The Complainant is Louise Rennison of London, United Kingdom of Great Britain and Northern Ireland, represented by Aitken Alexander Associates Ltd, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Milan Kovac of Bratislava, Slovakia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with HebeiGuojiMaoyi (Shanghai) LTD aka Hebei International Trading (Shanghai) Co., Ltddba HebeiD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2012. On February 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 8, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 13, 2012 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 amended Complaint on February 17, 2012.
The Registrar’s email of February 8, 2012 indicated that the language of the registration agreement under which the Domain Name is registered is Slovak. On February 13, 2012, the Center transmitted an email communication to the Parties in both English and Slovak regarding the language of the proceeding. On February 15, 2012, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date and has not since commented on the matter.
The Center verified that the Complaint together with the amended 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 March 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2012.
The Center appointed Nicholas Smith as the sole panelist in this matter on April 12, 2012. 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 a UK-based author of teenage and young adult novels. Since 1999 the Complainant has written and had published 10 books in a series called Confessions of Georgia Nicolson. The books in this series are: Angus, Thongs and Full-Frontal Snogging, On the Bright Side, I’m Now the Girlfriend of a Sex God, Knocked Out by my Nunga-Nungas, Dancing in My Nuddy Pants, Away Laughing on a Fast Camel, Then He Ate My Boy Entrances, Startled by His Furry Shorts, Love is a Many Trousered Thing, Stop in the Name of Pants, Are These My Basoomas I See Before Me?. The Complainant has also written and had published a further two books, in her second series, The Misadventures of Tallulah.
The Complainant has sold more than 6.5 million copies of her books world-wide. Her books have been translated into 34 languages. The Complainant’s book, Angus, Thongs and Full-Frontal Snogging was released as a movie in the United Kingdom and the United States of America in 2008. The books On the Bright Side, I’m Now the Girlfriend of a Sex God, Knocked Out by my Nunga-Nungas, Dancing in My Nuddy Pants and Away Laughing on a Fast Camel have been featured in the New York Times best-sellers list (children’s literature).
The Domain Name was registered on October 16, 2002. At the time the Complaint was filed, the Domain Name redirected to a portal site providing links to various third-party websites, some of which advertised books for sale. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is confusingly similar to the Complainant’s name, in which she has common-law trademark rights;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is a world-famous author of young adult literature. She is very well known for her 10 book series called Confessions of GeorgiaNicolson, the first of which published in 1999. The books in this series are: Angus, Thongs and Full-Frontal Snogging, On the Bright Side, I’m Now the Girlfriend of a Sex God, Knocked Out by my Nunga-Nungas, Dancing in My Nuddy Pants, Away Laughing on a Fast Camel, Then He Ate My BoyEntrances, Startled by His Furry Shorts, Love is a Many Trousered Thing, Stop in the Name of Pants, Are These My Basoomas I See Before Me?
The Complainant published the first book in her second series The Misadventures of Tallulah, Withering Tights in 2010, and the second book in the second series, A Midsummer Tights Dream was published in February 2012.
The Complainant’s books have been translated into 34 languages and have sold more than 6.5 million copies worldwide. The Complainant’s book Angus, Thongs and Full-Frontal Snogging was made into a movie in 2008.
The Complainant’s readers closely identify the Complainant’s name Louise Rennison with her work and her very particular brand of teen humour. The Complainant has been subject to numerous feature articles and publicity in English newspapers such as the Evening Standard, the Independent, the Daily Mail, the Telegraph and the Times.
By reason of the reputation the Complainant has in her own name, which is used to sell her published works, her name has acquired a “secondary meaning” as the reading public have come to associate her work with her name. She has therefore established common law rights in LOUISERENNISON (the “RENNISON Mark”) as her trademark.
The Domain Name comprises the whole of the RENNISON Mark with the addition of the domain denominator “.com”. It is well established that the addition of a top level domain does not affect the identity or the confusing similarity of the Domain Name to the trademark.
The Respondent has no rights or legitimate interests in the Domain Name. The Complainant has not authorised the Respondent to use the RENNISON Mark as a domain name or otherwise, and as far as the Complainant is aware the Respondent is not known by the Domain Name, nor is there any evidence at all of the legitimate noncommercial or fair use of the Domain Name by the Respondent.
The website at the Domain Name resolves to a holding page or a portal page with links to a variety of book sellers. The Respondent’s use of the Domain Name does not show any legitimate interests, rather it shows that the Respondent is using the RENNISON Mark to direct visitors to its site and have them click through to third party transaction sites.
The Domain Name is being used in bad faith as the Complainant’s name is being used to misleadingly direct and divert fans and readers towards the portal page. The fact that the Domain Name resolves to a website featuring links to various third party websites offering goods and services for sale including goods offered by reference to the Complainant suggests that the Respondent is receiving payment when individuals click through to these websites. Such conduct amounts to registration and use in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Slovak. The Complainant, upon receiving a notification from the Center that the language of the Registration Agreement was Slovak, submitted a request for this dispute to proceed in English. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of Rules.
In adopting a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs; see GroupeAuchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. ShuminPeng,WIPO Case No. D2006-0432.
The Complainant has made the following arguments on the issue of the language of proceedings:
a. The Respondent has been the respondent in 13 prior UDRP cases, most of which involved English-language brands. Cases in which the Respondent was a party include John Greed Jewellery Ltd v. Privacy--P/Milan Kovac,WIPO Case No. D2011-1532; B& Q pls v. Milan Kovac, WIPO Case No. D2011-1420; and Barclays bank Plc v. BARCLAYSCAPITALCAREERS.COM Privacy--P / Milan Kovac,WIPO Case No. D2011-1015.
b. In none of those prior UDRP cases did the Respondent participate in any way, either by filing a Response or by requesting that the case continue in Slovak.
c. The content of the website that the Domain Name revolves to is in English, indicating not only that the Respondent has a good command of the English language, but that it is able to identify and communicate with the English-language companies that provide the advertising links on the website.
d. The Complainant’s nationality and place of residence is in the UK.
e. The Complainant is not in a position to conduct these proceedings in Slovak without a great deal of additional expense and delay due to the need for translation of the Complaint and the supporting Annexes.
The Respondent has been given a fair chance to object to the Complainant’s choice of English as the language of the proceeding, but has not done so, nor has it participated in the proceeding generally.
In this case, the Panel notes that the website the Domain Name resolves to is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct its business over the website in English. If it lacks the ability to communicate in English, there were opportunities for the Respondent to raise its objections on the choice of language, but the Respondent did not file any Response by the applicable deadline to object the Complainant's request to adopt English as the language of proceedings. The Panel also notes that the Respondent is also involved in prior UDRP cases, i.e. John Greed Jewellery Ltd v. Privacy--P/Milan Kovac,WIPO Case No. D2011-1532, B & Q plc v. Milan Kovac, WIPO Case No. D2011-1420 and Barclays bank Plc v. BARCLAYSCAPITALCAREERS.COM Privacy--P / Milan Kovac,WIPO Case No. D2011-1015. In each of these cases the panel found that the Respondent had some command of English and, notwithstanding the fact that the registration agreement was in Slovak, the appropriate language of the proceedings should be English. See also The American Automobile Association, Inc. v. Privacy--P, Privacy--P, Privacy--P, Isaac Goldstein,WIPO Case No. D2011-2069.
The Panel finds that in the circumstances of this case, paragraph 11 of the Rules is best served by allowing the proceedings to be conducted in English. B. Identical or Confusingly Similar
To prove this element the Complainant must have trademark or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s mark.
The Complainant does not hold a registered trade mark. Rather it seeks to assert unregistered or common law rights in the RENNISON Mark. In order to successfully establish common law rights, the Complainant must show that the RENNISON Mark has become a distinctive identifier associated with the Complainant or its goods or services. It has long been established that where the personal name concerned is used in commerce to distinguish the goods and services offered by a person under that name, common law trademark rights can be found in the name notwithstanding that there is no trademark registration. Early examples of cases involving authors in which common law rights were found are the cases of Jeanette Winterson v. Mark Hogarth,WIPO Case No. D2000-0235 and Dr. Michael Crichton v.In Stealth Mode,WIPO Case No. D2002-0874.
The evidence submitted by the Complainant in this case clearly shows that the Complainant has consistently and extensively used the name LOUISE RENNISON as the name and mark under which she promotes and provides her published work. The Complainant is a well-known author, having sold over 6.5 million books and the reading public have come to associate her work with her name. The Panel therefore finds that the RENNISON Mark is a trademark or service mark in which Complainant has rights.
When comparing the Domain Name with the RENNISON Mark the suffix “.com” is of no significance, see Guinness Son & Co. (Dublin) Limited v. DejanMacesic,WIPO Case No. D2000-1698. As currently there is no possibility of inserting a space in a domain name, the space between the words “Louise” and “Rennison” in the RENNISON mark is also of no significance. The Panel finds that the Domain Name is identical to the RENNISON Mark in which the Complainant has rights. C. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the Domain Name.
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the RENNISON Mark or a mark similar to the RENNISON Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
There is no evidence that the Respondent is using or has made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather the Domain Name, at the time of the Complaint, revolved to a portal website, which provided a series of links to various third party advertising sites, many of which refer to the sale of books. The use of the RENNISON Mark to direct Internet users to third party advertising sites is not a bona fide offering of goods and services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has not filed any evidence that demonstrating rights or legitimate interests in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name’ registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
The Panel finds that the Respondent at the time of registration of the Domain Name knew of the existence of the Complainant. At the time the Domain Name was registered the Complainant had already published and sold a number of books in her popular Confessions of Georgia Nicolson series. Furthermore, the Domain Name resolved to a website that, at the time of the Complaint, made numerous references to the sale of books generally and children’s books in particular, the products associated with the Complainant. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register the Domain Name incorporating the RENNISON Mark but for an intention to attract Internet users by creating a likelihood of confusion between the Domain Name and the Complainant.
The Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s reputation and lacked rights and legitimate interests of its own is registration in bad faith.
The Domain Name, at the time of the Complaint, revolved to a portal website. Such portal websites are operated for commercial gain, as advertisers generally pay on a pay per click basis for Internet users redirected to their sites. Consequently, the Respondent registered and is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. 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 Domain Name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Dated: April 16, 2012
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