WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Jim Carrey v. BWI Domains Case No. D2009-0563 1. The Parties
The Complainant is Jim Carrey of Los Angeles, California, United States of America represented by Kilpatrick Stockton, LLP, United States.
The Respondent is BWI Domains of West Bay, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name And Registrar
The Disputed Domain Name is registered with R Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2009. On April 30, 2009, the Center transmitted by email to R Corp. a request for registrar verification in connection with the Disputed Domain Name. On April 30, 2009, R Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 May 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on May 27, 2009.
The Center appointed Alistair Payne as the sole panelist in this matter on June 4, 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 Jim Carrey, the world famous film actor and comedian, known for his roles in films such as “Ace Ventura Pet Detective”, “The Truman Show” and “Bruce Almighty”. The Complainant has been the recipient of numerous acting awards and has appeared as a celebrity guest on a number of talk shows.
The Respondent, BWI Domains, registered the Disputed Domain Name on the March 25, 2007. The Respondent is not affiliated with the Complainant. The Disputed Domain Name resolves to a web site used to direct Internet users to pay-per-click linking portals. 5. Parties' Contentions A. Complainant
The Complainant contends that he has acquired common law trade mark rights in his name sufficient to maintain a UDRP proceeding in light of his widespread use of his name for many years as an indication of the source of his goods and services.
The Complainant submits that the Respondent is engaged in a pattern and practice of registering and using domain names in bad faith. The Complainant further submits that the Respondent has registered a domain name consisting exactly and in its entirety of the JIM CARREY mark and uses the Disputed Domain Name to misdirect Internet users to pay-per-click linking portals from which the Respondent derives a financial benefit.
The Complainant submits that the Disputed Domain Name is identical to and confusingly similar to the Complainant's JIM CARREY mark as it incorporates the JIM CARREY mark exactly with merely the addition of the generic top level domain “.com”. The Complainant further submits that Internet users who search the Internet for information concerning the Complainant will be directed to the Disputed Domain Name, thus creating a likelihood of confusion.
The Complainant asserts that there is no relationship between the Complainant and the Respondent giving rise to any licence, permission, or other right by which the Respondent could own or use the Complainant's name and mark.
Further, the Complainant contends that the JIM CARREY mark is so well known there simply can be no legitimate use by the Respondent.
The Complainant submits that the Respondent is neither using the Disputed Domain Name in connection with a legitimate non commercial or fair use without intent for commercial gain. The Complainant supports this submission by reference to the fact that the Respondent is using the Disputed Domain Name to direct Internet users to a pay-per-click linking portal from which the Respondent derives a financial benefit.
The Complainant contends that the Respondent's bad faith registration and use of the Disputed Domain Name is established by the fact that the Disputed Domain Name consists solely of the Complainant's name and was acquired long after that name became known as the Complainant's common law trade mark.
The Complainant submits that the Respondent's use of the Disputed Domain Name is also in bad faith as the Disputed Domain Name is identical to the JIM CARREY mark and the Respondent has intentionally attracted consumers to a click-through revenue web site for commercial gain.
Further, the Complainant submits that the Respondent's bad faith is evidenced by the Respondent's well-established pattern of registering and using domain names incorporating the trade marks of third parties to redirect Internet users to linking portals for profit. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. UDRP Elements
If the Complainant is to succeed, he must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that;
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of the three elements referred to in paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
If the Complainant is to succeed, he must prove either registered or unregistered trade mark rights in the name “Jim Carrey” in order to satisfy paragraph 4(a)(i) of the Policy.
While the Complainant is called Jim Carrey, the Panel notes that the Complainant has provided no evidence that he owns a registered trade mark for his name.
A number of previous WIPO UDRP panelists have held that in order for an individual to rely on unregistered trade mark rights he or she must be able to demonstrate use of the mark in trade or commerce. Merely having a famous name is not necessarily sufficient to demonstrate unregistered trademark rights.
In Chimnoy Kumar Ghose v. ICD S and Maria Sliwa,WIPO Case No. D2003-0248, and Julia Fiona Roberts v. Russell Boyd,WIPO Case No. D2000-0210, it was held that the Complainant must demonstrate that their name has been used in commerce and has acquired a sufficient secondary association in order to establish that a common law trade mark exists.
In Ahmanson Land Company v. Save Open Space and Electronic Imaging Systems,WIPO Case No. D2000-0858, the panel held that:
“A mark comprising a personal name has acquired secondary meaning if a substantial segment of the public understand the designation, when used in connection with services or business, not as a personal name, but as referring to a particular source or organization.”
By virtue of the success of his numerous films the Complainant has achieved renown as one of the world's most famous actors and comedians. The Panel considers that the use of the Complainant's name in connection with entertainment services provides a strong indication of source. The Panel is therefore satisfied that the Complainant has established common law trade mark rights in his name.
The Disputed Domain Name is made up of the common law trade mark JIM CARREY to which the generic top level domain “.com” has been added which does not serve to distinguish the Disputed Domain Name from the Complainant's common law trade mark. The Panel is therefore satisfied that the Disputed Domain Name is virtually identical and confusingly similar to the Complainant's trade mark. B. Rights or Legitimate Interests
The Complainant is required to make out at least a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for the Respondent to demonstrate that it has rights to, or legitimate interests in, the 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 non commercial 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.
It is generally regarded as prima facie evidence if a complainant shows that a disputed domain name is identical or confusingly similar to the complainant's trade mark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use his mark. Roust Trading Limited v AMG LLC,WIPO Case No. D2007-1857. The Panel notes that the web site to which the Disputed Domain Name resolves is used to direct Internet users to a pay-per-click linking portal. The Complainant contends that the Respondent derives a financial benefit in the form of pay-per-click revenue from the web traffic that is diverted through the Disputed Domain Name to these linking portals. There is no evidence to support the premise that the Respondent is operating a bona fide business through the web site to which the Disputed Domain Name resolves, or that the Respondent is affiliated with, or authorised by the Complainant. The Complainant has therefore made out a prima facie case.
The Respondent has failed to file a Response to the Complaint. It remains for the Panel to determine whether the Respondent has legitimate rights or interests in the Disputed Domain Name.
The Panel accepts that the Complainant has established common law trade mark rights in his name and has a substantial worldwide reputation in the JIM CARREY trade mark. The Respondent has provided no explanation for its use of the Complainant's trade mark and considering that it registered the Disputed Domain Name as recently as 2007, the Panel infers that the Respondent must have been aware of the Complainant's rights and expressly choose the Disputed Domain Name for the purpose of deriving revenue from a pay-per-click linking portal.
In these circumstances, considering the reputation of the Complainant's mark and the Panel's inference that the Respondent chose the Disputed Domain Name purposefully, it is clear to the Panel that the Respondent has not rebutted the prima facie case and accordingly finds that the Respondent has failed to demonstrate any rights or legitimate interests in the Disputed Domain Name.
Consequently the Panel considers that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Policy requires a complainant to prove both registration and use 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 used of a domain name in bad faith. Those circumstances are:
(i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the 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 respondent's website or location.
The Complainant contends that the Respondent registered a domain name identical to the Complainant's name to capitalize on the Complainant's valuable goodwill in the JIM CARREY trade mark for commercial gain. As already noted, in view of the Complainant's substantial reputation and the evidence of record, the Panel cannot objectively reason why the Respondent would use the name “Jim Carrey” in the Disputed Domain Name save as to create a likelihood of confusion amongst Internet users with the JIM CARREY mark. The Panel is willing to infer that Internet users would at least initially consider the Disputed Domain Name to be either affiliated with or endorsed by the Complainant. The Panel is satisfied that the use of the web site to which the Disputed Domain Name resolves to redirect Internet users to linking portals for profit constitutes bad faith within the terms of paragraph 4(b)(iv) of the Policy.
In addition, the Panel finds further evidence of bad faith on the part of the Respondent in the fact that the Respondent has engaged in a pattern of registering and using the domain names incorporating the trade marks or variations thereof, of third parties to redirect Internet users to linking portals for profit. This pattern of conduct on the part of the Respondent was previously noted by the Panel in Stanworth Development Limited v. BWI Domain Manager,WIPO Case No. D2008-1646.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(b)(iv) of the Policy and that accordingly the Disputed Domain Name was registered and used in bad faith under paragraph 4(a)(iii) of the Policy. 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.
Alistair Payne
Sole Panelist
Dated: June 16, 2009
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