Dame Elizabeth Taylor, The Elizabeth Taylor Cosmetics Company and Interplanet Productions Limited v. Standard Bearer c/o StandardBearerEnterprisesLimited
Claim Number: FA0903001252467
Complainants are Dame Elizabeth Taylor, The Elizabeth Taylor
Cosmetics Company and Interplanet
Productions Limited (“Complainants”), represented by Stephen J. Strauss, of Fulwider Patton LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <elizabethtaylor.com>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Joel M. Grossman, Esq., as Panelist.
Complainants submitted a Complaint to the National Arbitration Forum electronically on March 13, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 16, 2009.
On March 16, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <elizabethtaylor.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 24, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 13, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A Response was received in electronic copy only on April 13, 2009, however no hard copy was received. The National Arbitration Forum therefore does not consider the Response to be in compliance with ICANN Rule 5.
On April 15, 2009, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Joel M. Grossman as Panelist.
Complainants request that the domain name be transferred from Respondent to Complainants.
Complainants are Elizabeth Taylor, the actress, her company,
Interplanet Productions, to which she assigned all rights in her name, and the
Elizabeth Taylor Cosmetics Company (“ETCC”). ETCC has obtained
Complainants next assert that Respondent has no rights or legitimate interests in the domain name. They note that Respondent is not commonly known by the name, and has not used the name in any legitimate way. The domain resolves to a website with links to other websites which provide information about Ms. Taylor and ETCC’s products, but such use is not a legitimate noncommercial or fair use according to UDRP precedent.
Finally, Complainants assert that the name was registered and is being used in bad faith. They assert that the purpose of the registration of the name was to confuse and mislead Internet users interested in Ms. Taylor, who would believe that this was her authorized website. Complainants also note that Respondent’s holding but not using the domain name should also be deemed bad faith. Finally, Complainants note that the mark is so well known that Respondent had knowledge of the mark, at a minimum constructive knowledge, at the time of registration.
Respondent does not address any of the issues described above. Respondent has submitted a one sentence electronic submission stating that it is willing to transfer the domain name to Complainants.
The Panel notes, as a preliminary matter, that Respondent’s Response is not in compliance with ICANN Rule 5. Nevertheless the Panel will, in light of the circumstances of this case, deem the Response properly received.
The Panel finds that (1) the domain name is identical to, or confusingly similar to, a mark in which Complainants have rights; (2) Respondent has no rights or legitimate interests in the domain name; and (3) the domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted 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 that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
As noted above, Respondent has submitted a Response stating that it is willing to transfer the domain name to Complainants. Under these circumstances it is not necessary for the Panel to discuss its findings any further, and the Panel declines to do so. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web. Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003).
As noted above, because Respondent consents to the transfer, the Panel need not discuss the matter further.
As noted above, because the Respondent consents to the transfer, the Panel need not discuss the matter further.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <elizabethtaylor.com> domain name be TRANSFERRED from Respondent to Complainants.
Joel M. Grossman, Panelist
Dated: May 1, 2009
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