The Complainants are Harpo, Inc. of Chicago, Illinois, United States of America (“US”) and Oprah’s Farm, LLC of Los Angeles, California, US, represented by Loeb & Loeb, LLP, US.
The Respondent is Robert McDaniel of Kula, Hawaii, US. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2013. On April 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 19, 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.
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 April 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2013. The Response was filed with the Center on May 11, 2013.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 23, 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 Harpo, Inc. (“Harpo”) is an Illinois business corporation formed in 1986, and the Complainant Oprah’s Farm, LLC (“Oprah’s Farm”) is a Hawaii limited liability company formed on March 16, 2012. The American media personality and entrepreneur Oprah Winfrey owns both companies.
Because both companies appear to have an interest in relevant registered and unregistered marks, as discussed below, the Panel will consider both companies as the Complainants in this proceeding. However, as the Complaints request the remedy of transferring the Domain Names, without specifying which of the Complainants should receive them, this issue is presumably left to the Panel’s discretion.
The Complainant Harpo holds numerous registered trademarks consisting of, or including, the name “Oprah”, including the following standard-character marks:
Mark US Trademark Registration No. Registration Date
OPRAH
1726373
Oct. 20, 1992
OPRAH
2521889
Dec. 25, 2001
THE OPRAH WINFREY SHOW
2638506
Oct. 22, 2002
OPRAH’S BOOK CLUB
3246379
May 29, 2007
OPRAH WINFREY’S LEGENDS BALL
3363573
Jan. 1, 2008
OPRAH RADIO
3727871
Dec. 22, 2009
OPRAH’S SOUL SERIES
3741987
Jan. 26, 2010
OPRAH’S SEARCH FOR THE NEXT TV STAR
3999404
Jul. 19, 2011
OPRAH’S LIFECLASS
4219210
Oct. 2, 2012
The Complainant Harpo more recently applied to USPTO, from August through October 2012, to register several additional marks including OPRAH’S FARM and OPRAH’S HARVEST, which are apparently intended to be used by the Complainant Oprah’s Farm. Those applications are pending. The record indicates that the Complainant Oprah’s Farm operates a farm in Hawaii and plans to sell OPRAH-branded organic produce, beverages, and lotions using crops grown on the farm. These plans were discussed in national and Hawaiian media reports in January and April 2012, before the registration of the Domain Names.
The Respondent is an individual residing on the Hawaiian island of Maui some five miles from the farm property operated by the Complainant Oprah’s Farm. The Respondent characterizes himself as a noncommercial farmer and a trained journalist. The Respondent registered both Domain Names on April 9, 2012, shortly after the Complainant Oprah Farm’s plans were revealed in media reports.
The Respondent has parked the Domain Names with the domain broker SEDO, which displays pay-per-click (“PPC”) sponsored advertising links for a wide variety of goods and services on the landing pages associated with the Domain Names. The landing page has also, at times, displayed an advertisement to sell the Domain Names.
Representatives of the Complainants sent a cease-and-desist letter to the Respondent in January 2013, to which the Respondent replied, as discussed further below. The communications did not produce an agreement between the parties, and the current proceeding followed. 5. Parties’ Contentions A. Complainant
The Complainants both claim interests in various OPRAH marks. They assert that the Domain Names are confusingly similar to many OPRAH trademarks and essentially identical to the OPRAH’S FARM mark that the Complainant Harpo applied to register, on an intent-to-use basis, in August 2012. The Complainants contend that the Respondent has no rights or legitimate interests in Domain Names that are based on the Complainants’ well-known and long established OPRAH marks.
The Complainants argue that the Respondent was aware of the existing OPRAH marks, as well as the Complainants’ plans to use the OPRAH FARMS mark, and targeted those marks when registering the Domain Names and parking them with a company that would use them indefinitely to display PPC advertising and offer the Domain Names for sale. The Complainants contend that the Respondent registered and parked the Domain Names in an effort to misdirect Internet users for commercial gain, to ultimately sell the Domain Names to the Complainants or a competitor for more than the sum of the Respondent’s out-of-pocket costs, to disrupt the Complainants’ business, to deny the Complainants the use of domain names corresponding to the name of one of their businesses, and to exploit the anticipated OPRAH’S FARM mark before it could be registered. The Complainants cite all of these points as instances of bad faith. B. Respondent
The Respondent does not contest the Complainants’ assertions concerning their trademarks or the similarity of the Domain Names to those marks. The Respondent claims, however, a legitimate right or interest in using the Domain Names and denies any bad faith in registering and using the Domain Names.
According to the Response, the Respondent has not had time to build a website but plans to use the Domain Names for a noncommercial blog with information and commentary. The Respondent contends that such a blog would represent a fair use of the marks and would be protected as journalistic free speech, since Ms. Winfrey is a public figure and her activities on the island of Maui are of public interest. The Respondent also suggests that the Domain Names could reasonably refer to the geographic area of Maui centered on Oprah’s Farm. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Identical or Confusingly Similar
The Complainant Harpo undeniably holds numerous registered OPRAH marks.
The Complaint is based as well on unregistered OPRAH marks for which the Complaint asserts common law protection, including the OPRAH’S FARM mark that the Complainant Harpo applied to register in 2012. While the Panel acknowledges the celebrity of Ms. Winfrey herself, the record does not include sufficient evidence of an acquired secondary meaning in the unregistered OPRAH’S FARM mark, or other unregistered marks including Ms. Winfrey’s name, to establish that these are protected under common law. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), sec. 1.7. The Respondent’s advance knowledge of the Complainants’ intent to use the OPRAH’S FARM mark is relevant to the discussion of bad faith, below, but it is not necessary to ground the Complaint on this unregistered mark, as the Complainant Harpo’s registered marks clearly suffice.
The Domain Names both feature the “Oprah” name, in its possessive form, combined with the English word “farm”. The use of the possessive form of the name (without an apostrophe, since this character cannot be used in DNS URLs), along with a dictionary word, does not avoid the likelihood of confusion with the OPRAH mark. Indeed, as illustrated above, several of the Complainant’s registered marks consist of the possessive form of the name, “Oprah’s”, combined with various descriptive words.
The Panel concludes, therefore, that the Domain Names are confusingly similar to the Complainant Harpo’s registered OPRAH marks for purposes of this element of the Complaint. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Names, by demonstrating any of the following:
“(i) before any notice to it 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a 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.”
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Names, once the Complainant has made a prima facie showing. See WIPO Overview 2.0, paragraph 2.1. The Complainant has done so in this proceeding, by pointing out that the Domain Names include the distinctive OPRAH mark that is well established in US commerce.
It is undisputed that the Respondent has allowed the Domain Names, for more than a year, to resolve to a PPC advertising landing page. This could be considered a use in connection with the bona fide offering of goods and services under certain conditions, such as presenting advertising relevant to the generic rather than trademark value of the Domain Names. See, e.g., Philip Morris USA Inc. v. Prophet Partners Inc.,WIPO Case No. D2007-1614 (and cases cited therein). However, the Respondent does not claim any deliberate effort to establish such a topical advertising portal. The Respondent explains instead that the landing page was established by the domain broker SEDO and produced negligible revenues. Thus, the commercial use of the Domain Names for PPC advertising does not reflect any rights or legitimate interests of the Respondent in the Domain Names.
The Respondent has asserted an intention to use the Domain Names for a noncommercial blog website. The Respondent has admittedly never developed such a website, however, and offers no supporting evidence of “demonstrable preparations” for such use.
The Panel concludes on the existing record that the second element of the Complaint has been established. C. Registered and Used in Bad Faith
The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following, which are implicated by the Complainants’ assertions:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name: or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct: or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor: or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complaint advances several theories of bad faith, some “on information and belief”. This phrase, which commonly appears as a form of notice pleading in complaints filed in civil litigation in the United States, is meaningless in the context of a UDRP proceeding. The Policy, Rules, and Supplemental Rules do not provide for discovery, motions practice, or an opportunity to examine witnesses. Parties to a UDRP proceeding must present any material evidence with the Complaint or Response and make arguments based on reasonable inferences from that evidence; there is no subsequent occasion to prove or disprove factual assertions made “on information and belief”. From the record in this proceeding, the Panel does not find sufficient evidence that the Respondent sought to disrupt the Complainants’ business, engaged in a pattern of conduct to prevent trademark holders from obtaining corresponding domain names, or attempted to sell the Domain Names for an excessive price to the Complainants or a competitor.
However, allowing the Domain Names to be employed for commercial PPC advertising for a substantial period reflects bad faith, especially since the Domain Names include the well-established OPRAH mark, of which the Respondent was admittedly aware. See WIPO Overview 2.0, sec. 3.8.
Moreover, the Respondent acknowledges that he learned of the Complainants’ plans to market products from “Oprah’s Farm” before registering the Domain Names. His letter of January 21, 2013, to the Complainants’ representative shows that the Respondent grasped the potential commercial value of the Domain Names and contemplated, when he registered the Domain Names, capitalizing in some fashion on their trademark value:
“My reasoning with “www.” was that a global, web-portal business for Maui organic farm products could be enormous and I could capitalize on the branding of products from Maui by using the domain to market and sell the products. I believe the domain to be a valuable piece of virtual real estate, and I still believe quite strongly in this larger business opportunity. I also bought several other domains around this general theme ( / ) to cover the opportunity more thoroughly across the web. I thought it quite fortuitous to find the domain(s) available last year. I do not think it is a stretch to conclude at that time and over the ensuing months that since the domains were available and not attached at the time the LLC was formed, that Ms. Winfrey would not be pursuing the web aspects to this band [sic].”
Legally, of course, it was not for the Respondent to decide when and how the Complainants’ OPRAH mark would be used commercially online. An underlying principle of trademark law, and of the Policy, is that the trademark owner has the right to control the commercial use of its brand. The Respondent, who is not represented by counsel in this proceeding, seems not to understand that he cannot, in good faith, simply appropriate the intellectual property of another for commercial gain. That constitutes “bad faith” for UDRP purposes. The more recent claims articulated in the Response, concerning the Respondent’s asserted intent to make noncommercial fair use of the Domain Names, do not square with the highly commercial emphasis of the Respondent’s January 2013 letter. They also are not supported by evidence of demonstrable preparations to use the Domain Names for protected journalistic purposes. The Panel finds bad faith within the meaning of the Policy because the record shows that the Respondent, more probably than not, targeted the OPRAH marks for commercial gain.
The Panel also finds bad faith in the Respondent’s acknowledged intention to capitalize in the future on the anticipated OPRAH’S FARM brand. Several UDRP panels have made findings of bad faith in similar circumstances, where a respondent targeted a prospective trademark of which the respondent had prior knowledge. See WIPO Overview 2.0, sec. 3.1: General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online,WIPO Case No. D2003-0845.
The Panel concludes that the third element of the Complaint, bad faith, has been established. 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 Names and be transferred to the Complainant Harpo, Inc., the company which has applied to register the mark OPRAH’S FARM.
W. Scott Blackmer
Sole Panelist
Date: June 17, 2013
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