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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Patricia Ann Romance Peterson, Romance Productions Ltd. v. Network Operations Center/Alberta Hot Rods

Case No. D2006-1431

 

1. The Parties

The Complainants are Patricia Ann Romance Peterson and Romance Productions Ltd., Niagara-on-the-Lake, Ontario, Canada, represented by Bereskin & Parr, Canada.

The Respondent is Network Operations Center/Alberta Hot Rods, Alberta, Canada.

 

2. The Domain Name and Registrar

The disputed domain name <trisharomance.com> is registered with CORE Internet Council of Registrars.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2006. On November 13, 2006, the Center transmitted by email to CORE Internet Council of Registrars a request for registrar verification in connection with the domain name at issue. On November 14, 2006, CORE Internet Council of Registrars transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 November 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2006.

The Center appointed David J.A. Cairns as the sole panelist in this matter on December 20, 2006. 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 Complainants in these proceedings are Patricia Ann Romance Peterson and Romance Productions Ltd. Patricia Romance is a recognized Canadian contemporary artist often referred to as Trisha Romance. Her works consist mainly of original paintings, limited edition plates and prints, posters, figurines, porcelain dolls and Christmas ornaments. Romance Production Ltd. is a company in which Patricia Ann Romance has a major beneficial interest, the principal office of which is located at Niagara-on-the-Lake, Ontario, Canada.

The Complainant Romance Productions Ltd. registered the domain name <trisharomance.ca> with the consent of Ms. Romance. This domain name is currently being used by the Complainants to operate a website for the sale of Ms. Romance’s art and merchandise.

The Respondent is Network Operations Center/Alberta Hot Rods, with an address in Alberta, Canada.

On September 27, 1996, the Respondent registered the domain name <trisharomance.com> initially under the name of “Trisha Romance Club”. The Complainants contacted the Respondent’s administrative contact, Jeff Burgar, on September 11, 2000 and August 10, 2001, offering $250.00 in exchange for the domain name. The Respondent answered on August 30, 2001 but did not accept the offer. A few weeks afterwards, the Complainants discovered that the registration of the domain name appeared in the name of Network Operations Center/Alberta Hot Rods.

The Respondent is currently using the disputed domain name as a hyperlink to another website hosted under the domain name <celebrity1000.com>. This website does not include any references to Trisha Romance.

Neither Patricia Ann Romance Peterson nor Romance Productions Ltd. have any registered trademarks related to the Trisha Romance name.

 

5. Parties’ Contentions

A. Complainants

The Complainants rely on the common law trademark rights in the words ‘Trisha Romance’ as joint owners of the artist’s famous personal name, and to the precedents established by a series of cases involving domain names consisting of famous celebrities including, inter alia, Pierce Brosnan v. Network Operations Center, WIPO Case No. D2003-0519 (August 27, 2003) and Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (May 29, 2000).

The Complainants state that Trisha Ann Romance Peterson, trading as Trisha Romance, is a well-known contemporary artist, whose works are sought by collectors around the world. Ms. Romance’s success as an artist dates back to the late 1970s and grew throughout the 1980s and 1990s, well prior to the Respondent’s registration of the disputed domain name on September 27, 1996. Ms. Romance is also the author of two books offered for sale on leading online book retailers such as AMAZON.com and has made live and recorded appearances before large audiences at various times throughout her career including TV interviews. The extent of her fame and recognition is demonstrated by the news coverage she has received as a celebrity in various newspapers and magazines (which the Complainants submit in evidence). Her artistic career has also received public recognition in the award of the Order of Ontario.

As a result, the Complainants states that Trisha Romance’s name and artistic works have gained international fame and recognition. Further, the operation of the official Trisha Romance website at “www.trisharomance.ca”, registered by the Complainant Romance Productions Ltd. displays the ‘Trisha Romance’ name and trademark, and sells ‘Trisha Romance’ merchandise. The Trisha Romance official website has become well known and is associated by the public with the Complainants.

The Complainants state that Romance Productions Ltd. is the applicant for the registration of a Canadian trademark TRISHA ROMANCE in association with Ms. Romance’s artwork, namely paintings and sketches, prints of paintings, posters, books, artistic plates, figurines, porcelain dolls, ornaments and gift cards.

The Complainants contend that the disputed domain name is identical to Complainants’ trademark. The Complainants also contend that the disputed domain name registered by the Respondent is identical in appearance, sound and meaning to the Complainants’ TRISHA ROMANCE famous name, trade name and trademark.

The Complainants state that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainants own and control the rights in the ‘Trisha Romance’ famous name and trademark. It has been used by Ms. Romance since 1976 and by Romance Productions Ltd. since 1982, in Canada and internationally. The Complainants allege that such use is well prior to the Respondent’s registration of the disputed domain name on September 27, 1996, and that by that time the TRISHA ROMANCE trademark and products has become famous in Canada and globally.

The Complainants contend that the Respondent appears to be an alias of Jeff Burgar, an individual having a pattern of registering domain names containing famous marks. The disputed domain name is yet another incident fitting within his pattern of registering domain names in which he has no legitimate interests. Further, the Respondent did not attempt to assert any legitimate interest in its August 30, 2001 correspondence with the Complainants’ solicitors, but rather ‘asked an open-ended question in what appeared to be an attempt to find out what ownership of the Domain Name was monetarily worth to the Complainants’.

The Complainants state the many Internet users seeking information about Ms. Romance are likely to use a domain name comprising the name ‘Trisha Romance’ and that the facts of the case suggest that the Respondent’s interest is merely to reap the benefits of the goodwill attached to the Complainants’ TRISHA ROMANCE trademark in order to attract and divert Internet users to the Respondent’s website at “www.celebrity1000.com”. This website does not provide any information or include any reference to Trisha Romance.

In light of the above, the Complainants conclude that the Respondent has failed to demonstrate that it has made use of, or preparations to use, the domain name in connection with a bona fide offering of goods and services, that it has been commonly known by the domain name, or that it is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain.

The Complainants assert that the disputed domain name was registered and is being used in bad faith. Ms. Romance’s name, her accomplishments and the TRISHA ROMANCE trademark would have been known to the Respondent prior to his registration of the disputed domain name. It states that Mr. Burgar’s correspondence of August 30, 2001 and specifically his opening question ‘What would you like to do about this domain name?’ suggested an invitation to negotiate for the transfer of the domain name. Moreover, Mr. Burgar did not express any legitimate use or plan of legitimate use of the disputed domain name. According to the Complainants, these facts constitute evidence of bad faith under the Policy.

The Complainants claim that Mr. Burgar has demonstrated a pattern of behaviour of registering the famous names and trademarks of celebrities and widely known organizations as domain names, and that this behaviour is very clear evidence of bad faith. The Complainants submit that the Respondent deliberately registered the disputed domain name for the purpose of attracting and diverting Internet users to his “celebrity1000.com” website for commercial gain and advertising revenue, by creating confusion with the TRISHA ROMANCE trademark, and as to Ms. Romance’s sponsorship, affiliation or endorsement of the “www.trisharomance.com” and “www.celebrity1000.com” websites.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

 

6. Discussion and Findings

The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate.

The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.

A. Identical or Confusingly Similar

The Complainants do not own any registered trademarks. Accordingly, the Complaint is based on unregistered or ‘common law’ trademark rights.

The Complainants refer to a number of UDRP decisions recognising the common law rights of artists or celebrities in their own names. Some decisions identify the complainant’s common law rights with a particular jurisdiction (see in particular Jeanette Winterson.v. Mark Hogarth, WIPO Case No. D2000-0235 (May 22, 2000); Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (May 29, 2000)), while others do not.

A prudent course for a complainant relying on common law rights is to identify a particular jurisdiction which both recognises common law trademark rights as a matter of law, and where the complainant can prove its ownership of common law rights as a matter of fact. In the present case, the Complainants’ business, though international, is most closely connected with Canada, and particularly the province of Ontario. Therefore, and in accordance with paragraph 15(a) of the Rules, the Panel considers the principles of the law of Ontario, Canada (or more generally, Canadian trademark law) shall apply to the decision on this Complaint.

Canadian trademark law, and the law of Ontario, recognize and protect unregistered trademarks and trade names as a representation of an economic asset, namely the goodwill of a business. This goodwill includes the ‘advantages’ of a trademark or tradename (particularly its reputation and favourable consumer recognition) that “share a common propensity to increase the sales of the product bearing the trademark” (see generally, David J.A. Cairns The Remedies for Trademark Infringement, Carswell, Ontario, 1988, at pages 4-5).

The Complainants clearly have a substantial business in the sale of Ms. Romance’s art and merchandise. Ms. Romance has sold over 300,000 reproductions of her works, and earned multi-million dollar revenues, demonstrating a substantial clientele and business goodwill. The question is whether this business and goodwill is associated by the public, as the Complainants allege, with a TRISHA ROMANCE trademark.

The Panel notes firstly, that ‘Trisha Romance’ is not Ms. Romance’s legal name (which is Patricia Ann Romance Peterson) but a familiar form of her Christian name. In a commercial context the familiar form of the name is more distinctive and suggests a desire to project a familiar image to clientele. In other words, there is a more definite trademark element in the familiar form of Ms. Romance’s name than in the formality of her legal name.

The basis of the Complainants’ business is Ms. Romance’s art, and from the evidence it appears to the Panel that Ms. Romance does not sign her paintings with ‘Trisha Romance’ but rather with the signature ‘T Romance’. However the fact that Ms. Romance does not use her alleged trademark as a signature is not determinative, as a signature may be a personal custom that develops long before the adoption of a trademark as the commercial manifestation of a business.

On the evidence presented, the Panel is satisfied that the name ‘Trisha Romance’ is commercially used by the Complainants’ business as a trademark and that the name has become a distinctive identifier associated with the Complainants and their art and merchandise because: (i) The interviews and magazine articles provided in evidence establish both Ms. Romance’s recognition as an artist and that she is generally known publicly as ‘Trisha Romance’; (ii) Ms. Romance’s personality is an important element in the commercialisation of her art and merchandise, and in the Complainants’ marketing material she is commonly referred to as ‘Trisha Romance’ (iii) a book about the Ms. Romance and her art is called ‘The World of Trisha Romance’; (iv) Romance Productions Ltd. operates a website at “www.trisharomance.ca” where Ms. Romance is referred to as ‘Trisha Romance’ or ‘Trisha’ and her art and merchandise is available for sale; (v) Ms. Romance’s achievements have been publicly honoured by the province of Ontario with investiture in the Order of Ontario in the name of ‘Trisha Romance’.

On this basis the Panel finds that the Complainant has proved rights in the common law trademark ‘Trisha Romance’ for the purpose of the present case.

Once the Complainants establish their rights in a trademark, the first element of the Policy requires a comparison between the disputed domain name and the trademark. In determining whether a disputed domain name is identical or confusingly similar to the Complainant’s trademark the relevant comparison involves the second-level portion of the domain name only (here, ‘trisharomance’). Clearly a trademark does not usually include a URL prefix (here, “www”), or a top-level domain name suffix (here, ‘.com’) that are functional elements of a domain name, and the comparison required for the first element of the Policy must exclude these elements. These elements are incapable of performing any distinctive function, and it is well-established that they should not be considered in making this determination (see Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023 (February 25, 2005), D. Ronaldo de Assis Moreira v. Eladio Garcнa Quintas, WIPO Case No. D2006-0524 (July 14, 2006) and LDLC.COM v. LaPorte Holdings, WIPO Case No. D2005-0687 (August 8, 2005)). Further, a domain name cannot contain separate words, which must of necessity be compressed to a single word or be joined by a hyphen or hypens. Accordingly, there is no significance in the fact that the Complainants’ trademark comprises two words that are compressed together in the disputed domain name.

On this basis, the Panel finds that the disputed domain name is identical with the Complainants’ trademark TRISHA ROMANCE. Accordingly, the first element required by the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence before the Panel that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name; (ii) the Respondent is not authorised or licensed by the Complainants to use the TRISHA ROMANCE trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name; (iv) there is no evidence of legitimate non-commercial or fair use of the disputed domain name.

Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. There is no evidence before the Panel of the existence of any of these circumstances in the present case. In relation to paragraph 4(c)(i) the Panel notes that the disputed domain name resolves to a website at “www.celebrity1000.com” which appears to be operated by the Respondent. This website contains no information or merchandise relating to the TRISHA ROMANCE trademark, and appears to designed to earn revenue through advertisements and sponsored links. The use of the disputed domain name to attract Internet traffic to a website by deception (that is, by suggesting the website relates in some manner to the TRISHA ROMANCE trademark) is not a use in connection with a bona fide offering of goods or services.

The fact that the Respondent registered the disputed domain name ten years ago in 1996 does not through the passage of time create in the circumstances any rights or legitimate interests in respect of the domain name, given that the Panel is satisfied that the Respondent in all probability registered the disputed domain name with full knowledge of the Complainants’ common law rights in ‘Trisha Romance’, and the absence of any evidence of bona fide use of the disputed domain name since registration.

Accordingly, and in the absence of any response from the Respondent providing any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the domain name, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.

In particular, Paragraph 4(b)(iv) states that if the Panel finds that the Respondent has used the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website, it should be taken as evidence of the registration and use of the domain name in bad faith.

The Panel finds that the evidence submitted by the Complainants is sufficient to support a finding of bad faith under Paragraph 4(b)(iv). The Respondent’s use of the disputed domain name with the intention to attract Internet users for commercial gain in the circumstances can be presumed from the advertisements and the links on its website. The likelihood of confusion is as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain name is identical to the TRISHA ROMANCE trademark, and the evidence of the substantial public recognition and goodwill associated with the TRISHA ROMANCE trademark. Accordingly the Panel accepts the Complainants’ submission that the Respondent’s interest in the disputed domain name is merely speculative of commercial gain from visitor traffic through confusion and deception, and that this constitutes both bad faith registration and use.

Further, the Panel finds that the Respondent has engaged in a pattern of registering domain names of celebrities or widely known personailities. The Panel is satisfied that the Respondent is an alias of Jeff Burgar. The address given by Mr. Burgar in Celine Dion and Sony Music Entertainment (Canada) Inc. v. Jeff Burgar operating or carrying on business as Celine Dion Club, WIPO Case No. D2000-1838 (February 13, 2001) is the same as the Respondent’s address in this case. The same conclusion was reached by another panel in a case involving the same Respondent (see Pierce Brosnan v. Network Operations Center, WIPO Case No. D2003-0519 (August 27, 2003)). The Panel is satisfied that Mr. Burgar has been involved in various UDRP proceedings that demonstrate a pattern of registering domain names comprising celebrity names, and this is further evidence of registration of the disputed domain name in bad faith.

As a result, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <trisharomance.com> be transferred to the Complainants.

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David J.A. Cairns
Sole Panelist

Dated: January 3, 2007