The Elizabeth Taylor Trust, Interplanet Productions Limited and the Elizabeth Taylor Cosmetics Company v. Elizabeth Taylor
Claim Number: FA1308001513436
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 (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <liztaylorsboutique.com>, registered with GoDaddy.com, LLC.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 6, 2013; the National Arbitration Forum received payment on August 6, 2013.
On August 7, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <liztaylorsboutique.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 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@liztaylorsboutique.com. Also on August 16, 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 Hon. Karl V. Fink (Ret.), 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant’s Contentions
Complainant’s Rights and Confusing Similarity of Domain Name (Policy ¶ 4(a)(i))
Respondent’s Lack of Rights or Legitimate Interests (Policy ¶ 4(a)(ii))
Respondent’s Bad Faith Use and Registration (Policy ¶ 4(a)(iii))
· Respondent seeks to intentionally attract Internet users to the <liztaylorsboutique.com> domain name for purposes of collecting advertising revenue each time a user clicks on the hyperlinks. Internet users will falsely believe that Complainant and its ELIZABETH TAYLOR mark are the source or origin of the hyperlinks, and thus the user will be led to believe that Complainant endorses the products or services offered through these commercial advertisements.
· Respondent had actual knowledge of Complainant’s rights in the ELIZABETH TAYLOR mark when registering the disputed <liztaylorsboutique.com> domain name.
Respondent registered the <liztaylorsboutique.com> domain name on August 7, 2012.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.
Previous panels have interpreted 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. 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.
The Panel accepts that the uncontested evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and will treat them all as a single entity in this proceeding. In this decision, the Complainants will be collectively referred to as “Complainant.”
Identical and/or Confusingly Similar
Complainant explains that it is the successor in interest to the late Ms. Elizabeth Taylor, an actress and public figure from the mid-twentieth century until her death in the early twenty-first century. Complainant claims that it has rights in the ELIZABETH TAYLOR mark, used in connection with the sale of perfumes, jewelry, headwear, and related goods. Complainant notes that it has obtained trademark registrations for the ELIZABETH TAYLOR mark with the USPTO (e.g., Reg. No. 1,827,152 registered March 22, 1994; Reg. No. 3,897,434 registered December 28, 2010). The Panel agrees that as both parties reside in the United States, the evidence of USPTO registration is satisfactory evidence under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant next argues that Respondent has registered the <liztaylorsboutique.com> domain name that uses the short-form “Liz” instead of the late Ms. Taylor’s full name “Elizabeth.” Complainant further argues that Respondent’s addition of the gTLD “.com” does not negate the confusing similarity. Complainant also contends that the addition of the descriptive term “boutique” enhances the confusion. The Panel finds that neither the deletion of the mark’s spacing, nor the affixation of the gTLD, are relevant modifications under the Policy. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). In Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001), the panel explained that the abbreviation or shortening of a mark in a domain name illustrates that the at-issue domain name is confusingly similar to the underlying, abbreviated, mark. Thus the Panel finds that the shortening of the term “Elizabeth” to “Liz” enhances the confusing similarity of this domain name. The panel finds that the addition of the letter “s” to the “Taylor” portion of the mark does not negate confusing similarity. See 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)). The Panel agrees that the term “boutique” enhances the confusing similarity of this domain name, as this descriptive term related directly to the type of business which would sell Complainant’s perfumes and other products. See, e.g., Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The Panel concludes that the <liztaylorsboutique.com> domain name is confusingly similar to the ELIZABETH TAYLOR mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to 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.”).
Complainant argues that Respondent is not actually known by the <liztaylorsboutique.com> domain name. Complainant further claims that it has not authorized, permitted, or licensed the use of the ELIZABETH TAYLOR mark to Respondent. The Panel notes that the <liztaylorsboutique.com> domain name’s WHOIS information lists “Elizabeth Taylor” as the registrant. In Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003), the panel confronted a WHOIS record suggesting the respondent was known as the domain name by determining that it was inappropriate for the panel to make such a finding in the absence of any corroborating or supporting evidence. The Panel agrees that when the only evidence suggesting that Respondent is known by the domain name is an entry in the WHOIS information, Respondent has not carried its burden in proving Policy ¶ 4(c)(ii).
Complainant next argues that Respondent uses the <liztaylorsboutique.com> domain name in connection with a website parked by GoDaddy.com, LLC, for purposes of promoting hyperlink advertisements to various competing and unrelated goods. The Panel notes that the domain name does resolve to GoDaddy.com, LLC’s standard parking page, with several advertisements to competing cosmetic and perfume goods as well as various unrelated hyperlink advertisements. Previous panels have concluded that the use of a disputed domain name for purposes of hosting hyperlink advertisements cannot be a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”). The Panel agrees that Respondent’s use of this domain name to promote commercial hyperlinks does not give rise to a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant has proven this element.
Complainant argues that Respondent seeks to intentionally attract Internet users to the <liztaylorsboutique.com> domain name for purposes of collecting advertising revenue each time the user clicks on the hyperlinks. Complainant claims that Internet users will falsely believe that Complainant and its ELIZABETH TAYLOR mark are the source or origin of the hyperlinks, and thus the user will be led to believe that Complainant endorses the products or services offered through these commercial advertisements. The Panel acknowledges that the domain name is being used to promote a website that contains hyperlinks to competing and unrelated goods. In Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panel determined that there is a likelihood of confusion when a respondent uses a confusingly similar domain name to promote goods or services, without the permission of the complainant, for the benefit of the respondent. The Panel agrees that Respondent’s conduct in registering and using the <liztaylorsboutique.com> domain name to promote various competing and unrelated hyperlinks is evidence of a Policy ¶ 4(b)(iv) bad faith attempt to capitalize on the likelihood of confusion amongst consumers.
Complainant claims that Respondent had actual knowledge of Complainant’s rights in the ELIZABETH TAYLOR mark when registering the disputed <liztaylorsboutique.com> domain name, notably through Respondent’s use of the full ELIZABETH TAYLOR in the WHOIS information. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and the Panel finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <liztaylorsboutique.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 12, 2013
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