Dame Elizabeth Taylor, The Elizabeth Taylor Cosmetics Company & Interplanet Productions Limited v. Day After c/o Robert Chafino
Claim Number: FA0603000653586
Complainants are Dame Elizabeth Taylor, The Elizabeth Taylor Cosmetics Company & Interplanet Productions Limited (collectively “Complainant”), represented by Stephen J. Strauss, of Fulwider Patton LLP, 6060 Center Drive, Tenth Floor, Los Angeles, CA 90045. Respondent is Day After c/o Robert Chafino (“Respondent”), 4600 Coldwater Canyon #4, Studio City, CA 91604.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <houseoftaylorjewelry.com> and <houseoftaylorjewelry.net>, registered with Go Daddy Software, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 6, 2006.
On March 6, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <houseoftaylorjewelry.com> and <houseoftaylorjewelry.net> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 28, 2006 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 postmaster@houseoftaylorjewelry.com and postmaster@houseoftaylorjewelry.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 4, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <houseoftaylorjewelry.com> and <houseoftaylorjewelry.net> domain names are confusingly similar to Complainant’s HOUSE OF TAYLOR mark.
2. Respondent does not have any rights or legitimate interests in the <houseoftaylorjewelry.com> and <houseoftaylorjewelry.net> domain names.
3. Respondent registered and used the <houseoftaylorjewelry.com> and <houseoftaylorjewelry.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Elizabeth Taylor, is one of the most recognized and famous personalities in the world. She is an award-winning actress, and an internationally respected producer, author and business entrepreneur. In 1999, Complainant was named a Dame of the British Empire by Queen Elizabeth II. Subsequently, Complainant assigned her rights in her name, likeness and appearance to her company, Interplanet Productions Limited. Complainant and her company subsequently licensed complainant’s names and marks exclusively to The Elizabeth Taylor Cosmetics Company to be used 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 HOUSE OF TAYLOR mark. Complainant has obtained Trademark registration rights in the HOUSE OF TAYLOR mark through registration of the mark with various trademark authorities throughout the world, including Japan and the United States Patent and Trademark office (“USPTO”) (Reg. No. 2,795,838 issued December 16, 2003).
Respondent registered the <houseoftaylorjewelry.com> domain name on March 1, 2005 and the <houseoftaylorjewelry.net> domain name on May 5, 2005. Respondent is using the disputed domain names to host a generic search engine website containing links to other third party websites engaged in the sale of jewelry. Respondent has also offered to sell the disputed domain names to Complainant for $3,000.
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."
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.”).
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.
Complainant has established rights in the HOUSE OF TAYLOR mark through registration with the USPTO and various other trademark authorities around the world. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant asserts that the <houseoftaylorjewelry.com> and <houseoftaylorjewelry.net> domain names are confusingly similar to Complainant’s HOUSE OF TAYLOR mark pursuant to Policy ¶ 4(a)(i), because the addition of the descriptive word “jewelry” does not distinctly separate the confusingly similar aspect of Respondent’s domain name from Complainant’s mark. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also 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).
Furthermore, according to Nevada State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), where the panel stated that “the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy,” the Panel finds that the addition of the generic top-level domain “.com” in Respondent’s domain name does not negate the confusing similarity of the disputed domain names from Complainant’s HOUSE OF TAYLOR mark pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have any rights or legitimate interests in the <houseoftaylorjewelry.com> and <houseoftaylorjewelry.net> domain names. When a complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to the Complaint, the Panel infers that Respondent does not have rights or legitimate interests in the dispute domain names. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel now chooses to examine whether the evidence supports Respondent’s rights or legitimate interests.
In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel found the respondent did not have rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name. In the present case, Respondent has not offered any evidence and there is no proof in the record suggesting that Respondent is commonly known by the disputed domain names. Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Moreover, Respondent is using the disputed domain names to host a generic search engine website containing links to other third party websites engaged in the sale of jewelry for which Respondent presumably receives click-through fees. Similar to the panel in Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) where a domain name used to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites was found to be neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the registrant presumably receives compensation for each misdirected Internet user, the current Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names for similar reasons under Policy ¶¶ 4(c)(i) and (iii). See Trans Global Tours, LLC v. Yong Li, FA 196166 (Nat. Arb. Forum Nov. 1, 2003) (finding that the respondent was not using the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because it was diverting Internet users to a search engine with pop-up advertisements).
Additionally, the Panel finds that Respondent’s offer to sell the disputed domain names is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Similar to the holding in Samsonite Corp v. Colongy Holding, FA94313 (Nat. Arb. Forum Apr. 17, 2000), that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration, the 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. Furthermore, Complainant’s registration of the HOUSE OF TAYLOR mark serves as constructive knowledge of Complainant’s rights in the mark to Respondent and the rest of the world. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).
The Panel further finds that Respondent’s offer to sell the
disputed domain names to Complainant in exchange for consideration above and
beyond Respondent’s out of pocket registration expenses, is evidence of
Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec,
Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s
offer to sell the domain name for $2,000 sufficient evidence of bad faith
registration and use under Policy ¶ 4(b)(i)); see also World Wrestling Fed’n Entm’t., Inc. v.
Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the
domain name in bad faith because he offered to sell the domain name for
valuable consideration in excess of any out-of-pocket costs).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <houseoftaylorjewelry.com> and <houseoftaylorjewelry.net> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: April 14, 2006
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