WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Russell Peters v. George Koshy and Navigation Catalyst Systems, Inc. Case No. D2009-0173 1. The Parties
The Complainant is Russell Peters, C/O Fred Levy, Toronto of Canada, represented by Jacobson, Russell, Saltz & Fingerman LLP, United States of America.
The Respondents are George Koshy of Kerala, India and Navigation Catalyst Systems, Inc, of California, USA, represented internally. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc.. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2009, naming George Koshy as the Respondent. On February 9, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On February 9, 2009, GoD, Inc. transmitted by email to the Center its verification response, informing that the registrant of the disputed domain name is Navigation Catalyst Systems, Inc, not George Koshy, and providing contact details for Navigation Catalyst Systems, Inc. The Center sent an email communication to the Complainant on February 12, 2009 providing the registrant and contact information provided by the Registrar. The Complainant filed an Amended Complaint on February 17, 2009. This Amended Complaint identified Navigation Catalyst Systems, Inc as the Respondent in the body of the Complaint, but continued to name George Koshy as the Respondent in the case name title on the first page of the Complaint. On the same day, George Koshy sent an email communication to the Center in which he stated “We are not certain what you're asking for here can you please elaborate? [W]e feel that we are the rightful owners of this domain”. On February 20, 2009 the Complainant filed an Amendment to the Amended Complaint. This Amendment to the Amended Complaint named both Navigation Catalyst Systems, Inc and George Koshy as the Respondents, added the contact information for George Koshy, amended all references to ‘Respondent' to read ‘Respondents', and added that the Amended Complaint and the Amendment to the Amended Complaint had been transmitted to George Koshy on February 19, 2009. The Center verified that the Amended Complaint together with the Amendment to the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondents of the Complaint, and the proceedings commenced on February 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2009. Because no Response was filed by the due date, the Center issued a Notification of Respondent Default on March 16, 2009. On the same day, a representative of Navigation Catalyst Systems, Inc filed with the Center a reply to the Notification of Respondent Default, stating that “NCS does not own or control this domain”, and asserting that it had transferred ownership of the domain to “RP” on April 9, 2008 and that “RP” had not modified the WhoIs information. The Complainant further submitted a supplemental filing on March 20, 2009.
The Center appointed Andrew Frederick Christie as the sole panelist in this matter on March 24, 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.
The Panel has reviewed the case file, and considered whether the Complaint as amended is in a form that is in accordance with the Policy, the Rules and the Supplemental Rules. In particular, the Panel has considered whether the Complaint as amended appropriately names both George Koshy and Navigation Catalyst Systems, Inc as the Respondents. The Panel concludes that it does, for the following reasons. Navigation Catalyst Systems, Inc is the registrant of the domain name as identified by the Registrar GoD, Inc. Navigation Catalyst Systems, Inc expressly denies that it is the owner of the domain name, and asserts that another party has acquired rights to the disputed domain name. The identity of that other party is not unambiguously disclosed by Navigation Catalyst Systems, Inc. George Koshy has expressly asserted that he is the owner of the disputed domain name. In this situation, where a party other than the registrant asserts to be the rightful owner of the disputed domain name, it is appropriate that the Complaint name that other party as a Respondent together with the registrant. Thus, the Complaint as amended is in an appropriate form. 4. Factual Background
The Complainant is an entertainer who has achieved recognition, under his personal name, in the United States of America and other countries as a performer and comedian. He has been using his name in connection with entertainment services since 1989. He has been nominated for four Gemini Awards (the Canadian equivalent of the Emmys). He has featured at comedy festivals around the world, on TV shows in Canada, and in USO tours for troops in the Middle East. He maintains an official website at , which receives over 10,000 hits per day.
At the date of filing the Complaint, the WhoIs database showed that the registrant of domain name was Domains by Proxy, Inc. In response to a cease and desist letter from the Complainant's representative sent on November 20, 2008, Domains by Proxy, Inc informed the Complainant's representative that it provides a proxy registration service that allows an entity to register a domain name while maintaining anonymity. Thus, while Domains by Proxy, Inc is listed as the registrant of the domain name for which it provides this service, it is not the true interest holder and registrant of that domain name. Domains by Proxy, Inc stated that it would contact its customer for whom it was the proxy registrant for the domain name . On December 10, 2008, George Koshy told the Complainant's representative by email that “We are the owners of the RUSSELPETERS.COM domain and are responding to your complaint”. The email sought clarification of the nature of the complaint and indicated a willingness to discuss the matter. In a subsequent communication George Koshy provided contact details to the Complainant's representative and the Complainant's representative sent George Koshy a cease and desist letter by courier on December 30, 2008 and by email on December 31, 2008. By email communication with the Complainant's representative on January 1, 2009, George Koshy acknowledged receipt of the cease and desist letter sent by email. George Koshy stated that he is a “tremendously loyal and devoted” fan of the Complainant, that some time ago he had alerted the Complainant's management of the availability of the domain name , that having received no response and “not wanting the URL to fall into the wrong hands” he purchased it, and that “loyally and lovingly wanting only to further Mr Peter's career and fan base” he put up a “mirrored website which as you can see is identical to his site”. George Koshy further queried how he could have profited from a site that only promotes the Complainant by faithfully reproducing his website, and mused that he might be entitled to profits made by the Complainant as result of this work. 5. Parties' Contentions A. Complainant
The Complainant claims that his name, Russell Peters, is an unregistered service mark that is valid and enforceable under the common law. In particular, the Complainant claims that due to his marketing of his name in connection with entertainment services as a performer and comedian for nearly 20 years, the public has come to associate the Complainant's name with the services provided by him. Thus, the Complainant's name has acquired sufficient secondary association with the Complainant as an entertainer to be entitled to protection as a common law service mark. The Complainant claims that the domain name is confusingly similar to his unregistered service mark RUSSELL PETERS. In particular, the Complainant claims that the domain name is a purposeful misspelling (missing an “L”) of his service mark, and is phonetically identical to his service mark.
The Complainant claims that the Respondents' use of his mark in the domain name is not authorized, and that the Respondents cannot establish that they have rights or legitimate interests in the domain name. In particular, the Complainant claims that neither Respondent is associated with the Complainant, that neither Respondent is a licensee or authorized user of the Complainant's name, mark or likeness, and that neither Respondent has any rights to promote the Complainant's services.
The Complainant claims that the Respondents registered and are using the domain name in bad faith, as evidenced by the facts that the domain name is used as a URL for the unauthorized ‘copycat' website, and that the Complainant's mark is used in metatags for that website. In particular, the Complainant claims that the domain name was registered primarily for the purpose of disrupting the business of the Complainant and/or to attract for commercial gain Internet users to the Respondents' website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondents' website. B. Respondent
Neither Respondent filed a formal Response. The substantive components of the communications made by the Respondents in this proceeding have been described above. 6. Discussion and Findings A. Identical or Confusingly Similar
It is clear from numerous past decisions under the Policy that the Policy is applicable to an unregistered trademark or service mark in which common law rights subsist (e.g. British Broad. Corp. v. James Renteria,WIPO Case No. D2000-0050), that common law rights may subsist in personal names where that name is used as an indication of the source of goods or services supplied in trade or commerce and that, as a result of such use, the name has become distinctive of that source (e.g. Dr. Michael Crichton v. In Stealth Mode,WIPO Case No. D2002-0874), and that a celebrity's name can serve as a trademark when used to identify the celebrity's performance services (e.g. Julia Fiona Roberts v. Russel Boyd,WIPO Case No. D2000-0210). A useful discussion and summary of these principles is contained in Jeffery Archer v. Alberta Hotrods tda CELEBRITY 1000,WIPO Case No. D2006-0431.
The Complainant is an entertainer who has obtained a significant degree of recognition for his professional services under his personal name. His personal name is, therefore, a mark to which the Policy applies. The disputed domain name differs from this mark only by the absence of one letter “L”, and is phonetically identical to it. The disputed domain name is, therefore, confusingly similar to the Complainant's mark. B. Rights or Legitimate Interests
Neither Respondent has expressly asserted that it has any right or legitimate interest in the disputed domain name. George Koshy has stated, however, that he is a “devoted fan” of the Complainant who purchased the disputed domain name so that it would not “fall into the wrong hands”, and is using it to “further [the] career and fan base” of the Complainant. As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“Overview”) paragraph 2.5 makes clear, there are two competing views on whether use of a domain name as a URL for a fan web site amounts to giving the respondent a right or legitimate interest in a domain name. One view is that a fan site operator does have a right or legitimate interest in a domain name containing a complainant's mark, so long as the site is active, clearly noncommercial and clearly distinctive from any official site. The other view is that a fan web site operator does not have a right or legitimate interest in a domain name containing a complainant's mark, because the respondent is misrepresenting itself as being that individual or entity and is preventing the mark owner from exercising its rights to the mark.
This Panel is inclined to consider that the second view represents the correct approach under the Policy. However, even if the first view represents the correct approach, it is clear in this case that the Respondent George Koshy does not succeed in showing a right or legitimate interest in the disputed domain name merely by using it as a URL for a fan web site. This is because the George Koshy site is not clearly distinctive from the official web site; indeed, the George Koshy site purports to be the official site (although it is not). In the absence of any other assertion of entitlement, this Panel finds the Respondents do not have a right or legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith
The disputed domain name is a deliberate misspelling of the Complainant's mark. The Complainant has plausibly claimed, and neither Respondent has denied, that by using the disputed domain name as the URL of a ‘mirror' web site that purports, wrongly, to be the official website of the Complainant, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to that web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site (that being evidence of the registration and use of a domain name in bad faith, pursuant to the paragraph 4(b)(iv) of the Policy). Furthermore, the Complainant has provided evidence of the fact, and neither Respondent has denied, that the Respondent Navigation Catalyst Systems, Inc owns hundreds of thousands of domain names, is in the business of registering domain names for pecuniary gain, and has been an unsuccessful Respondent to numerous actions under the Policy (and a Respondent to numerous US court actions for trademark infringement and under the Anti-Cybersquatting Consumer Protection Act). All these facts clearly support a conclusion that the domain name was registered and is being used in bad faith. 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.
Andrew Frederick Christie
Sole Panelist
Dated: April 7, 2009
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