national arbitration forum

 

DECISION

 

The Elizabeth Taylor Trust, Interplanet Productions Limited and The Elizabeth Taylor Cosmetics Company v. Elizabeth Taylor / info@liztaylorscollection.com

Claim Number: FA1307001512348

PARTIES

Complainant is The Elizabeth Taylor Trust, Interplanet Productions Limited and The Elizabeth Taylor Cosmetics Company (“Complainant”), represented by Stephen J. Strauss of FULWIDER PATTON LLP, California, USA.  Respondent is Elizabeth Taylor / info@liztaylorscollection.com (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <liztaylors.net>, <liztaylors.org>, <liztaylors.info>, <liztaylorcollection.com>, and <liztaylorscollection.com>, registered with Godaddy Software, Inc.

 

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 30, 2013; the National Arbitration Forum received payment on July 30, 2013.

 

On August 1, 2013, Godaddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <liztaylors.net>, <liztaylors.org>, and <liztaylors.info>  domain names are registered with Godaddy Software, Inc. and that Respondent is the current registrant of the names. On August 7, 2013, Godaddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <liztaylorcollection.com> and <liztaylorscollection.com> domain names are registered with Godaddy Software, Inc. and that Respondent is the current registrant of the names.  Godaddy Software, Inc. has verified that Respondent is bound by the Godaddy Software, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On August 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 2013 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@liztaylors.net, postmaster@liztaylors.org, postmaster@liztaylors.info, postmaster@liztaylorcollection.com, postmaster@liztaylorscollection.com.  Also on August 14, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

a.      The Domain Names Are Identical to a Trademark and Service Mark in Which the Complainants Have Rights – ICANN Rules 3(b)(viii), (b)(ix)(1).

 

Elizabeth Taylor was one of the most recognized and famous personalities in the world.  She was an award winning actress, and an internationally respected producer, author, humanitarian and business entrepreneur.  Adored the world over, the international press and media frequently referred to Ms. Taylor as "Liz Taylor." 

 

In 1978, Ms. Taylor assigned rights in her name, likeness and appearance to her company, Interplanet Productions Limited ("Interplanet").

 

In the 1980's, Ms. Taylor and Interplanet licensed the ELIZABETH TAYLOR name and mark to The Elizabeth Taylor Cosmetics Company in connection with various cosmetics, perfumes and skin care products.  The Elizabeth Taylor Cosmetics Company then launched a successful line of perfumes and colognes under the ELIZABETH TAYLOR trademark.  The Elizabeth Taylor Cosmetics Company has obtained United States and foreign trademark registrations covering the ELIZABETH TAYLOR mark. 

 

In 2005, Ms. Taylor and Interplanet launched a line of jewelry under the ELIZABETH TAYLOR mark.

 

Interplanet has obtained United States trademark registrations covering the ELIZABETH TAYLOR mark for jewelry and headwear. 

 

Upon her death on March 23, 2011, The Elizabeth Taylor Trust ("Trust") succeeded to all of Ms. Taylor's post-mortem publicity rights not previously assigned to Interplanet, including but not limited to her name, voice, photograph and likeness.  On April 1, 2011, the Trust filed with the California Secretary of State a Claim as Successor-In-Interest to the persona and publicity rights of Ms. Taylor, pursuant to California Civil Code Section 3344.1. 

 

Interplanet has filed three United States trademark applications covering the mark LIZ TAYLOR for cosmetics and fragrances, jewelry and watches, and clothing and footwear. 

 

Long after Ms. Taylor had reached celebrity status, Respondents registered the domain names <liztaylorscollection.com>, <liztaylors.net>, <liztaylors.org>, <liztaylors.info> and <liztaylorcollection.com> (sometimes collectively referred to as the "Contested Domains") on November 11, 26 and December 29, 2012 respectively. The <liztaylors.net>, <liztaylors.org> and <liztaylors.info> domain incorporates, in their entireties, the plural form of the  "TAYLOR" portion of Complainants' ELIZABETH TAYLOR trademark and adds "LIZ," the short form of "Elizabeth," as well as the nickname most associated with Ms.  Taylor.  The <liztaylorscollection.com> domain also incorporates the plural "TAYLORS" and "Liz" and adds the word "collection."  The <liztaylorcollection.com> domain incorporates the "TAYLOR" portion of Complainants' ELIZABETH TAYLOR mark, and adds "Liz" and the word "collection."

 

To the best of Complainants' knowledge, Respondents have never used or developed the Contested Domains in connection with the bona fide offering of any goods or services.  The <liztaylors.net>, <liztaylors.org>, <liztaylors.info> and <liztaylorcollection.com> domain names each link to Go Daddy pay-per-link (PPL) landing sites incorporating generic search engines and links to other third party websites selling cosmetics and streaming movie services that are unrelated to any goods and services offered or sold by Complainants.  The <liztaylorscollection.com> domain links to an inactive website that depicts a photograph of a leaping man and woman in formal attire. 

 

Complainants submit that there exists sufficient common control and common interest between the Respondents to warrant consolidation of these proceedings.  Both Respondents share equivalent Registrant names – Elizabeth Taylor and Liz Taylor.  Additionally, each Respondent shares the same Admin Organization name and e-mail address – info@liztaylorscollection.com.  As such, Complainants submit that the Contested Domains are controlled by a single person or entity.  See, Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, D2010-0281 (WIPO 2010) ("Multiple domain name registrants controlled by a single person or entity may be treated as a single respondent for purposes of the Policy and Rules"). 

 

The Respondents Have No Rights or Legitimate Interests In Respect of the Domain Names – Policy, Para 4(a)(ii), Rules, Para 3(b)(ix)(2).

Complainants have clearly established, with extrinsic proof, that they have rights in the ELIZABETH TAYLOR and LIZ TAYLOR marks through registration and by continuous use of the mark in commerce prior to Respondent's registration of the Contested Domains.  See, Dame Elizabeth Taylor, The Elizabeth Taylor Cosmetics Company & Interplanet Productions Limited v Day After c/o Robert Chafino, FA0603000653586 (Nat. Arb. Forum April 14, 2006); The Elizabeth Taylor Trust, Interplanet Productions Limited and The Elizabeth Taylor Cosmetics Company v. Brian Hope, FA1205001445233 (Nat. Arb. Forum June 22, 2012). 

 

The Contested Domains incorporate, in their entireties, the plural form of the "TAYLOR" portion of Complainants' ELIZABETH TAYLOR trademark and adds "LIZ," the short form of "Elizabeth," as well as the nickname most associated with Ms. Taylor.  As such, the Respondents' registration and use of the Contested Domains creates a likelihood of confusion with Complainants' ELIZABETH TAYLOR mark.  Respondents' addition of the generic top-level domains ".com," ".net," ".org," and ".info" (or the inclusion of "collection" in <liztaylorcollection.com> and <liztaylorscollection.com>) in the Contested Domains domain does not negate the confusingly similar aspects of Respondents' domain names, pursuant to Policy ¶4(a)(i).

 

Complainants have no relationship with the Respondents, nor have Complainants given permission or authorized the Respondents to register and use the Contested Domains. 

 

To the best of Complainants' knowledge, Respondents have not been commonly known by the Contested Domains.

 

Complainants submit that Respondents had actual knowledge of Complainants' rights in the ELIZABETH TAYLOR mark (and that the "LIZ TAYLOR" nickname is associated with Ms. Taylor) when they registered the Contested Domains.

 

Respondents have made no demonstrable preparations to use the Contested Domains.  The <liztaylors.net>, <liztaylors.org>, <liztaylors.info> and <liztaylorcollection.com> domain names link to Go Daddy PPL sites incorporating generic search engines and links to other third party websites selling cosmetics and streaming movie services that are unrelated to any goods and services offered or sold by Complainants; and the <liztaylorscollection.com> domain links to an inactive website depicting a photograph of leaping man and woman in formal attire.  Such uses are neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See, Jaclyn Smith and Jaclyn Smith International, Inc. v. Unasi, Inc., FA0507000522853 (Nat. Arb. Forum September 7, 2005).  A copy of this decision is provided as Annex 11.

 

The Domain Names Were Registered and Are Being Used in Bad Faith            – Policy paras 4(a)(iii), 4(b); Rules, para 3(b)(ix)(3).

Respondent Elizabeth Taylor has registered the <liztaylors.net>, <liztaylors.org>, <liztaylors.info> and <liztaylorcollection.com> domains in bad faith under Paragraph 4(b)(iv) of the Policy in an attempt to purposely attract Internet users seeking Complainants' ELIZABETH TAYLOR products online to Respondent's commercial websites.  Respondent derives commercial benefit by receiving click-through fees for redirecting Internet users to other commercial websites.  See, Hilary Rodman Clinton v. Michele Dinoia a/k/a SZK.com, FA0502000414641 (Nat. Arb. Forum March 18, 2005). 

 

Alternatively, Respondents' passive holding of the Contested Domains (particularly <liztaylorscollection.com>) constitutes evidence of bad faith.  See, Volvo Trademark Holding AB v. Nicklas Uvelov, D2002-0521 (WIPO July 25, 2002) ("[I]t is becoming an established principal of this procedure under UDRP that merely holding an infringing domain name without use, can constitute use in bad faith."). 

 

The Respondents registered the Contested Domains in bad faith under Paragraph 4(b)(ii) of the Policy.  Respondents' multiple registration of domain names incorporating "LIZ TAYLOR," a nickname closely associated with Ms. Taylor and Complainants' ELIZABETH TAYLOR mark, establishes a pattern of conduct preventing Complainants from reflecting the well-known "LIZ TAYLOR" nickname and mark in corresponding domain names. See, Gamesville.com, Inc. v. Zuccarini, FA0007000095294 (Nat. Arb. Forum Aug. 30, 2000).

 

Finally, Respondents' registration of the contested domains, despite knowledge of Complainants' collective common law and registered rights in the ELIZABETH TAYLOR mark, is evidence, in and of itself, of bad faith registration and use.  See, Dame Elizabeth Taylor, The Elizabeth Taylor Cosmetics Company & Interplanet Productions Limited v. Day After c/o Robert Chafino, FA0603000653586 (Nat. Arb. Forum April 14, 2006) ("[T]he Panel in the present case finds that Respondent chose the <houseoftaylorjewelry.com> and <houseoftaylorjewelry.net> domain names based on the distinctive and well-known qualities of Complainant's HOUSE OF TAYLOR mark which is evidence of Respondent's actual knowledge of Complainant's mark"). 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)          the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)          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.

 

DISCUSSION

Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)          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.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Preliminary Issue: Multiple Complainants

The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e).  UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.”  The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”

 

There are three Complainants in this matter: The Elizabeth Taylor Trust (C1), Interplanet Productions Limited (C2) and The Elizabeth Taylor Cosmetics Company (C3). Interplanet (C2) received rights in Ms. Elizabeth Taylor’s name, likeness, and appearance in 1978. Ms. Taylor and Interplanet then licensed The Elizabeth Taylor Cosmetics Company (C3) to use the ELIZABETH TAYLOR mark in connection with perfumes, colognes, and skin care products.  Upon Ms. Taylor’s death in 2011, The Elizabeth Taylor Trust (C1) succeeded to all of Ms. Taylor’s publicity rights not previously assigned to Interplanet, including Ms. Taylor’s voice, photograph, and other likeness. Thus, all parties together control the overall interest in the ELIZABETH TAYLOR mark.

 

The Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other.  For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:

 

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.

 

In Tasty Baking, Co. & Tastykake Invs., 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.  Likewise, in Am. Family Health Srvs. 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.”).

 

The Panel finds the evidence in the Complaint sufficient to establish a nexus or link between the Complainants and elects to treat them all as a single entity in this proceeding. 

 

Preliminary Issue: Multiple Respondents

Complainant has alleged the entities which control the domain names at issue are effectively controlled by the same person and/or entity and operate under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  Complainant contends all of the domain names are controlled the same administrative organization name and e-mail address (info@liztaylors collection.com), and all the domain names have a registration name consisting of a variation on Elizabeth Taylor or Liz Taylor.

 

The Panel finds Complainant has presented sufficient circumstantial evidence the disputed domain names are controlled by the same entity and elects to proceed with the instant proceedings.

 

Identical and/or Confusingly Similar

Complainant uses the ELIZABETH TAYLOR mark in connection with the sale of cosmetics, skin care products, jewelry, headwear, and other related goods. Complainant has registered the ELIZABETH TAYLOR mark with the United States Patent & Trademark Office (“USPTO”) (Reg. No. 1,827,152 registered on March 22, 1994; Reg. No. 3,897,434 registered on December 28, 2010). Complainant has further registered the mark with the Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 10,742,484 registered on August 1, 2012). Complainant also registered various marks in Canada.  Registration of a mark in any trademark office shows the party’s rights under Policy ¶4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶4(a)(i).”).

 

Complainant claims Respondent registered the <liztaylors.net>, <liztaylors.org>, <liztaylors.info>, <liztaylorcollection.com>, and <liztaylorscollection.com> domain names, all of which are confusingly similar to the ELIZABETH TAYLOR mark. The <liztaylors.net>, <liztaylors.org>, and <liztaylors.info> domain names all pluralize the ELIZABETH TAYLOR mark, and shorten “elizabeth” into “liz”—a nickname associated with the late Ms. Taylor. The <liztaylorcollection.com> and <liztaylorscollection.com> domain names likewise shorten “elizabeth” to “liz,” and the <liztaylorscollection.com> domain name likewise pluralize the mark. The <liztaylorcollection.com> and <liztaylorscollection.com> domain names use the term “collection,” a generic term related to Complainant’s business. The removal of the space between words in Complainant’s mark or the addition of a gTLD is not relevant for an analysis under Policy ¶4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The addition of the related descriptive term “collection” does adequately distinguish the domain names from Complainant’s marks. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). Making the disputed domain names plural does not sufficiently distinguish them from Complainant’s marks under Policy ¶4(a)(i). See, e.g., Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶4(a)(i)). In Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003), the panel found that using a common short-form or abbreviation of a mark cannot serve as a basis for finding that said-domain name is somehow distinct from the abbreviated/shortened mark. The Panel finds all of the disputed domain names are confusingly similar to the ELIZABETH TAYLOR mark under Policy ¶4(a)(i).

 

The Panel finds Policy ¶4(a)(i) satisfied.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).  Then the burden shifts to Respondent to show it has 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.”).

 

Complainant claims Respondent is not actually known by these domain names, which Respondent fails to rebut. Complainant has not authorized Respondent to use the LIZ TAYLOR or ELIZABETH TAYLOR mark in domain names. While the WHOIS information does list “Elizabeth Taylor” or “Liz Taylor” as the registrant of the disputed domain names, this Panel is not convinced the registration is accurate, particularly in light of Respondent’s failure to respond. It appears to this Panel Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii).

 

Complainant argues Respondent has not put any of the <liztaylors.net>, <liztaylors.org>, <liztaylors.info>, and <liztaylorcollection.com> domain names to significant use. While domain names don’t have to be used for a web site, Respondent has not claimed the disputed domain name names are being used in any fashion whatsoever. Under such circumstances, it seems clear Respondent has not acquired any rights to the domain names by making a bona fide offering of goods or services under Policy ¶4(c)(i) or legitimate noncommercial or fair use under Policy ¶4(c)(iii).

 

The Panel finds Policy ¶4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

Complainant claims that Respondent’s registration of multiple infringing domain names in this dispute evidences Respondent’s bad faith under Policy ¶4(b)(ii). In Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007), the panel agreed that a respondent’s registration of multiple infringing domain names is a basis for finding bad faith under Policy ¶4(b)(ii). This Panel disagrees because Respondent didn’t prevent Complainant from reflecting its marks(s) in a domain name.

 

Complainant next argues that Respondent’s bad faith in regard to the <liztaylors.net>, <liztaylors.org>, <liztaylors.info>, and <liztaylorcollection.com> domain names is evident through Respondent’s use of these domain names to host hyperlink advertisements for various products. Some of these products are related and some are unrelated. Previous panels have held the use of a confusingly similar domain name for purposes of hyperlink advertisements only serves as a basis for finding that the respondent sought to drum up commercial gains through the confusion of Internet users. See, e.g., AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). This Panel agrees and finds Respondent is acting in Policy ¶4(b)(iv) bad faith by using the <liztaylors.net>, <liztaylors.org>, <liztaylors.info>, and <liztaylorcollection.com> domain names to promote hyperlink advertisements whilst creating the confusing impression that Complainant is the source or origin of these advertisements.

 

Complainant finally claims Respondent had actual knowledge of Complainant’s rights in the LIZ TAYLOR and ELIZABETH TAYLOR marks when registering the contested domain names. The Panel agrees and finds that Respondent had actual knowledge of Complainant's marks and rights given the international fame they have achieved.  Respondent registered the disputed domain names in bad faith under Policy ¶4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").

 

The Panel finds Policy ¶4(a)(iii) satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

 

Accordingly, it is Ordered the <liztaylors.net>, <liztaylors.org>, <liztaylors.info>, <liztaylorcollection.com>, and <liztaylorscollection.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Wednesday, September 11, 2013

 

 

 

 

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