The Elizabeth Taylor Trust, Interplanet Productions Limited and The Elizabeth Taylor Cosmetics Company v. Doug Stickney
Claim Number: FA1311001529983
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 Doug Stickney (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <liz-taylor.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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 15, 2013; the National Arbitration Forum received payment on November 15, 2013.
On November 15, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <liz-taylor.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 November 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 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@liz-taylor.com. Also on November 18, 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.
A timely Response was received and determined to be complete on December 9, 2013.
A timely Additional Submission was received and determined to be complete on December 12, 2013.
On December 19, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
B. Respondent makes the following contentions:
C. Additional Submissions
Complainant contends the following in its Additional Submission dated December 12, 2013:
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.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are three Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny 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.”
The three Complainants in this matter are: The Elizabeth Taylor Trust, Interplanet Productions Limited, and The Elizabeth Taylor Cosmetics Company.
Complainants allege that in 1978, well-known actress and producer Elizabeth Taylor assigned rights in her name, likeness, and appearance to her company, Interplanet Productions Limited. They further allege that in the 1980’s, Elizabeth Taylor and Interplanet Productions Limited licensed the ELIZABETH TAYLOR mark to The Elizabeth Taylor Cosmetics Company in connection with various cosmetic products. The Elizabeth Taylor Cosmetics Company then launched a successful line of perfumes and colognes under the ELIZABETH TAYLOR mark. Both The Elizabeth Taylor Cosmetics Company and Interplanet Productions Limited have obtained registrations of the ELIZABETH TAYLOR mark with the USPTO. See Complainant’s Exhibits 2 & 3. Interplanet Productions Limited has also filed three USPTO applications for the LIZ TAYLOR mark. See Complainant’s Exhibit 5. In 2011, The Elizabeth Taylor Trust succeeded to all of Ms. Taylor’s post-mortem publicity rights not previously assigned to Interplanet Productions Limited, including her name, voice, photograph and likeness.
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. 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.
The Panel accepts that the evidence in the Complaint establish a sufficient nexus between the Complainants and accordingly treats them all as a single entity for purposes of this proceeding.
Accordingly, the Complainants will heretofore be collectively referred to as “Complainant.”
Identical and/or Confusingly Similar
Complainant states that it uses the ELIZABETH TAYLOR mark in connection with the sale of jewelry and cosmetics, and that it also owns rights in Ms. Elizabeth Taylor’s image and likeness. Complainant states that it owns rights in the ELIZABETH TAYLOR mark pursuant to Policy ¶ 4(a)(i) through registrations of the mark with the USPTO (e.g., Reg. No. 1,827,152 registered March 22, 1994). See Complainant’s Exhibit 2.
Previous panels have recognized that a complainant sufficiently establishes its rights under the Policy by registering the mark with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel notes, as pointed out in Complainant’s Additional Submission dated December 12, 2013, that Respondent does not dispute that Complainant owns rights in the ELIZABETH TAYLOR mark in its Response.
For the foregoing reasons, the Panel holds that Complainant’s registration of the ELIZABETH TAYLOR mark with the USPTO is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant next argues that the <liz-taylor.com> domain name is confusingly similar to Complainant’s ELIZABETH TAYLOR mark, because the domain name fully appropriates the mark and merely shortens the word “Elizabeth” to its common-use abbreviation “Liz.”
It has previously been held that a domain name is confusingly similar to a complainant’s mark under Policy ¶ 4(a)(i) where the domain name incorporates the mark but abbreviates one of the words found in the mark. See SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (finding that the <atlhomeshow.com> domain name was confusingly similar to the complainant’s ATLANTA HOME SHOW mark, as “atl” was a common abbreviation for the city of Atlanta). In this context, the Panel takes note that Complainant’s Exhibit 1 is a series of online articles which refer to Ms. Elizabeth Taylor as “Liz” Taylor. Furthermore, Complainant’s Additional Submission dated December 12, 2013 points out that Respondent does not dispute that “LIZ TAYLOR” is the famous nickname associated with Ms. Elizabeth Taylor.
The Panel concludes that the word “Liz” is a common abbreviation of the word “Elizabeth” found in the mark, and that this abbreviation is not sufficient to distinguish the disputed domain name from the mark, consistent with the panel’s findings in SEMCO Prods., supra.
The Panel observes that the <liz-taylor.com> domain name adds a hyphen as well as the generic top-level domain (“gTLD”) “.com.” However, previous panels have held that a domain name’s addition of a hyphen or a gTLD is not sufficient to distinguish the domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Finally, the Complainant in its Additional Submission, points out that Respondent admits that "disputed domain name <liz-taylor.com> is similar to the Complainant's marks." See Response at ¶ 3(b).
For the foregoing reasons, the Panel holds that the <liz-taylor.com> domain name is confusingly similar to Complainant’s ELIZABETH TAYLOR mark pursuant to Policy ¶ 4(a)(i).
The 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 suggests that Respondent is not commonly known as <liz-taylor.com>. Previous panels have held that a respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, to indicate otherwise. See, e.g., M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
In the instant proceedings, the Panel notes that the WHOIS information identifies Respondent as “Doug Stickney,” which suggests that Respondent is known by this name and not commonly known as <liz-taylor.com>. The Panel further notes that according to Complainant’s Additional Submission, Respondent does not dispute Complainant’s allegations that Respondent is not commonly known by the disputed domain.
Accordingly, the Panel holds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent’s use of the <liz-taylor.com> domain name is not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use, because Respondent is using the disputed domain name to advertise Elizabeth Taylor-related products that directly compete with the Elizabeth Taylor-related products offered by Complainant. See Complainant’s Exhibit 6. The Panel notes that according to a screenshot submitted by Complainant, the disputed domain name resolves to a website entitled “Elizabeth Taylor Gallery,” which displays various images of Ms. Elizabeth Taylor. See id. The Panel also notes that these images are for sale and not merely to be viewed by Internet users. See id. The Panel also observes that the at-issue website hosts links to third-party websites: a fact that Respondent admits in its Response. See id. Specifically, the at-issue website displays links entitled “Search for Elizabeth Taylor at Art.com” and “Elizabeth Taylor at AllPosters.com.” Id. The website additionally displays links to promote other products.
The Panel is mindful that previous panels have held that a respondent’s use of a disputed domain name is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii) where the disputed domain name is used to promote links to the complainant’s competitors. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
In the present case, the disputed domain name is being used to promote links to third-party websites that offer Elizabeth Taylor-related art works that directly compete with Complainant in the offering of Elizabeth Taylor-related products, in addition to links to art works of other famed individuals.
Therefore, the Panel holds that Respondent’s use of the <liz-taylor.com> domain name to promote links to third-party websites offering Elizabeth Taylor-related artwork is not 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).
Complainant next alleges that the website resolving from the <liz-taylor.com> domain name states that the disputed domain name is for sale, which is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Complainant’s Exhibit 6. Complainant further alleges in its Additional Submission that the Response admits that the website resolving form the <liz-taylor.com> domain name contains an offer to sell the disputed domain name. See Response at ¶ 3(h). Panels have previously held that a respondent’s willingness to sell a disputed domain name is evidence that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
Other panels have held that the mere willingness to sell a domain name in and of itself does not mean that the respondent lacks rights or legitimate interests in the domain name. However, in those cases, respondent was not a competitor of the complainant seeking to disrupt the complainant's business, nor was found to be using the domain name to divert Internet users for commercial gain.
In the instant proceedings and taking into consideration all the evidence, the Panel finds that this willingness to sell the disputed domain name is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Respondent suggests that it has rights or legitimate interests in the <liz-taylor.com> domain name because the disputed domain name resolves to a fan website. The Panel is aware of previous decisions which hold that a respondent’s use of a disputed domain name to operate a fan website does not confer rights or legitimate interests under Policy ¶ 4(a)(ii), because the complainant trademark owner has the right to decide how its mark will be used and whether its mark will be associated with a particular product. See Nintendo of Am. Inc. v. Jones, D2000-0998 (WIPO Nov. 17, 2000) (finding that because a “Complainant has the right to decide how its mark will be used in the context of the product or products associated with the mark,” the unauthorized use of an identical domain name within that very context is not legitimate). Previous panels have also held that a respondent’s use of a disputed domain name to operate a fan website does not confer rights or legitimate interests under the Policy where the disputed domain name does not adequately distinguish between the “admirer” and the “admiree.” See Apple Corps Ltd. v. LOVEARTH.net, FA 98812 (Nat. Arb. Forum Sept. 25, 2001) (stating that fans have legitimate interests in websites “devoted to their enthusiasm,” but the domain name itself must distinguish between the “admirer and the admiree”).
Here, the Panel notes that the <liz-taylor.com> domain name displays hyperlinks to third parties that purport to offer Elizabeth Taylor-related artwork and posters. See Complainant’s Exhibit 6.
The Panel holds that because Complainant has the right to determine how its ELIZABETH TAYLOR mark is used and whether it should be associated with such artwork, Respondent’s use of the disputed domain name for fan club purposes is insufficient to confer rights or legitimate interests in the <liz-taylor.com> domain name pursuant to Policy ¶ 4(a)(ii).
Additionally, the Panel reasons that the <liz-taylor.com> domain name does not signal to Internet users that the at-issue website is a fan website rather than a website sponsored by the “admiree” herself.
Consequently, the Panel finds that Respondent’s unauthorized use of the mark, in addition to the domain name’s failure to distinguish between the “admirer” and the “admiree” is further evidence that Respondent lacks rights or legitimate interests in the <liz-taylor.com> domain name under Policy ¶ 4(a)(ii), even though the domain name is allegedly being used for fan club purposes.
The Panel holds that Complainant has established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). The Respondent has not overcome the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name.
Registration and Use in Bad Faith
Complainant alleges that Respondent’s general offer to sell the <liz-taylor.com> domain name demonstrates Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).
Respondent contends that its general offer to sell the <liz-taylor.com> domain name does not constitute bad faith pursuant to Policy ¶ 4(b)(i). Respondent states that its offer to sell the disputed domain name must be viewed in light of the fact that Respondent’s “Silver Screen Sirens” website complex has been operating at a loss since 2007, and that Respondent has also placed the <silverscreensirens.com> domain name for sale, as well as various other sub-domains relating to other classic film actresses.
The Respondent has not provided any evidence of any such operating losses.
The Panel notes that according to a screenshot submitted by Complainant, the website resolving from the <liz-taylor.com> domain names states, “This domain name and website are For Sale.” See Complainant’s Exhibit 6. Complainant further alleges in its Additional Submission that the Response admits that the website resolving form the <liz-taylor.com> domain name contains an offer to sell the disputed domain name. See Response at ¶ 3(h). Previous panels have held that a respondent demonstrates bad faith pursuant to Policy ¶ 4(b)(i) where the respondent offers the disputed domain name for sale to the public and the panel determines that the respondent registered the domain name with the primary intent of soliciting such offers. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Other panels have held that a respondent’s general offer to sell a disputed domain name does not necessarily support a finding of bad faith under Policy ¶ 4(b)(i) where nothing in the record suggests that the respondent registered the disputed domain name primarily for the purpose of selling it to the owner of a trademark for an amount in excess of its out-of-pocket expenses. See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses). Previous panels have also held that a finding of bad faith under Policy ¶ 4(b)(i) may not be appropriate where the disputed domain resolves to an active website that is offered for sale to the public. See State Bar of Cal. v. eWebNation.com, Inc., FA 97137 (Nat. Arb. Forum June 14, 2001) (despite a finding of bad faith for other reasons, "to offer a web-site for sale to the public is not necessarily evidence of bad faith, where, as here, an active site exists").
In the instant proceedings, the Panel concludes from Complainant’s Exhibit 6 that Respondent has placed the <liz-taylor.com> domain name for sale to the general public. The Panel also concludes based on the evidence before it, that the domain name was registered because of its value and that said value is dependent on Complainant’s trademark, thus making it most likely that Respondent did register the disputed domain name with the primary intent of receiving offers to purchase the domain name.
Accordingly, the Panel holds that Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).
Complainant next alleges that Respondent has demonstrated bad faith registration and use of the <liz-taylor.com> domain name under Policy ¶ 4(b)(iv), because the disputed domain name creates a likelihood of confusion with Complainant’s ELIZABETH TAYLOR mark and Respondent is profiting from this confusion in the form of increased Internet traffic to its own commercial website. The Panel acknowledges that the disputed domain name resolves to a website that promotes links to third-party sites including <art.com> and <allposters.com>, which purport to offer Elizabeth Taylor-related products. See Complainant’s Exhibit 6. Previous panels have held that a respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(iv) where the disputed domain name is misleading to Internet users and resolves to a website featuring links to competitors of the complainant. See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Respondent argues that the <liz-taylor.com> domain name is not confusingly similar to Complainant’s ELIZABETH TAYLOR mark under Policy ¶ 4(a)(i), because Internet users are not likely to be confused as to Complainant’s sponsorship of the resolving website.
However, it has previously been held that the question of whether a disputed domain name is confusingly similar to a complainant’s mark depends on whether the text of the domain name incorporates the complainant’s mark, which is distinct from the question of whether the disputed domain name is likely to confuse Internet users. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law).
Here, since the <liz-taylor.com> domain name arguably incorporates Complainant’s ELIZABETH TAYLOR mark or an abbreviation thereof, the Panel holds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i), regardless of whether or not Internet users are likely to be confused by the disputed domain name.
The Panel holds further that the <liz-taylor.com> domain name creates confusion with Complainant’s ELIZABETH TAYLOR mark, since the disputed domain name merely shortens the “Elizabeth” to “Liz” and adds a hyphen. Furthermore, the Panel holds that Complainant’s Exhibit 6 sufficiently demonstrates that the at-issue website promotes links to third parties offering Elizabeth Taylor-related products that directly compete with those offered by Complainant.
The Panel also notes that Respondent admits in its Response that it receives “limited income” in exchange for its promotion of these links. See Response at 3. Therefore, the Panel concludes that Respondent has demonstrated attraction for commercial gain, and has thus demonstrated bad faith registration and use of the <liz-taylor.com> domain name pursuant to Policy ¶ 4(b)(iv).
Respondent suggests that it has not demonstrated bad faith registration and use of the <liz-taylor.com> domain name, because it is using the disputed domain name to operate a fan website for fans of Ms. Elizabeth Taylor. The Panel notes that although some prior panels have declined to find bad faith where the disputed domain name resolves to a fan website, other panels have held that the respondent’s use of a disputed domain name to operate a fan website does not preclude a finding of bad faith under the Policy. See Harrison v. LOVEARTH.net, FA 97085 (Nat. Arb. Forum June 4, 2001) (“This Panel is persuaded . . . that the greater weight of authority and the better rule is to the effect that ‘fan sites’ . . . do cause confusion as to their source, sponsorship, affiliation, or endorsement vis-à-vis the celebrity.”). Furthermore, some panels have held that a respondent does not demonstrate bad faith under the Policy where the disputed domain name resolves to a fan website that does not generate commercial revenue for the respondent. See Nintendo of Am. Inc. v. Jones, D2000-0998 (WIPO Nov. 17, 2000) (finding no bad faith registration or use of the domain name when it was used as a fan website and it was not used for commercial gain).
However, the Panel distinguishes this case from the Nintendo of Am., supra case, because the disputed domain name promotes links to third-party websites, and Respondent has admitted that it generates a “limited income” from its promotion of these links. See Complainant’s exhibit 6; see also Response at 3.
Therefore, the Panel holds that Respondent has demonstrated bad faith registration and use under Policy ¶ 4(a)(iii) even if the Panel accepts Respondent’s contention that the <liz-taylor.com> domain name resolves to a fan website.
Finally, Complainant alleges that Respondent registered the disputed domain name with actual notice of Complainant’s rights in the ELIZABETH TAYLOR mark, which evidences Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii). The Panel notes that previous panels have held that a respondent demonstrates bad faith under Policy ¶ 4(a)(iii) by registering the disputed domain name with actual notice of the complainant’s rights in the appropriated mark. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel notes also that previous panels have inferred that a respondent had actual notice of the complainant’s rights in the mark where the mark is extremely well-known. See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the respondent, at the time of registration, had notice of the complainant’s POKÉMON and PIKACHU trademarks given their extreme popularity). Previous panels have also inferred that a respondent had actual notice of the complainant’s rights in a mark where there is a clear link between the complainant’s mark and the content advertised on the at-issue website. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
In the instant proceedings, the Panel is mindful that the ELIZABETH TAYLOR mark is as well-known as the POKÉMON and PIKACHU trademark in Nintendo of Am. Inc, supra. The Panel is cognizant that the website resolving from the <liz-taylor.com> domain name promotes Elizabeth Taylor-related posters and artwork. See Complainant’s Exhibit 6.
Thus, the Panel holds that there is a clear link between Complainant’s ELIZABETH TAYLOR mark and the content promoted on the website resolving from the <liz-taylor.com> domain name. For the foregoing reasons, the Panel infers that Respondent registered its <liz-taylor.com> domain name with actual notice of Complainant’s rights in the ELIZABETH TAYLOR mark, which is further evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii).
Respondent states that contrary to Complainant’s assertion in its Complaint, Respondent never registered the <liztaylorsbotique.com> domain name in bad faith. The Panel notes that the Complainant does make various allegations in connection with the <liztaylorsbotique.com> domain name throughout its Complaint. However, the Panel concludes that these allegations stem from Complainant’s failure to double-check its submission and replace a previously disputed domain name with the presently disputed <liz-taylor.com> domain name. Therefore, the Panel accepts Respondent’s contention that it never registered the <liztaylorsbotique.com> domain name in bad faith, but holds that this finding is not determinative of whether Respondent registered and used the <liz-taylor.com> domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <liz-taylor.com> domain name be TRANSFERRED from Respondent to Complainant
Calvin A. Hamilton, Panelist
Dated: December 31, 2013
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