WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Lisa Guerrero v. Whois Protection Case No. D2009-1055 1. The Parties
The Complainant is Lisa Guerrero of Malibu, California, United States of America, represented by Idell & Seitel LLP, United States of America.
The Respondent is Whois Protection, Whois Protection Service LLC of Georgetown, Grand Cayman GT, 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 CSL Computer Service Langenbach GmbH dba J. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2009. On August 6, 2009, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba J a request for registrar verification in connection with the disputed Domain Name. On August 24, 2009, CSL Computer Service Langenbach GmbH dba J transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. 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 August 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 16, 2009.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on September 22, 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 California-based model, actress, sports broadcaster, columnist, and producer. She began her career in show-business in the 1980's as a cheerleader for the Los Angeles Rams. The Complainant has posed for many magazines and publications as a model. She has also appeared as an actress in several television programs and motion pictures, including “Frasier”, “Cybil”, “The George Lopez Show”, “In the Heat of the Night” and “Sunset Beach”. The Complainant has served as a correspondent for “Monday Night Football” (ABC), “E!” (Entertainment Network), and “Inside Edition” (Fox), and she has anchored “The Best Damn Sports Show Period” (Fox) and hosted the weekend edition of “EXTRA” (Fox). Throughout her career, the Complainant has continuously used the name Lisa Guerrero.
The Complainant owns and operates a website at “”. This site attracts a high volume of web surfers, including fans and consumers interested in the Complainant's career, services, and incidental products such as autographs and other memorabilia.
The Respondent registered the Domain Name on February 5, 2002. At the time the Complaint was filed, the Respondent was using the Domain Name in connection with a “click-through” site offering a variety of services and wares. 5. Parties' Contentions A. Complainant (a) Identical or Confusingly Similar
The Complainant contends that the Domain Name is confusingly similar to the Complainant's common law trademark LISA GUERRERO.
The Complainant claims common law rights in the name LISA GUERRERO because of the long standing and extensive use of her name in connection with her career as a model, actress, broadcaster, columnist and producer.
The Complainant contends that the Domain Name is essentially identical to the Complainant's name and common law trade mark LISA GUERRERO, except for the addition of the “.com” designation. Accordingly, the Complainant contends that the Domain Name is confusingly similar to the Complainant's trademark. (b) Rights or Legitimate Interests
The Complainant contends that the Respondent cannot demonstrate or establish any legitimate interest in the disputed Domain Name. The Complainant submits that the Respondent is not commonly known by the Domain Name. The Complainant also submits that she has not licensed or otherwise permitted the Respondent to use her trademark and has not permitted the Respondent to register Domain Names incorporating her trademark. The Complainant also contends that the Respondent is not making a legitimate or fair use of the Domain Names, or making any bona fide offering of goods and/or services. The Complainant submits that the Respondent is using the disputed Domain Name in connection with the operation of website that essentially is nothing more than a parked site with a collection of links to various people location services, and other services. The Complainant further contends that the Respondent is using the Domain Name to divert Internet users looking for the Complainant's website to the Respondent's website, which is interfering with the Complainant's business. (c) Registered and Used in Bad Faith
The Complainant contends that the Domain Name was registered and is being used in bad faith based on the following factors: (i) Respondent was aware of the Complainant's rights in the LISA GUERRERO trademark; (ii) the Respondent is using a confusingly similar Domain Name in connection with a website to divert Internet users seeking the Complainant's website to the Respondent's website, thereby interfering with the Complainant's business and (iii) the Respondent is using a confusingly similar Domain Name in connection with the operation of a website that trades on the Complainant's famous reputation and leads Internet users into believing that the Complainant endorses, sponsors or is affiliated with the Respondent. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent have no rights or legitimate interest 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
The Panel is prepared to find that the Domain Name is virtually identical to the name and Common Law trademark LISA GUERRERO, except for the addition of the “.com” designation. Panels have found many times that the addition of a “.com” designation does not serve to distinguish a confusingly similar Domain Name from a trademark.
Accordingly, the threshold issue is not whether the Domain Name is confusingly similar, but whether the Complainant has established sufficient reputation and rights in her name to support ownership of a common law trademark for these proceedings.
Upon review of the uncontested evidence that the Complainant has submitted in this dispute, the Panel is prepared to find that the Complainant has developed a reputation in the area of entertainment services, namely acting, modelling and broadcasting, to support a finding of common law rights in her name. The Panel is prepared to find that Lisa Guerrero has achieved a significant level of reputation in the United States of America and on the Internet in connection with the provision of the aforementioned services in commerce, and accordingly the Panel accepts that the name Lisa Guerrero is well-known and closely associated with the Complainant.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel finds no evidence that the Respondent ever had any legitimate right or interest in the Domain Name. The Respondent does not appear to have been known by the disputed Domain Name and is not using the Domain Name in connection with a bona fide offering of goods and services. The Panel also accepts that the Complainant never authorized, licensed or permitted the Respondent to use her LISA GUERRERO trademark.
The Panel is therefore satisfied that the Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interest in the disputed Domain Name. Once a complainant has made this prima facie showing, the Respondent must come forward with evidence that rebuts this presumption (Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270).
As the Respondent has not filed any evidence in response, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
On the basis of the evidence summarized below, the Panel is prepared to find that the Respondent was aware of the Complainant and her reputation when the Respondent registered the disputed Domain Name on February 5, 2002. The uncontested evidence reveals that the name Lisa Guerrero is commonly and consistently associated with the Complainant and was being used in a trademark sense at the time of the registration of the Domain Name. Internet search result supports the conclusion that the Complainant is well-known both in the U.S. and around the world via her Internet and broadcasting presence. The evidence shows that the Complainant has regularly appeared on television on at least 3 major networks, she has appeared in movies, her photographs have been published in widely distributed magazines and her own website attracts a high volume of Internet users. The Complainant's career, spanning two decades, supports the conclusion that the name Lisa Guerrero is well-known and famous. The Respondent could not have been unaware of the Complainant at the time the Respondent registered the disputed Domain Name.
The Panel is also prepared to find that the Respondent is using a confusingly similar Domain Name for the commercial purpose of diverting Internet traffic intended for the Complainant to the Respondent's website. This conduct is considered bad faith under the Policy and accordingly, the Panel is prepared to find that the Respondent has registered and used the disputed Domain Name in bad faith.
For these reasons, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) 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.
Christopher J. Pibus
Sole Panelist
Dated: October 6, 2009
Full & Egal Universal Law Academy