at a later date, then it is that later date that the question of bad faith registration has to be assessed. However, in the absence of any evidence on this issue the Panel will assume in the Respondent's favour that March 1, 1999 is the appropriate date for this assessment.
2 Although the WhoIs record for the Domain Name records that it was last updated on October 13, 2007. So it would appear that this statement has been in the WhoIs record for at least the last 15 months.
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