The Complainant is Delia Ephron of New York, New York, United States of America, represented by Davis & Kuelthau s.c., United States of America.
The Respondent is Value Domain, Inc. of Osaka, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems GmbH dba (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2011. On October 20, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 November 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2011.
The Center appointed Douglas Clark as the sole panelist in this matter on December 28, 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.
The Complaint was filed in English on the basis that the Complainant believed that the registration agreement was in English. After service of the Complaint, the registrar informed the Center that the language of the registration agreement was in Japanese. The Centre requested the Complainant to either submit grounds why the proceedings should be in English or submit a translation of the Complaint in Japanese. The Complainant requested that the language of proceedings be in English on the following grounds:
1. The registration agreement of the registrar on the internet is in English. The Respondent has used a Whois privacy shield to hide its identity making it impossible for the Complainant to know the language of the registration agreement.
2. The disputed domain name is the English name and exact spelling of the Complainant’s name. The Complainant must have known of Ms Ephron and understand the English language to have registered the disputed domain name.
The Respondent did not respond the request for the language of the proceedings to be in English. As noted below, the Respondent did, however, through an agent indicate that it was considering transferring the name to the Complainant at acquisition cost. The Respondent clearly, therefore understood the nature of these proceedings.
Having received no objection from the Respondent, and that considering all the circumstances, the Panel (which is conversant in both English and Japanese) therefore determines that the language of these proceedings shall be English and accordingly issues this decision in English. 4. Factual Background
The Complainant, Delia Ephron, is a playwright, writer and producer who has contributed to a number of blockbuster movies as well as being the author of a number of books.
Throughout her career, the Complainant has been known by the name Delia Ephron and has offered her services under the name Delia Ephron.
The Complainant’s credits include the following:
- Playwright for Love, Loss and What I Wore, which opened in 2009, and has been produced all over the world including in New York, Chicago, Sydney, Rio de Janeiro and Paris.
- Wrote and produced the movie Bewitched (2005) which earned approximately USD 131 million at the box office.
- Wrote the screenplay for the movie The Sisterhood of the Traveling Pants (2005), an adaptation of the novel by Ann Brashares.
- Co-wrote the screenplay Hanging Up (2000) with her sister Nora Ephron and served as the Executive Producer for the movie.
- Co-wrote the screenplay You’ve Got Mail (1998) with her sister Nora Ephron and served as Executive Producer for the movie. You’ve Got Mail earned over USD 250 million at the box office.
- Co-wrote the screenplay for Michael (1996) and served as the Executive Producer.
- Co-wrote the screenplay for Mixed Nuts (1994) and served as the Executive Producer.
- Associate Producer of Sleepless in Seattle (1994).
- Co-wrote the screenplay for This is My Life (1992).
- Wrote the screenplay for How to Eat Like a Child (TV 1980).
The Complainant has written the following books:
- How to Eat Like a Child (1979), illustrated by cartoonist Edward Koren, sold in the United States, England, Japan, Italy and France, among other countries.
- Teenage Romance: Or, How to Die of Embarrassment (1981)
- Funny Sauce (1986) sold in the United States, England, Japan, Italy and France, among other countries.
- Hanging Up (1995)
- Big City Eyes (2000)
- Frannie in Pieces (2007)
The Complainant owned and used the disputed domain name as her personal homepage on the internet beginning in June 13, 2007, until it was inadvertently permitted to lapse on June 13, 2011.
The disputed domain name was registered on August 31, 2011. 5. Parties’ Contentions A. Complainant
i. Identical or confusingly similar
The Complainant contends that the disputed domain name is identical to the Complainant’s name Delia Ephron and that the Complainant previously used the disputed domain name from 2007 to 2011.
ii. No rights or legitimate interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name for numerous reasons, of note is that: the Respondent is not known and has never been known by the name “Delia Ephron”; it has not made any demonstrable preparations to use the domain name; it has been using the disputed domain name to display parking page; and the Complainant has not licensed or otherwise authorised the Respondent to use the disputed domain name.
iii. Registered and used in bad faith
The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith for numerous reasons, the most important of which is that due to the Complainant’s fame the disputed domain name could only have been registered with knowledge of the Complainant, and its use as a parking page for a pay-per-click website. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The Respondent’s registrar did, after the deadline for filing a Response, on December 3, 2011 sent an email to the Center in Japanese saying: ”With regard to , as valuedomain remains the owner valuedomain has asked us to make contact regarding transferring the domain at its acquisition cost. We think contact will be made in the coming days, please wait”.
The case file shows that no further contact was forthcoming. 6. Discussion and Findings
This is a very simple case where the Panel must make a finding in favour of the Complainant. The panel gives brief reasons below. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the disputed domain name based on her prior use for 4 years of the same domain name, which in the circumstances the Panel finds to be sufficient to establish trademark rights of an unregistered mark in for purposes of the present Policy . By definition, the domain names are identical.
Further, the disputed domain name is identical (other than the addition of the gTLD “.com”) to the Complainant’s name which she uses for the provision of professional services. (See Paragraph 1.6 of the WIPO Overview on Selected UDRP Questions, “WIPO Overview 2.0”). B. Rights or Legitimate Interests
The Respondent has not responded to the case, the Panel is entitled to accept the Complainant’s submissions regarding the lack of rights and legitimate interests. In any event, it is difficult for this panel to see how the Respondent could establish any rights or legitimate interests in accordance with the UDRP. C. Registered and Used in Bad Faith
The registration of the disputed domain name for a personal name that is both well known and relatively rare soon after the domain name had expired without any explanation is, in this Panel’s view sufficient evidence of both registration and use in bad faith.
In any event, the use of the disputed domain name to resolve to a parking page clearly shows an intention to profit from the disputed domain name and is also evidence of registration and use in bad faith (see paragraph 3.8 of WIPO Overview 2.0). 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 the Complainant.
Douglas Clark
Sole Panelist
Dated: January 3, 2011
Full & Egal Universal Law Academy