The Complainant is Paris Hilton of Beverly Hills, California, United States of America, represented by Tucker & Latifi, LLP, United States of America.
The Respondent is Turvill Consultants of Scarborough, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2012. On May 8, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 8, 2012, 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 May 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for a Response was May 31, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on June 6, 2012.
The Center appointed John Swinson as the sole panelist in this matter on June 26, 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 Paris Hilton, a celebrity and public figure, and the great-granddaughter of Conrad Hilton, founder of Hilton Hotels.
The Complainant holds numerous trade mark registrations worldwide, in connection with various goods and services, such as: clothing and footwear, cosmetics, retail store services, fragrances, watches and fashion accessories. The Complainant provided a list of these registrations, but did not annex any supporting documentation. The Panel has conducted its own investigations and has verified that the Complainant holds (at least) the following trade mark registrations:
- In the United States for PARIS HILTON:
- Registration No. 3,788,818 (registered May 11, 2010)
- Registration No. 3,514,355 (registered October 7, 2008)
- Registration No. 3,309,679 (registered October 9, 2007)
- Registration No. 3,059,587 (registered February 14, 2006)
- Registration No. 3,740,362 (registered January 19, 2010)
- Registration No. 3,550,627 (registered December 23, 2008)
- Registration No. 3,249,904 (registered June 5, 2007)
- In Australia for PARIS HILTON (plus P Crown Design) Registration No. 1416875 (registered March 29, 2011)
- Community Trade Mark for PARIS HILTON Registration No. 004059631 (registered July 14, 2006)
- In Israel for PARIS HILTON Registration No. 184,257 (registered October 6, 2005)
- In New Zealand for PARIS HILTON Registration No. 839366 (registered March 29, 2011)
- In New Zealand for PARIS HILTON (and design) Registration No. 839367 (registered March 29, 2011)
- In the Philippines for PARIS HILTON Registration No. 4-2011-003619 (registered July 14, 2011)
- In Singapore for PARIS HILTON Registration No. T1104461J (registered April 6, 2011)
- In Singapore for PARIS HILTON (and Design) Registration No. T1104462I (registered April 6, 2011)
(together, the “Trade Marks”).
The Respondent is Turvill Consultants of Ontario, Canada. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Disputed Domain Name was registered on February 23, 2012. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are as follows. Identical or Confusingly Similar
The Disputed Domain Name is identical to the Trade Marks, the domain name, and the Complainant’s line of eyewear which is currently sold throughout Asia. This creates a likelihood of confusion.
The Disputed Domain Name links to a website, “www.DesignerS”, which offers various designer sunglasses for sale in the United States and worldwide. While the website does not sell PARIS HILTON-branded sunglasses, it gives consumers the impression that the products being offered for sale are endorsed or licensed by the Complainant. Rights or Legitimate Interests
The Complainant has not authorized or licensed the Respondent to use the Trade Marks and the Respondent has no legitimate right to use the Trade Marks.
The Respondent is not commonly known by the Disputed Domain Name and there can be no legitimate business reason for Respondent to own and/or use the Disputed Domain Name. Registered and Used in Bad Faith
The Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or the goods and services being offered on the Respondent’s website. Thus, the Complainant believes the Disputed Domain Name has been registered and is being used in bad faith, and creates a likelihood of confusion in the market place (see e.g. Paragon Gifts, Inc. v. Domain.Contract, WIPO Case No. D2004-0107).
A user entering the Disputed Domain Name and finding the Respondent’s website advertising and selling designer sunglasses, none of which are PARIS HILTON-branded, may become discouraged and may cease searching for Complainant’s own website, to Complainant’s detriment. This constitutes bad faith (see e.g. Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134).
The Respondent’s registration of the Disputed Domain Name that wholly incorporates the Trade Marks, with the addition of the descriptive term “sunglasses” (a product sold by Complainant), indicates that Respondent registered the Disputed Domain Name for the sole purpose of creating a likelihood of confusion in the minds of consumers between the Disputed Domain Name and the Trade Marks (see e.g. Société Air France v. Spiral Matrix, WIPO Case No. D2005-1337). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though Respondent has not filed a Response. A. Procedural Issues
The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g. Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413; M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941; Mancini’s Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED,WIPO Case No. D2008-1036; and Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383). However, the Panel may draw appropriate inferences from the Respondent’s default. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Marks.
The Panel has verified that the Complainant has rights in the Trade Marks.
The Disputed Domain Name is a combination of the PARIS HILTON element with the descriptive term “sunglasses”. The designation “.com” at the end of the Disputed Domain Name is irrelevant in assessing confusing similarity under the Policy and is thus ignored (see e.g., Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698 and GmbH v. Alan Lin,WIPO Case No. DME2009-0008).
The Panel finds that PARIS HILTON remains the dominant element in the Disputed Domain Name. It is well established that the addition of a descriptive term (such as “sunglasses”) to a trade mark does not prevent confusingly similarity (see e.g. Beyoncé Knowles v. Sonny Ahuj, WIPO Case No. D2010-1431; Chanel, Inc. v. Cologne Zone,WIPO Case No. D2000-1809 and Nicole Richie v. Sonny Ahuja,WIPO Case No. D2012-0500).
It is therefore clear, in the Panel’s view, that the Disputed Domain Name is confusingly similar to the Trade Marks. As such, the Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
- There is no evidence that the Respondent is commonly known by the Disputed Domain Name;
- there is no evidence that the Respondent has any connection with the Trade Marks and the Complainant has not given the Respondent any permission to use the Trade Marks;
- the Respondent registered and began using the Disputed Domain Name after Complainant had established rights in the Trade Marks through registration and use; and
- the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent’s use of the Disputed Domain Name in connection with a website selling designer sunglasses was clearly intended to divert users looking for products branded with the Complainant’s Trade Marks by trading off the reputation associated with the Trade Marks.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the Panel finds that the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith. Paragraph 4(b)(iv) is particularly relevant here and provides that there is evidence of bad faith where a domain name is “used to intentionally attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that web site or location or of a product or service on that web site or location”.
The Complainant and her Trade Marks are extremely well-known. As stated in Wikipedia:
“Hilton gained significant notoriety for her participation in a sex tape, which was released in November 2003, shortly before the premiere of the television reality series The Simple Life alongside fellow socialite and childhood best friend Nicole Richie. The show was a massive hit for the FOX network, premiering with 13 million viewers, and brought Hilton and co-star Richie to an international recognition. She then released her 2004 tongue-in-cheek autobiography called Confessions of an Heiress: A Tongue-in-Chic Peek Behind the Pose, she landed a supporting role in the 2005 horror film House of Wax, and recorded the 2006 music album Paris. She starred in the reality show Paris Hilton's My New BFF which was filmed in 2008 and also resulted in a second season. The show proved to be a success and was branched out to 2009's Paris Hilton's British Best Friend and Paris Hilton’s Dubai BFF. Hilton was in 2008's Repo! The Genetic Opera, where her work gained critical acclaim.
She has appeared in various lists compiled by magazines such as Maxim, FHM as well as Stuff. She is also regularly placed on lists composed by Forbes magazine and was named one of the "100 Hottest Women of All-Time" by Men's Health. Critics also suggest that Hilton epitomizes the title of famous for being famous; she is an example of the modern phenomenon of the "celebutante", the celebrity who rises to fame not because of their talent or work but because of their inherited wealth and controversial lifestyle.”
The Panel finds that it would be highly unlikely that the Respondent was unaware of the Complainant.
The Panel finds that the Respondent, prior to its registration and use of the Disputed Domain Name, which wholly incorporates the Trade Marks, was aware that the Complainant was the owner of the Trade Marks because of the substantial reputation of both Complainant and the Trade Marks.
The Respondent’s registration of a domain name that wholly incorporates the Trade Marks, with the addition of the descriptive term “sunglasses” (which is a descriptive term used in the Complainant’s line of business), indicates that the Respondent registered the Disputed Domain Name to mislead users into thinking it is some way connected, sponsored or affiliated with the Complainant and its business/products, or that the Respondent’s activities are approved or endorsed by the Complainant.
It appears to the Panel that the Respondent is trading off the Complainant’s substantial reputation. This constitutes bad faith (see e.g. eBay Inc. v. Sunho Hong,WIPO Case No. D2000-1633; Playboy Enterprises International, Inc. v. Domain Active Pty Limited,WIPO Case No. D2002-1156; and Nicole Richie v. Sonny Ahuja, supra.). The Respondent had the opportunity to make submissions to the contrary but failed to do so. The Panel infers from this failure to respond that the Respondent could not provide any evidence of good faith use of the Disputed Domain Name (see Encyclopaedia Britannica v. John Zuccarini and The Cupcake Party a/k/a Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330; and eBay Inc. v. Sunho Hong, supra.).
In light of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith as defined in paragraph 4(b) 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 Disputed Domain Name, be transferred to the Complainant.
John Swinson
Sole Panelist
Dated: July 10, 2012
Full & Egal Universal Law Academy