The Complainant is “Joan Collins” of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Michael Meehan, Atlantic Optical (UK) Ltd, United Kingdom.
The Respondent is Stephen Gregory of Csez-Clarkfield, Pampanga, Philippines. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2013. On February 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2013, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 15, 2013.
The Center verified that the Complaint together with the amendment to 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 February 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2013.
The Center appointed Andrew F. Christie as the sole panelist in this matter on March 14, 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. On March 20, 2013, the Panel issued Administrative Panel Procedural Order No. 1 requesting the Complainant to provide evidence establishing: (i) the authority of the Complainant’s representative to act on the Complainant’s behalf in this case; (ii) the entitlement of the Complainant to the trademark registrations referred to in the Complaint; (iii) the existence of the jewellery collection referred to in the Complaint; and (iv) any other relevant facts that would give rise to a trademark right owned by the Complainant in respect of the words “Joan Collins”. In addition, the Panel invited the Respondent to file a response to any submission by the Complainant. On March 22, 2013, the Complainant’s representative sought an extension of time to provide the evidence requested by the Panel. On March 25, 2013, the Panel issued Administrative Panel Procedural Order No. 2, providing the Complainant with an extension of four days. On March 29, 2013, the Complainant filed a submission in response to the Administrative Panel Procedural Order No. 1. No response to this submission was filed by the Respondent.
On April 15, 2013, the Panel issued Administrative Panel Procedural Order No. 3 requesting the Complainant: (i) to declare the true legal name of the Complainant; and (ii) if the true legal name of the Complainant is declared to be different from the name of the Complainant as stated in the Complaint, to amend the Complaint by inserting the true legal name of the Complainant. In addition, the Panel invited the Respondent to file a response to any declaration or amendment filed by the Complainant. On April 17, 2013, the Complainant filed a statement declaring the true legal name of the Complainant and amending the Complaint to state the true legal name of the Complainant. No response to this declaration and amendment was filed by the Respondent. 4. Factual Background
The Complaint was originally filed in the name of “Mrs. Joan Henrietta Collins Gibson OBE”.
In its response to the Administrative Panel Procedural Order No. 1, the Complainant’s representative filed a letter stated to be from “Mrs. Joan Collins O.B.E.” and signed “Joan Collins, OBE aka Joan Henrietta Gibson”, which asserted, among other things,: (i) that the name of the sender of the letter is Joan Collins, that she was born Joan Henrietta Collins, that her married name is Joan Henrietta Gibson, and that Joan Collins is the name she uses and has used as an actress since 1952; and (ii) that she has given Power of Attorney to the Complainant’s representative to act on her behalf in this case.
In its response to the Administrative Panel Procedural Order No. 3, the Complainant’s representative: (i) filed a letter stating that the true legal name of the Complainant is “Joan Collins”, and that the Complainant is also known as “Joan Henrietta Collins Gibson OBE”, “Joan Henrietta Gibson”, and “Joan Henrietta Collins”; and (ii) amended the Complaint so that the name of the Complainant was changed to “Joan Collins”.
The record provided by the Complainant’s representative made reference to various Community and United States of America (“USA”) trademark registrations for, or including, JOAN COLLINS, which were made at various dates and owned by various parties. According to this record, only three of these trademark registrations appear to be in force: (i) a Community trademark registration for JOAN COLLINS, registered on January 15, 2007 by Joan Henrietta Gibson; (ii) a Community trademark registration of a signature for the name “Joan Collins”, registered on April 30, 2007 by Joan Henrietta Gibson; and (iii) a USA trademark registration for JOAN COLLINS, registered on June 22, 2010 by Joan Henrietta Gibson.
According to the information provided by the Registrar, the disputed domain name was first registered (by whom and with what registrar is not stated) in March 1999, and was registered by the Respondent with the Registrar in April 2005. It currently resolves to a webpage containing the text “The Domain Name you just entered is For Sale! >Click Here To Email Your Offer 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights because it “is the Complainant’s legal name and has been used for many trademarks/services that she has endorsed with her name”, including women’s wear, eyewear, fragrance and jewellery.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) he has not been associated with or conducted business under the name “Joan Collins”, he has no connection to the Complainant and her business ventures, and he has never contacted the Complainant to discuss any business ventures; and (ii) the current use of the disputed domain name is to direct to a website informing the disputed domain name is for sale, and the disputed domain name has not been used to promote or associate itself with the Complainant.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent has acquired a vast number of domain names that he has priced and showcased on a website, indicating that he “has no intention to use the domain to aid the Complainant’s acquisition of the domain”; (ii) the Respondent’s use of the disputed domain name to promote his own domain-selling website is “derogatory to the Complainant’s name and status”; and (iii) for a period the disputed domain name was used as a redirect to a pornography site, causing a detrimental effect on the Complainant’s image. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
(i) Background
The letter filed by the Complainant’s representative in response to Administrative Panel Procedural Order No. 1 is notable for its lack of clarity. In particular, the letter is stated to be from “Mrs. Joan Collins O.B.E.”, is signed by “Joan Collins, OBE aka Joan Henrietta Gibson”, and asserts that the sender of the letter is “Joan Collins” with the married name “Joan Henrietta Gibson”. None of these names are the name of the Complainant as specified in the Complaint as originally filed, namely “Mrs. Joan Henrietta Gibson Collins OBE”.
The letter filed by the Complainant’s representative in response to Administrative Panel Procedural Order No. 3 is notable for its lack of detail. In particular, the letter states that the Complainant’s true legal name is “Joan Collins”, and that she is also known as “Joan Henrietta Collins Gibson OBE”, “Joan Henrietta Gibson” and “Joan Henrietta Collins”. However, it provides no evidence in support of any of these statements.
The Complaint (both as originally filed and as amended) provides no information about the Complainant, other than her name. The Complaint states that the Complainant’s name “has been used for many trademarks/services that she has endorsed”, but does not provide any information about, let alone evidence of, the Complainant’s professional services, business activities or public reputation. The only additional information about the Complainant that is in the case record is contained in the letter from the Complainant in response to Administrative Panel Procedural Order No. 1, in which it is stated that the Complainant has been “an actress since 1952”. It is notable that the case record provided by the Complainant contains no details of the Complainant’s career as an actress.
(ii) Registered trademark
Only three of the various trademark registrations for, or including, the words “Joan Collins” referred to in the Complaint appear to be in force: a Community and a USA registration for JOAN COLLINS, and a Community registration for a signature for the name “Joan Collins”. The disputed domain name incorporates the whole of the registered trademark JOAN COLLINS and adds the gTLD identifier “.com”. This Panel finds that the disputed domain name is identical to the registered trademark JOAN COLLINS, and is confusingly similar to the registered trademark that is a signature for the name “Joan Collins”.
The problem for the Complainant, however, is that the Complainant’s representative has not proven on the record in these proceedings that the Complainant has rights in any of these three trademark registrations. The Complaint annexed printouts of the registration details for these trademarks. According to those printouts, each of these trademarks is owned by Joan Henrietta Gibson. In response to Administrative Panel Procedural Order No. 3, the Complainant’s representative declared that the Complainant’s true legal name is Joan Collins, and amended the Complaint to reflect this fact. Assertions were made that Joan Henrietta Gibson is: (i) the Complainant’s “married name” (March 29, 2013 letter from the Complainant); and (ii) a name by which the Complainant “is also known” (April 17, 2013 letter from the Complainant’s representative). However, no evidence was provided by the Complainant’s representative in support of these assertions.
From personal knowledge this Panel is aware of a well-known actress who goes by the name “Joan Collins”. The Panel’s own limited independent online research (on Wikipedia, IMDb.com, ) indicates that the actress Joan Collins was born Joan Henrietta Collins and has been (and presumably still is) married to Percy Gibson. However, such information (assuming it to be credible) does not establish that the actress Joan Collins is Joan Henrietta Gibson and thus the owner of the registered trademarks.
In this Panel’s view, an unsubstantiated assertion of ownership of a trademark that is registered in a name different from the name of the Complainant as stated in the Complaint (being the Complaint as amended by the Complainant’s representative in response to this Panel’s procedural order requesting correct identification of the Complainant) is insufficient to establish that the Complainant has rights in that trademark. Without evidence that Joan Henrietta Gibson (the registered owner of the trademarks) is the one and the same person as Joan Collins (the Complainant), this Panel is unable to find that the Complainant has rights in the registered trademarks JOAN COLLINS or in the registered trademark of a signature for the name “Joan Collins” on the record before it in these proceedings.
(iii) Unregistered trademark
This Panel has considered whether the Complainant is able to establish that she has rights in an unregistered (i.e. common law) trademark. As is stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 1.6: “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. […] A trademark-equivalent basis has been found in the common law action of passing-off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP.”
The problem for the Complainant is that the Complaint as submitted by the Complainant’s representative contains insufficient evidence to support a finding that the Complainant’s name, “Joan Collins”, is an unregistered trademark. Paragraph 1.7 of the WIPO Overview 2.0 elaborates on the sort of evidence that is relevant to proving that an unregistered name has become a distinctive identifier associated with the complainant or its goods or services: the length and amount of sales under the name, the nature and extent of advertising using the name, the degree of consumer recognition of the name, and the volume of media references to the name. Evidence on these or similar matters is completely absent from the case record currently before this Panel.
The Complaint asserted the existence of a “collection of jewellery that was designed for and approved by Joan Collins” and purported to annex pictures of such products; however, no such pictures were annexed, and no other evidence of the jewellery’s existence was provided in the Complaint. By Administrative Panel Procedural Order No. 1, this Panel expressly requested the Complainant to provide evidence establishing the existence of this collection of jewellery. In response, the Complainant’s representative filed a copy of pages from a jewellery catalogue titled “Timeless Elegance from Joan Collins – Jewelry – An exclusive collection created for you”. The catalogue appears to have been distributed in 2007 by Timeless Elegance of Oshkosh, Wisconsin, USA.
While the copy of the 2007 jewellery catalogue does prove the existence of a jewellery collection purporting to be “from Joan Collins”, in this Panel’s opinion it is insufficient to support a finding that the name “Joan Collins” is an unregistered trademark in which the Complainant has rights. Many pages of the catalogue, including the front cover and the first inside page, contain a signature of the name “Joan Collins” that is the same as the Community trademark registration of a signature for the name “Joan Collins” owned by Joan Henrietta Gibson. It is clear from a perusal of the catalogue that the identifier that is functioning as the trademark for the jewellery is the signature of the name “Joan Collins”, not the name “Joan Collins” itself. (As noted above, the signature of the name “Joan Collins” is a registered trademark owned by Joan Henrietta Gibson, and the Complainant’s representative has failed on the present record to establish that the Complainant is one and the same person as Joan Henrietta Gibson.)
By Administrative Panel Procedural Order No. 1, this Panel expressly requested the Complainant to provide evidence establishing “the existence of any other facts that would give rise to a trademark right, owned by the Complainant, in respect of the words “Joan Collins””. The letter of March 29, 2013, submitted by the Complainant’s representative as from the Complainant, states “If you need any further details relating to the products and their identification with myself, I will do my best to satisfy”; however, no further details were provided. Furthermore, although mentioning that “Joan Collins” had been “an actress since 1952”, no information about her career was provided. In particular, no information was provided about where and how often Joan Collins has performed, and the extent to which the public recognizes ”Joan Collins” as a distinctive identifier of acting services.
For a personal name to constitute an unregistered trademark, it needs to be actually used in trade or commerce as an identifier of goods or services – and this needs to be proved by evidence. As the paragraph 1.6 of the WIPO Overview 2.0 makes clear: “Merely having a famous name … 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 Complaint makes a broad assertion that the name “Joan Collins” has been used in trade or commerce; however, the evidentiary record currently before this Panel does not substantiate that assertion sufficiently to support a finding that “Joan Collins” is an unregistered trademark in which the Complainant has rights for the purposes of this proceeding under the Policy.
(iv) Finding
For the reasons explained above, this Panel finds, on the record before it in these proceedings under the Policy, that the Complainant’s representative has not established that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Because of this Panel’s finding on the requirement of paragraph 4(a)(i) of the Policy, discussed above, it is not necessary for the Panel to consider if the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Because of this Panel’s finding on the requirement of paragraph 4(a)(i) of the Policy, discussed above, it is not necessary for the Panel to consider if the Complainant has satisfied the requirement of paragraph 4(a)(iii) of the Policy. D. Concluding Observations
This Panel has found unsatisfactory a number of aspects of the way this case has been prosecuted by the Complainant’s representative. The manner in which the Complainant’s representative has prepared the Complaint, and has responded to the Administrative Panel Procedural Orders No. 1 and No. 3, leave this Panel unable to determine with any confidence who, exactly, is the person whom the Complainant’s representative is representing. It also leaves this Panel with a lingering concern about whether the Complainant’s representative is acting with the full authorization of the Complainant (whoever that may be). This concern has arisen because the Complaint as prepared by the Complainant’s representative lacks obviously relevant detail, and the responses provided by the Complainant’s representative to this Panel’s various orders requesting specific information have been notably vague. Should it later transpire that the Complainant’s representative was representing the well-known actress Joan Collins but without her full authorization, or was representing some other “Joan Collins”, the present decision should not preclude the well-known actress Joan Collins from seeking appropriate redress under the Policy in connection with the Respondent’s registration and use of this particular disputed domain name. In case the above should transpire, this Panel wishes to record that the decision below is made expressly without prejudice to the possibility of a subsequent complaint being filed under the Policy by the well-known actress Joan Collins, and wishes to express the view that any such filing should not be precluded by the principles under the Policy regarding re-filed complaints. 7. Decision
For the foregoing reasons, the Complaint is denied.
Andrew F. Christie
Sole Panelist
Date: May 2, 2013
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