National Arbitration Forum

 

DECISION

 

Interplanet Productions, Limited v. K Myers

Claim Number: FA0504000449882

 

PARTIES

Complainant is Interplanet Productions, Limited (“Complainant”), represented by Stephen J. Strauss of Fulwider Patton Lee & Utecht, LLP, 6060 Center Drive, Tenth Floor, Los Angeles, CA 90045.  Respondent is K Myers (“Respondent”), Post Office Box 16184, Newport Beach, CA 92659.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <elizabethtaylor.com>, registered with Enom, Inc.

 

PANEL

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.

 

Olivier Iteanu, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 1, 2005; the National Arbitration Forum received a hard copy of the Complaint on April 1, 2005.

 

On April 6, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <elizabethtaylor.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with the Policy.

 

On April 11, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 2, 2005 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@elizabethtaylor.com by e-mail.

 

A Response was received on May 2, 2005. Respondent has provided a response that was deficient:  a hard copy was received two days after the deadline for responding. The hard copy was finally received on May 5, 2005. The Panel nevertheless chooses to consider such Response, given the technical nature of the breach.

 

An Additional Submission was received from Complainant on May 9, 2005. According to the National Arbitration Forum's UDRP Supplemental Rule 7 (a), additional submissions can be submitted to the National Arbitration Forum within five (5) calendar days after the date the Response was submitted.  In view of the fact that the complete Response was received on May 5, 2005, the Panel considers that the Additional Submission complies with Supplemental Rule 7.

 

On May 10, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Olivier Iteanu, Esq. as Panelist.

 

On May 23, 2005, the Panel ordered Complainant to provide additional written submissions supporting the claim of Complainant that it is the owner of the ELIZABETH TAYLOR trademark.

 

Further to this request, an Additional Submission was sent by Complainant dated May 27, 2005.

 

On June 15, 2005, the Panel notified the National Arbitration Forum of a postponement in the decision deadline, as the Panel required more time to render its Decision.

 

The Panel received additional information from Respondent which was not submitted in accordance with the rules and did not consider that material.

 

PRELIMINARY MATTER

The disputed domain name was registered on October 6, 1999 by Respondent, with Network Solutions Inc. (NSI). As a preliminary issue, the Panel is required to assess whether or not the Panel can be considered as being competent, in view of the fact that the registration of the domain name was done prior to the approval of the ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”) on October 24, 1999 and, thus, prior to its incorporation by reference in NSI's registration agreement.

 

In its Complaint, Complainant states incorrectly that the domain name at issue is still registered with NSI (Verisign, Inc.). Such statement has been corrected in the Complaint's review process by the National Arbitration Forum.

 

Indeed, a WHOIS search on the domain name reveals that a registrar transfer was done on November 2002 to Enom, Inc.

 

Enom, Inc. advised the National Arbitration Forum that the Policy applied to the disputed domain name. The Panel assumes this is on the basis that the registration agreement between Respondent and Enom, Inc. in November 2002 included a provision that Enom, Inc. incorporates the Policy. The Panel has not seen a copy of Respondent’s registration agreement and has therefore proceeded on the basis of Enom, Inc. report that the Policy applies.

 

In view of the above-mentioned facts, the Panel considers itself as being competent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

Complainant contends that the domain name is identical to a trademark and service mark in which the Complainant has rights.  To support this assertion, Complainant does not provide a trademark registration with a trademark office, but rather avers that it has established common law rights in the ELIZABETH TAYLOR mark.  Complainant alleges that Ms. Elizabeth Taylor is a worldwide famous personality, an award winning actress, an internationally respected producer, author and business entrepreneur, that she is recognized for her charitable efforts on behalf of AIDS sufferers around the world, and that Ms. Taylor received the prestigious Jean Hersholt Humanitarian Award at the 1993 Academy Awards ceremony.  Complainant provides copies of articles and listings from various dictionaries and encyclopedias as documentary evidence, as well as samples of product packaging for perfumes and colognes marketed under the name "Elizabeth Taylor's Passion" which Complainant claims were launched in the 1980's by Ms Taylor.  Complainant alleges that Ms. Taylor assigned her rights in her name, likeness and appearance to her company, Interplanet Productions, Limited, Complainant in this case. Complainant alleges that it has used ELIZABETH TAYLOR as a trademark and service mark in connection with various goods and services, without any further information.

 

Complainant contends that Respondent has no rights or legitimate interests in respect of the domain name.  To support this assertion, Complainant considers that it has established that it has common law rights in the ELIZABETH TAYLOR name and mark, that it has acquired secondary meaning, that the contested domain name is virtually identical to Complainant’s ELIZABETH TAYLOR mark and name and that Respondent’s registration and use of the <elizabethtaylor.com> domain name infringes Complainant’s trademark rights and creates a likelihood of confusion under Section 2(d) of the United States Trademark Law, and also dilutes the distinctiveness and fame of the Complainant’s rights in the ELIZABETH TAYLOR mark and name in violation of Section 43(c)(1) of the United States Trademark Law.  Complainant also argues that it has no relationship with Respondent, and that Complainant has given no permission or authorization to Respondent and that there is no evidence that Respondent has been commonly known by the contested domain name.  Complainant also submits that Respondent had knowledge of Complainant's rights in the ELIZABETH TAYLOR mark and name when he registered the <elizabethtaylor.com> domain name.

 

Complainant finally contends that the domain name was registered and is being used in bad faith.  To support this assertion, Complainant alleges that Respondent has registered the <elizabethtaylor.com> domain name in bad faith by registering the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.  Complainant also cites Broadcom Corp. v. Myers and Myers; K Myers, FA 100136 (Nat. Arb. Forum Oct. 25, 2001), in which Respondent was found to have registered the domain name in bad faith.  Complainant alleges that the above-mentioned case and the present case establish a pattern of conduct preventing owners of trademarks from reflecting their marks in a corresponding domain name.  Complainant also alleges that Respondent's passive holding of the <elizabethtaylor.com> domain name is evidence of bad faith and that the <elizabethtaylor.com> domain name is so obviously connected with Complainant, that use and registration by Respondent (who has no connection with Complainant) establishes bad faith.

 

B. Respondent

 

In its Response, Respondent declares that it is not planning to infringe the rights of Ms. Elizabeth Taylor, the Hollywood actress and has never done so.

 

Respondent expressly states that it does not dispute Complainant's assertions on who "Elizabeth Taylor the American actress is or has accomplished in her acting career", and "Elizabeth Taylor’s Passion products sold at retail outlets and locations", and does not dispute that the name and likeness of Ms. Taylor has been assigned to Complainant.

 

Respondent indicates that, to its knowledge, there is record of a company website online for Complainant, but does not conclude anything from this statement.

 

Respondent indicates that at the time of registration of the <elizabethtaylor.com> domain name, the domain names <elizabethtaylor.com> and <elizabethtaylor.net> were also registered by Respondent, but that it later decided to release them "for other(s) to use including Elizabeth Taylor the actress."

 

Respondent claims that there are many "Elizabeth Taylor" worldwide and provides phone directory searches and URLs to Yahoo! Phone online directory search service for the United States and Canada listing, respectively, more than 200 results and more than fifteen results.

 

Respondent acknowledges Ms. Taylor's work in "Hollywood" but considers that the use of the domain name does not create any confusion, that there is more than "one Elizabeth Taylor on the entire planet."  Respondent mentions that it does not dispute who Ms. Taylor is and has accomplished in her career and confirms that it had knowledge of this at the time of registration of the disputed domain name, but states that "ALL persons with this name or articles in relation to it are also aware and have been."

 

Respondent did not dispute the allegations of Complainant relating to assignment of rights, but refutes that the domain name is confusingly similar to Complainant's trademark, states that no website is active for the domain name, and that a disclaimer would be included in such website if it were to make such website active.

 

Respondent denies that it has registered the domain name in bad faith. Respondent argues that in Broadcom Corp. v. Myers and Myers; K Myers, mentioned above, the <broadcomusa.com> domain name was registered for his spouse "to display unhappiness and displeasure with the performance of the company at said period of time through the right of the first amendment but ultimately sold the shares," but does not provide any documentary evidence supporting such statement.

 

Respondent denies that a passive holding of the domain name can be considered as establishing bad faith and that no law obliges it to develop a website within a certain period of time.

 

Respondent argues that Elizabeth Taylor and her representatives "are barred by the doctrine of laches" considering that the domain name <amfar.org> was registered in May 10, 1996, and that Ms. Elizabeth Taylor waived her rights to the name ELIZABETH TAYLOR as a domain name by failing to make reasonable efforts to secure said domain names <elizabethtaylor.com>, <elizabethtaylor.net>, and <elizabethtaylor.org>.

 

C. Additional Submissions

 

In its first Additional Submission, Complainant asserts that Respondent has failed to conform with the basic requirements established by UDRP Rule 5(b)(ii) (identification of the name, postal address, e-mail address, telephone and facsimile numbers of Respondent), Rule 5(b)(iii) (identification of the preferred method of communicating with Respondent), Rule 5(b)(vi) (identification of legal proceedings), Rule 5(b)(vii) (statement that a copy of the response was transmitted or sent to Complainant) and 5(b)(viii) (certification statement). Complainant also argues that:

 

-           Respondent has no rights or legitimate interests in respect of the <elizabethtaylor.com> domain name as required under Rules 3(b)(ix)(2).

-           Respondent does not dispute Complainant's assertion that there is no relationship between himself and Interplanet Productions or Ms. Taylor, or that he was ever authorized by Complainant or Ms. Taylor to register and use the contested domain name, that he has not been commonly known by the <elizabethtaylor.com> domain name, and other admissions.  Complainant also underlines that it considers that Respondent has admitted that he had knowledge of Complainant's rights in the ELIZABETH TAYLOR mark and name when he registered the <elizabethtaylor.com> domain name,

-           that the doctrine of laches is not available as a defense in UDRP proceedings, and that even if such a doctrine should be taken into consideration Respondent has failed to provide any evidence in this matter.

 

In its second Additional Submission, submitted after the Panel's request in the absence of any documentary evidence provided by Complainant of the assignment mentioned in the Complaint, or other documentary evidence that Complainant has the claimed trademark rights, Complainant provides evidence supporting its claim that it is the owner of the trademark ELIZABETH TAYLOR by providing a signed copy of an assignment signed in 2005. The document provided states that it confirms and reaffirms the terms and extent of a previous assignment effective as of February 27, 1978 with a new agreement and that this new agreement "constitutes the entire understanding and contract between the parties" and that it "supersedes any and all prior or contemporaneous oral or written communication". The document specifies in particular that Mrs. Elizabeth Taylor assigned the " 'ELIZABETH TAYLOR' (…) signature, names and marks (…)" and confirms that the assignment is "effective February 27, 1978". Complainant also now provides evidence that it is the owner of several trademark applications filed on April 9 and 10, 2005 for word marks: " 'SOMETHING WONDERFUL IS ABOUT TO HAPPEN' ELIZABETH TAYLOR ". Finally, Complainant also provides:

-           a page from the <barbiecollector.com> website promoting the sale of the "Elizabeth Taylor in Cleopatra" doll which states at the bottom "Elizabeth Taylor likeness: © 1999 Interplanet Productions Limited,"

-           photocopies of the cover and copyright notice page from the book "Elizabeth Taylor: My Love Affair With Jewelry", by Elizabeth Taylor, "Copyright © 2002 by Interplanet Productions Limited."

 

DISCUSSION AND FINDINGS

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 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;

(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.

 

If all of these conditions are met, the Panel is required to order the transfer or cancellation of the domain name according to the remedy requested in the Complaint.

 

Thus, the Panel considers that reference to an external doctrine, such as the doctrine of laches is not amongst the available means usable by Respondent as a defense in UDRP proceedings.

 

Identical and/or Confusingly Similar

 

In the absence of any registration certificate or application provided to the Panel showing rights prior to the date of registration of the domain name at issue, the rights on the ELIZABETH TAYLOR trademark that Complainant claims to have and which it claims to be prior to the date of registration of the domain name appear to be relating to rights on the unregistered trademarks ELIZABETH TAYLOR or ELIZABETH TAYLOR'S PASSION and, thus, it shall be understood that Complainant claims to have unregistered or "common law" rights to protection of these unregistered marks against misleading uses.

 

Indeed, the assignment agreement provided by Complainant in its second Additional Submission mentions that Ms. Taylor assigned in 1978 her rights in the ELIZABETH TAYLOR mark, nevertheless, such declaration made in this assignment agreement does not, by itself, constitute a proof of the existence of the mark in 1978.

 

As a preliminary issue, the Panel, thus, has to ascertain whether the various rights claimed by Complainant are indeed trademarks or service marks and whether Complainant has rights in them or not.

 

Only after ascertaining these issues, the Panel shall proceed to determine whether or not the domain name at issue is identical or confusingly similar to these rights.

 

Trademark or service mark nature of the claimed rights, and rights of Complainant on them

 

In its Response, Respondent expressly states that it does not dispute the fame of Ms. Taylor as an artist and the assertions relating to the ELIZABETH TAYLOR'S PASSION products.

 

The Panel also notes that in its Response, Respondent, more generally, has not contested or made assertions as to the absence of trademark rights of Complainant and of Ms. Elizabeth Taylor, and furthermore has admitted that he had knowledge of Ms. Elizabeth Taylor rights in the ELIZABETH TAYLOR mark and name when he registered the <elizabethtaylor.com> domain name.

 

In view of the above mentioned observations:

 

-          the Panel considers that Respondent has acknowledged the fame of the name ELIZABETH TAYLOR and the existence of the rights of Ms. Taylor on its own name ELIZABETH TAYLOR,

-          the Panel considers that Respondent has acknowledged the fact that ELIZABETH TAYLOR'S PASSION has been used in commerce "since 1980s" for designating a line of perfumes and colognes, and the Panel considers that this establishes a prima facie case that such use can be regarded as granting unregistered or "common law" rights to protection of the unregistered mark against misleading uses to the person having used ELIZABETH TAYLOR'S PASSION in commerce,

-          the Panel considers that Respondent has acknowledged the existence of Ms. Taylor's mark and name.

 

The Panel notes that in its Complaint, Complainant has mentioned that:

 

"ii. In the 1980's Ms. Taylor launched a successful line of perfumes and colognes under the trademark ELIZABETH TAYLOR'S PASSION. 

iii. Ms. Taylor assigned her rights in her name, likeness and appearance to her company, Interplanet Productions, Limited, the Complainant. Complainant has used ELIZABETH TAYLOR as a trademark and service mark in connection with various goods and services."

 

Such presentation does not appear to be chronologically correct, as Complainant's documentary evidence provided in its second Additional Submission shows that the assignment of rights over the name ELIZABETH TAYLOR had an effective date as of February 27, 1978.

 

The Panel notes that the name ELIZABETH TAYLOR'S PASSION is not mentioned in such agreement. This is consistent with the declaration of Complainant, mentioning that the launching of the perfume related products occurred "in the 1980's", thus after the date of February 27, 1978.

 

Further, as mentioned by Complainant itself, Complainant argues that the line of perfumes and colognes was launched by Ms. Taylor and does not provide documentary evidence that such use of the trademark ELIZABETH TAYLOR'S PASSION was made by Complainant, or through a license granted by Complainant, or that it has been assigned the rights to the trademark ELIZABETH TAYLOR'S PASSION, which the Panel fears may be owned at the date of today by a third party as "common law" rights or even as trademarks registered with the United States Patent and Trademark Office (“USPTO”) by a third party company.

                 

-     The Panel considers that Complainant has failed to prove that it has rights on the unregistered or "common law" rights over the mark ELIZABETH TAYLOR'S PASSION or on any registered mark ELIZABETH TAYLOR'S PASSION, if any.

-     The fact that Complainant claims to be the assignee of trademark rights further to an assignment agreement signed by Ms. Taylor and confirming an assignment that occurred in 1978 does not allow the Panel, without any other evidence and in the limited scope of the Policy, to attribute to Complainant common law rights or rights on registered trademarks which have been used or registered by third parties, even though such uses or registrations may have been done in breach of Complainant's rights.

 

In its second Additional Submission, Complainant also provides evidence that it is the owner of several trademark applications filed on April 9 and 10, 2005 for word marks: " 'SOMETHING WONDERFUL IS ABOUT TO HAPPEN' ELIZABETH TAYLOR ", by providing excerpts from the TESS database from the USPTO's Website.

 

Nevertheless, except in the most unusual case, such as eGalaxy Multimedia Inc v. T1, FA 101823 (Nat. Arb. Forum Dec. 23, 2001) (where the Panel considers that Complainant’s Priority Date based on previous use precedes Respondent’s registration date of the domain name in dispute by nine months), a Complainant cannot succeed under the Policy in reliance on trademark rights created after the registration of the disputed domain name (which was registered October 6, 1999). Trademark registration applications filed on April 9 and 10, 2005 do not give rise to trademark rights which can be used under the Policy (see The Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2001); Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 17, 2001); and Spencer Douglass MGA v. Absolute Bonding Corp., D2001-0904 (WIPO Sept. 5, 2001).

 

-     The Panel notes the existence of the trademark applications " 'SOMETHING WONDERFUL IS ABOUT TO HAPPEN' ELIZABETH TAYLOR " which the Complainant indicates as being filed on April 9 and 10, 2005, without a claim of first use in commerce, i.e. after the registration of the domain name on October 6, 1999.

-     The Panel considers that Complainant has established ownership of the above mentioned trademark applications.

-     The Panel nevertheless cannot take these trademark applications into consideration for the purpose of the Policy in the present case, in view of the fact that the rights on these trademark applications have arisen after the registration of the disputed domain name.

 

In its second Additional Submission, Complainant also provides a page from the <barbiecollector.com> website promoting the sale of the "Elizabeth Taylor in Cleopatra" doll which states at the bottom "Elizabeth Taylor likeness: © 1999 Interplanet Productions Limited."  The Panel nevertheless also notices that the terms "Elizabeth Taylor in Cleopatra" are followed by a "tm" in the same document and that the notice relating to the trademark specifies "tm & © 1963, 1999 Twentieth Century Fox Film Corporation, All rights reserved" mentioned separately from Interplanet's copyright notice, which is limited to the "likeness."

 

-     The Panel acknowledges that Complainant establishes that it has used or allowed use of the likeness of Ms. Taylor, upon which it claims a copyright. Nevertheless, the "likeness", i.e. the physical traits of Ms. Taylor, cannot be considered as extending to the use in commerce by Complainant of the words "Elizabeth Taylor" or "Elizabeth Taylor in Cleopatra", especially when such use is claimed by a third party.

-     The Panel cannot attribute, based on the documentary evidence provided, to Complainant unregistered or "common law" rights to protection of the unregistered mark against misleading uses for use of "Elizabeth Taylor in Cleopatra" in commerce, as, according to the document provided by Complainant itself, such rights are in fact claimed to be owned by a third party.

 

In its second Additional Submission, Complainant also provides photocopies of the cover and copyright notice page from the book "Elizabeth Taylor: My Love Affair With Jewelry", by Elizabeth Taylor, "Copyright © 2002 by Interplanet Productions Limited."

 

-            The Panel questions whether or not the above-mentioned use may be acceptable for attributing, based on the documentary evidence provided, to Complainant unregistered or "common law" rights to protection of the title of the book as an unregistered mark.

-            In view of the fact that the publishing of the above mentioned book in 2002 is subsequent to the registration of the domain name (on October 6, 1999), the Panel cannot take the possible "common law" trademark rights arising from this use into consideration for the purpose of the Policy in the present case.

 

In conclusion:

 

-     Though the Panel acknowledges that Complainant may have various valid rights which he may successfully use before a Tribunal, the Panel considers that Complainant has failed to prove that it has rights on unregistered or "common law" rights, or on registered marks for the purpose of the Policy in the present case.

 

Identical or confusingly similar

 

In view of the fact that no ownership of existing trademark rights acquired prior to the registration of the disputed domain name has been documented for the purpose of the Policy in the present case, the Panel shall not be required to examine identity or similarity of the domain name with the trademarks invoked by Complainant.

 

The Panel considers that Complainant has failed to meet the first condition set by Paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

 

The Panel shall not be required to examine the rights or legitimate interests of Respondent in view of the fact that the first condition is not met, nevertheless, the Panel wishes to underline that Respondent cannot be considered in any way as having rights or legitimate interests in the domain name.

 

Respondent claims that there are many "Elizabeth Taylor" worldwide and provides phone directory searches and URLs to Yahoo! Phone online directory search service for the United States and Canada listing, respectively, more than 200 results and more than fifteen results.  Respondent nevertheless does not provide any evidence that it has a relationship with one of these individuals.

 

Registration and Use in Bad Faith

 

The Panel shall not be required to examine the bad faith of Respondent in view of the fact that the first condition is not met, nevertheless, the Panel wishes to remind that:

 

-           Respondent expressly states that it does not dispute Complainant's assertions on who "Elizabeth Taylor the American actress is or has accomplished in her acting career", and "Elizabeth Taylor’s Passion products sold at retail outlets and locations";

-           Respondent expressly mentions that it does not dispute that it had knowledge of the existing alleged rights at the time of registration of the disputed domain name; and,

-           Respondent has been passively holding the domain name.

 

All of these elements lead the Panel to consider that Respondent has registered and is using the domain name in bad faith.

 

DECISION

 

Having failed to establish the first element required under the ICANN Policy, the Panel concludes that the transfer of the <elizabethtaylor.com> domain name to Complainant shall be DENIED.

 

 

 

 

Olivier Iteanu, Panelist
Dated: June 28, 2005