WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Hill Harper v. Moniker Privacy Services / Domain Administrator Case No. D2010-0225 1. The Parties
The Complainant is Hill Harper of Hollywood, California, United States of America, represented by Ali Shalchi, Esq., United States of America.
The Respondent is Moniker Privacy Services / Domain Administrator of Hong Kong, SAR of China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2010. On February 16, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On February 18, 2010, Moniker Online Services, LLC 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 February 22, 2010 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 3, 2010. 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”).
The Panel is satisfied that, in accordance with the Rules, paragraphs 2(a) and 4(a), the Center employed reasonably available means calculated to achieve actual notice to the Respondent of the Complaint, and the proceedings commenced on March 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 26, 2010.
The Center appointed Alan L. Limbury as the sole panelist in this matter on March 31, 2010. 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 well-known as an actor and author in the United States of America.
The Domain Name was registered on November 10, 2004. It resolves to a website containing sponsored links, including some bearing the Complainant's name, some the name of a well-known television show in which he has appeared, CSI:NY, and some to other celebrities and topics unrelated to the Complainant. Some of the links have no content. Others lead to third party sites offering merchandise. The website also bears the prominent statement: “To purchase this domain name, click here”.
In January 2010, the Complainant's agent anonymously offered, through that mechanism, to purchase the Domain Name for USD 5,000. In February 2010, the Respondent, through a broker, offered to accept USD 10,000. 5. Parties' Contentions A. Complainant
The Complainant claims common law trademark rights in his name, citing inter alia his notable appearances and published works and his numerous awards as an actor and as an author. He says the Domain Name is identical to his trademark and that the Respondent has no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, the Respondent has concealed his or her identity behind a privacy service and is intentionally using the Complainant's name to increase traffic to his website and the websites of others.
As to bad faith, the Respondent must have known that only the Complainant could consider a price of USD 10,000, so the Respondent intended to extract as much money as possible from the Complainant. Further, the Respondent has used the Domain Name intentionally to attract, for commercial gain, Internet users to unrelated third party sites in a manner that is likely to cause confusion with the Complainant's mark. The Respondent's registration prevents the Complainant from reflecting his name and mark in a domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
To qualify for cancellation or transfer of a domain name, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark 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
(ii) the domain name has been registered and is being used in bad faith.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, the complainant's asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman,WIPO Case No. D2000-1080 and AltaVista Company v. Grandtotal Finances Limited et. al.,WIPO Case No. D2000-0848. A. Identical or Confusingly Similar
The Policy protects personal names (including names of actors, authors, recording artists and musicians) that have, through use and publicity, acquired the distinctiveness necessary to become trademarks or service marks: see for example Julia Fiona Roberts v. Russell Boyd,WIPO Case No. D2000-0210; Jeanette Winterson v. Mark Hogarth,WIPO Case No. D2000-0235; Monty and Pat Roberts, Inc. v. Bill Keith,WIPO Case No. D2000-0299; Steven Rattner v. BuyThisDomainName (John Pepin),WIPO Case No. D2000-0402 and Estate of Stanley Getz aka Stan Getz v. Peter Vogel,WIPO Case No. D2000-0773.
The Panel finds that the Complainant has for the purpose of the Policy shown common law trademark rights in his name, in connection with his professional services as an actor and author.
The Domain Name is identical to the Complainant's HILL HARPER trademark, save for the inconsequential gTLD “.com”, which may be ignored: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
The Complainant has established this element of his case. B. Rights or Legitimate Interests
The Panel finds that the HILL HARPER mark is distinctive of the Complainant's services and is well-known. The Complainant's assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. The Respondent has made no attempt to do so.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant has established this element of his case. C. Registered and Used in Bad Faith
The mere offering of a domain name for sale to the Complainant or to a competitor of the Complainant for more than the out-of pocket costs directly related to the Domain Name does not constitute evidence of both bad faith registration and use within the Policy, paragraph 4(b)(i), which requires the additional showing that this was the Respondent's primary purpose for registering or acquiring the Domain Name. Here the USD 10,000 offer was made over 5 years after registration, hardly evidence that the Domain Name was registered primarily for the purpose of sale: see The World Phone Company (Pty) Ltd v. Telaccount Inc.,WIPO Case No. D2000-1163 and Maureen A. Healy v. Andreas Kuhlen,WIPO Case No. D2000-0698.
The content of the website shows an awareness on the part of the registrant of the Complainant and of his celebrity and an intent, for commercial gain, to attract Internet traffic as a result of confusion between the Domain Name and the Complainant's mark. Under the Policy, paragraph 4(b)(iv), use of this kind is evidence of both bad faith registration and bad faith use for the purposes paragraph 4(c)(iii). In the absence of any countervailing evidence pointing to good faith registration, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith.
The Complainant has established this element of his case. 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.
Alan L. Limbury
Sole Panelist
Date: April 14, 2010
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