Tatiana Botton v. Mozur contactor:OlegMozur
Claim Number: FA2006001900809
Complainant is Tatiana Botton (“Complainant”), represented by Max N. Wellman of Wolf, Rifkin, Shapiro, Schulman & Rabkin, LLP, California, USA. Respondent is Mozur contactor:OlegMozur (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tatiana-botton.com> and <tatiana-botton.net>, registered with Eranet International Limited.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 18, 2020; the Forum received payment on June 18, 2020.
On June 29, 2020, Eranet International Limited confirmed by e-mail to the Forum that the <tatiana-botton.com> and <tatiana-botton.net> domain names are registered with Eranet International Limited and that Respondent is the current registrant of the names. Eranet International Limited has verified that Respondent is bound by the Eranet International Limited 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 July 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 2020 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@tatiana-botton.com, postmaster@tatiana-botton.net. Also on July 2, 2020, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 28, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a photographer with work published in prestigious magazines, competitions, and exhibits around the world.
Since shortly after the year 2000, Complainant has maintained a continuous online presence to showcase, exhibit, advertise and sell copies of photographs associated with Complainant’s personal name and mark, TATIANA BOTTON.
Complainant has rights in the TATIANA BOTTON mark under the common law stemming from the development of secondary meaning in the mark.
Respondent registered the domain names <tatiana-botton.com> and <tatiana-botton.net> on March 31, 2020.
The domain names are substantively identical and confusingly similar to Complainant’s TATIANA BOTTON mark.
Respondent has not been commonly known by either of the domain names.
Complainant has not licensed or otherwise authorized Respondent to use the TATIANA BOTTON mark.
Respondent uses the domain names to attract Internet users interested in Complainant’s work to websites presenting false, unfounded and sensationalized criticism of Complainant.
The essential content of these websites may be summarized in a series of “headlines,” including the following:
“Tatiana Botton Is A Photographer Who Is A Sly Criminal Or She Isn’t”
“Who Is Tatiana Botton – An Honest photographer or a scammer?”
“Is Botton a sly criminal?”
“Tatiana Botton is a mysterious photographer who became rich too quickly”
“Is botton’s business against the law?”
Respondent has no rights to or legitimate interests in the domain names.
Respondent employed a privacy service to mask its identity in registering the domain names.
Respondent registered and uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has failed to establish that Respondent has no rights to or legitimate interests in respect of the contested domain names and is therefore ineligible to receive the relief requested in its Complaint.
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, to obtain an order that a domain name should be cancelled or transferred to it, Complainant must prove each of the following three elements:
(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 to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint”).
It is customary in cases of this kind for a complainant mark holder to show on the record that it has rights in an identified trademark or service mark by reason of the registration of the mark with a national or international trademark authority. In this instance, however, Complainant does not hold rights in the claimed TATIANA BOTTON mark by virtue of such trademark registration. Instead, Complainant asserts that it has rights in the mark under the common law. This is permissible because the Policy does not require trademark registration as a predicate to establishing standing to pursue a complaint against Respondent.
See, for example, Microsoft Corporation v. Story Remix, FA 1734934 (Forum July 10, 2017), concluding that:
The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.
To establish common law rights in its mark, Complainant must demonstrate that the mark has acquired “secondary meaning,” i.e.: an association shared among the consuming public linking the mark and a specific offeror of goods or services marketed under the mark sufficiently to justify its protection under law. As to what kind of evidence suffices to satisfy this requirement, see, for example, Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (finding that a UDRP complainant demonstrated secondary meaning, and, therefore, its common law rights in a mark, through evidence of “long … continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning”).
In support of its claim of common law rights in the TATIANA BOTTON mark from the development of secondary meaning, Complainant submits that, since shortly after the year 2000, it has maintained a continuous online presence to showcase, exhibit, advertise and sell copies of photographs associated with its personal name and mark, TATIANA BOTTON. Respondent does not contest this assertion. We therefore conclude that Complainant has made a minimally sufficient showing of secondary meaning in its TATIANA BOTTON mark to establish rights in the mark under the common law, and, therefore, to meet the standing requirements of Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s domain names <tatiana-botton.com> and <tatiana-botton.net> are substantively identical and confusingly similar to Complainant’s TATIANA BOTTON mark. Each of the domains incorporates the mark in its entirety, with only the addition of a hyphen and a generic Top Level Domain (“gTLD”), “.com” in one case and “.net” in the other. These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy.
As to the addition of a gTLD to the mark in forming a domain name, see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
And, as to the insertion of a hyphen between the terms of Complainant’s mark in creating the domain names, this, too, is of no effect in our analysis because a hyphen adds nothing of consequence to the meaning, nor does it change the phonetic character, of the result.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <tatiana-botton.com> and <tatiana-botton.net> domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by either of the <tatiana-botton.com> and <tatiana-botton.net> domain names, and that Complainant has not licensed or otherwise authorized Respondent to use the TATIANA BOTTON mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “Mozur contactor:OlegMozur,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain names so as to have acquired rights to or legitimate interests in either of them within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy¶4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
As to the remaining subsections of Policy ¶ 4(c), we may quickly dispense with consideration of the possibility that ¶ 4(c)(i) might have application to the facts before us because that subsection deals exclusively with situations in which a respondent is shown not to be making a bona fide offering of goods or services by means of a challenged domain name. Complainant makes no assertion that Respondent’s use of the disputed domain names is commercial in nature, so ¶ 4(c)(i) is inapposite here.
This leaves for examination Complainant’s allegation that Respondent uses the domain names to attract Internet users interested in Complainant’s work to websites presenting false, unfounded and sensationalized criticism of Complainant. What is sometimes called a “criticism site” presents a special problem in UDRP jurisprudence in that administrative panels have determined that employment of a domain name for noncommercial free speech can support a finding of a legitimate interest in a respondent’s domain name under Policy ¶ 4(c)(iii).
Our examination of the content displayed on the websites resolving from Respondent’s domain names convinces us that, while some of the material is disturbing, it nonetheless qualifies as protected free speech under the standards of the Policy. Of the five putatively disparaging “headlines” singled out by Complainant, three are posed as questions, not statements, while another is framed as a binary debate proposition (“[Complainant] is a sly criminal or she isn’t”), and the fifth critiques Complainant because, in Respondent’s view, Complainant “became rich too quickly.” As disparagement goes, this is a house made of sticks, not bricks.
The case before us has a close parallel in a proceeding denominated Petroleo Brasileiro S.A. v. Ivo Lucio Santana Marcelino Da Silva, D2014-1331 (WIPO September 23, 2014). There a panel found that:
Respondent’s website seems to contain information on Complainant’s business practices … [including]… purported corruption,…. The Panel views the protection for such speech
… to be sufficiently broad to cover the present situation.
We therefore find that Complainant has failed to show that Respondent has no rights to or legitimate interests in respect of the <tatiana-botton.com> and <tatiana-botton.net> domain names under the test of Policy ¶ 4(c)(iii), from which it follows that Complainant has failed to satisfy the proof requirements of Policy ¶ 4(a)(ii).
Because Complainant has not succeeded in demonstrating an essential element of the Policy, that found in ¶ 4(a)(ii) thereof, it is unnecessary for us to inquire as to whether Respondent has registered or used the domain names in bad faith as provided in Policy ¶ 4(a)(iii). See again Petroleo Brasileiro, supra:
Since, as explained above, the Complaint fails to meet the requirements of Policy, paragraph 4(a)(ii), the Panel finds it unnecessary to rule on the question of bad faith.
We therefore likewise decline to do so.
Complainant having failed to establish all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.
Accordingly, it is Ordered that the domain names <tatiana-botton.com> and <tatiana-botton.net> REMAIN WITH Respondent.
Terry F. Peppard, Panelist
Dated: August 7, 2020
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