Tyra Banks and Telepictures
Productions Inc. v. Hemang Infrastructure Private Limited
Claim
Number: FA1006001330940
PARTIES
Complainants are Tyra Banks (“Complainant
Banks”) and Telepictures Productions Inc. (“Complainant
Telepictures”), represented by J.
Andrew Coombs, of J. Andrew
Coombs, A Professional Corporation,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tyrabanksshow.com> (the “Disputed Domain Name”), registered with Directi Internet Solutions Pvt. Ltd. d/b/a
PublicDomainRegistry.com.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Kendall C. Reed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 21, 2010.
On June 24, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a
PublicDomainRegistry.com confirmed by e-mail to the National Arbitration
Forum that the Disputed Domain Name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com
and that the Respondent is the current registrant of the name. Directi
Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified
that Respondent is bound by the Directi Internet
Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 June 29, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of July 19, 2010 by which Respondent could file a
Response to the Complaint, via e-mail to all entities and persons listed on
Respondent’s registration as technical, administrative, and billing contacts,
and to postmaster@tyrabanksshow.com. Also on June
29, 2010, the Written Notice of the Complaint, notifying Respondent of
the email addresses served and the deadline for a Response,
was transmitted to Respondent via post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts.
A timely Response was received and determined to be complete on July 19, 2010.
On July 21, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Kendall C. Reed as Panelist.
RELIEF SOUGHT
Complainants requests that the Disputed Domain Name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainants
Complainant Banks is an internationally famous media personality,
model, and actress, who has appeared in numerous motion pictures and television
programs, including, but not limited to: Higher
Learning, Coyote Ugly, Love and Basketball, Fresh Prince of Bel-Air, Felicity, and America’s Next Top Model.
Banks also hosts and produces the Emmy award-winning daytime talk show The Tyra Banks Show. Complainant Telepictures produces The Tyra Banks Show.
The trademark TYRA BANKS is Complainant Banks’s personal name, which is
used to identify and distinguish her services in the entertainment industry.
While neither Complainant has registered the TYRA BANKS trademark with any
governmental trademark authority, Complainant Banks has acquired, by virtue of
the uses noted above, common-law trademark rights due to the distinctiveness
and secondary meaning that the public has come to associate with this mark.
The Disputed Domain Name is identical and confusingly similar to the
TYRA BANKS trademark because the Disputed Domain Name incorporates the entirety
of the TYRA BANKS trademark without also including distinguishing content. The Disputed Domain Name does include “.com”
and the generic word “show,” but these are insufficient to create a distinction
for purposes of the Policy.
For several reasons it is apparent that Respondent has no legitimate
interest in the Disputed Domain Name.
First, Respondent is not authorized by Complainant to use the Disputed
Domain Name. Second, Respondent’s use of
the Disputed Domain Name does not constitute a bona fide offering of goods or services. Respondent must have known when it selected
the Disputed Domain Name that the public would incorrectly associate the
Disputed Domain Name with Complainant.
In fact, given the distinctiveness and fame of the TYRA BANKS trademark,
there is no plausible explanation for the Respondent’s registration of the
Disputed Domain Name other than to trade upon the goodwill that Complainant
Banks has developed in the TYRA BANKS mark.
Third, Respondent is commercially profiting from the use of the Disputed
Domain Name by capitalizing upon the goodwill associated with the TYRA BANKS
mark. Respondent is using the Disputed
Domain Name to host a website which contains images of Complainant Banks and
also contains "Sponsored Links," which provides Respondent with some
form of compensation. Fourth, Respondent
is not and has not been commonly known by the Disputed Domain Name.
For several reasons it is apparent that Respondent has registered and
is using the Disputed Domain Name in bad faith.
First, the fame of the TYRA BANKS trademark put Respondent on notice of
this trademark. Further, the TYRA BANKS
trademark is internationally distinctive and famous to the extent that
Respondent must have had actual knowledge of it prior to Respondent's registration
of the Disputed Domain Name. Also, the
use of the TYRA BANKS mark and other explicit references to properties
associated with Complainant Banks (such as shows and magazines in which
complainant Banks has appeared) on the website to which the Disputed Domain
Name directs Internet users demonstrates actual knowledge of Complainant
Banks’s mark. Second, by registering the
Disputed Domain Name with actual knowledge of the TYRA BANKS trademark,
Respondent acted in bad faith by breaching its registration agreement with the
registrar thereof by having falsely represented that the registration
"does not infringe any intellectual property rights or other rights of any
person or entity." Third,
Respondent is intentionally using the Disputed Domain Name to attract Internet
users to Respondent’s website for commercial gain, and this is because the
website to which the Disputed Domain Name directs contains links to third-party
commercial sites. In so doing,
Respondent is creating a likelihood of confusion with the TYRA BANKS trademark
as to the source, sponsorship, affiliation or endorsement of the website. Fourth, Respondent evidences bad faith in the
fact that it registered the Disputed Domain Name not long after Complainant
Banks announced her intention to host a daytime talk show. Fifth, Respondent also evidences bad faith in
its failure to cease and desist from wrongful use of the Disputed Domain Name
after being notified by Complainants of the unauthorized use.
B. Respondent
Respondent has registered the Disputed Domain Name for the purpose of
operating a website wherein people can put up genuine opinions and their
feedback for a TV show. Respondent has full right under the freedom of
expression to put up such a website as long as it does not cause unlawful
damage to the Complainant. Further,
respondents are not required to obtain permission or license from complainants
to put up a website wherein the users can put their comments about Complainant
Banks’s television show or any other aspect which they think fit.
With respect to the issue of whether Complainant Banks’s name is a
trademark, the Respondent is not aware of any such trademark.
With respect to the issue of bad faith, Respondent has not engaged in
the type of conduct specified in Paragraph 4(b) of the Policy. First, Respondent has never contacted the
Complainants or any agent thereof for the purpose of renting, selling, or
otherwise transferring the Disputed Domain Name to the Complainants. Second, Respondent has not registered the
Disputed Domain Name in order to prevent the Complainants from reflecting the
TYRA BANKS trademark and a corresponding domain name. Third, Respondent has not registered the
Disputed Domain Name to disrupt the business of a competitor, as Respondent and
Complainants are not competitors. Four,
Respondent has in no way intentionally attempted to attract, for commercial
gain, Internet users to its website or other online location by creating a
likelihood of confusion with Complainants’ trademark.
FINDINGS
Respondent registered the Disputed Domain
Name on September 30, 2004.
The website to which the Dispute Domain Name
resolves includes content consisting of less than two pages of material. At the top of the first page appears a box of
material that includes the following three elements:
1. A photograph of Tyra Banks located in the top
right-hand corner of the box;
2. Immediately to the right of this photograph
appear the words "thetyrabanksshow,” and the words “Tyrabanks” are in a
significantly larger font and made bold, such as “thetyrabanksshow”; and
3. The following statement: “Welcome to the Tyra
Banks show website. This is the place to get all of your TV show pictures,
videos, and info on Tyra and her show."
This website does not include pictures or
video from the Tyra Banks television
show or any other television show, nor does this website
present opinions from fans and their feedback with respect to The Tyra Banks Show or any other
television show.
Following this initial box of content appears
a prominent click-through advertising box containing the following words
"Models Wanted/ Looking for inexperienced New
Faces."
Following this click-through advertising box
appears three short paragraphs of information about Complainant Banks and her
career as a model and actress.
Following these three paragraphs of
information appears another copy of the noted click-through advertising box
seeking aspiring models.
Following this click-through advertising box,
all of the above content repeats itself, except that the photograph of Tyra
Banks does not appear again and the two click-through advertising boxes are for
different goods and services, namely <styleist.com> and Victoria’s
Secret.
Complainant Banks is a model and actress who
has developed secondary meaning and goodwill in the TYRA BANKS trademark
through numerous significant public appearances and work as a model and
actress, including: The Soul Train Comedy Awards (1993), The Billboard Music
Awards (1996), The 39th Annual Grammy Awards (1997), The Late Show with David Letterman (1997), The 29th NAACP Image
Awards (1998), The Howard Stern Show
(1998), The Teen Choice Awards (2000), The
Oprah Winfrey Show (six episodes from 1999 to 2001), the 61st Annual Golden
Globe Awards (2004), and significantly The Victoria’s Secret Fashion Show for
2001, 2002 and 2003.
Complainant Banks and Complainant
Telepictures both have common law rights in the TYRA BANKS trademark for
purposes of the Policy, and these common law rights arose before the Respondent
registered the Disputed Domain Name.
The Dispute Domain Name is confusingly
similar to the TYRA BANKS trademark.
Respondent does not have rights or legitimate
interests in the Disputed Domain Name.
Respondent has acted in bad faith in
registering and using the Dispute Domain Name.
DISCUSSION
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.
Preliminary Issue: Multiple Complainants
Complainant Banks and Complainant Telepictures are both Complainants in
this administrative action, and this raises an issue as to whether Complainant
Telepictures is properly a party.
The Forum Supplemental Rule 1(e) allows multiple persons or entities to
participate as complainants if they have a sufficient nexus and can claim to
have rights to all domain names listed in the complaint. See Vancouver
Organizing Comm. for the 2010 Olympics and Paralymic games And
Int’l Olympic Comm. v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12,
2006) (“It has been accepted that it is permissible for two complainants to
submit a single complaint if they can demonstrate a link between the two
entities such as a relationship involving a license, a partnership or an
affiliation that would establish the reason for the parties bringing the
complaint as one entity."); see also Tasty Baking, Co. & Tastykake Inv., Inc.
v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003) ( the panel
treated the two complainants as a single entity where both parties held rights
in trademarks contained within the disputed domain names); see also Am. Family Health
Serv. Group, LLC v. Logan, FA
220049 (Nat. Arb. Forum Feb. 6, 2004) (the panel found a sufficient link
between the complainants where there was a license between the parties regarding
use of the TOUGHLOVE mark); but see AmeriSource
Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a
domain name that may belong to AmerisourceBergen Corporation (i.e., the subject
Domain Names) should belong to AmeriSource Corporation because they are
affiliated companies.”).
In the instant action, Complainant Telepictures has a strong
relationship with Complainant Banks with respect to The Tyra Banks Show, and whereas the exact legal nature of the
relationship between them is not explained in the Complaint (both are described
as “producers” of the show), it can reasonably be inferred that Complainant
Banks has given her consent to Complainant Telepictures to use her name for
this purpose. Further, insofar as the
expression “TYRA BANKS” is a trademark, which is discussed further below, this Panel finds that Complainant Telepictures does have a claim
to rights with respect thereto.
As such, this Panel finds that Complainant Telepictures is a proper
party in this administrative action.
Hereafter the word “Complainant” shall refer to either or both
Complainant Banks and Complainant Telepictures.
Under the first element of the Policy, a
complainant must show that it has rights in a trademark, that it acquired these
rights prior to the time an involved disputed domain name was registered, and
that the disputed domain name is identical or confusingly similar to the
trademark.
In order to establish rights in a trademark,
it is not necessary for the trademark to be registered with a national
trademark authority. Common law
trademark rights are recognized and afforded protection under the Policy. See
SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000)
(finding that the Rules do not require that the complainant's trademark or
service mark be registered by a government authority or agency for such rights
to exist); see also Artistic Pursuit LLC v.
calcuttawebdevelopers.com, FA 894477
(Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require
a trademark registration if a complainant can establish common law rights in
its mark).
To establish common law rights in a
trademark, it is necessary for a complainant to demonstrate that the putative
mark has acquired secondary meaning and goodwill through use in commerce. See George Weston Bakeries
Inc. v. McBroom, FA 933276 (Nat.
Arb. Forum Apr. 25, 2007) (finding that the complainant could establish
common law rights in its GW BAKERIES mark through consistent and continuous use
of the mark, which helped the mark become distinctive and generate “significant
goodwill”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat.
Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use
was continuous and ongoing, and secondary meaning was established); see also Bayless v. Cayman Trademark Trust, FA 648245 (Nat. Arb. Forum Apr. 3, 2006) (“The Panel concludes
Complainant has proved that the RICK BAYLESS mark has become sufficiently
connected to Complainant’s career as a chef and the public associates that
career with Richard L. Bayless and the RICK BAYLESS mark.”); see also Smith v. Network Operations Ctr.,
FA 37162 (Nat. Arb. Forum Jan,. 13, 2005)
(“Unregistered celebrity names or marks have been consistently held to maintain
common law trademark rights under the Policy when used in conjunction with
celebrity personalities and the services provided therewith.”).
In the instant action, the question is
whether Complainant had developed sufficient secondary meaning and goodwill in
the TYRA BANKS trademark. Complainant provides evidence that she made some 50
significant public appearances between the years 1992 and 2004, including
appearances at The Soul Train Comedy Awards (1993), The Billboard Music Awards
(1996), The 39th Annual Grammy Awards (1997), The Late Show with David
Letterman (1997), The 29th NAACP Image Awards (1998), The Howard Stern Show (1998), The Teen Choice Awards 2000, The Oprah Winfrey Show (six episodes
from 1999 to 2001), The 61st Annual Golden Globe Awards (2004), and
significantly The Victoria’s Secret Fashion Show for 2001, 2002 and 2003. This Panel finds that this record establishes
that Complainant did develop significant secondary meaning and goodwill in the
TYRA BANKS trademark through use in commerce, and as such did develop common
law rights in the TYRA BANKS trademark.
With respect to the issue of Complainant's
acquisition of its trademark rights in the TYRA BANKS trademark prior to the
date on which Respondent registered the Disputed Domain Name, Respondent
registered the Disputed Domain Name on September 30, 2004, and as noted
immediately above, Complainant did acquire common law trademark rights through
use in commerce prior to and including 2004. As such, Complainant acquired her
common law trademark rights prior to the date on which Respondent registered
the Disputed Domain Name.
With respect to the issue of identicality
and/or confusing similarity, this issue is ordinarily determined by examining
the involved disputed domain name itself and comparing it to the involved
trademark. The content of a website to which a disputed domain name resolves is
not relevant with respect to this first element of the Policy.
In making the required comparison, trivial distinctions between a disputed domain name and a trademark are ignored, such as a single letter, a space, a hyphen, generic words, and in all cases generic top-level domain identifiers (“gTLD”), such as “.com," ". biz," etc. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Victoria’s Secret v. Plum Promotions, FA 96503 (Nat. Arb. Forum Feb. 27, 2001) (“The mere addition of the generic term “tv” does not reduce the likelihood of confusion under Policy 4(a)(i).”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
In the instant action, the Disputed Domain
Name is <tyrabanksshow.com>,
and the involved trademark is TYRA BANKS.
These differ only by the absence of a space, the addition of the word
“show” and the addition of the top-level domain identifier “.com,” all of which this Panel finds are trivial
differences and not sufficient to create a distinction for purposes of the
Policy.
Whereas the Disputed Domain Name is not
identical to the involved trademark, it is confusingly similar.
As such, Complainant has established the
first element of the Policy.
For purposes of an analysis of the second element of the Policy, a complainant must first make a prima facie case that a respondent lacks rights and legitimate interests in a disputed domain name, and then the burden shifts to the respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
In the instant action, Complainant states that it has not given a license or any other permission to Respondent to use the TYRA BANKS trademark. Also, Complainant points out that Respondent is not now and has never been commonly known by the Disputed Domain Name. Further, Complainant asserts that Respondent is using the Disputed Domain Name for the purpose of commercially profiting from the use of the confusingly similar domain name and thereby capitalizing on the claimant's goodwill in the involved mark, all of which is inconsistent with a legitimate use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites). Complainant provides as an exhibit a screenshot of the website to which the Disputed Domain Name resolves, and it is clear to this Panel from this screenshot that this website contains click-through advertising to third-party commercial sites. As such, Complainant has established its burden of proof.
Respondent argues that it registered the Disputed Domain Name to start a website wherein people can put up genuine opinions and their feedback with respect to a television show. Respondent further argues that it has every right to create a website that provides a vehicle for such expression provided that such expression is not otherwise damaging to the Complainant.
This Panel finds that Respondent has failed to carry its burden. The focus of the second element of the Policy is on a disputed domain name itself and whether a respondent has rights or legitimate interests therein. The content of the website to which a disputed domain name resolves, however legitimate the content may otherwise be, is not generally relevant; if it is relevant, it is in a negative sense as when the website content demonstrates that the intent is to trade-off a complainant’s goodwill.
As such, the Complainant has established the second element of the Policy.
Policy Paragraph 4(b) provides guidance with
respect to the type of conduct that constitutes a bad faith registration and
use of a domain name, as required by Policy paragraph 4(a)(iii). Policy paragraph 4(b) sets forth four
nonexclusive examples of prohibited conduct, one of which, Policy Paragraph 4(b)(iv), states as follows:
[B]y using the domain name, you have
intentionally attempted to attract, for commercial gain, Internet users to your
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 your website or location or of a product or service on your
website or location.
Complainant asserts that Respondent’s actions
fall within the scope of this Policy Paragraph 4(b)(iv),
Respondent asserts that this is not the case, and that Respondent has not
intentionally attempted 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. Rather, and as has been noted above, Respondent argues
that it uses the Disputed Domain Name in connection with a website wherein
people can put up genuine opinions and their feedback with respect to
television show, and in doing so Respondent in no way causing damage to the
complainant.
Complainant supplies as an exhibit to its
Complaint a screenshots of the full content of the website to which the
Disputed Domain Name resolves. This
content consists of less than two pages of material. At the top of the first page appears a box of
material that includes the following three elements:
1. A prominent photograph of Tyra Banks in the
top right-hand location of the page;
2. Immediately to the right of this photograph
appear the words “thetyrabanksshow,” and the words ”Tyrabanks” are in a
significantly larger font and made bold, such as “thetyrabanksshow”; and
3. The following statement: “Welcome to the Tyra
Banks show website. This is the place to get all of your TV show pictures,
videos, and info on Tyra and her show."
It is to be noted that this website does not
include pictures or video from the Tyra
Banks television show or any other television show, nor does this website
present opinions from fans and their feedback with respect to The Tyra Banks Show or any other
television show, which is Respondent’s stated reason for operating this
website. Having said this, the website does include three short paragraphs of
material describing Complainant Banks and her career.
Separating this initial box of content from
the noted three noted paragraphs of information about Complainant Banks’s
career, appears a prominent box of material containing the following words
"Models Wanted/ Looking for inexperienced New Faces," and immediately
following these words appears a click through button. This same material is
repeated immediately after the noted three paragraphs of factual material about
Complainant Banks such that said three paragraphs of factual material is
bracketed, in a visual sense, by these two click-through advertisements for
aspiring models.
Following this in the website is a repetition
of all of the above, except that the photograph of Tyra Banks does not appear
again and the two click-through advertising boxes are for different goods and
services, namely <styleist.com> and Victoria’s Secret.
Because of the presence of these click-through
advertising boxes, which are clearly commercial and for which Respondent no
doubt receives click-through revenues, because of the prominence of these
click-through advertising boxes, and because of the paucity of website content
that one would ordinarily associate with a fan based website, this Panel finds
that Respondent’s intention in registering and using the Disputed Domain Name
was and is to use a confusingly similar Disputed Domain Name for the purpose of
intentionally attempting to attract, for commercial gain, Internet users to
Respondent’s website, by creating a likelihood of confusion with the
Complainant's trademark as to the source, sponsorship, affiliation, or
endorsement of Respondent’s website.
As such, Complainant has established the
third element of the Policy.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tyrabanksshow.com> domain name be TRANSFERRED
from Respondent to Complainant.
Kendall C. Reed, Panelist
Dated: August 3, 2010
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