Complainant is Boris Johnson, London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Kingsley Napley LLP, United Kingdom.
Respondent is Belize Domain WhoIs Service Lt of Belize. 2. The Domain Name and Registrar
The disputed domain name is registered with Intercosmos Media Group d/b/a directNIC.com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2010. On November 17, 2010, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On November 17, 2010, Intercosmos Media Group d/b/a directNIC.com. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 22, 2010.
The Center appointed David H. Bernstein as the sole panelist in this matter on January 4, 2011. 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. Pursuant to the Rules, paragraphs 6(f) and 10(c), the Panel set January 24, 2011 as the date by which it would forward its decision to the Center. 4. Factual Background
Because Respondent has not submitted a Response, the following factual assertions, taken from the Complaint, are accepted as true for purposes of this proceeding:
Complainant, Boris Johnson, is a UK-based journalist, author, broadcaster, speaker, media personality and politician, and is the current mayor of London. Complainant previously served as editor of the Spectator magazine (which, at the time, had a circulation of approximately 70,000 copies) and as a columnist at the Daily Telegraph newspaper (which, at the time, had a circulation of approximately 650,000 copies daily). As a broadcaster and media personality, he has appeared on various television shows, including the current affairs quiz show “Have I Got News For You” and the BBC series “The Dream of Rome” and “After Rome”. Complainant has published numerous books, including “Friends”, “Voters”, “Countrymen” – “Jottings on the Stump”; “Have I Got Views For You”; “Lend Me Your Ears”; “Life In the Fast Lane”; “Seventy Two Virgins”; “The Dream of Rome”; and “The Perils of the Pushy Parents”. The combined sales of Complainant’s books exceeds 250,000 copies. Complainant also is available for hire as an after-dinner speaker. A poll reported in the Sunday Telegraph national newspaper showed that Complainant has 86.5% name recognition in England.
The disputed domain name was initially registered on behalf of Complainant on July 13, 2007, in connection with Complainant’s campaign for the 2008 London mayoral election. The disputed domain name was used prominently during Complainant’s campaign, and was frequently referenced in media coverage of the 2008 mayoral election.
In July 2010, Complainant failed to renew the domain name; shortly thereafter, on or about July 27, 2010, Respondent registered the domain name.
Respondent’s website contains search links on its home page. In the past, those links have included the names of various politicians, political movements, and political concepts; currently, they include headings on book publishing and various government- and military-related terms. Internet users clicking on these links are directed to secondary pages on the website featuring pay-per-click (“PPC”) advertising, which appears to be drawn from the Google Adwords system, with links to third party websites that offer or advertise various goods and services unrelated to Complainant. 5. Parties’ Contentions A. Complainant
Complainant asserts common law trademark rights in the marks BORIS and BACKBORIS, alleging that he has developed a substantial reputation and goodwill under those marks and that, too many members of the public, those marks are distinctive of Complainant. Complainant explains that the mark BACKBORIS is a combination of Complainant’s first name, by which he is very well known in the UK, and the word “back,” a generic term connoting support. Complainant alleges that the domain name is identical to Complainant’s mark BACKBORIS and confusingly similar to his mark BORIS.
Complainant further alleges that Respondent lacks any rights or legitimate interests in the disputed domain name because Respondent has not used the domain name in connection with the bona fide offering of goods or services; rather, Respondent is trading on Complainant’s reputation in order to profit from click-through commissions. Complainant alleges that Respondent is not commonly known by the domain name and is not making a legitimate non-commercial or fair use of the domain name.
Finally, Complainant alleges that it is highly likely that Respondent registered the domain name primarily for the purpose of selling it at a profit to Complainant because, at the time of registration, it was widely anticipated that Complainant would run for re-election as London mayor in 2012. Complainant also alleges that Respondent registered and is using the domain name in bad faith by attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark. B. Respondent
As noted above, Respondent did not file a Response.1 In view of Respondent’s failure to submit a Response, the Panel shall decide this proceeding on the basis of Complainant’s undisputed factual allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, to succeed in obtaining transfer of the domain name, Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
Despite Respondent’s default, Complainant must still support his assertions with actual evidence in order to succeed. Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview”) paragraph 4.6 (available at “/amc/en/domains/search/overview/index.html”). For the reasons discussed below, the Panel concludes that Complainant has satisfied its burden of proving all three of these factors by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340 (acknowledging consensus on use of preponderance of the evidence standard). A. Identical or Confusingly Similar
The first factor contains two elements: first, does Complainant have rights in a relevant mark and second, is the disputed domain name identical or confusingly similar to that mark. Although it is a close question, the Panel concludes that Complainant has satisfied its burden on both parts of this factor.
The Policy does not require that Complainant's trademark or service mark be registered; ownership of a common law trademark is sufficient to satisfy this element of the Policy. Jeanette Winterson v. Mark Hogarth,WIPO Case No. D2000-0235; SeekAmerica Networks Inc .v. Tariq Masood and Solo Signs,WIPO Case No. D2000-0131. That is true for marks that also serve as personal names. However, personal names are not protected per se, see, e.g., Benjamin Ladner v. Ben Wetmore, NAF Claim No. FA0407000305190 (university president failed to show trademark rights in his name); rather, they only can be protected if there is a showing that the name functions as a trademark. See, e.g., Julia Fiona Roberts v. Russell Boyd,WIPO Case No. D2000-0210; Jeanette Winterson v. Mark Hogarth,WIPO Case No. D2000-0235; Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415.
The fact that Complainant is a politician is not sufficient to give rise to trademark rights. However well known he may be as mayor of London, his use of his name as a candidate for public office does not constitute use of his name in connection with the offering for sale of goods or services in a way that would give rise to trademark rights. Similarly, in his role as mayor, he is engaged in a public service job, not a platform for commercial transactions and commercial exploitation of his name. See Kathleen Kennedy Townsend v. B.G. Birt,WIPO Case No. D2002-0030 (finding that “the protection of an individual politician's name, no matter how famous, is outside the scope of the Policy since it is not connected with commercial exploitation”); Fields for Senate v. Toddles Inc.,WIPO Case No. D2006-1510 (finding that respondent, a well-known New York politician, did not hold trademark rights in her name because there was “no indication that [her] name ha[d] ever been used or advertised as an indication of the source of any goods or services”). Because the only allegations related to the alleged BACKBORIS mark relate to Complainant’s candidacy for mayor, the Panel finds that Complainant has failed to establish common law trademark rights in the mark BACKBORIS.
However, Complainant also alleges that he is a journalist, author, and after-dinner speaker/entertainer. In cases involving for example authors and entertainers (and also athletes), the relevant inquiry is whether Complainant has used his or her personal name as a marketable commodity, for a fee to promote another’s goods or services, or for direct commercial purposes in the marketing of his of her own goods and services. See Israel Harold Asper v. Communication X Inc.,WIPO Case No. D2001-0540; Jay Leno v. Garrison Hintz,WIPO Case No. D2009-0569; Chinmoy Kumar Ghose v. ICDS and Maria Sliwa,WIPO Case No. D2003-0248. In other words, Complainant's personal name must be used such that a relevant segment of the public comes to recognize the name as a symbol that distinguishes his or her goods and services from those of others. See id.
Although Complainant has established that he is involved in sufficient commercial transactions to give rise to trademark rights, the question remains what that trademark is. All of the evidence submitted by Complainant of his renowned as an author and speaker use his full name, BORIS JOHNSON. The only evidence submitted that refers solely to BORIS or BACKBORIS related to Complainant’s political campaigns, which for the reasons noted above, do not support a finding of trademark rights. The Panel thus finds that, on the record submitted, Complainant has established trademark rights in his name BORIS JOHNSON.
The question then becomes whether the domain name is identical or confusingly similar to the mark BORIS JOHNSON. In considering that closely balanced question here, the Panel finds that the relevant public’s associations with the domain name may (where established) indeed be relevant. In other words, whether or not Complainant has shown that he owns trademark rights in BORIS or BACKBORIS as such, Complainant has adduced sufficient facts to support a finding that a relevant segment of the public would associate the domain name with Complainant, including because his campaign was closely associated with the political slogan “Back Boris,” because Complainant actively uses the similar domain name , and because Complainant is often known by his somewhat distinctive first name, “Boris.” See. Chinmoy Kumar Ghose v. ICDS and Maria Sliwa,WIPO Case No. D2003-0248 (finding the domain name confusingly similar to a variation of complainant’s first name, by which he was commonly known); Jorge Mario Pedro Vargas Llosa v. Instituto Cultural Iberoamericano “Mario Vargas Llosa”,WIPO Case No. D2004-0957 (finding the domain name confusingly similar to complainant’s last name, by which he was commonly known); HELEN FOLSADE ADU known as SADE v. QUANTUM COMPUTER SERVICES INC.,WIPO Case No. D2000-0794 (finding the domain name confusingly similar to the single name by which complainant was commonly known).
Accordingly, although it is a close case, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark BORIS JOHNSON, and that Complainant has therefore satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant has the burden of showing that Respondent has no rights or legitimate interests in the disputed domain name. National Construction Rentals, Inc. v. T, Inc.,WIPO Case No. D2009-0147. Complainant has sustained that burden in this case.
As Complainant alleges, and as the Panel’s review of the evidence and the website to which the disputed domain name resolves establishes, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent made a legitimate non commercial or fair use of the domain name, without intent for commercial gain. Instead, it appears that Respondent, for commercial gain, has sought to confuse Internet users so that those searching for Complainant will mistakenly reach a PPC website.
PPC websites are not per se legitimate or illegitimate; rather, the Panel must consider the nature of the domain name and the advertising on the site. If the links on a PPC site are exclusively based on the dictionary meaning of a domain name, that generally would be a fair use because there would be no trademark rights implicated by the PPC links. See, e.g., The Landmark Group v. DigiM, L.P., NAF Claim No. FA0406000285459 (legitimate interest “[if] the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks”); see also National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424. In contrast, if some of the links take advantage of the trademark value of the domain name, that is an illegitimate use that trades on the goodwill of the trademark rather than on the purported generic meaning of the domain name. Ustream.TV, Inc. v. Vertical Axis, Inc.,WIPO Case No. D2008-0598 (PPC parking pages built around a trademark do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate non commercial or fair use pursuant to paragraph 4(c)(iii)).
Had Respondent’s website posted only information and links about Complainant and his policies (whether to “back” his positions or undermine them), the Panel would have the difficult task of determining whether that is a legitimate interest – an issue that has split UDRP panels, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview”), paragraphs 2.4 and 2.5, and that might also be based, to some degree, on determining the appropriate national law implicated. See generally Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647. However, that is not the use to which Respondent has put the domain name. Instead, whether consciously or by operation of the algorithm on the site or used by the Adwords program, at least one of the listed links is directly competitive with Complainant’s book publishing activities; that link is for “political book publishing companies.” Because at least that link takes advantage of Complainant’s trademark rights, the Panel concludes that Respondent’s use is not a noncommercial fair use.
Accordingly, the Panel concludes that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) states that the following circumstance is evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
The Panel’s conclusion that Respondent used the domain name for a PPC website that trades on Complainant’s trademark rights also establishes that Respondent has intentionally attempted to attract Internet users to its site through confusion, all for Respondent’s commercial gain. The Panel finds that sufficient to establish bad faith registration and use in the present circumstances. That Respondent’s website contains links such as “Politics Book” provides further evidence that Respondent is using the domain name with the intent to profit from Complainant’s mark and reputation.
Accordingly, the Panel finds that Complainant has satisfied the requirements of 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 Complainant.
David H. Bernstein
Sole Panelist
Dated: January 24, 2011
1 Because Respondent did not submit a Response, the Panel has carefully reviewed the record to ensure that the Center has discharged its obligation to notify Respondent of the Complaint pursuant to paragraphs 2(a) and 4(a) of the Rules. See Nicole Kidman v. John Zuccarini, WIPO Case No. D2000-1415. On December 1, 2010, the Center sent written notice of the Complaint to the only postal address provided in Respondent’s WhoIs records. On December 7, 2010, Respondent refused delivery of the package containing written notice. On December 1, 2010, the Center also attempted to provide Respondent with notice by email. The Center forwarded a copy of the Complaint, including all annexes, to the e-mail address provided on Respondent’s WhoIs information, and to the email address postmaster@. Unfortunately, those attempts were unsuccessful because the email addresses appear to have been incorrect. No fax number was provided in Respondent’s WhoIs records. The Panel finds that the Center has employed “reasonably available means calculated to achieve actual notice to Respondent” and that any failure of receipt of actual notice is the fault of Respondent for failing to provide a valid email address in its WhoIs records and for refusing delivery of the package containing written notice of the dispute. Accordingly, the Panel concludes that the Center has discharged its obligation to notify Respondent of the Complaint pursuant to paragraphs 2(a) and 4(a) of the Rules.
Full & Egal Universal Law Academy