The Complainant is Tracy Morgan of Beverly Hills, California, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Fundacion Private Whois / PPA Media Services, Ryan G Foo of Panama, Panama and Santiago, Chile, respectively. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on January 12, 2013. On January 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 23, 2013, 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 January 23, 2013, 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 January 24, 2013.
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 January 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2013.
The Center appointed David Taylor as the sole panelist in this matter on February 28, 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 factual background is taken from the submissions contained in the amended Complaint and the exhibits annexed thereto given that no Response was filed.
The Complainant is Tracy Morgan, an individual with a contact address in California. The Complainant is a comedian and actor. The Complainant appeared in 140 episodes of Saturday Night Live, an American live television sketch comedy and variety show. In addition to his fifteen years on Saturday Night Live, Mr. Morgan has numerous television and film credits. Mr. Morgan has received accolades for his work, including Emmy Award nominations.
The Complainant's use of his personal name Tracy Morgan in connection with his entertainment services is considered by the Complainant as establishing common law trade mark rights in his name.
The Domain Name was registered on September 8, 2004, via a domain name privacy service, Fundacion Private Whois.
The Domain Name resolves to a parking page containing a variety of links categorized under headings relating to the Complainant, his profession or other comedians and actors. 5. Parties’ Contentions A. Complainant
(i) The Complainant contends that the Domain Name is confusingly similar to the Complainant's name Tracy Morgan.
The Complainant identifies himself as a well-known comedian, actor and public figure who rose to stardom in 1996 when he joined the cast of Saturday Night Live. In addition to his years on Saturday Night Live, Mr. Morgan claims that he has numerous television and film credits and has also done voice work on movies. According to the Complainant, the Complainant is a television and movie star who has obtained a significant degree of recognition for his professional services rendered under his personal name. The Complainant alleges that the name TRACY MORGAN identifies and distinguishes the Complainant's entertainment services and thus that the Complainant has common law trade mark rights in his name sufficient to maintain a UDRP proceeding.
The Complainant contends that the Domain Name incorporates, in its entirety, and consists exclusively of his name Tracy Morgan. The Complainant alleges that, given his fame, consumers, on seeing the Domain Name, will reasonably believe that it is related to the Complainant.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant considers that the Complainant's Tracy Morgan name is so well-known and recognized that the Respondent can have no rights or legitimate interests in the Domain Name.
The Complainant contends that the Respondent has adopted a domain name that incorporates the Complainant's entire name in order to generate click-through revenue, thereby unfairly profiting from the substantial goodwill of the Complainant.
Furthermore, the Complainant asserts that the Respondent's registration of the Domain Name had no purpose other than to use Mr. Morgan's fame to attract people to view advertising for the Respondent's commercial benefit.
In the Complainant's view, registration of the Domain Name occurred after the Complainant had become a famous entertainer having appeared for six years on Saturday Night Live, and having featured in numerous television shows, movies and television commercials shown worldwide and thus the Respondent clearly was aware of the Complainant.
The Complainant further asserts that there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name.
(iii) The Domain Name was registered and is being used in bad faith.
According to the Complainant, the Respondent's bad faith acquisition of the Domain Name is established by the fact that the Domain Name consists solely of the Complainant's professional name, Tracy Morgan, and was acquired long after that name became famous as the Complainant's common law trade mark.
In addition, the Complainant claims that the ultimate effect of any use of the Domain Name will be to cause confusion with the Complainant.
The Complainant further states that the sponsored links make it evident that the Respondent had sought to profit from the Domain Name by diverting Internet traffic to pay-per-click web engines that pay compensation to the Respondent and that such conduct constitutes bad faith.
Finally, the Complainant claims that the Respondent is a serial cybersquatter who has frequently been ordered to transfer domain names that were being used for the same purposes, namely to monetize the domain names in question, and that the Respondent's registration of the Domain Name follows the Respondent's pattern of bad faith conduct.
For all the foregoing reasons, the Complainant requests that the Domain Name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15 of the Rules states that the Panel shall decide a Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with Paragraph 10 of the Rules, the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.
In the case of default by a party, Rule 14 states that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom at it considers appropriate.
In this case the Respondent has not submitted any Response and consequently has not contested any of the contentions made by the Complainant. The Panel is therefore obliged to make its decision on the basis of the factual statements contained in the Complaint and the documents made available by the Complainant to support its contentions.
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.
Taking each of these issues in turn, the Panel decides as follows: A. Identical or Confusingly Similar
The first element that needs to be established is whether the Complainant has trademark rights in the name Tracy Morgan.
The difficulty that exists in dealing with personal names is underlined by section 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") which reads as follows:
"Consensus view: Personal names that have been registered as trademarks are generally protected under the UDRP. While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person's name as a distinctive identifier of goods or services offered under that name would normally be required…
However: The name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier for the business engaged in, or a religious leader), or making broad unsupported assertions regarding use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights."
The key is therefore whether the complainant uses his or her name in trade or commerce as an identifier of goods or services.
For example, in the case Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415, two domain names were in dispute, namely and . There the panel concluded that:
“there is little question but that Kidman has established common law trademark rights in her name. By virtue of her successful films, she has achieved renown, and the use of her name in connection with entertainment services provides a strong indication of source.”
The Panel in that case also concluded that the disputed domain names were identical or confusingly similar and the disputed domain names were duly transferred.
The Complainant submits evidence that it has rights in the name ”Tracy Morgan”. The Complainant states that, as a result of his long use of his personal name in his professional capacity, Mr. Morgan has established common law rights in his name and that these rights existed prior to the registration of the Domain Name. Based on the evidence produced by the Complainant, the Panel is satisfied that the Complainant has Common law or unregistered trademark rights in the name “Tracy Morgan” for purposes of the Policy.
The second element which the Complainant needs to substantiate is whether the respective Domain Name is identical or confusingly similar to the mark TRACY MORGAN in which the Complainant has rights.
The Domain Name reproduces the exact Complainant's name with the mere addition of the gTLD ".com". It is widely accepted that the gTLD ".com" may be disregarded in assessing the issue of confusing similarity. The Panel finds that the dominant element of the respective Domain Name is the mark TRACY MORGAN, which is identical to the Complainant’s name.
The Panel therefore finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out various ways in which a respondent may demonstrate its rights or legitimate interests in a domain name, as follows:
"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 [the respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [the respondent] of the dispute, [the respondent's] 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) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trade mark or service trade mark rights; or
(iii) [the respondent] is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service trade mark at issue."
The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie case of the Respondent’s lack of rights or legitimate interests in the Domain Name. As a result of its default, the Respondent has failed to rebut that case.
For instance, there is no evidence suggesting that the Respondent is affiliated with the Complainant, is commonly known by the Domain Name, or has obtained any licence or authorization to use the Complainant's TRACY MORGAN mark.
In addition, the Panel finds that the Domain Name points to a parking page, through which Internet users are very likely to be directed to websites providing goods, services or information relating to Mr. Morgan directly or relating to his profession or other comedians and actors. Such use of the Domain Name cannot constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the Domain Name since it essentially relies on user confusion, most probably to generate financial gain.
Finally, the Panel considers the Respondent's failure to respond to the Complaint as an additional suggestion of the lack of rights and legitimate interests of the Respondent in the Domain Name.
The Panel therefore finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
"(i) circumstances indicating that [the respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website 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] website or location or of a product or service on [the respondent’s] website or location."
The content of the website to which the Domain Name points features links to websites providing goods, services or information relating to the Complainant or other actors and comedians. The Panel therefore believes that the Domain Name was registered and is being used to attract consumers and make a commercial gain by providing links to third parties’ websites through a pay-per-click scheme thereby taking advantage of the Complainant's goodwill and the likelihood of confusion with the Complainant’s name.
The Panel is of the opinion that the Respondent would, in all likelihood, have been fully aware that the registration and use of the Domain Name would impinge upon the Complainant’s rights in the TRACY MORGAN name and mark. In view of this and given the other circumstances highlighted above, the Respondent’s conduct falls within paragraph 4(b) of the Policy.
The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith pursuant to 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.
David Taylor
Sole Panelist
Date: March 15, 2013
Full & Egal Universal Law Academy