Complainant is Antonella Nester of Pennsylvania, United States of America represented by Cowan, Liebowitz & Latman, PC, United States of America.
Respondent is Juan Curtis of California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2011. On July 27, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On July 28, 2011, GoD, Inc. 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 August 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 21, 2011. Respondent submitted several informal email communications on August 1, 2011 and August 2, 2011. As one of these emails suggested that Respondent might be willing to transfer the disputed domain name, the Center, on August 2, 2011, transferred the email to Complainant’s counsel and enquired as to whether Complainant wished to consider requesting a suspension of the proceedings in order to explore settlement. Complainant replied the same day that it considered Respondent’s email explanations “bogus” and that it wished this matter to proceed to decision.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on August 29, 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. 4. Factual Background
Complainant, Antonella Nester, is since 2004 a televised program host personality on the QVC television shopping network. QVC offers home shopping services via the Internet to millions of users and viewers in the United States of America, and its television hosts present product information, conduct demonstrations and interact with vendors, guests, celebrities and viewers. Ms. Nester is a widely followed and well-known television personality in this field. The name Antonella Nester is not a registered trademark.
Respondent is an individual apparently resident in or around San Diego, California, United States. The disputed domain name was registered in July 2011. 5. Parties’ Contentions A. Complainant
Complainant asserts that she has common law rights in the name Antonella Nester as she is using her name as a marketable commodity, for a fee, and to promote goods. Complainant further asserts, and submits substantial evidence of, the popularity and fame of Antonella Nester and the wide use and dissemination of her name on the Internet, to numerous “Facebook Friends” and the like.
Complainant then points out that the disputed domain name incorporates the allegedly common law mark in its entirety. Respondent, Complainant alleges, is not known by the name Antonella Nester and has no licence or other legitimate rights to the use of such name. To the contrary Complainant points out that Respondent has, among other things, used the disputed domain name to lead to explicit and/or pornographic websites including at least one that implied that the photos were of Antonella Nester.
Complainant adds evidence and allegations that Respondent has registered or been associated with other domain names incorporating the names of well-known personalities, and has been involved in a prior UDRP proceeding, MasterCard International Incorporated v. Juan Curtis,WIPO Case No. D2008-1295. Complainant concludes that Complainant’s behavior, including the frequent changes in the use made of the disputed domain name, abundantly justifies a finding that the disputed domain name was registered and used in bad faith. Complainant adds that Respondent “appears to be a cyber squatter” who specializes in registering domain names that incorporate celebrity names. Complainant thereupon requests that the disputed domain name be transferred to it. B. Respondent
Respondent did not reply to the contentions in the Complaint but did submit a series of emails on August 1 and August 2, 2011, and these emails are included in the case file. In the initial email Respondent states “Antonella ask [sic] me to buy her domain name, to build her personal Mexican adult website for her, after she could not pay me for the domain or to build her site, I place [sic] her domain up for sell [sic] along with her picture, in which she agreed”. Respondent variously adds in subsequent emails that he is ill, homeless and unemployed, has no money, can’t afford an attorney, is willing to transfer the disputed domain name, is not a cyber squatter, has removed the disputed domain name from the “website” and is going to be paid for the domain by “Maria Nester.” 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant for establish the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. As Complainant’s name, Antonella Nester, is not a registered trade or service mark the threshold question is to determine whether Complainant has made a sufficient showing of its common law rights in the name “Antonella Nester” to assert rights under the Policy.
It is now well established that the Policy does not specifically protect personal names as such; however, in situations where the personal name is being used for trade or commerce the complainant may be able to establish common law or unregistered trademark rights in that name. In particular, complainants have been found to have common law marks in their names in circumstances where the name has been used as a marketable commodity, for a fee to promote another’s goods or services, or for direct commercial purposes in marketing. See, Jay Leno v. Garrison Hintz,WIPO Case No. D2009-0569, and cases cited therein. In the instant case Complainant has provided extensive evidence of Antonella Nester’s role as a marketing personality in the realm of home shopping programs, of the extensive reach of these programs and of the fame and popularity of the name Antonella Nester in that context. Respondent, in his emails concerning this matter does not question the evidence of Complainant being well-known and active in the business of home shopping programs. In sum, the Panel is convinced that Complainant has common law rights in the name Antonella Nester because it is here established that she is using the name as a well-known marketable commodity, for a fee to promote goods. Israel Harold Asper v. Communications X Inc.,WIPO Case No. D2001-0540; see also, Steven Rattner v. BuyThisDomainName (John Pepin),WIPO Case No. D2000-0402.
Having determined that Complainant does have rights in the name Antonella Nester it is clear that the disputed domain name is identical or confusingly similar to the name Antonella Nester, as it incorporates that name in full—the addition of the domain name suffix “.com” here being immaterial.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant has made a strong showing of its interest in the disputed domain name and points out that Respondent is not known by the name Antonella Nester, and asserts that Respondent has never been authorized or licensed to register or use the name of Complainant. Respondent in its emails to the Center writes in confusing fashion of having set up the disputed domain name for “Antonella”, but then placed it up for sale because she could not pay for it. In a subsequent email Respondent states that Maria Nester will pay for the disputed domain name. Respondent’s statements, to the extent coherent, do not provide any demonstrable evidence of a legitimate interest in the disputed domain name, and do not defeat Complainant’s prima facie case that Respondent has no such interest. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been proven by Complainant. C. Registered and Used in Bad Faith
Respondent registered the disputed domain name in July 2011, when Complainant’s name had for years been very well known in commerce and on the Internet. Complainant has established that Respondent has repeatedly caused the disputed domain name to resolve to other parked sites and/or changed the content of the web site to which the disputed domain name resolves. These uses of the disputed domain name have included having it host various explicit or pornographic photos, sometimes implying that they were photos of Antonella Nester. The uses of the disputed domain name also reflect various attempts by Respondent to profit from the same and/or solicit the sale of the disputed domain name. These uses of the disputed domain name are inconsistent with Respondent’s confused and contradictory explanations of the registration and use of disputed domain name in his emails; they are also inconsistent with good faith. Thus neither the evidence before the Panel, nor Respondent’s unsupported emails, provide any plausible good faith explanation for Respondent’s registration and use of the disputed domain name. In light of the foregoing it is, in this Panel’s view, not necessary to examine in detail the Complainant’s further allegations and evidence that Respondent may be a serial cyber squatter who has lost at least one prior UDRP proceeding.
For all the foregoing reasons the Panel determines that the disputed domain name was registered and used in bad faith. 7. Decision
For 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 Complainant.
Nicolas Ulmer
Sole Panelist
Dated: September 12, 2011
Full & Egal Universal Law Academy