The Complainant is Zoe Saldana of Los Angeles, California, United States of America represented by Freedman & Taitelman, LLP, United States of America.
The Respondent is Keith Britton of Encino, California, United States of America. 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 October 12, 2013. On October 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided 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 October 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on November 13, 2013.
The Center appointed Dennis A. Foster as the sole panelist in this matter on November 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 a dancer, model and famous actress, who appeared in several well-known motion pictures and television programs.
The disputed domain name was registered first on November 18, 2002 and registered in the Respondent’s name on December 15, 2010. 5. Parties’ Contentions A. Complainant
- The Complainant is a dancer, model and globally recognized leading motion picture and television actress. Widely featured in celebrity and entertainment publications, the Complainant has starred in many significant motion pictures, including Pirates of the Caribbean: The Curse of the Black Pearl, Star Trek and Avatar.
- Due to the notoriety attendant to her professional and celebrity status, the Complainant has established common law trademark rights in her name, ZOE SALDANA. That name is used by the Complainant as an identifier in connection with her services as an actress and spokesperson.
- The disputed domain name is identical or confusingly similar to the ZOE SALDANA mark.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent initially registered the disputed domain name on behalf of the Complainant. The fact that the Complainant’s business manager’s address is the listed address on the registration is evidence that the disputed domain name was intended to remain always under the ownership and control of the Complainant. For unknown reasons, the Respondent later listed himself as the registrant.
- The Respondent has never been commonly known as the disputed domain name, and he has not sought to use the name for legitimate noncommercial or fair use purposes. On the contrary, the Respondent has failed to use the name at all, and it appears now that the Respondent is preparing to use the disputed domain name illegitimately for financial gain.
- The Respondent registered and is using the disputed domain name in bad faith. Despite registering the name under the auspices of doing so on the Complainant’s behalf, the Respondent was intent on retaining control of that name for his own benefit. The Respondent has refused the Complainant’s request to transfer the disputed domain name to her. Moreover, the Complainant was notified by a friend and former employee of the Respondent that he was attempting to sell the disputed domain name for his own profit. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issue: Date of Disputed Domain Name Registration by the Respondent
The Registrar has transmitted information to the Center that the disputed domain name was registered to the Respondent on December 15, 2010. Prior to that, according to the undisputed assertion of the Complaint, the registrant name was “17530 Ventura Blvd”. As the latter is an address and not a person or a company, the Panel will proceed to analyze this case under the belief that the Respondent actually first registered the disputed domain name on the date of the domain name’s creation, November 18, 2002. The Panel does so in view of the Complainant’s undisputed contention that she authorized the Respondent to register the disputed domain name for her sole benefit and ownership on or about said date of creation. 7. Discussion and Findings
Pursuant to Policy paragraphs 4(a)(i) – (iii), the Panel may order a transfer of the disputed domain name, , provided that the Complainant can demonstrate that:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has not presented the Panel with any evidence that she has registered her name, Zoe Saldana, as a trademark or service mark in any jurisdiction, but that is not necessarily determinative of whether she has sufficient rights in such a mark. A complainant may also establish rights in a mark for the purposes of Policy paragraph 4(a)(i) by providing evidence that the complainant possesses common law rights in that mark. See, S.N.C. Jesta Fontainebleau v. Po Ser,WIPO Case No. D2009-1394 (“The Complainant has no registered trade mark rights, so the question is as to whether or not it has unregistered common law trade mark rights or their equivalent for the purpose of the UDRP”); and Uitgerverij Crux v. W. Frederic Isler,WIPO Case No. D2000-0575 (“A fundamental principle of trademark law is that rights in a trademark can be acquired through use, and such rights exist even though the trademark may not be registered”).
The Complainant contends, and the Panel agrees through its own knowledge, that she is a famous actress and celebrity. Based on this notoriety and due to her name’s circulation in world famous motion pictures and celebrity/entertainment publications, the Complainant asserts that she has obtained a common law trademark in the name ZOE SALDANA. This is hardly a novel claim under the Policy, as there have been numerous cases involving celebrities and/or entertainers who have argued that their names have become common law marks through constant usage in connection with significant performances and/or the advertising of products and/or services. When other UDRP panels have found a level of commercial usage like the Complainant’s – i.e., by her having starred in globally well-known motion pictures such as Pirates of the Caribbean: The Curse of the Black Pearl, Star Trek and Avatar – those panels have not hesitated to accord the respective complainant common law trademark rights in their name(s). See, for example, Tracy Morgan v. Fundacion Private Whois / PPA Media Services, Ryan G Foo,WIPO Case No. D2013-0078; Jim Carrey v. BWI Domains,WIPO Case No. D2009-0563; Ami James v. Demand Domains, NAF Claim No. 1106240; Tia Carrere v. Steven Baxt,WIPO Case No. D2005-1072; Mick Jagger v. Denny Hammerton, NAF Claim No. 95261; and Julia Fiona Roberts v. Russell Boyd,WIPO Case No. D2000-0210. Abiding by that precedent, the Panel determines that the Complainant does possess common law rights in the ZOE SALDANA mark.
In the Panel’s view, the disputed domain name is virtually identical to the ZOE SALDANA mark. The omission of the space between the terms and the inclusion “.com” are not sufficiently material to avoid a finding of identity between name and mark. See Jim Carrey, supra (finding to be virtually identical and confusingly similar to JIM CARREY); and Mick Jagger, supra (finding the disputed domain name, , to be identical to the mark, MICK JAGGER).
Therefore, the Panel concludes that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Given that the Panel has determined that the disputed domain name is identical to the Complainant’s common law trademark, ZOE SALDANA, the Complainant sustains a prima facie case that the Respondent has no rights or legitimate interests in that name by explaining that the Respondent was authorized by the Complainant only to register the name on her behalf. Confronted by that prima facie case, the burden of production shifts to Respondent to come forward with compelling evidence that he does have such rights or legitimate interests. See, Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393 (“Once the Complainant has made a prima facie case, the burden shifts to the Respondent to refute the Complainant's averments and to show that it has rights or legitimate interests in the disputed domain name...”); and G.D. Searle & Co. v. Fred Pelham, NAF Claim No. 117911 (“Complainant has presented a prima facie case against Respondent and as a result shifts the burden to Respondent to establish that it does have rights and legitimate interests in the disputed domain name”).
As the Respondent has declined to file a Response, the Panel looks to the record for evidence to rebut the Complainant’s allegations. In doing so, the Panel compares any evidence, or lack thereof, in relation to paragraph 4(c) of the Policy, which prescribes three avenues by which the Respondent might establish his rights or legitimate interests in the disputed domain name.
The Panel finds that there is absolutely no resemblance between the Respondent’s name, Keith Britton, and the disputed domain name and no suggestion that he owns a company so named. Therefore, Policy paragraph 4(c)(ii) fails to apply to this case. Likewise, since there is no evidence in the record that the Respondent is using the disputed domain name for any permitted purpose, nor that he is making any preparations to do so, the Panel finds that neither Policy paragraph 4(c)(i) nor Policy paragraph 4(c)(iii) is applicable. In view of the foregoing, the Panel discerns from the record no effective rebuttal to the Complainant’s prima facie case.
Consequently, the Panel finds that the Complainant has established that the Respondent lacks rights and legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant asserts that she authorized the Respondent to register the disputed domain name on her behalf and that the intention was always that the disputed domain name remain under her name and control, i.e., the Respondent was never authorized to register the disputed domain name for his benefit or under his name. In fact, on the basis of the materials and undisputed assertions made in this case, the Respondent had not inserted any registrant name (rather, an address) as of the date of initial registration, while retaining (unauthorized) control as the administrative contact. As there is no contradiction to this assertion, the Panel accepts its validity and thus finds that the Respondent registered the disputed domain name in bad faith. See Profilink Ltd. v. Ianko Pavlov Dingozov,WIPO Case No. D2013-1241; and Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094 (“In this case, the Complaint suggests that Respondent was expected to register the Domain Name in the name of Complainant. In that circumstance, the Respondent’s refusal to follow his employer’s instruction and his registration of the Domain Name in his own name constitutes bad faith registration”).
Furthermore, the Complainant contends that the Respondent is currently attempting to sell the disputed domain name for a profit, i.e., for a price beyond the Respondent’s out-of-pocket costs directly related to the name. In support of that contention, the Complainant has submitted an email exchange with a third-party that warns her of such action, and the Respondent chose not to offer any evidence to counter this Complainant contention. Therefore, since the Complainant’s assertions are neither unreasonable nor rebutted, the Panel is inclined to conclude that they are true. See, Bayerische Motoren Werke AG v. Bavarian AG, NAF Claim No. 110830 (“in the absence of a Response, the Panel is free to make inferences from the very failure to respond and thus to assign greater weight to certain circumstances than it might otherwise do”); and Desotec N.V. v. Jacobi Carbons AB,WIPO Case No. D2000-1398 (finding that failing to respond allows a presumption that complainant’s allegations are true unless clearly contradicted by the evidence). As a result, the Panel determines that the Respondent is attempting to sell the disputed domain name for undue valuable consideration and thus in bad faith per Policy paragraph 4(b)(i).
Accordingly, the Panel finds that the Complainant has established bad faith registration and use. 8. 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.
Dennis A. Foster
Sole Panelist
Date: December 2, 2013
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