WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mario Barth v. Ciodo, Fabian Case No. D2009-0279 1. The Parties
The Complainant is Mario Barth of Berlin, Germany, represented by Schertz Bergmann Rechtsanwälte, Germany.
The Respondent is Ciodo, Fabian of Asuncion, Paraguay. 2. The Domain Name and Registrar
The disputed Domain Name is registered with Lead Networks Domains Pvt. Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 3, 2009. On March 4, 2009, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the Domain Name. On 16 March, 2009, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 19, 2009, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 19, 2009. 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" 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 Respondent of the Complaint, and the proceedings commenced on March 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 17, 2009.
The Center appointed Dawn Osborne as the sole panelist in this matter on April 23, 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
The Complainant is a successful comedian in Germany. Since 2001, he has toured extensively throughout Germany to perform his shows live on stage and to promote his DVDs, CDs and books using the mark MARIO BARTH.
The creation date of the Domain Name is September 23, 2007. The Respondent is using the Domain Name to point to a web site to links where, amongst other things, the Complainant's tickets can be purchased. 5. Parties' Contentions A. Complainant The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
(Policy, paragraph 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))
The Complainant is one of the most successful comedians in Germany. Since 2001 he has toured extensively throughout Germany to perform his shows live on stage and to promote his DVDs, CDs and books. Whenever promoting his live shows as well as his DVD's and CD's the Complainant uses the mark MARIO BARTH. For example the mark is part of the title of his live shows as well as part of the title of his CD's and DVD's. The Complainant just completed his second tour "Mario Barth - Men are primitive, but happy", that he has performed for two and a half year all over Germany in front of 1.7 million visitors. On his final stop on his tour at the Olympic stadium in Berlin the Complainant set a new World Record for a live comedy audience. He performed in front of 70,000 people, thus in front of a crowd which was more than four times larger than the previous record of 15,900 set by US comedian Chris Rock in London. Furthermore the Complainant released several CDs and DVDs as well as a book under his name. The CD of his first live show ("Mario Barth - men are pigs just as women", released in 2003) has been awarded as the most successful live-comedy CD ever in Germany. Furthermore the DVD of this program (released in 2005) has been ranked as number 1 within the music DVD annual charts of 2006. The CD and DVD of the Complainant's second live show (released in 2006 (CD) and 2007 (DVD) have been equally successful. Both DVDs of his live shows achieved 10 times platinum status in Germany.
In addition the Complainant is well known to the public through several TV comedy shows, which he attended on a regular basis. In 2004 started his own TV show "No idea". In March 2009 the movie "Man's Business" will be in cinemas, in which the Complainant takes a part as a main actor and scriptwriter.
The Complainant published in 2004 a comical dictionary called "German- Women/ Women-German". The book was number 1 of the Paperback-Bestseller list and has been listed for 160 weeks. It has also been published in the Republic of Korea, the Netherlands and Poland.
Furthermore the Complainant has also used the mark MARIO BARTH for advertising and promotion as well as merchandising articles such as clothing, baseball cups, lanyard key chains and cups.
Summarized it is to say the Complainant has made continuous use of the mark "Mario Barth" in commerce.
Due to the fact that the Complainant uses the name MARIO BARTH continuously to promote his shows, CD's, DVD's, books and merchandising products the mark has come to be recognized by the general public as indicating an association with the Complainant and his service as a comedian. Thus, the mark MARIO BARTH has acquired a secondary meaning; a substantial segment of the public understands the mark as referring to a particular source.
Various panels have recognized that celebrities have common law trademark rights in their names. (See Peter Frampton v. Frampton Enterprises, Inc., WIPO Case No. D2002-0141; Estate of Stanley Getz aka Stan Getz v. Peter Vogel, WIPO Case No. D2000-0773; Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235; Jagger v. Hammerton, Jagger v. Hammerton FA 95261, Nat. Arb. Forum, September 11, 2000; Mariono, Jr. v. Video Images Productions, Inc. WIPO Case No. D2000-0598; Roberts v. Boyd, WIPO Case No. D2000-0210).
Furthermore the Respondent has registered as a Domain Name a name which is identical to the name of the Complainant and identical to the mark MARIO BARTH under and by which he offered his services and goods. The contested Domain Name only differs from the name of the Complainant in the suffix "com". It is an established principle that this suffix does not affect considerations of whether a Domain Name is identical or substantially similar to the Complainant's mark. As such, the requirements in paragraph 4 (a) (i) of the Policy are met. The Respondent has no rights or legitimate interests in respect of the Domain Name
(Policy, paragraph 4(a)(ii), Rules, para. 3(b)(ix)(2))
The Respondent has no rights or legitimate interests in the contested Domain Name. First of all the Respondent has never been known by the name MARIO BARTH. Furthermore the Domain Name in issue is not used in relation to an active website, the Respondent only uses its website to place links from his site to sites where tickets for 10 of the Complainant's shows can be purchased. To set the links he uses the name of the Complainant to attract Internet uses to his website, misleading the internet users that there is an affiliation of some sort between the Respondent and the Complainant when in fact not such relationship exists.
The Complainant has never authorized the Respondent to utilize the MARIO BARTH mark in conjunction with the purchase of tickets for his show. All in all the Respondent has not, at any time, used or made any demonstrable preparation to use the contested Domain Name in connection with a bona fide offering goods or services. The Domain Name was registered and is being used in bad faith
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
The Respondent was clearly aware of the Complainant's prior rights on his name when he registered the domain, otherwise he would not have used the mark MARIO BARTH to set hypertext link advertisements on his website in the manner he has done. The Respondent's stated intent is to attract attention to the site by using the well-known name of the Complainant and to benefit from his fame. The Respondent has sought commercial gain from the website and its incorporated hypertext link advertisement. It is to assume that the Respondent profits by internet users clicking on these sponsored links.
Thus it is to say that the Respondent having no association, relationship or affiliation with the Complainant, clearly registered the Complainant's name and mark in the contested Domain Name with a goal of creating opportunities to benefit from the widespread reputation of that mark and the fame of the Complainant.
Panels have viewed these opportunistic registrations as indicative of bad faith registration and the subsequent use of that domain name by the respondent as bad faith use, actionable under paragraph 4 (b) (iv) of the Policy. Attracting users to a website, for commercial gain, by creating a likelihood of confusion with the complainant's mark is evidence of bad faith registration and use.
Thus it is obvious that the Respondent has registered and is now using the contested Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, 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; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Disregarding the .com generic part of the Domain Name, the Domain Name is identical to the Complainant's trade mark apart from the addition of a hyphen. As such the Domain Name is confusingly similar to a mark in which the Complainant has accrued unregistered rights through use and reputation. B. Rights or Legitimate Interests
The Respondent has not filed a Response and does not appear to have any rights or legitimate interest in the Domain Name. In this case, "link farming" is merely taking advantage of the Complainant's reputation and does not provide the Respondent with a right or legitimate interest in the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4 (b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a Domain Name in bad faith including:
"by using the Domain Name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on line location, by creating a likelihood of confusion with the Complainant's mark as to the source, affiliation or endorsement of [its] web site or location or of a product or service on [its] web site or location."
The Respondent has not provided any explanation why it would be entitled to register a Domain Name equivalent to the Complainant's trade mark. In the absence of a Response from the Respondent, and considering the material attached to the Domain Name the Panel is satisfied that the Complainant has shown on the balance of probabilities that the Respondent registered the Domain Name in bad faith with an intent to use the Domain Name to attract business to its site for commercial gain by creating a likelihood of confusion that its web site is connected to the Complainant by using a Domain Name identical to the Complainant's unregistered trade mark and featuring links to third party sites selling tickets. 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.
Dawn Osborne
Sole Panelist
Dated: May 7, 2009
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