The Complainant is Lauren Ostrowski Fenton, Australia, represented by LGM Advisors, Australia.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / Michael Fuks, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2019. On September 6, 2019, 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 disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 9, 2019, 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 September 13, 2019. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2019. The Center appointed William R. Towns as the sole panelist in this matter on October 10, 2019. 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 over the past decade has developed an online following providing wellbeing services, instruction in mediation, and sleep techniques, for which she uses her personal name “Lauren Ostrowski Fenton.” The Complainant hosts a YouTube channel, “Lauren Ostrowski Fenton” at “www.youtube.com/user/laurenlouisfendton”, and the podcast series “A MINDFUL LIFE with Lauren Ostrowski Fenton”, which is accessible on the website “itunes.apple.com”. The Complainant also has published a book, entitled “Daily Rituals for Happiness: How to be Happy Every Single Day,” under her personal name “Lauren Ostrowski Fenton.” The Complainant asserts unregistered or common law trademark rights in her personal name. The Respondent registered the disputed domain name The Complainant asserts unregistered or common law trademark rights in her personal name, “Lauren Ostrowski Fenton”. The Complainant submits she is an internationally acclaimed content creator in the area of wellness and personal development, and that her name has become uniquely associated with the Complainant’s goods and services provided, namely resources assisting in meditation and relaxation to aid in wellbeing and assist with stress, anxiety, and sleep. The Complainant further relates that she is an international writer, verified “YouTuber”, content creator, blogger, life coach, and meditation teacher. The Complainant submits she has built her brand name through online activity from which she generates substantial income. The Complainant has produced financial records in support thereof. According to the Complainant, she first began using her name as her brand in 2010, and subsequently registered the disputed domain name - A YouTube channel “Lauren Ostrowski Fenton”, at “www.youtube.com/user/laurenlouisefendton”. The Complainant reports a following approximating 104,462 subscribers as of June 2019. The Complainant notes that her most popular upload, “FALL ASLEEP so FAST”, is a guided sleep meditation to assist with falling asleep, deep sleep, and sleep hypnosis. The Complainant provides views for the “Lauren Ostrowski Fenton” channel as of June 5, 2019, reflecting 96,606,506 views. The Complainant adds that she has received an award from YouTube for passing 100,000 subscribers, and that YouTube has verified that “a channel belongs to an established creator, or is the official channel of a brand, business or organization;” - An Instagram account with the Instagram handle “laurenostrowskifenton” with approximately 2,944 followers; - Publication of the 2016 book entitled “Daily Rituals for Happiness: How to be Happy Every Single Day” under the name “Lauren Ostrowski Fenton,” available online through Amazon; - The podcast series “A MINDFUL LIFE with Lauren Ostrowski Fenton”, accessible on the website “itunes.apple.com”, with more than 200 podcast episodes since 2016; - Unsolicited publicity: The Complainant has been featured or mentioned in at least 10 online media articles, and a radio interview; - Sale of “Lauren Ostrowski Fenton” merchandise on the website “Teespring.com”; - Facebook page offering wellbeing coaching services under the name “Lauren Ostrowski Fenton Well Being Coach;” - “Lauren Ostrowski Fenton” profile on Apple Music/iTunes; - Pinterest, Spotify, Vimeo, and Patreon accounts under the name “Lauren Ostrowski Fenton;” - A blog under the name “Lauren Ostrowski Fenton;” - Contact email address laurenostrowskifendton@[....].com; The Complainant contends that she has associated her personal name with her business and the provision of wellbeing services and mediation techniques online for over 9 years, and has developed a significant following on social media platforms respecting the Complainant’s wellbeing and meditation goods and services. The Complainant also notes that she is particularly well known for her work in the ASMR (Autonomous Sensory Meridian Response) field of mediation and relaxation. In light of the foregoing, the Complainant submits she has established unregistered or common law trademark rights in the name “Lauren Ostrowski Fenton.” The Complainant asserts that the disputed domain name is identical or confusingly similar to her personal name “Lauren Ostrowski Fenton”, in which the Complainant has established unregistered or common law trademark rights. The Complainant remarks that the Top-Level Domain (“.com”) is irrelevant in assessing the similarity of the disputed domain name to the Complainant’s mark. The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been commonly known by the disputed domain name, and that the Complainant’s rights in her mark significantly predate the Respondent’s registration of the disputed domain name. The Complainant denies giving anyone permission, authorization or license to use the Complainant’s mark. According to the Complainant, this indicates that the Respondent is not using the disputed domain name in a legitimate or bona fide manner, as evidenced by the pornographic imagery and content displayed by the Respondent’s use of the disputed domain name. The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant alleges that the Respondent has taken unfair advantage using the disputed domain to lure Internet users to adult dating sites containing pornography. According to the Complainant, the Respondent clearly was aware of the Complainant’s rights when registering the disputed domain name, which coincides with the Complainant’s rise to fame on YouTube, as evidenced by the Complainant’s large subscriber count. The Complainant further asserts that the Respondent’s use of a privacy or proxy service constitutes bad faith in the circumstances of this case, and that the Respondent’s failure to respond to the Complainant’s cease and desist letter also is indicative of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of the abusive registration of domain names, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id., at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the 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 with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. 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, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel initially addresses the question of whether the Complainant has established common law trademark or service mark rights in her personal name, Lauren Ostrowski Fenton. As noted by the panel in Israel Harold Asper v. Communication X Inc.,WIPO Case No. D2001-0540, in cases involving entertainers, authors, professional athletes, and to a lesser extent business persons, complainants have been found to have common law marks in their names in circumstances where the name has been used as a marketable commodity, for a fee to promote another’s goods or services, or for direct commercial purposes in the marketing of the complainant’s own goods or services. See, e.g., Freddy Adu v. Frank Fushille,WIPO Case No. D2004-0682; David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla,WIPO Case No. D2000-1459; Julia Fiona Roberts v. Russell Boyd,WIPO Case No. D2000-0210. A personal name used in trade or commerce may give rise to common law or unregistered rights in a personal name, provided that the name is used in commerce as a distinctive identifier of the complainant’s goods or services. See WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.5.2, and cases sited therein. Merely having a “famous” name, however, is not sufficient to establish common law trademark or service mark rights in the name. See Margaret C. Whitman v. Domains For Sale,WIPO Case No. D2008-1534. Accordingly, to be protected as a common law mark a famous personal name ordinarily must be shown to have acquired secondary meaning. See, e.g., E C Eden Group LLC v. Registration Private, Domains by Proxy, LLC / Alon Shemesh, XoRi Tech, WIPO Case No. D2018-2934. On the basis of the evidence presented by the Complainant in this case, the Panel concludes that the Complainant’s personal name “Lauren Ostrowski Fenton” has come to be recognized by the public as a distinctive identifier of the Complainant’s goods and services. Accordingly, the Panel finds that the Complainant has established common law trademark rights in LAUREN OSTROWSKI FENTON, and consequently has standing to assert such rights in this proceeding. The Panel finds that the disputed domain name In this case, the Complainant’s LAUREN OSTROWSKI FENTON mark is clearly recognizable in the disputed domain name.2 When the relevant trademark is recognizable in the disputed domain name the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 Top-Level Domains (“gTLDs”) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.4 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s LAUREN OSTROWSKI FENTON mark. The Respondent notwithstanding has registered the disputed domain name, which is identical to the Complainant’s mark, and has linked the disputed domain name with a sexually oriented “Adult Dating Site” including click-through links. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name 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 disputed domain name in connection with a bona fide offering of goods or services; or (ii) 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. The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy. The Panel concludes from the record that the Respondent was aware of the Complainant and the Complainant’s rights in the LAUREN OSTROWSKI FENTON mark when registering the disputed domain name. The Panel finds that the Respondent registered the disputed domain name intending to exploit or profit from the Complainant’s rights in the LAUREN OSTROWSKI FENTON mark. Internet users encountering the disputed domain name easily could expect that the disputed domain name would resolve to the Complainant’s website, or to another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774. In light of the foregoing, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s name and mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes from the attendant circumstances as reflected in the record that the Respondent registered and has used the disputed domain name in bad faith seeking to profit from and exploit the Complainant’s rights in her LAUREN OSTROWSKI FENTON mark. 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 William R. Towns 1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
Sole Panelist
Date: October 24, 2019
Full & Egal Universal Law Academy