The Complainant is Cynthia Ann Crawford of Dayton, Ohio, United States of America (“USA”), represented by Thompson Hine LLP, USA.
The Respondent is Julian S. Garcia of Madrid, Spain. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2012. On December 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 18, 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 December 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2013.
The Center appointed John Swinson as the sole panelist in this matter on January 18, 2013. 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 Cynthia Ann Crawford, a famous supermodel, professionally known as “Cindy Crawford”.
The Complainant holds numerous active or pending registrations for the trade mark CINDY CRAWFORD in over 50 countries. She 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: CINDY CRAWFORD, in the United States, Registration No. 2,392,820 (registered October 10, 2000,); and Community Trade Mark for CINDY CRAWFORD, Registration No. 002246288 (registered May 15, 2003,),(together, the “Trade Marks”).
The Respondent is Julian S. Garcia of Madrid, Spain. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Disputed Domain Name was first registered on October 17, 1996. According to the publicly-available WhoIs information, the Disputed Domain Name has had multiple registrants since 1996. From the evidence submitted by the Complainant it seems that the Respondent has held the Disputed Domain Name since at least August 8, 2012. The Disputed Domain Name redirects to a website which contains pornographic material. 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.
Rights or Legitimate Interests:
The Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant has never owned the Disputed Domain Name (contrary to false registrant information in the publicly available WhoIs history report). The Respondent has been in control of the Disputed Domain Name since February 13, 2004. The Respondent was listed as the technical contact on this date, with “Cindy Crawford” listed as registrant (both with the same address). These details changed on February 10, 2010, (“Cindy Crawford” was listed as technical contact, still with the Respondent’s address), and again on August 8, 2012, (the Respondent was listed as both the registrant and the technical contact).
The Complainant has not authorized the Respondent to register or take any action in relation to the Disputed Domain Name.
Prior to August 8, 2012, the Disputed Domain Name was either inactive, or directed to . Since August 2012, the Disputed Domain Name has been redirecting to an English-language pornographic website for a pornographic actress using the same professional name as the Complainant. The Complainant has no contractual relationship with this actress.
The Respondent is attempting to trade on the Complainant’s trade mark rights through the use of sexually explicit advertising, this tarnishes the Trade Marks (see e.g. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; and Rita Rudner v. Internetco Corp.,WIPO Case No. D2000-0581).
Registered and Used in Bad Faith:
The Disputed Domain Name was registered and is being used in bad faith.
Previous registrants have admitted to registering the Disputed Domain Name to return it to its “rightful owner”, but have failed to do so (see Playboy Enterprises International, Inc. v. Good Samaritan Program,WIPO Case No. D2001-0241). Previous registrants have used the Complainant’s personal and/or professional name without her authorization.
The Respondent has been listed as the technical contact for the Disputed Domain Name since at least 2004. A reverse WhoIs search was conducted for all domain names which list the Respondent as registrant or technical contact. Many of the domain names held by the Respondent appear to reference famous people or brands (for example, Eva Maria Gonzales, former Miss Spain and model).
The Complainant’s timing in bringing the Complaint should not be a consideration (see e.g. The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems, LLC,WIPO Case No. D2009-0057). 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 the 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). 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 owns registered trade marks for CINDY CRAWFORD.
The Disputed Domain Name is identical to the Trade Marks. The “.com” gTLD designation 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).
In light of the above, the Complainant succeeds on the first element of the Policy.
Even if the Complainant did not own registered trade marks, the Panel would find that the Complainant is one of the most famous and well-known super models in history. The Complainant started modeling in the 1980s, and by 1995 (if not earlier), the Complainant had reached “super model” status throughout the Western world. This is relevant for the third element, discussed below. 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 burden of production then shifts to the Respondent to demonstrate any rights or legitimate interests it may have.
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; and
- the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the Disputed Domain Name. It is well-established that the use of domain names which incorporate a celebrity’s name strongly suggests an intent to divert persons seeking information regarding that celebrity (see e.g. Nick Cannon v. Nikolay Zuyev,WIPO Case No. D2007-0870). Further, the website that the Disputed Domain Name redirects to contains commercial pornographic content which tarnishes the Trade Marks (see e.g. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415), and such use is not bona fide.
The fact that at one time the Disputed Domain Name may have been redirected to the Complainant’s official website, “www.”, does not on the facts of this case give any rights or interests to the Respondent sufficient to satisfy the second element of the Policy.
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 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 transfer of a domain name amounts to a new registration (see paragraph 3.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). It appears that the Disputed Domain Name was registered or acquired by the Respondent (under the false name of “Cindy Crawford” as registrant) on February 13, 2004, as states above in Section 5.
The Complainant and her Trade Marks were extremely well-known in 2004 (as well as in 1996 when it appears that the disputed domain name was first registered). As stated in Wikipedia:
“Cynthia Ann "Cindy" Crawford (born February 20, 1966) is an American model. Crawford is known for her trademark mole just above her lip, and has adorned hundreds of magazine covers throughout her career. Her success at modeling made her an international celebrity that has led to roles in television and film, and to work as a spokesperson. In 1995, Forbes magazine named her the highest paid model on the planet. She was named No. 3 on VH1's 40 Hottest Hotties of the 90s and was named one of the ‘100 Hottest Women of All-Time’ by Men's Health.“
It would be highly unlikely that the Respondent was unaware of the Complainant in 2004.
The Panel finds that the Respondent, prior to his registration and use of the Disputed Domain Name, which wholly incorporates the Trade Marks, was aware of the Complainant, and was aware that the Complainant was a famous supermodel.
The Respondent’s registration of a domain name that wholly incorporates the Trade Marks and the use by which the domain name has been put, discussed below, indicates that the Respondent registered the Disputed Domain Name to mislead Internet users into thinking he is some way connected, sponsored or affiliated with the Complainant and her 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 use (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,WIPO Case No. D2012-0500).
A number of UDRP panels have held that pornographic content may be (but is not in itself) a significant indicator of bad faith use (see e.g. Caesars World, Inc v. Alaiksei Yahorau,WIPO Case No. D2004-0513 and the cases cited therein). In CHRISTIAN DIOR COUTURE v. Paul Farley,WIPO Case No. D2008-0008 (citing The Perfect Potion v. Domain Administrator,WIPO Case No. D2004-0743), the panel stated:
“to establish bad faith registration and use in a case where an at-issue domain name has been linked to a pornographic website, there must still be an element of ‘targeting’ the Complainant or its mark, or at the very least the Respondent must have had the complainant or its trade mark in mind when selecting the domain name”. (Emphasis in original).
In light of the discussion above, this element of “targeting” is satisfied. The Respondent is “pornosquatting”, (i.e. taking advantage of the Complainant’s well-known Trade Marks to attract Internet users to his pornographic, commercial web site).
It also appears that the Respondent registered the Disputed Domain Name with a false name (i.e. “Cindy Crawford” as registrant). To this Panel this is further evidence of bad faith (see e.g. TPI Holdings, Inc. v. Carmen Armengol,WIPO Case No. D2009-0361 and cases cited therein).
One of the addresses that was included in the registrant details (for “Cindy Crawford”) at a time prior to the when the Respondent appeared to acquire the Disputed Domain Name was 61 E 8th Street, New York. This is a store front (currently a Verizon cell phone store). .Accordingly, the Panel agrees with the Complainant’s submissions that she never owned the disputed domain name, even though it was directed to her “www.” website.
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 Patrol a/k/a Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330 and eBay Inc. v. Sunho Hong,WIPO Case No. D2000-1633).
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 paragraphs 4(a)(iii) and 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
Date: January 21, 2013
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