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Generic Top Level Domain Name (gTLD) Decisions |
Anna Nicole Smith c/o CMG Worldwide v.
DNS Research, Inc.
Claim Number: FA0312000220007
PARTIES
Complainant
is Anna Nicole Smith c/o CMG Worldwide (“Complainant”), represented by Lawrence V. Molnar, 10500
Crosspoint Boulevard, Indianapolis, IN 46256.
Respondent is DNS Research, Inc. (“Respondent”)
P.O. Box 1642, Castle Rock, CO 80104.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <annanicolesmith.com>,
registered with The Registry at Info
Avenue d/b/a IARegistry.
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.
G.
Gervaise Davis III, Esq. as sole Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 12, 2003; the Forum received
a hard copy of the
Complaint on December 15, 2003.
On
December 16, 2003, The Registry at Info Avenue d/b/a IARegistry confirmed by
e-mail to the Forum that the domain name <annanicolesmith.com>
is registered with The Registry at Info Avenue d/b/a IARegistry and that
Respondent is the current registrant of the name. The Registry at Info Avenue d/b/a IARegistry has verified that
Respondent is bound by the The Registry at Info Avenue d/b/a IARegistry
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s
UDRP (the “Policy”).
On
December 18, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of January 7, 2004 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@annanicolesmith.com
by e-mail.
On
January 7, 2004, Respondent requested an extension of its Response filing
date. The Forum extended the deadline
to January 19, 2004. Because January
19, 2004 was a postal holiday, the effective Response deadline became January
20, 2004.
A
timely Response was received and determined to be complete on January 20, 2004.
On February 2, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed G. Gervaise
Davis III, Esq., as the sole Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
Complainant is the owner of certain trademarks and
proprietary rights, including the right of publicity, rights of association,
sponsorship,
and/or endorsement, in and to the name and likeness of the model
and actress Anna Nicole Smith.
Complainant claims she
aggressively enforces and protects said rights both through her own direct
efforts and legal representation, and through
her authorized agents. The Panel
notes that Complainant, however, holds no actual registered trademarks, and
thus relies solely on
common law rights in her name, which requires that she
establish a broad level of recognition of her exclusive rights to the use
of
the name in order to prevail.
2.
Complainant
submitted the following list of accomplishments of Anna Nicole Smith in the
modeling and entertainment industries, as
evidence of her exclusive
intellectual property rights in the use of her name:
a. For more than a decade in the spotlight,
Anna Nicole Smith has proven that she is not only a
curvaceous, blonde beauty, but a pop culture icon.
b. Anna Nicole broke into the
entertainment business through modeling, first as the May 1992 Playmate of the
Month in Playboy Magazine, which led to her selection as the coveted
1993 Playmate of the Year Award.
c. She has appeared on the cover of People,
Vanity Fair, Cosmopolitan, Playboy, and numerous other
magazines and periodicals available worldwide. In addition to her cover
appearances, Anna Nicole Smith has been
featured or included in countless other
magazines, televisions shows, news stories and other media outlets on a
consistent basis
for over ten years.
d.
Through her
success as a model culminating in the 1993 Playmate of the Year Award, Anna
Nicole Smith attracted the attention of Guess?
President Paul Marciano. The then twenty-four year-old Anna Nicole
Smith was chosen as the primary female model for Guess? The campaign developed into one of the most
successful of all time.
e. With her success as a model
and in print firmly established, Anna Nicole Smith was soon offered acting
roles; in 1994 she appeared
in “Naked Gun 33 1/3: The Final Insult” and “The
Hudsucker Proxy” with actor Tim Robbins; acting credits also include lead roles
in the films “To the Limit” and “Skyscraper.”
f.
A
popular guest on television as well, Anna Nicole Smith has appeared on numerous
programs, including “Ally McBeal,” The Howard Stern
Show,” and more recently
“The Tonight Show with Jay Leno,” “The Late Late Show with Craig Kilborn” and
“Cedric the Entertainer Presents.”
g. Joining the phenomenon of
reality-based television programming, Anna Nicole Smith also stars in her own
series on the E! Entertainment
Television network. The premiere of “The Anna Nicole Show” captured the highest
rating of any reality-based TV show with a rating of 4.1, and it continues
to
be among the network’s highest rated programs.
h. Anna Nicole Smith is
currently the subject of an advertising campaign documenting her recent
physical fitness accomplishments in conjunction
with TRIMSPA®, with such
campaign further demonstrating her popularity and presence in the public
eye.
3.
Due
to her accomplishments, popularity, and notoriety, Anna Nicole Smith remains
one of the most recognizable personas in the entertainment
industry.
4.
Complainant asserts that the name, image, or
likeness of Anna Nicole Smith has been used on products and services in
interstate and
worldwide commerce over the past ten years without interruption.
5.
Further, the evidence for the recognition of
Complainant’s expansive intellectual property rights is found through the
constant and
continuing activities of Anna Nicole Smith, through her acting
roles, television and print appearances, endorsements, and all other
licensing
and enforcement measures Complainant engages in for the protection and
promotion of these rights.
6.
Based on the foregoing, in the arena of
celebrity names and the intellectual property rights related thereto,
Complainant asserts
that, without qualification, Anna Nicole Smith is one of
the most visible and actively recognized, promoted and licensed images and
names of the last ten years.
7.
In addition
to the aforementioned accomplishments, Complainant asserts that there can be no
other name that has become, and still
remains, as distinctive a designation of
such a person of notoriety in the modeling and entertainment arenas as “Anna
Nicole Smith,”
with Complainant enjoying common law trademark protection in
both the “Anna Nicole Smith” and “Anna Nicole” names.
8.
Complainant has diligently invested time and
energy in the promotion and protection of the name and likeness of Anna Nicole
Smith
and, by virtue of these activities, Complainant has proven herself to the
world at large that she is the sole and exclusive owner
of all intellectual
property rights relating to the name and image of Anna Nicole Smith. Complainant has done everything possible to
put the public on notice of her existence through broad enforcement of her
rights against
infringers and through the careful administration of her career,
and the many commercial activities that she has engaged in or authorized
over
the past decade. Such activities inform
the public at large that Complainant owns and claims ownership to the
intellectual property rights relating
to the name and image of Anna Nicole Smith.
9.
Respondent has no rights or legitimate
interests in respect to the domain name <annanicolesmith.com>.
ICANN UDRP, ¶ 4(a)(ii), for the following reasons:
a. Respondent has not been authorized by Complainant to use the “Anna
Nicole Smith” trademark or other intellectual property rights manifest
in the
Internet domain name which is the subject of this complaint.
b. Respondent has not used, nor has demonstrated any preparations to use, <annanicolesmith.com> or a name corresponding to the domain
name in connection with a bona fide offering of goods or services. Policy, ¶ 4(c)(i)
c. Respondent (as
an individual, business, or other organization) has not been commonly known by <annanicolesmith.com>. Policy, ¶ 4(c)(ii)
d. Respondent is not
making a legitimate noncommercial or fair use of <annanicolesmith.com>, without intent for commercial gain to
misleadingly divert consumers or to tarnish the mark at issue. Policy, ¶ 4(c)(iii).
10.
Respondent has registered and is using the
domain name <annanicolesmith.com>
in bad faith. Policy, ¶ 4(a)(iii), for
the following reasons:
a.
Upon information and belief, Complainant alleges that Respondent has
provided false registrant information, as evidenced by Complainant’s
repeated
attempts to correspond with Respondent with no response. Policy, ¶ 2(a).
b.
Respondent
has registered the domain name in order to prevent Complainant from utilizing
the most obvious and common reference to
Anna Nicole Smith, her name, in a
corresponding domain name. Policy, ¶
4(b)(ii).
c.
Respondent
has registered the domain name primarily for the purpose of disrupting the
business and promotional interests of the Complainant. Policy, ¶ 4(b)(iii).
d.
By
registering this domain name, Respondent has intentionally attracted, and
thereby siphoned for commercial gain, Internet users
to Respondent’s web site or other on-line
locations, by creating a likelihood of confusion with Anna Nicole Smith as to
the source, sponsorship,
affiliation, or endorsement of Respondent’s web site
or location, or of a product or service on Respondent’s web site or location. Policy, ¶ 4(b)(iv). In a review of
Respondent’s website on December 8, 2003, Respondent’s web counter shows
5,739,899 visits to <annanicolesmith.com>
since April 2002, suggesting not only recognition of Complainant’s notoriety
and celebrity status in the minds of Internet users
and the public at large,
but also the exponentially-evolving extent of confusion created by Respondent
due to the unauthorized use
of the Smith Intellectual Property Rights in the
subject domain name. See Bogart,
Inc. v. Humphrey Bogart Club, FA 162770 (Nat. Arb Forum Aug. 4, 2003)
(stating that “[i]t is
inevitable that a substantial number of Internet users will mistakenly believe
that the owners of the rights in the HUMPHREY
BOGART name have licensed or
authorized Respondent's use of the disputed domain name, when in fact the
owners of the HUMPHREY BOGART
name and mark object to Respondent's site. In this Panel’s opinion, this is precisely
the kind of activity Policy ¶ 4(b)(iv) was designed to address.”)
e.
Respondent’s appropriation without authorization of the intellectual
property rights of Complainant by the registration, and subsequent
use, of <annanicolesmith.com>,
contradicts and counteracts the positive legacy of Anna Nicole Smith. The domain name in question has inherent
value as a promotional and historical link to Anna Nicole Smith and her
evolving entertainment
and historical legacy, which is intentionally disrupted
by Respondent’s bad faith use of the domain name.
f.
Respondent has registered the domain name
primarily for the purpose of appropriating the intellectual property rights of
Complainant
and to mislead consumers and direct them to Respondent’s
unauthorized website. Policy ¶
4(b)(iv). Respondent’s website
advertises, without Complainant’s authorization, Complainant’s television
program entitled “The Anna Nicole Show,”
and otherwise utilizes those
intellectual property rights owned by Complainant, and features references to
other commercial offerings
without authorization from Complainant, some of
which are of the kind and nature that Complainant objects to in principle and
which
association between Anna Nicole Smith and those featured references are
undesirable and harmful associations.
g.
There
can be no dispute that Respondent registered the domain name in question with
full knowledge of the existence of Complainant
and the understanding that
Respondent’s registration of the domain name would prove to be of great
interest to Complainant. Respondent
therefore knew or should have known, by virtue of Complainant’s relentless, diligent
and virtually unparalleled activities
in marketing and promoting the name and
likeness of Anna Nicole Smith through a multitude of entertainment, commercial
and communications
outlets throughout the world, that Respondent’s act of
registering the domain name in question and putting it to the use that
Respondent
has engaged in, would interrupt Complaint’s legitimate business
activities, violate Complainant’s exclusive intellectual property
rights, and
cause great harm and impediment to Complainant’s interests.
11.
Complainant asserts that Respondent’s website located at <annanicolesmith.com>, which
contains a biography and advertises Respondent’s plans to post a photo gallery
“and more,” is nothing more than a thinly-veiled
attempt to “legitimatize” a clearly abusive and
illegal appropriation of the exclusive rights of Complainant.
B.
Respondent
1.
Respondent does not dispute the fact that the domain name at issue is
substantially identical to the Complainant’s professional name
in which she may
hold some intellectual property rights.
2.
Respondent claims, however, that the following facts establish its
legitimate right and interest to register and use the domain name
even though
it is identical to her professional name:
a.
Respondent registered the domain name for the express purpose of
establishing a fan club site for Complainant, which site provides
information
about her and her career, and did so with the express permission of Marketing
Coordinator Jerry Arias of E!Online to
help promote her then new television
show.
b.
The site has been operative and under constant development solely for
the use of Complainant’s fans for at
least the past one and three-quarter’s years, which has been for the benefit of
Complainant and the fans
and not for commercial purposes of Respondent. The
fact that it promotes her television show is to her benefit and does no harm to
her or her career. Respondent claims to
have been a sincere fan of Complainant for more than 10 years.
c.
The site contains a clear disclaimer indicating that it is not an
official site of Complainant so that there can be no confusion in
the minds of
the public or the fans utilizing the
site to find information about her.
3.
Respondent further points out that (1) he has rejected all offers to
sell the domain to anyone over the past several years; (2) that
the site has
been in operation for nearly two years without objection from Complainant or
anyone else; (3) that Complainant has available
the opportunity to register the
domain names with her name and the gTLDs of .net or .biz or any of the country
codes; (4) that <www.annanicolesmith.org>
has existed for sometime
without apparent objection from Complainant and that it contains numerous
commercial advertisements and
pop-ups which are benefiting from use of her name;
and (5) there are over one million websites utilizing or referring to
Complainant’s
name which turn up in a web search, most of which have no
apparent connection with Complainant and over which she has apparently
asserted
no effort to control.
4.
Most significantly, Respondent claims that in an abortive series of
discussions between his and Complainant’s attorneys since September
2003, he at
one point even offered to turn over the domain name to Complainant “for free,”
which was not accepted by her attorneys,
and that Complainant’s attorneys
refused to discuss any reasonable basis for settlement or extensions of time in
which to resolve
the dispute amicably.
5.
Finally, Respondent cites in support of his position that he has the
legitimate right to use the domain name for a fan club, the Edward Van Halen
and Bruce Springsteen decisions in which the Respondent prevailed in a
“fan club” environment where there was no evidence of commercial involvement on
the
website. Edward Van Halen v.
Deborah Morgan, D2000-1313 (WIPO Dec. 20, 2000); Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, D2000-1532 (WIPO Jan. 25, 2001).
FINDINGS
The Panel finds (1) that Respondent has registered a domain
name that is substantially similar to Complainant’s professional name,
although
it is not clear to the Panel that Complainant has established the degree of
notoriety and famousness normally required to
give her the exclusive right to
such name as a common law trademark; (2)
the Respondent has established at least minimal rights to use of the
domain name as a “fan” site and has established that it has actually
used the
domain for such purpose for a period of nearly two years without objection
until recently by Complainant; and (3) Complainant
has NOT established, as required,
that the domain name was registered and being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for UDRP (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.
The Panel acknowledges that the domain
name is substantially identical to Complainant’s name, since the addition of
the .com suffix
is not legally distinguishable nor relevant. In the judgment of the Panel, it is unlikely
that the evidence submitted here by Complainant of her career, in and of
itself, is sufficient
to establish common law trademark rights in the name, which
is a requirement for Complainant to prevail on this aspect of the case. While the UDRP does not require a registered trademark for
protection of a trademark from a confusingly identical domain name, the mere
fact of having a successful career as
an actress, singer or TV program star
does not provide exclusive rights to the use of a name under the trademark
laws. The cases require a clear showing
of high commercial value and significant recognition of the name as solely that
of the performer. The Humphrey Bogart case cited by
Complainant is a prime example of the type of case that would be expected to
prevail, since virtually no one familiar
with the movie industry would fail to
recognize his name as that of the famous movie star. The Panel does not believe Complainant’s name has yet reached
that level of fame.
However, for the sake of careful
consideration and fairness to Complainant, the Panel will assume that the
Complainant has minimally
prevailed on this requirement and will base its
decision on the other two legs of the UDRP.
The Panel finds that Respondent has
established a legally significant basis for its registration and use of the
domain name as a fan
club site, as a matter of First Amendment free speech
rights and existing law on this subject.
Furthermore, the uncontested allegation that the site was established at
the request and approval of a Promotions Manager interested
in promoting her
television show provides ample basis for the initial registration and use of
the domain name for the fan site. The
Panel agrees with the conclusions of the Edward
Van Halen and Bruce Springsteen
cases cited by Respondent. See Supra
Parties’ Contentions B(5).
There is significant social value in permitting supporters of performers
to express their support and appreciation for them, as part
of their First
Amendment rights, just as there is a right to criticize public figures under
the freedom of speech principles of the
U.S. Constitution. These rights clearly override the minimal
commercial value of a domain name in a case like this, and we find it
surprising that performers
fail to appreciate this fact.
The fact that Complainant recognizes that
the website in question successfully advertises her television program and
supports her
activities is further evidence that Respondent had and has a
legitimate interest in continuing the operation of the web site under
this
domain name. Notwithstanding the
unsupported allegations of harm to the commercial interests of Complainant, it
would seem to this Panel that,
to the contrary, a fan site this supportive of
her career and activities can only be of considerable benefit to her career.
Furthermore, we find suspect the fact
that the site has existed for nearly two years without objection from
Complainant, and that
even when an objection was made to the site that the
Complainant failed to follow up with legal action for many months after threats
were made to take such action. This
conduct by counsel for Complainant, and the fact that apparently other sites of
a similar nature exist, would support Respondent’s
allegations that the real
reason for the filing of this Complainant is because she and her business
advisors would now like to use
the large group of supporters of her career who
frequent this site to advance her commercial interests by forcing the
Respondent
to give up the fan club site, so she can use it herself. That is not the purpose of the UDRP and
related provisions of the ICANN procedures.
As literally hundreds of UDRP cases have pointed out, the purpose of the
UDRP is to prevent “abusive” registration and use of a domain
name that
conflicts with trademarks. There is nothing abusive about supporting a
performer’s career by creating and running at his
personal expense a fan club
site.
As other cases have held, failing to act
within a reasonable period of time from the date of registration and use,
Complainant has
acquiesced to Respondent's registration and use of the subject
domain and has waived any rights, even if they were tenuous, to request
that
the domain name be transferred. See XFM, Ltd. v. Intervid, Ltd.,
D2000-1298 (WIPO Jan. 22, 2001); Grodberg v. Rugly Enters. LLC,
FA 009275 (Nat. Arb. Forum Mar. 2, 2000). Furthermore, Complainant's failure to act for several years is
also indicative that the great harm it claims to have suffered as a
result of
Respondent's registration of the domain name is actually non-existent. Caracol Primera Cadena Radial Colombiana S.A.
v. ABCSites, Inc., D2003-0880 (WIPO Jan. 30, 2004).
Since the Complainant has failed to prove
this leg of the required proofs, we could stop here and rule for
Respondent. However, we believe there
is an even stronger reason that Respondent should prevail here – the utter
failure of Complainant to show
any evidence whatsoever of bad faith
The Panel finds that the there is
absolutely no evidence whatsoever of bad faith registration and use of the
domain name in question
in this case, notwithstanding the mere recitation of
the requisite elements of proof required in such cases. The Panel took great pains to set forth the
allegations of Complainant here in order to show that such allegations are just
that –
allegations without any proof on this issue.
The Complainant alleges, for example, use
of the site for commercial gain and false registration information, neither of
which is
supported by any actual evidence, and in fact it appears from
Respondent’s assertions that it tried to negotiate a resolution after
being
contacted and Complainant failed to follow up.
It is hard for this Panel to understand an allegation of either point,
if the statements of Respondent in its Response are true that
he offered to
give up the domain name at no cost, to settle the case, but that this was
rejected by Complainant’s counsel – the very
counsel who appears as of record
in this proceeding.
Suffice it to say, a Complainant is
required to submit proof of allegations of bad faith and cannot rely on mere
assertions of legal
conclusions taken from the explicit requirements of the UDRP,
as Complainant did here. Merely
asserting legal conclusions does not make them evidence in a legal
proceeding. The Panel therefore
concludes that Complainant totally failed to prove the third leg of the UDRP
requirements and therefore rules
in favor of Respondent, as noted in the
Decision below.
DECISION
Complainant
having failed to establish the three elements required under the ICANN Policy,
the Panel concludes that relief shall be
DENIED.
Accordingly, it is Ordered that the <annanicolesmith.com>
domain name shall NOT be TRANSFERRED
from Respondent to Complainant and that further proceedings on this issue be
prohibited under the UDRP.
G.
Gervaise Davis III, Esq., Sole Panelist
Dated: February 21, 2004
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