:
:
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION
Nicole Marrow v. Valery Celin
Case No. D2008-1947
1. The Parties
The Complainant is Nicole Marrow of New York, New York, United States of America, represented by Patel & Alumit, PC, United States of America.
The Respondent is Valery Celin of Montreal, Quebec, Canada.
2. The Domain Name and Registrar
The disputed domain name <nicolecocoaustin.net> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2008. On December 19, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 19, 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” 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 employed reasonably available means calculated to achieve actual notice to the Respondent of the Complaint, and the proceedings commenced on January 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2009.
The Center appointed Alan L. Limbury as the sole panelist in this matter on February 9, 2009. 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
Since 2001 the Complainant has been a model and actress. She uses the stage name Nicole “Coco” Austin. She has appeared in films and television shows and on the cover of, and featured in numerous, magazines, including the March 2008 issue of Playboy Magazine. Her website, “www.cocosworld.com”, attracts over 2 million hits per week.
The disputed domain name was registered on January 10, 2007. It leads to a website featuring, inter alia, a “Coco Menu” of hyperlinks including “Nicole Coco Austin’s Home Page” (which re-routes Internet users to the Respondent’s website), “Coco’s Pictures”, “Nicole Austin Wallpapers” and “Nicole Coco Austin Videos”. There is also a hyperlink called “Bio of Nicole Austin aka Coco”. At the foot of one of the pages is a statement in small print:
“This web site is in no way related to Nicole Austin aka Coco. It is simply a Fansite and it is not made to sale [sic] anything. I am a big fan of hers and I just wished to create something for her. If you have just cause to request a page, a text of [scil. “or”] a picture of Nicole Austin aka Coco to be taken out of this page, it will be a pleasure for nicolecocoaustin.net to take the content off this page. Thank you and we hope you enjoy this website”.
The Respondent’s website also contains pictures of the Complainant and advertising by pornography and adult dating companies of the kind which generates “click through” revenue for the website owner.
5. Parties’ Contentions
A. Complainant
The Complainant asserts common law rights in the NICOLE COCO AUSTIN mark through continuous use of the mark in connection with her modeling and acting career that began in 2001. She says the disputed domain name is virtually identical to that mark and that the Respondent has no rights or legitimate interests in respect of the domain name, which was registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “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”.
Paragraph 4(a) of the Policy requires the complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc,
WIPO Case No. D2000-0441; Microsoft Corporation v Freak Films Oy,
WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN,
WIPO Case No. D2000-1080 and ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al.,
WIPO Case No. D2000-0848.
A. Identical or Confusingly Similar
To succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for the Complainant to prove that the mark is in fact a trademark. Thus, the Complainant must produce evidence proving that, prior to the filing of the Complaint, it has provided goods or services under the unregistered mark and had thereby acquired a reputation such that members of the public would associate those goods or services with the Complainant and not with others not authorized by the Complainant to use the mark. That is to say, the Complainant must prove that, prior to filing the Complaint, it had acquired a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent: British Heart Foundation .v. Harold A Meyer III (eResolution Case No. AF0957).
Many cases have established that personal names (including names of recording artists and musicians), through use and publicity, can acquire the distinctiveness necessary to become trademarks or service marks: Julia Fiona Roberts v. Russell Boyd,
WIPO Case No. D2000-0210; Jeanette Winterson v. Mark Hogarth,
WIPO Case No. D2000-0235; Monty and Pat Roberts, Inc. v. Bill Keith,
WIPO Case No. D2000-0299; Steven Rattner v. BuyThisDomainName (John Pepin),
WIPO Case No. D2000-0402; Estate of Stanley Getz aka Stan Getz v. Peter Vogel,
WIPO Case No. D2000-0773; Daniel C. Marino, Jr. v. Video Images Productions, et al.,
WIPO Case No. D2000-0598; Isabelle Adjani .v. Second Orbit Communications, Inc.,
WIPO Case No. D2000-0867; MPL Communications Limited v. Denny Hammerton, NAF Claim No. 95633; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,
WIPO Case No. D2000-0847; Nik Carter v. The Afternoon Fiasco,
WIPO Case No. D2000-0658; Pierre van Hooijdonk v. S.B. Tait,
WIPO Case No. D2000-1068; Frederick M. Nicholas, Administrator, The Sam Francis Estate v. Magidson Fine Art, Inc.,
WIPO Case No. D2000-0673; Jaap Stam v. Oliver Cohen,
WIPO Case No. D2000-1061; HELEN FOLSADE ADU known as SADE v. QUANTUM COMPUTER SERVICES INC,
WIPO Case No. D2000-0794; Michael J. Feinstein v. PAWS Video Productions,
WIPO Case No. D2000-0880 and Estate of Tupac Shakur v. Shakur Info Page (eResolution Case No. AF0346). See also the discussion in Sean Michaels Inc. v. Mark Allan Online Entertainment (eResolution Case No. AF0214).
On the evidence provided by the Complainant, the Panel finds that the name NICOLE COCO AUSTIN has become distinctive of the Complainant and her particular genre of modeling and acting services. She thus has common law trademark rights in that name.
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon,
WIPO Case No. D2006-0812. The top level domain “.net” is to be disregarded: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
WIPO Case No. D2000-1525 and Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429. Likewise the content of the Respondent’s website must be disregarded: A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc v. Justin Jorgensen,
WIPO Case No. D2001-0900.
The disputed domain name is clearly identical to the Complainant’s common law mark.
The Complainant has established this element.
B. Rights or Legitimate Interests
The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in the disputed domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by persuasive evidence that it does have rights or legitimate interests in that domain name (Do The Hustle, LLC v. Tropic Web,
WIPO Case No. D2000-0624 and the cases cited therein).
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy. Since the Respondent did not file a response in this proceeding, the Complainant’s assertions that the Respondent lacks rights or legitimate interests stand unrebutted. Accordingly the Panel accepts the Complainant’s assertions that the Respondent is not commonly known by the disputed domain name, that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services and that, insofar as the Respondent states its website might constitute a “fan site” it affords no legitimacy to the Respondent because the website is commercial in its generation of “click through” revenue, links to the Complainant’s competitors, and is not clearly distinguished as distinct from the Complainant’s official site (see Helen Fielding v. Anthony Corbet aka Anthony Corbett,
WIPO Case No. D2000-1000).
Further, “[u]se which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services” (Madonna Ciccone, p/k/a Madonna supra).
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has established this element.
C. Registered and Used in Bad Faith
The references to the Complainant contained in the Respondent’s website demonstrate that the Respondent had the Complainant and her mark in mind when registering the disputed domain name. In light of this and having regard to the content of the Respondent’s website, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship and endorsement of the Respondent’s website. This constitutes evidence of both bad faith registration and bad faith use under the Policy.
The Complainant has established this element.
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 <nicolecocoaustin.net> be transferred to the Complainant.
Alan L. Limbury
Sole Panelist
Dated: February 21, 2009
