Stephanie
Seymour v Jeff Burgar d/b/a Stephanie
Seymour Club
Claim Number: FA0104000097112
PARTIES
The Complainant is Stephanie Seymour, USA (“Complainant”) represented by Michael J. Plonsker, of Alschuler, Grossman, Stein & Kahan LLP. The Respondent is Jeff Burgar Stephanie Seymour Club, High Prairie, AB, Canada (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <stephanieseymour.com>, registered with Network Solutions, Inc.
PANEL
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. James A. Carmody, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 25, 2001; the Forum received a hard copy of the Complaint on April 27, 2001.
On April 27, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <stephanieseymour.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 April 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 17, 2001 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@stephanieseymour.com by e-mail.
A timely response was received and determined to be complete on May 17, 2001.
On
May 22, 2001, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum
appointed the Hon. James A. Carmody as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges that she has common law trademark rights, as a well known fashion model, in her name “Stephanie Seymour” and that the domain name at issue, <stephanieseymour.com>, is identical or confusingly similar to that trademark. Further, since Complainant has not licensed or otherwise authorized Respondent to use her trademark and Respondent is not commonly known as Stephanie Seymour, Respondent has no rights or legitimate interests with respect to the domain name at issue. In addition, Respondent has not developed a website in connection with the domain name at issue and uses it only to transfer web surfers to a second Respondent operated commercial website. Accordingly, asserts Complainant, Respondent is guilty of bad faith by intentionally attempting to attract, for commercial gain, web surfers to his site by creating a likelihood of confusion with the Complainant’s name as to the source and endorsement of the Respondent’s website. Finally, Respondent’s registration has deprived the trademark owner of the opportunity to exploit her common law trademark in the domain name at issue.
B. Respondent
Respondent does not deny that Complainant has common law trademark rights in her name or that the domain name at issue is identical or confusingly similar to her name.
Rather, Respondent claims that he has the right of freedom of expression which entitles him to use of the domain name at issue and that celebrities do not have the exclusive right to control the use of their names to identify websites. Further, Respondent claims rights and legitimate interests in the domain name at issue, because he operates a website at <celebrity1000.com> to which surfers are funneled when typing in the domain name at issue in the navigational bar of the browser. The celebrity1000 website contains nothing defamatory or abusive and does not claim to be sponsored or endorsed by any of the celebrities mentioned there, including the Complainant. Respondent denies bad faith registration and use of the domain name at issue and claims common law rights to the use of the Stephanie Seymour name by virtue of almost five years of use of the domain name at issue.
Complainant Stephanie Seymour is one of the world’s true supermodels and has been at the pinnacle of her profession for more than a decade, long before Respondent registered <stephanieseymour.com>. She has appeared on the covers of virtually every significant fashion magazine in the world, including Allure, Cosmopolitan, Elle, Marie Claire, Vogue, and W, as well as in the Victoria’s Secret lingerie catalog. In addition to her illustrious print work, Ms. Seymour has also acted in motion pictures, including the recent critically-acclaimed “Pollock.” Accordingly, the Complainant’s name is crucial to her current livelihood which depends upon her name and likeness. Although Complainant’s name is not presently registered as a trademark, her fame as a supermodel and actress evidences a reputation worthy of protection under common law trademark laws against passing off or misappropriation.
Respondent has not at any time received any permission, authorization, or license from Complainant to use her name in any fashion, nor does Respondent so claim. Additionally, Complainant was famous, and thus her name and mark were famous, before Respondent registered the domain name at issue, demonstrating that the Complainant, not Respondent, was and still is commonly known by Complainant’s name.
Respondent has not created a
website for the domain name at issue, but instead merely uses the domain name
to point to one of his other commercial websites, <celebrity1000.com>.
By registering and using the domain name at issue, the Respondent has intentionally
attempted to attract, for commercial gain, Internet users to another of his websites,
<celebrity1000.com>, by creating a likelihood of confusion with the Complainant’s
name as to the source and endorsement of the Respondent’s website to Respondent’s
benefit and Complainant’s detriment. Celebrity1000.com is used for commercial gain
because it contains advertising and hyperlinks to other websites providing goods and
services.
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.
Identical and/or
Confusingly Similar
Through her years of international fame as a top supermodel, Complainant has established a common law right to her name. 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 with the Complainant that common law trademark rights exist). Complainant contends that the domain name is identical to the name in which she has common law rights. See Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding Respondent’s domain name, <karlalbrecht.com>, identical to Complainant’s common law mark). Respondent does not seriously deny this element.
I find that the requirements of Paragraph 4(a)(i) have been satisfied.
Rights or
Legitimate Interests
I find that the requirements of Paragraph 4(a)(ii) have been satisfied.
Registration and
Use in Bad Faith
Respondent registered and uses the domain name at issue in bad faith because he has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site and the activities therein. See Anne of Green Gable Licensing Authority, Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding bad faith where Respondent used the domain name <anneofgreengables.com> to link users to a web site that contains information about the Anne of Green Gables literary works, motion pictures and the author, L. M. Montgomery, where a visitor to the web site may believe that the owner of the mark ANNE OF GREEN GABLES is affiliated with or has sponsored or endorsed Respondent's web site); see also McLellan v. Smartcanuk.com, AF-0303 (eResolution Sept. 25, 2000) (finding bad faith where the domain name resolved to a website containing banner ads, a link to the Respondent’s website, and a brief history of the McLellen name).
I find that the requirements of Paragraph 4(a)(iii) have been satisfied.
It is the Decision of this Panel that the domain name, <stephanieseymour.com>, be transferred from Respondent to Complainant.
Hon. James A. Carmody, Panelist
Dated: May 29, 2001
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