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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Legislator 1357 Limited, Legislator 1358 Limited, Ian Fleming Limited v. Alberta Hot Rods

Case No. D2008-0832

 

1. The Parties

The Complainants are Legislator 1357 Limited and Legislator 1358 Limited (as Trustees of the Ian Fleming Will Trust) and Ian Fleming Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Olswang, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Alberta Hot Rods, Alberta, Canada.

 

2. The Domain Name and Registrar

The disputed domain name <ianfleming.com> is registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2008. On May 29, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On May 29, 2008, GoDaddy.com, Inc. 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”), 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 June 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2008. The Center received a request to suspend proceedings on July 3, 2008. The Center granted a suspension until July 10, 2008. The Complainant requested the Center to re-institute proceedings on July 9, 2008. The Center re-instituted proceedings and the due date for Response was re-set to July 13, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2008.

The Center appointed John Swinson as the sole panelist in this matter on July 25, 2008. 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 first and second Complainants are the Trustees for the Ian Fleming Will Trust. The third Complainant is a company incorporated in England which is controlled by the first and second Complainants.

Ian Fleming is a British author who created the fictional secret agent character of James Bond. He wrote 14 books relating to the adventures of James Bond including Dr. No, Goldfinder, From Russia with Love, Live and Let Die, For Your Eyes Only and On Her Majesty’s Secret Service. Most of these books were later adapted into films and/or radio programs. Ian Fleming is also known for writing the novel Chitty Chitty Bang Bang.

Ian Fleming died in 1964. The Complainants have interests in the intellectual property rights associated with the name Ian Fleming through his estate.

The Respondent is based in Alberta, Canada.

The website operating from the disputed domain name automatically redirects to a website located at “www.celebrity1000.com” which has the tagline “Your Ultimate Celebrity Source”. That website contains link to other websites dedicated to celebrities and entertainment news, links to advertising, and also links to unrelated sites such as weight loss and dating websites.

 

5. Parties’ Contentions

A. Complainant

The Complainants make the following contentions:

Identical or confusingly similar

The intellectual property rights associated with the name Ian Fleming passed upon his death to the trustees of the Ian Fleming Will Trust, for the benefit of Ian Fleming’s family. The trustees of the Will Trust (the first and second Complainants) have all the rights and responsibilities of executors of Ian Fleming’s estate. The trustees wholly own and control the third Complainant, which was incorporated to hold the registered intellectual property rights and to exploit the various rights associated with Ian Fleming’s estate, including the name “Ian Fleming”.

Authors may have trade mark rights in the names by which they become well known, and can demonstrate this either through registered trade mark rights, or through deployment of the name as source indicators in commerce (establishing common law rights).

The Complainants have registered and common law trade mark rights in IAN FLEMING.

The third Complainant is the registered proprietor of two registered trade marks over the word mark IAN FLEMING: one which has effect in the United Kingdom of Great Britain and Northern Ireland (filing number 2271122, filed on May 24, 2001), while the other has effect in the European Community (filing number 2475234, filed on November 23, 2001). Both of these marks are registered over a wide range of goods and services.

During his lifetime, Ian Fleming himself acquired goodwill in the IAN FLEMING mark through use of his personal name as author. These unregistered rights were transferred to the Complainants after his death, and the Complainants have continued to use the IAN FLEMING mark and also acquired goodwill in that mark.

Aside from creating the James Bond character and authoring many books about that character, Ian Fleming was also a travel writer, and published many other novels, including Chitty Chitty Bang Bang (which was adapted to film in 1968 and stage musicals in 2002 to 2005). There have also been two biographies published on Ian Fleming, and several television biographies released.

The name Ian Fleming is well known in its own right, but it has also been extensively advertised and promoted through television and print media advertising, and has received substantial media coverage. An exhibition will be held throughout 2008 and 2009 months at the Imperial War Museum in London, to celebrate Ian Fleming’s life. In association with the exhibition, the Royal Mail is releasing six commemorative “Ian Fleming’s James Bond” stamps and “Ian Fleming” merchandise will be produced and sold.

Due to the above factors, the distinctive IAN FLEMING mark has become famous and well known worldwide and holds significant valuable goodwill for the Ian Fleming Will Trust. The name has acquired a secondary meaning, as the public associates “Ian Fleming” with the writings of and characters created by the author.

The Complainants use the registered Ian Fleming trade marks, and also license such rights to third parties.

The disputed domain name consists of the IAN FLEMING mark in its entirety.

Rights or legitimate interests

The Respondent is not related to Ian Fleming or the Complainants, and has not been authorized to register or use the disputed domain name. The Respondent is not commonly known as Ian Fleming.

Since the Respondent first registered the disputed domain name on September 25, 1996, there is no evidence that the Respondent has used the domain name in relation to a legitimate offering or wares or services.

The website operating from the disputed domain name is being used to automatically reroute traffic to a commercial website at the domain name <celebrity1000.com>. This domain name is also owned by the Respondent and the website appears to offer biographical information about actors, directors, musicians, sportsmen or women and other celebrities. There is no information about authors or Ian Fleming. The website also contains advertising banners and links, which most likely provide the Respondent with advertising revenue.

The disputed domain name misleads Internet users who are looking for goods associated with Ian Fleming or his characters, and endorses instead the “www.celebrity1000.com” website (or indicates that the Complainants endorse this website). The disputed domain name was deliberately registered by the Respondent for the purpose of attracting Internet users to the “www.celebrity1000.com” website for commercial purposes.

Previous panel decisions involving the Respondent and its use of the “www.celebrity1000.com” website have determined that by virtue of the website’s use as a portal, it evidences no bona fide authorized offering of goods and services. Use which intentionally trades on the fame of another cannot constitute bona fide offering of goods or services.

The Respondent has not made any non-commercial or fair use of the disputed domain name, rather the Respondent registered the disputed domain name to trade on Ian Fleming’s continuing fame and reputation and to receive revenue from the website.

Bad Faith

The Respondent has shown registration and use in bad faith under paragraph 4(b)(ii), (iii) and (iv).

The disputed domain name was registered well after the common law rights in the name IAN FLEMING were established.

The Respondent has prevented the Complainants from reflecting their trade mark rights in Ian Fleming in a domain name. The Complainants are unable to use the disputed domain name, and there is a risk that Internet users will inadvertently access the Respondent’s website when looking for Ian Fleming related sites.

The Respondent is well known to have registered many domain names which incorporate famous names. The Respondent has engaged in a practice that constitutes a pattern of conduct intended to capitalize on the goodwill associated with the fame and repute of individuals for an illegitimate purpose (to drive Internet traffic to the Respondent’s website, or a website where the Respondent receives financial revenue from traffic). A pattern of conduct on the part of the Respondent amounting to abusive domain name registration and use has been found to exist in previous panel decisions.

It is clear from the Respondent’s activities of stockpiling domain names which contain names of famous people, that the Respondent intended to prevent the Complainants from securing the .com registration for Ian Fleming. The only substantial function of the disputed domain name appears to be attracting people to view advertising on the “www.celebrity1000.com” website.

Given the reputation and fame of Ian Fleming as an author, it is inconceivable the Respondent did not have actual knowledge of the Complainants’ rights in that name at the date of registration. The Respondent could not have registered the disputed domain name with the intention of using it legitimately.

Internet users when visiting the disputed domain name would expect to find a site related to Ian Fleming or goods and services related to the individual’s trade mark. For example, Internet users would expect to find books or films relating to the characters created by Ian Fleming. No such goods or services are provided at the disputed domain name website, and there is no association between the website and Ian Fleming.

The Respondent was clearly aware of the existence of the Ian Fleming name and mark, and knew that it didn’t have a license or right to use or register the domain name. The Respondent had no other legitimate use or purpose for registering the disputed domain name.

From linking the disputed domain name to the “www.celebrity1000.com” website, the Respondent has used the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Ian Fleming mark, as to the source, sponsorship, affiliation or endorsements of its website. This is evidence of both bad faith registration and use.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

 

6. Discussion and Findings

To succeed in its claim, the Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainants have 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.

Paragraph 4(a) of the Policy states that the burden of proof lies with the Complainants to establish that all these three elements are satisfied.

A. Identical or Confusingly Similar

To prove this element the Complainants must prove that it has trade or service mark rights and that the disputed domain name is identical or confusingly similar to the Complainants’ trade or service mark.

The third Complainant has registered trade marks rights in IAN FLEMING which were filed in 2001 (see UK trade mark 2271122, and Community Trade Mark 2475234). The third Complainant is an incorporated company which is controlled by the first two Complainants. The Panel therefore finds that the Complainants have registered trade mark rights in IAN FLEMING. Personal names that have been trademarked are capable of protection under the Policy.

The disputed domain name contains the entirety of the Complainants’ trade mark in IAN FLEMING, and contains nothing else other than the “.com” domain. It is well established that the specific top level domain, such as “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

It is also well established that the location of the registered trademark and the goods and/or services it is registered for are irrelevant when determining whether there are trade mark rights. (See Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503). Therefore the fact that the Respondent is based in Canada, while the trade mark rights exist in the United Kingdom and European Union, does not affect this element of the Policy.

The Panel finds that the Complainants have also put forward substantial evidence to establish common law trade mark rights which exist in the name “Ian Fleming”.

The Panel finds that the disputed domain name is identical to the Complainants’ registered trademark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [respondent] of the dispute, your 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) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [respondent] are 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.

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.

The Complainants have asserted that the Respondent:

- is not known by the disputed domain name.

- has not been licensed or authorized to use the name or mark IAN FLEMING.

- has no other rights or reputation in the disputed domain name.

- has not used or demonstrated an intention to use the disputed domain name in connection with any bona fide offering of goods and services.

The Panel notes that none of the circumstances mentioned in paragraph 4(c) are present. In particular, the Panel agrees with the Complainants that:

(i) the Respondent does not appear to be known by the term “Ian Fleming” or anything similar, and does not appear to have applied for any trade mark or trade name rights in this name;

(ii) the Complainants who have the rights to the “Ian Fleming” name and trade mark, have not licensed or permitted the Respondent to use its trade mark;

(iii) the Respondent does not appear to be making a bona fide offering of goods or services from the website. The disputed domain name is currently being used to redirect Internet users to another website operated by the Respondent (“www.celebrity1000.com”). This website contains advertising links sponsored by Google, as well as links to other sites, only some of which relate to celebrities. The Respondent is clearly making a commercial use of the website, and the Panel infers that it is receiving a commercial profit from the sponsored links displayed on the website.

The Panel considers that the Respondent uses the disputed domain name to mislead Internet users looking for information on Ian Fleming or his works to a commercial website for the Respondent’s financial benefit. Such use is not bona fide. The Panel notes that a number of previous panels have found that the Respondent’s use of celebrity names in domain names in connection with the Celebrity 1000 website does not constitute legitimate noncommercial or fair use: see Jeffrey Archer v. Alberta Hotrods tda CELEBRITY 1000, WIPO Case No. D2006-0431.

The Respondent did not submit a response or attempt to demonstrate any rights or legitimate interest in the disputed domain name. With the number of previous panel decisions concerning the Respondent (or its related parties), and the Respondent’s actions in registering well known personal names, it is difficult to conceive of any rights or legitimate interests the Respondent could possibly have in “Ian Fleming”.

The Panel finds that the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that Paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that certain circumstances (without limitation), shall be considered evidence of the registration or use of a domain name in bad faith. The Complainants allege that the following circumstances exist in this case:

(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;

(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 intentionally is using the domain name in an 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 the respondent’s website or location or of a product or service on its website or location.

Ian Fleming is an internationally well-known author. He is most well known for creating the James Bond character, and numerous books regarding James Bond’s adventures. These books were adapted into a range of extremely successful movies. He is also responsible for writing Chitty Chitty Bang Bang, which was also adapted into a very successful movie and theatre production in London and New York.

Despite his death in 1964, at the time of registration of the disputed domain name in 1996, Ian Fleming, was still, world famous, most likely because the James Bond character was still being used by others in novels and movies. The Panel infers that the Respondent was aware of the goodwill in the Complainants’ IAN FLEMING trade mark, and in the goodwill that the Ian Fleming name would generate. The Panel also infers that the Respondent would have been aware that the trustees of Ian Fleming’s estate would hold the goodwill in his trade mark and name on trust.

The Respondent has engaged in a pattern of conduct of registering the names of famous people in order to prevent them from reflecting their name and trade mark in a corresponding domain name. In this case, the Respondent has registered the name of the famous author, Ian Fleming, to prevent the Complainants from reflecting its trade mark, IAN FLEMING, in a corresponding domain name. The disputed domain name is identical to Ian Fleming’s name and trade mark, and uses one of the most common forms of domain (.com). This clearly prevents the Complainants from registering the most obvious choice of domain name for Ian Fleming.

There have been a number of findings of bad faith against the Respondent in relation to domain name disputes involving famous people (see for example Larry King v. Alberta Hot Rods, WIPO Case No. D2005-0570 <larryking.com>; Pamela Anderson v. Alberta Hot Rods, WIPO Case No. D2002-1104 <pamelaanderson.com>, <pamelaanderson.net> and <pamelalee.com>, Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560 <tomcruise.com>).

The Panel finds that the Respondent registered the disputed domain name in bad faith.

The disputed domain name currently resolves to the Respondent’s Celebrity 1000 website. The Respondent earns revenue from diverting users to its sponsored links on that website. The Respondent’s use of the disputed domain name has demonstrably been to attract, for financial gain, Internet users to the Respondent’s website, by creating the likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

The Panel finds that the Respondent is using the disputed domain name in bad faith.

The disputed domain name has been registered since 1996. Ordinarily, the length of time which has elapsed between the registration of the disputed domain name and the bringing of the Complaint may have been a cause of concern as, in some cases, delay has been considered to be a waiver of rights. However, the Panel adopts the reasoning of the panels in Dire Straits (Overseas) Limited v. Alberta Hot Rods, WIPO Case No. D2007-0778 and Tom Cruise v. Network Operations Center/Alberta Hot Rods, WIPO Case No. D2006-0560. The Respondent has not suffered from the delay and the delay does not impact on the Complainants’ right to obtain relief.

The evidence, in the Panel’s view, supports the conclusion that the Respondent sought to profit from, or exploit the trade marks of the Complainants. Accordingly, the Panel concludes that the Complainants have satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.

 

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, <ianfleming.com> be transferred to the Complainants.

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John Swinson
Sole Panelist

Dated: August 8, 2008