Kevin Spacey v. Alberta Hot Rods
Claim Number: FA0205000114437
Complainant is Kevin Spacey, Palo Alto, CA, USA (“Complainant”) represented by Jennifer S. Fryhling, of Manatt, Phelps & Phillips, LLP. Respondent is Alberta Hot Rods, High Prairie, AB, CANADA (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kevinspacey.com>, registered with CORE.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Bruce E. Meyerson, Hon. James P. Buchele (Ret.) and Gordon D. Harris as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 29, 2002; the Forum received a hard copy of the Complaint on May 31, 2002.
On June 3, 2002, CORE confirmed by e-mail to the Forum that the domain name <kevinspacey.com> is registered with CORE and that the Respondent is the current registrant of the name. CORE has verified that Respondent is bound by the CORE 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 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 24, 2002 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 timely Response was received and determined to be complete on June 26, 2002.
Complainant submitted a timely Additional Submission on July 1, 2002. Respondent submitted a timely Additional Submission on July 8, 2002.
On July 16, 2002, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Bruce E. Meyerson, Hon. James P. Buchele (Ret.) and Gordon D. Harris as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant Kevin Spacey is a noted actor. He claims that Respondent registered his exact name as a domain name to divert Internet traffic to Respondent’s commercial website. Complainant contends that Respondent’s use of the domain name has been to mislead Internet users into believing that they are accessing a site that is associated or affiliated with Kevin Spacey. Complainant asserts that previous ICANN Panels have determined in other cases involving Respondent (or others affiliated with it) that its use of famous names that redirect Internet users to Respondent’s “celebrity1000.com” website does not constitute a legitimate use of the domain names in connection with a bona fide offer of goods and services. Complainant further contends that Respondent has acted in bad faith as evidenced by Respondent’s alleged practice “amassing famous names and marks for unlawful purposes.”
Since 1996, Respondent has operated a celebrity fan network known as “Celebrity 1000, Your Ultimate Entertainment Source.” Respondent registered the disputed domain name in 1996 as part of the Celebrity 1000 fan network. Respondent contends that it has not attempted to disrupt any business activities of Complainant, as Complainant owns multiple domain names. Respondent claims there are numerous “third party” uses of the name Kevin Spacey. Respondent contends that Complainant has no enforceable rights for the purpose of challenging the domain name because Complainant did not have a registered trademark until after the domain name was registered. Moreover, Respondent contends that Complainant does not have common law rights because his name is “not applied to a good or service as a source identifier.” Respondent contends that previous ICANN decisions finding that its fan sites do not support a legitimate interest “were wrong and unfair,” particularly in light of the fact that Respondent has spent substantial sums to develop its website network. Further, Respondent claims that there can be no showing of bad faith as the date of the registration of the domain name preceded the application and registration of Complainant’s marks and the date of any common law use of the name Kevin Spacey.
C. Additional Submissions
There was a pending lawsuit between the parties, Spacey v. Burgar, ___ F. Supp. 2d ___, 2001 WL 1869857 (C.D. Cal. 2001). That action was dismissed because the court lacked personal jurisdiction over Jeffrey Burgar, a Canadian, and a principal owner of Respondent. Complainant asserts that prior to the commencement of the suit, the disputed domain name linked to <celebrity1000.com>. After notice of the suit, Respondent created an “unauthorized” fan site that no longer linked to the “celebrity1000” site. Complainant contends that Respondent “has shown a pattern of . . . reactive conduct by creating ‘fan sites’ in order to prevent transfer of disputed domains and to prevent trademark owners from using their trademarks.” In Respondent’s Additional Submission, Respondent denies that the “Unauthorized Kevin Spacey Fan Club Site” was established on the <kevinspacey.com> website after the lawsuit was filed. In addition, Respondent contends that the Complaint should be barred by the doctrine of laches as the domain name was registered in 1996 and the Complainant did not initiate any legal proceeding until April 2001.
Complainant Kevin Spacey is a noted actor. Since 1996, Respondent has operated a celebrity fan network known as “Celebrity 1000, Your Ultimate Entertainment Source.” Respondent, doing business as the Kevin Spacey Club, registered <kevinspacey.com> in 1996 as part of the Celebrity 1000 fan site network and has owned the domain name since that date. There was a pending lawsuit between the parties, Spacey v. Burgar, ___ F. Supp. 2d ___, 2001 WL 1869857 (C.D. Cal. 2001). As found in the federal court action, Jeffrey Burgar, a principal or owner of Respondent, entered into a licensing agreement with another of his companies under which the Kevin Spacey Club authorized Celebrity 1000 to use <kevinspacey.com> to divert those attempting to access <kevinspacey.com> to the Celebrity 1000 website. The federal court action was dismissed for lack of personal jurisdiction. After Respondent received notice in September 2000 that Complainant disputed its use of the domain name, Respondent created an “unauthorized” fan website that no longer linked to the Celebrity1000 site.
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.
Identical and/or Confusingly Similar
Complainant argues that he has longstanding common law rights in his name because it has acquired secondary meaning throughout the United States and internationally. We do not find it necessary to determine whether Complainant had trademark registrations in his name prior to the registration of the disputed domain name, as the Panel finds that a celebrity may have sufficient proprietary rights in their name to satisfy the standing requirement of Policy ¶ 4(a)(i) due to the celebrity’s fame and association of their name with their persona. Stated simply, a celebrity’s name can serve as a trademark when used to identify the celebrity’s performance services. See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association that common law trademark rights exist); see also Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (Complainant held common law trademark rights in his famous name Mick Jaggger). We agree with Complainant that the public associates his name with his acting services.
Of course, a domain name is still considered identical or confusingly similar to a legally protected name, even with the addition of an Internet address, because generic top-level domains, such as “.com,” are required in domain names. Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the Internet address and does not add source identity significance). Thus, <kevinspacey.com> is identical to “Kevin Spacey” within the meaning of Policy ¶ 4(a)(i).
Respondent has argued that the Final Report of the WIPO Internet Domain Name Process reveals that “personality” disputes are outside the scope of the Policy. We would find the report persuasive on this issue as “legislative history” if we found some ambiguity in the Policy itself. Because the Policy does not purport to exclude the category of disputes involving “personality rights,” we join the many other Panels that have recognized that the Policy does, indeed, protect such interests.
Rights or Legitimate Interests
Until December 2000, Respondent used the <kevinspacey.com> domain name to divert Internet traffic to Respondent’s commercial website, <celebrity1000.com>. After receiving notice from Complainant that Respondent’s actions were being challenged, Respondent changed the registration name and used the <kevinspacey.com> domain name as an unauthorized fan site. The creation of a fan site after notice of a dispute has been found not to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Brown v. Julie Brown Club, D2000-1628 (WIPO Feb. 13, 2000).
Moreover, Respondent’s use of the <kevinspacey.com> domain name for an unauthorized fan site, as an apparent stratagem after previously using the site to direct Internet traffic to its own commercial site, demonstrates that Respondent is not making fair use of the domain name within the meaning of Policy ¶ 4(c)(iii). Cf. Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when the Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website).
Finally, it is undisputed that Respondent is not and has never been commonly known by the name “Kevin Spacey” or the <kevinspacey.com> domain name. Indeed, Respondent has no connection with Complainant and is not authorized to use Complainant’s name. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
Registration and Use in Bad Faith
Complainant argues that both of Respondent’s uses of the <kevinspacey.com> domain name--first diverting Internet traffic to <celebrity1000.com> and then connecting the domain name to an unauthorized fan website--constitute an opportunistic attempt to trade off Complainant’s fame. Complainant contends that Respondent’s initial use of the domain name, before notification of Complainant’s objections, is bad faith under Policy ¶ 4(b)(iv) because Internet users were misleadingly diverted to the <celebrity1000.com> domain name that had banner advertisements from which Respondent profited. We agree. See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the Respondent linked the domain name to another website); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the Respondent attracted users to advertisements).
Complainant asserts that Respondent’s modification of the <kevinspacey.com> domain name to an unauthorized fan website is bad faith use because Respondent has no permission to use Complainant’s name and no rights in the name “Kevin Spacey.” Again, we agree. See Experience Hendrix, L.L.C. v. Hammerton D2000-0364 (WIPO Aug. 15, 2000) (finding bad faith because registration and use of the domain name did not predate the Complainant’s use and rights in the name and mark but rather appeared to be an attempt to usurp the Complainant’s rights therein).
We also reject Respondent’s argument of laches. Laches requires not only delay in asserting rights but prejudice to the other party. Assuming that laches is even a proper argument in this context, we find no prejudice to Respondent as it has been able to develop and market its celebrity1000 website, and Complainant’s “delay,” if any, has not prejudiced those efforts.
Finally, the Panel would like to make the following observation. A member of this Panel was the presiding Panelist in the case of Springsteen v. Jeff Burgar and Bruce Springsteen Club, D2000-1532 (WIPO Jan. 25, 2001), which has been cited by the Respondent in this case. Although Mr. Harris stands by much of the reasoning set out in the Bruce Springsteen case, he believes that this case can be distinguished at least in relation to the issue of "bad faith" because the unauthorized "fan club" site was only established by the Respondent in December 2000 after Complainant had brought his concerns to Respondent’s attention in September 2000. This is significant evidence of bad faith.
Furthermore, two years after the Springsteen case, the persistent behavior of this Respondent in the registration of celebrity names militates against the "benefit of the doubt" which the Panelist afforded the Respondent in the previous case. Thus, the Panel agrees with Complainant that bad faith has been shown under Policy ¶ 4(b)(ii) because of Respondent’s persistent registration and use of famous names and marks in the past. See Dion v. Burgar, D2000-1838 (WIPO Feb. 13, 2001) (finding that Respondent has engaged in a pattern of conduct of registering the names of famous people in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name).
The domain name <kevinspacey.com> shall be transferred from Respondent to Complainant.
Bruce E. Meyerson (Chair), Hon. James P.
Buchele (Ret.) and Gordon D. Harris, Panelists
Dated: August 1, 2002
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