WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lara Crokaert and 2849-9697 Québec, Inc. (aka Les Productions Clandestines) v. Buy this Domain Webmaster
Case No. D2002-0062
1. The Parties
The Complainants are (a) Lara Crokaert and (b) 2849-9697 Québec Inc., doing business as Les Productions Clandestines. Both have an address in Isle des Soeurs, Québec, Canada. The Complainants are represented by Mr. Stéphane Létourneau of the law firm Fasken Martineau Dumoulin, LLP of Montréal, Canada.
The Respondent is Buy this Domain Webmaster of 5 Tpagrichnery St., 33 Yerevan, 37510, Armenia. The Respondent has not filed a Response and is not represented.
2. The Domain Name and Registrar
The domain name at issue is <larafabian.net>. The domain name is registered with Address Creation of Irvine, CA, U.S.A ("the Registrar"). The domain name was registered by the Respondent on June 6, 2001.
3. Procedural History
A Complaint submitted by the above Complainants was received on January 23, 2002, (electronic version) and January 25, 2002, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On January 28, 2002, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:
- Confirm that a copy of the Complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
- Confirm that the domain name <larafabian.net> is registered with the Registrar.
- Confirm that the person identified as the Respondent is the current registrant of the domain name.
- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.
- Confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP") was in effect.
- Indicate the current status of the domain name <larafabian.net>.
By email dated January 31, 2002, the Registrar advised WIPO Center as follows:
- It had received a copy of the Complaint from the Complainant.
- It is the Registrar of the domain name registration <larafabian.net>.
- "Buy this Domain Webmaster" is shown as the "current registrant" of the domain name. It is also shown as the administrative, billing and technical contact.
- The UDRP applies to the domain name.
- The domain name registration <larafabian.net> is currently on inactive status.
- The Registrar has currently incorporated in its agreements the Uniform Domain Name Dispute Resolution Policy ("UDRP") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").
The Respondent is bound by the provisions of the Policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on January 31, 2002, transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent as named in the Complaint. A copy of the Complaint was also emailed to the Registrar and ICANN.
The Complainant elected to have its Complaint resolved by a single panelist; it has duly paid the amounts required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. The Respondent did not file a Response. A Notification of Respondent Default was forwarded by WIPO Center on February 27, 2002.
WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a Statement of Acceptance and requested a declaration of impartiality and independence.
The Panelist duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On March 7, 2002, WIPO Center forwarded to the Panel by courier the relevant submissions and the record.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
4. Factual Background
The First Complainant is a Canadian songwriter and singer who is known professionally as Lara Fabian. She is particularly well-known in North America, Brazil, Taiwan and in Europe. Since 1991, she has sold some 8 million records which have attained various international awards.
The Second Complainant, which trades under the name "Les Productions Clandestines", represents the First Complainant in trademark and licensing matters and holds several domain names incorporating the words ĎLara Fabianí. The name <larafabian.com>, which is held by the First Complainantís record company on her behalf. The Lara Fabian name is used to distinguish the First Complainantís performances from those of other artists.
Application has been made to trademark authorities in the U.S.A., Canada and in the European Union to register the word mark "Lara Fabian". The Canadian application was filed on March 3, 1999.
Domain names, <lara-fabian.org>, <fabianlara.com>, <fabianlara.net> and <fabianlara.org> are held by the Second Complainant.
The Complainant has given no rights to the Respondent, which maintains a website at <larafabian.net> which provides a gateway to pornographic content. The Respondent invites purchase of the name through a link on the website. Clicking on the link produces a request form for purchasing the name.
The disputed domain name was previously registered to GroupAxion Nouveaux Médias, Inc. (GANM) on behalf of the First Complainant. GANM agreed to transfer the name to the Second Complainant and forwarded documentation to the then Registrar, Network Solutions, Inc. (NSI) on several occasions between June and August 2000. According to the Complainants, NSI failed to register the transfer and gave no explanation of its failure to effect the transfer. The Respondent effected registration on June 6, 2001, after the previous registration had expired.
In November 2001, a representative of the Complainants had negotiations to buy the name with a Mr. Anvni Hanut on behalf of the Respondent. On November 20, 2001, Mr. Hanut stated that an acceptable price for the domain name was US$3,600.
5. Partiesí Contentions
The Complainants have rights in the mark ĎLara Fabianí. These rights are evidenced both by the various applications for trademark registration and by a common law mark arising out of the extensive fame of the First Complainant as a songwriter, singer and recorded artist. Further evidence of the common law mark is found in the various domain name registrations, particularly <larafabian.com> which is held on First Complainantís behalf.
Respondent has been given no rights by the Complainants in respect of the disputed domain name.
Respondent knew or must have known of the First Complainantís international fame and acquired common law mark. The pornographic site maintained under the disputed domain name is clearly aimed at offending the First Complainant and is a form of coercion to her to buy the name from the Respondent. The pornographic connection tarnishes the mark.
The Respondent acted opportunistically in registering the name at a time when it was being transferred from one agent of the Complainant to another.
The Respondent is not making any legitimate non-commercial or fair use of the domain name without intent for commercial gain. The home page is an entrance to "adult" sites and the Internet user is "mouse-trapped" before it is possible to exit the site. Respondent has intentionally attempted to attract Internet users for commercial gain to lure users to pornographic sites and possibly collect a fee from such sites.
Users are likely to infer that the sites have some connection with or approval from Lara Fabian.
Bad faith registration and use can be inferred from the above plus the Respondentís attempts to sell the name for far more than out-of-pocket expenses.
The Respondent has made no submissions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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".
The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- That the Respondent has no legitimate rights or interests in respect of the domain name; and
- That the domain name has been registered and used in bad faith.
The Panel has considered the submissions and evidence and largely agrees with the Complainantsí submissions.
The disputed domain name is identical to the Complainantsí mark. "Lara Fabian" both in respect of the marks for which registration has been sought and the common law mark established by the First Complainantís international reputation as a vocal artist and songwriter.
As to whether the Respondent has any legitimate rights, the Complainants gave him none. There is no evidence from the Respondent which could raise any of the matters in Paragraph 4(c) of the Policy. The Panel need not consider the applicability of that paragraph. Accordingly, the Complainant has discharged the onus on the second criterion.
Although there was no evidence that the fame of the First Complainant had extended to Armenia, there is no allegation that the Respondent in Armenia was ignorant of her international fame at the time of registration. The Panel is prepared to infer bad faith registration and use from the following facts:
(a) The use of a famous personís name in a domain suggests an intent to divert users seeking information on that celebrity (see Nicole Kidman v. John Zuccarini (WIPO Case No. D2000-1515)).
(b) The Respondentís invitation to purchase the name on the website plus the Respondentís offer to sell the name for US$3,600 indicates that the Respondentís true intent in registering and using the name was to make money out of the First Complainantís fame and reputation.
(c) The linkage to pornographic sites on the Respondentís website indicates both a desire to tarnish the mark and a desire to profit from an unjustified use of the domain name.
This case is simply another in a line of attempts by domain name registrants to capitalize on the fame and reputation of a person well-known internationally. Other WIPO cases, such as Nicole Kidmanís case (supra), Julia Roberts v. Boyd (WIPO Case No. D2000-0210) and Jeanette Winterson v. Hogarth (WIPO Case No. D2000-0236) show that such attempts do not succeed.
The third criterion has been established and the Complaint must succeed.
For the foregoing reasons, the Panel decides:
(a) That the domain name <larafabian.net> is confusingly similar to the trademark to which the Complainants have rights; and
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) That the domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <larafabian.net> be transferred to the Second Complainant.
Hon. Sir Ian Barker QC
Dated: March 19, 2002