WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pamela Anderson v. Alberta Hot Rods
Case No. D2002-1104
1.
The Parties
The Complainant is Pamela Anderson of California, United States of America,
represented by Lord, Bissell & Brook of California, United States of America.
The Respondent is Alberta Hot Rods of Alberta, Canada.
2.
The Domain Names and Registrar
The disputed domain names <pamelaanderson.com>, <pamelaanderson.net> and
<pamelalee.com> are registered with CORE Internet Council of Registrars, of
Switzerland.
3.
Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the
“Center”) on December 3, 2002. On December 4, 2002, the Center transmitted by
email to CORE Internet Council of Registrars a request for Registrar Verification in
connection with the domain names at issue. On December 9, 2002, CORE Internet
Council transmitted by email to the Center its Verification Response confirming that
the Respondent is listed as the registrant and providing the contact details for the
administrative, billing, and technical contact. It also indicated that the Policy has been
the policy of the Registrar since December 1, 1999, and that the domain names at issue
had been placed on Registry-lock.
The Center verified that the Complaint satisfied the formal requirements of the Uniform
Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform
Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental
Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental
Rules”).
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In accordance with Paragraphs 2(a) and 4(a) of the Rules, the Center formally notified
the Respondent of the Complaint, and the proceedings commenced on
December 12, 2002. In accordance with Paragraph 5(a) of the Rules, the due date for
Response was January 1, 2003. Respondent did not submit any Response.
Accordingly, the Center notified Respondent’s Default on January 10, 2003.
The Center appointed Henry Olsson as Sole Panelist in this matter on January 16, 2003,
and indicated as the projected decision date January 30, 2003. The Panel has submitted
the Statement of Acceptance and Declaration of Impartiality and Independence, as
required by the Center to ensure compliance with Paragraph 7 of the Rules.
The Panel considers that it was properly constituted.
4.
Factual Background
Complainant is an individual person who is a noted actress and model. The
Respondent is located in Canada. The nature of the Respondent’s activities can only be
ascertained from the information provided in the complaint.
In accordance with Paragraph 3(b)(xiii) of the Rules, Complainant agrees to submit,
only with respect to any challenge that may be made by Respondent to a decision by
the Administrative Panel to transfer or cancel the domain names that are the subject of
this Complaint, to the jurisdiction of the courts at the location of the domain name
holder’s address as shown for the registration of the domain names in the concerned
Registrar’s Whois database at the time of the submission of the Complaint to the
Center.
5.
Parties’ Contentions
A.
Complainant
Identity or Confusing Similarity
Complainant submits that Complainant is known by her maiden name, Pamela
Anderson, as well as her married name, Pamela Lee, or a combination of both, Pamela
Anderson Lee. In the Complaint it is indicated that Complainant is a noted actress and
model who has been featured on ten covers of Playboy Magazine and appeared in TV
shows such as “Home Improvement”, “V.I.P.” and “Baywatch” (where she played the
role of C.J. Parker from 1992 to 1997). It is believed that the latter show was
syndicated in 144 countries in 40 languages. Furthermore, according to Complainant,
Pamela Anderson is widely featured in celebrity and entertainment publications and TV
shows.
Complainant submits that from the beginning of 1996, Respondent started to operate a
commercial celebrity fan network known as “Celebrity 1000, Your Ultimate
Entertainment Source” (“Celebrity 1000”), operating under the domain name
<celebrity1000.com>. As part of the “Celebrity 1000” fan network, Respondent
registered <pamelaanderson.com> on November 6, 1996, <pamelalee.com> on
March 27, 1997 and finally, <pamelaanderson.net> on February 25, 1998. The purpose
was, according to Complainant, to divert Internet users to Respondent’s website.
Complainant submits that by doing so, Respondent uses the disputed domain names to
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mislead such Internet users to believe that they are accessing a site that is associated or
affiliated with Complainant.
Complainant furthermore submits that it has been a well established practice by prior
Panels that a celebrity has sufficient proprietary rights in her name to satisfy the
requirement of Paragraph 4.a(i) of the Policy due to the fame of the celebrity and the
association of her name with her persona. In this context, Complainant refers to several
earlier cases, inter alia the WIPO case Roberts v. Boyd (D2000-0210) where it was
found that the name Julia Roberts has sufficient secondary association to constitute
common law trademark rights. Moreover, according to Complainant, a celebrity is
deemed to have common law trademark rights under federal trademark law when used
to identify the performances of that celebrity. Complainant suggests that there is no
question that the public associates Complainant’s names “Pamela Anderson” and
“Pamela Lee” with her persona, acting and modeling career; consequently, those
names have sufficient secondary association with Complainant that she possesses
common law trademark rights over them.
Complainant suggests that the domain names at issue are identical to Complainant’s
maiden name and married names and cause a likelihood of confusion as defined by
Section 2(d) of the United States Lanham Act (Section 2(d), 15 U.S.C. Section 1052(d).
The unique parts of the domain names are exactly the same as, and are clearly
calculated to cause a likelihood of confusion with, Complainant’s names.
Moreover, according to Complainant, a domain name is still considered identical or
confusingly similar to a legally protected name, because the suffixes “.com” and “.net”
are required in domain names and do not add source identity significance.
In summary, Complainant alleges that Respondent’s misuse of the disputed domain
names, which are identical, respectively, to Complainant’s names, clearly causes a
likelihood of confusion to the public and infringes upon Complainant’s common law
trademark rights.
Rights or Legitimate Interests
In this respect, Complainant reiterates that the only use that Respondent is making of
the domain names at issue is to divert Internet users contacting the sites under those
domain names to Respondent’s own commercial website “Celebrity1000.”
Complainant alleges that prior Panels have held that such use of domain names is not
an offering of bona fide goods or services. Furthermore, according to Complainant,
Respondent has never been commonly known by either the name “Pamela Anderson”
or “Pamela Lee”, nor does Respondent have any relationship with Complainant, or
permission from Complainant to use her names and marks; Complainant’s names bear
no relationship to Respondent’s name and therefore do not justify Respondent’s use of
the domain names at issue. In summary, Complainant alleges that Respondent has no
rights or legitimate interests in Complainant’s names.
Registration and Use in Bad Faith
First, Complainant alleges in this respect that Respondent has been using
Complainant’s name and common law trademark at least as early as in November 1996,
by which time Complainant had already acquired celebrity status through both her
acting and her modelling activities; in fact Complainant had for many years prior to
that time been featured on numerous TV shows and had acquired trademark rights in
her name. Respondent’s registration of Complainant’s famous name with full
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knowledge that Complainant had trademark rights in that name reveals, in the view of
Complainant, bad faith.
In addition, Complainant suggests that Respondent is using the domain names in bad
faith by intentionally attracting visitors to the websites under the domain names at issue
for commerce; in full awareness of Complainant’s celebrity, Respondent is seeking to
capitalize and trade-off on Complainant’s fame by re-directing Internet traffic to
Respondent’s website. Complainant suggests that, by doing so, Respondent clearly
intended to gain commercially by using the domain names at issue to attract Internet
users who misleadingly believed that they were accessing a site associated with, or
affiliated to, Complainant and then divert them to Respondent’s website. As such,
according to Complainant, Respondent’s use constitutes bad faith under the Policy.
Complainant adds that, in its opinion, Respondent registered the domain names at issue
for the purpose of disrupting the business of Complainant in her own online ventures
and to prevent Complainant from using her trademarks in a corresponding domain
name herself. In this context, Complainant alleges that Respondent persistently
registered celebrity “.com” names which take or took Internet users to Respondent’s
“celebrity1000.com” website and thus engaged in a pattern of conduct of “stockpiling”
such registrations and thus prevented those celebrities from securing the “.com”
registration for their names. Such conduct is, in the view of Complainant, to be deemed
to fall within the form of bad faith identified in the Policy. In this context Complainant
refers to an earlier WIPO case (D2000-1838).
Complainant alleges in this context, finally that the domain names at issue are only a
few among other numerous names that Respondent registered as domain names in order
to further its “Celebrity1000” fan network from which it received advertising revenues.
Remedies requested
In accordance with Paragraph 4.i of the Policy and for the reasons described,
Complainant requests the Administrative Panel to issue a decision that the three domain
names at issue be transferred to Complainant.
B.
Respondent
The Respondent did not reply to the Complainant’s contentions and is consequently in
Default.
6.
Discussion and Findings
Paragraph 15 of the Rules prescribes that the Panel shall decide a Complaint on the
basis of the statements made and documents submitted and in accordance with the
Policy, the Rules and any principles of law that it deems applicable.
In the case of default by a Party, Paragraph 14 of the Rules prescribes that if Party, in
the absence of exceptional circumstances, does not comply with a provision of, or a
requirement under, theses Rules, the Panel shall draw such conclusions therefrom as it
considers appropriate. In this case no Response has been submitted and none of the
contentions by Complainant have been contested, despite the opportunity given to do
so. The Panel will therefore have to operate and consider the case on the basis of the
factual circumstances contained in the Complaint and the documents available to
support those contentions.
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From the Registrar Verification it follows that the Policy is applicable in this case.
Consequently, there is an obligation for Respondent to submit to a mandatory
administrative proceeding as now initiated in respect of the domain names at issue.
The Panel notes that the Complaint has, according to the documentation available, been
duly communicated to Respondent and that there is consequently from this point of
view no obstacle to considering the case.
Paragraph 4.a. of the Policy directs that Complainant has to prove each of the
following:
-
-
that the domain names registered by Respondent are identical with, or
confusingly similar to, a trademark or a service mark in which Complainant
has rights;
that Respondent has no rights or legitimate interests in the domain names;
and
that the domain names have been registered and are being used in bad faith.
In the following parts of this Decision the Panel discusses each of those elements.
A.
Identity or Confusing Similarity
In this respect, Complainant has, according to Paragraph 4.a(i) of the Policy, to prove
that the domain names at issue are identical or confusingly similar to a trademark or a
service marks in which Complainant has rights.
The domain names at issue are <pamelaanderson.com>, <pamelaanderson.net> and
<pamelalee.com>.
One of the main issues in this context is whether Complainant has a common law
trademark right in the names “Pamela Anderson” and “Pamela Lee.” In this context
Complainant has referred to Section 2(d) of the United States Lanham Act,
Section 2(d), 15 U.S.C. Section 1052(d) and also to some earlier ICANN Panel
Decisions where such trademark rights have been considered to exist for various
celebrities, among them Julia Roberts (WIPO Case D2000-0210). The allegations by
Complainant are essentially that Pamela Anderson/Pamela Lee as a celebrity has fame
and association of her name with her persona and, moreover, that such common law
trademark rights exist when the name of a celebrity is used to identify performance
services.
The Panel finds it obvious that Complainant is a celebrity in the sense described by
Complainant and that the names Pamela Anderson/Pamela Lee have, in the mind of the
public, a secondary association with Complainant’s persona and her professional career
as actress and model. In view of this and in view of the need to ensure consistency
with earlier Panel precedents relating to trademark rights in celebrities’ names, this
Administrative Panel is satisfied that in fact Complainant shall, for the purposes of this
case, be considered to have common law trademark rights in the names “Pamela
Anderson” and “Pamela Lee” at least as early as from the mid-1990s.
The domain names at issue incorporate Complainant’s names with the addition of
“.com” and “.net” respectively. In conformity with well-established practice in this
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respect, the Panel finds that the addition of those two suffixes do not change the
likelihood of confusion with Complainant’s names.
On the basis of these considerations, the Panel finds it to be established that confusing
similarity exists between the domain names at issue and Complainant’s names “Pamela
Anderson” and “Pamela Lee” in which Complainant has trademark rights.
B.
Rights or Legitimate Interests
In this respect Complainant has, according to Paragraph 4.a(ii) of the Policy, to prove
that Respondent has no rights or legitimate interests in the domain names.
Complainant’s main allegation in this respect is that the use that Respondent is making
of the three domain names at issue is to divert Internet users accessing those websites to
its own website “Celebrity 1000” which is of a commercial nature.
Respondent has not commented on this allegation nor on any other elements mentioned
by Complainant in this context. The Panel therefore has to base its findings on what
Complainant has thus alleged and also on the reference that Complainant makes to
findings in earlier cases.
In considering the circumstances present in this case the Panel comes to the conclusion
that in fact Respondent has no rights or legitimate interests in the domain names at
issue.
C.
Registration and Use in Bad Faith
In this respect, Complainant has, according to Paragraph 4.a(iii) of the Policy, to prove
that the domain names have been registered and are being used in bad faith.
Furthermore, Paragraph 4.b of the Policy sets out some circumstances which, in
particular but without limitation, shall, if found to be present by the Panel, be
considered as evidence of registration and use in bad faith.
From the Registrar Verification and from the Complaint it follows that Respondent
made the first registration of one of the domain names at issue in November 1996.
Complainant alleges that Complainant had been acting in the well-known TV show
“Baywatch” as from 1992, and that Complainant already before that had, inter alia,
featured on numerous TV shows.
On the basis of those circumstances the Panel is satisfied that Respondent registered the
domain names at issue in full knowledge about Complainant’s fame which, as found by
the Panel earlier in this Decision, constitutes common law trademark rights in the
names “Pamela Anderson” and “Pamela Lee” at least as from the mid 1990s.
Therefore, the Panel concludes that the registration of the domain names was made in
bad faith in the sense of the Policy.
As then regards the use that Respondent has made, and is making, of the domain names
at issue, Complainant’s main allegation is that those accessing the websites under those
domain names are re-directed to Respondent’s own commercial “celebrity1000.com”
website. This is, according to Complainant, who also refers to earlier panel practice, to
be considered as use in bad faith, the more so as Respondent registered numerous other
celebrity names as domain names in order to further its own commercial celebrity fan
network.
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As indicated earlier, Respondent has not commented on Complainant’s allegations
about the actual use made of the domain names.
What has thus been established in this case about the use of the domain names at issue
leads the Panel to the conclusion that Respondent’s activities amount to use in bad faith
in the sense of the Policy.
D.
Conclusions
On the basis of the foregoing, the Administrative Panel concludes that it has been
established that the domain names at issue are confusingly similar to the trademarks in
which Complainant has rights, that Respondent has no rights or legitimate interests in
the domain names and that the domain names have been registered and are being used
in bad faith. Complainant’s request for a transfer of the domain names to Complainant
shall consequently be approved.
7.
Decision
For all the foregoing reasons, in accordance with Paragraph 4.i of the Policy and
Paragraph 15 of the Rules, the Panel orders that the domain names
<pamelaanderson.com>, <pamelaanderson.net> and <pamelalee.com> be transferred to
Complainant.
________________________
Henry Olsson
Sole Panelist
Dated: January 20, 2003
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