WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Kira Reed Lorsch v. K c/o Host Master, A Domain Privacy and Transure Enterprise Ltd Case No. D2010-0850 1. The Parties
The Complainant is Kira Reed Lorsch of Los Angeles, California, United States of America, represented by McKee, Voorhees & Sease P.L.C., United States of America.
The Respondents are K c/o Host Master, A Domain Privacy of Beaumaris, Victoria, Australia and Transure Enterprise Ltd of Tortola, British Virgin 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 A Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2010. On May 28, 2010, the Center transmitted by email to A Pty Ltd a request for registrar verification in connection with the disputed domain name. On May 31, 2010, A Pty 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 June 7, 2010 providing the registrant and contact information disclosed by the Registrar, notifying the Complainant that the Complaint was administratively deficient, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 15, 2010. In response to another notification by the Center that the Complaint was administratively deficient, the Complainant filed a second amended Complaint on June 16, 2010. The Center verified that the Complaint together with the amended Complaints 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 a number of cases involving the use by a domain name holder of privacy services as a shield of the holder's identity it has been held that both the holder's name involving the privacy service provider and the name of the registrant communicated to the Center by the registrar are properly identified as respondents. In the present case both K c/o Host Master, A Domain Privacy, which appeared in the WhoIs search report, and Transure Enterprise Ltd., which was identified by the registrar, are referred to collectively as the Respondent, in the singular, in the balance of this Decision. See Fight For Sight, Inc. v. Moniker Privacy Services and F. Ciodo, WIPO Case No. D2009-0024; ADT Services AG. v. Global Access/Moniker Privacy Services, WIPO Case No. D2008-0680 and cases there cited.
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 June 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 9, 2010.
The Center appointed Joan Clark as the sole panelist in this matter on July 16, 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 asserts ownership of the common law trademark KIRA REED which she asserts has been used since at least as early as 1992.
The disputed domain name was registered on April 17, 2009 and is scheduled to expire April 17, 2011. 5. Parties' Contentions A. Complainant
The Complainant states she is a living individual residing in Los Angeles, California and is a well-known actress, television host, writer and producer. She states she has appeared or starred in over seventy television shows and feature films and has been the host for a variety of projects. She states that her career has also included writing and producing numerous works and that she currently serves as the spokesperson for MyMedicalR, Inc. and is prominently featured on several of their websites.
The Complainant further asserts that through the long and continuous use of her name in connection with all of these projects since at least as early as 1992 she has acquired substantial common law rights in the KIRA REED trademark. She says that under this mark she has achieved both national and international recognition and acclaim for the works with which she has been identified, and that use of the KIRA REED trademark has come to be recognized by the general public as indicating an association exclusively with images and videos in which the Complainant has appeared or which she has written and or produced. The Complainant also states that she uses her KIRA REED trademark prominently on her website “” which has existed since at least as early as 2001.
The Complainant maintains that the Respondent has chosen to use a domain name that includes an identical trademark, namely KIRA REED, and consequently its use is confusingly similar to the Complainant's domain name and trademark. She further maintains that the Respondent's intentional choice of its domain name was done to attract a flow of Internet users who would be searching for the Complainant or the Complainant's website, which further shows that the Respondent's domain name is and was specifically intended to be confusingly similar to the Complainant's domain name and famous trademark.
The Complainant avers that the Respondent has no rights or legitimate interest in the disputed domain name, that the Complainant has never authorized the Respondent to use her trademark, that the Respondent has no known relationship, association or affiliation with the Complainant, that the Respondent has not now or ever been known by the term KIRA REED and that the Respondent's gain from the disputed domain name appears to hinge solely on palming off on the notoriety of the Complainant and her KIRA REED trademark. The Complainant concludes that the Respondent has not made a legitimate noncommercial or fair use of the disputed domain name.
Finally, the Complainant asserts that the Respondent registered the disputed domain name with no apparent purpose other than to trade upon the Complainant's good name and to confuse Internet users, and that the Respondent intentionally attempts to confuse Internet users so as to generate hits to websites for which the Respondent presumptively receives a monetary kick back through “click-through” traffic revenue. The Complainant notes that the Respondent's website provides numerous links to various pornographic websites, and concludes that the Respondent experiences commercial gain through affiliate sponsors and advertising by using the reputation of the Complainant's mark, evidencing the Respondent's bad faith.
The Complainant maintains that the Respondent clearly knew or at least should have known about the Complainant and her KIRA REED trademark and the prior existing “” website when it registered the disputed domain name. The Complainant maintains this is further evidence of the Respondent's bad faith.
The Complainant has requested that the Administrative Panel issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, the Complainant has the burden of providing that all three elements are present in the Complaint, namely:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above. A. Identical or Confusingly Similar
The Complainant does not assert rights in a registered trademark, but claims it has common law rights in the name KIRA REED as a trademark. The Panel is satisfied from the evidence that the Complainant has used the name KIRA REED commercially as the source of numerous television shows, feature films and other projects involving and featuring the Complainant. The Panel accepts the Complainant's statement that the name KIRA REED has come to distinguish television shows, feature films and various projects in association with which it is used as involving or featuring the Complainant, distinguishing such shows, films and projects from those which do not involve the Complainant.
Based upon the evidence and assertions made by the Complainant which have not been refuted by the Respondent the Panel finds that the Complainant has rights in the common law trademark KIRA REED. See Julia Fiona Roberts v. Russell Boyd,WIPO Case No. D2000-0210; Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. D2002-0874; R. E. ‘Ted' Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi, WIPO Case No. D2002-0251 and the cases there cited.
The Panel has no hesitation in finding that the disputed domain name is confusingly similar to the trademark KIRA REED. The appearance in the disputed domain name of a gTLD suffix (in this case “.org”¨), the removal of spaces (as between the two words “Kira” and “Reed”) and the use of lower case letters are all required or usual practices in creating domain names and do not detract from the issue as to whether a domain name be identical or confusingly similar to a trademark.
The first element for the Complaint to succeed has therefore been established. B. Rights or Legitimate Interests
The Complainant has the burden of establishing all three elements necessary for a successful challenge to a domain name registration. Once a complainant has made a prima facie case that the respondent has no rights or legitimate interest in a mark, the burden of proving the contrary, which would involve matters particularly within the knowledge of the respondent, lies on the latter. See Fight For Sight, Inc. v. Moniker Privacy Services and F. Ciodo, WIPO Case No. D2009-0024; Perfetti Van Melle Benelux BV v. Jesse Lebiwotz,WIPO Case No. D2008-1383. As the Respondent has not replied to the Complainant's contentions in the present case and there has been no refutation of the inferences drawn by the Complainant, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The second element for the Complaint to succeed has therefore been established. C. Registered and Used in Bad Faith
The Panel has found that the Complainant's common law trademark is known in the entertainment business and has accepted the Complainant's evidence that the trademark has come to distinguish television shows, feature films and various projects in association with which it is used as involving or featuring the Complainant. As this is the field to which the disputed domain name is directed, it is reasonable to assume that the Respondent was aware of the Complainant and her common law trademark when the disputed domain name was created. The Respondent, not having submitted a Response, has not explained why it chose a domain name consisting of the unusual combination of KIRA and REED, used for over sixteen years in the entertainment business prior to the adoption of the disputed domain name.
The Panel is forced to the conclusion that the Respondent was aware of the Complainant's common law trademark used in the entertainment field and adopted the disputed domain name as an obvious reference to the Complainant's trademark in order to confuse Internet users, familiar with the Complainant or her trademark, by attracting them to the Respondent's site, thinking it to be the site of the Complainant.
The Panel concludes that in these circumstances the choice of a domain name almost identical to the name and common law trademark of the Complainant, absent any explanation for this choice, is sufficient to justify a conclusion that the disputed domain name was registered in bad faith.
For the same reasons that cause the Panel to conclude that the domain name was registered in bad faith, the Panel concludes that its continuing use is in bad faith.
The third element for the Complaint to succeed has therefore been established. 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 disputed domain name be transferred to the Complainant.
Joan Clark
Sole Panelist
Dated: July 30, 2010
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