(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules instructs the Panel as to the principles that should be used in determining the dispute: “A Panel shall 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.” In other words, the Panel has to consider whatever statements and evidence the Complainant and Respondent provide and then, primarily based upon the Policy and Rules, seek to decide the Complaint. With regard to the applicability of national law, the general rule is that where both parties and the registrar are from one jurisdiction, then the Panel is at liberty to consider the national law from that jurisdiction; however, where they are not, then only the Policy and Rules should apply.

In the case before the Panel concerning the disputed domain name <tonysnow.com> the Complainant is based in the United States and the Respondent is based in China, thus the Panel will seek to decide the case primarily based upon the Policy and Rules and the statements and documents submitted.

In this case, the Panel finds that, as a result of the Respondent failing to respond to the Complaint notified to him, he has thereby failed to rebut any of the factual assertions made by the Complainant. The Panel would usually expect to receive a set of factual assertions from the Complainant with such assertions being supported by evidence. A Respondent would subsequently make assertions in its defense with the submission of supporting evidence.

The Panel has taken note of the assertions made by the Complainant but notes also that the Complainant has provided little supporting evidence. The Complaint is somewhat unclear, rather poorly drafted and the Complainant’s evidence is not particularly illuminating. It is rather a cavalier Complaint. The area of unregistered rights is less straightforward than that of registered rights and the extent to which the UDRP affords protection to personal names that have not been registered as a trade or service mark, is a somewhat controversial area. If the Respondent had sought to contest the Complaint and make assertions the Panel would have needed to consider such assertions and look to any supporting evidence. However by failing to respond the Respondent has failed to contest any of the assertions made by the Complainant and the Complainant is perhaps rather fortunate in this respect.

Whilst the majority of panelists consider that well known personal names may benefit from protection under the UDRP, they do not always agree on whether common law trademark rights have been established in relation to particular cases. Should the personal names of actors, authors, artists, musicians, sportspersons, businessmen, journalists, politicians, religious leaders, lawyers and bankers all be protected? How famous should each of these individuals be? Should the person in question be known worldwide, nationally, or does a particular city or town suffice? National laws vary as to whether they grant protection to an individual, thereby enabling him or her to prevent a stranger registering the name in question. Some jurisdictions recognize such rights, some do not. Celebrity names and other personal attributes are generally protected in the United States, Canada, Australia, France and other countries, although it should be noted that the level of protection in the United Kingdom is one of the weakest in the world.

Without an international framework, there is no clear definition and no clear line that can be drawn by panelists.

The difficulty that exists in dealing with personal names is underlined by the Second WIPO Internet Domain Name Process (“http://wipo2.wipo.int/process2/report/index.html”) which was initiated at the request of the Member States of WIPO. It followed the first such WIPO Process, which investigated the interface between trademarks and Internet domain names, resulting in the recommendation of the establishment of the UDRP to which both the Complainant and Respondent are bound. A number of issues were considered outside the scope of the First WIPO Process, and these required further consultation and resolution. These issues include the consideration of the use of personal names in the event of bad faith, abusive, misleading or unfair use. Quoting from the Executive Summary of the Second WIPO Internet Domain Name Report:

“For personal names, which are the subject of Chapter Five of the Report, it was found that there are no existing international norms dealing with their protection and that national legal systems provide for a wide diversity of legal approaches to their protection. The sensitivities offended by the registration of personal names as domain names by parties unconnected with the persons in question is recognized, and it is suggested that the international community needs to decide whether it wishes to work towards some means of protection of personal names against abuse of domain name registrations.”

Thus the conclusion of WIPO after this lengthy and detailed Second WIPO Internet Domain Name Process was that the issue of whether there should be protection of personal names under the UDRP should be left to the international community to decide and it is clear that the issue of personality rights is too unsettled for it to be specifically provided for under the UDRP at present. As the Report states:

“Because of the diversity of interests affected by the treatment of personal names, the legal principles and policies that can be deployed to protect personal names are similarly diverse and vary, as might be expected, from country to country”.

Thus panelists are limited to applying the Policy and Rules on the specific facts, together with relevant national laws, where the parties to the Complaint are from the same jurisdiction.

Generally panelists have embraced a broad interpretation of paragraph 4(a)(i) of the Policy and the term “trademark” is construed broadly to include the distinctive features of a person’s activities thereby accepting that common law rights can subsist in an individual name. In the view of the present Panel very famous, and in particular internationally renowned personalities should be able to obtain protection of their names under the UDRP, particularly where a third party is acting in bad faith, where, for example, the third party has the Complainant in mind when registering and seeks to sell the domain name at a profit, or where there is a pattern of such registration activity. However, with the variation of national laws with regard to whether they grant protection to an individual and his personal name and the application of the relevant concepts of distinctiveness and field of use it is not too surprising that decisions by Panelists may be somewhat unpredictable when one is in the realm of such unregistered rights and their existence.

Although a large number of cases have been brought where the domain name in question reflects a well known personal name and the result has been a transfer of the domain name, for example the leading cases of Julia Fiona Roberts v. Russell Boyd WIPO Case No. D2000-0210, Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235, Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 a number of other cases have nevertheless resulted in denials.

For instance, the case of Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596, found that the well known rock singer Sting did not necessarily have rights in the name “Sting” as a trademark simply because he was well known by that name. Another example is Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, WIPO Case No. D2000-1532 where the Panel stated “In the view of this Panel, it is by no means clear from the UDRP that it was intended to protect proper names of this nature”.

In the case of Israel Harold Asper v. Communication X Inc,.,WIPO Case No. D2001-0540, decided on June 11, 2001, the Complainant, Israel Harold Asper, was a businessman and claimed widespread public recognition throughout Canada and indeed internationally as the founder of CanWest Global Communications Corp, together with being an accomplished lawyer, politician, and philanthropist. However the Panel, whilst it accepted that the Complainant had a deservedly famous name, which may provide him with a remedy before a national court, this did not extend to protection under the UDRP and he did not have sufficient rights in a trademark or service mark.

The objective of the above cases and discussion is to underline the fact that although well known personal names may benefit from protection under the UDRP based upon unregistered trademark rights, the area itself is nevertheless controversial and Complainants should by no means assume that such protection exists automatically.

The UDRP should not be, and indeed has not been, extended to all personal names regardless of their degree of celebrity or fame, which, in any event, is highly subjective.

The case needs to be made by the Complainant each and every time, if it is not and a Respondent makes a sufficiently robust argument in defense then such a Complaint may well fail if there is a lack of clear, cogent and convincing evidence.

By failing to respond to the Complaint, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might have concluded that the Respondent has any rights or legitimate interests in the domain name or indeed argue that it may not have been aware of the Complainant and Tony Snow when it acquired the disputed domain name.

The default of the Respondent does not remove the burden on the Complainant to establish the three criteria in paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The disputed domain name is <tonysnow.com>. The Complainant has the burden of proving that it has prior registered trademark and/or service mark rights in the name “Tony Snow”. The Complainant must then subsequently demonstrate that the disputed domain name is identical or confusingly similar.

It is not particularly clear to the Panel from the very brief filing by the Complainant whether the Complainant is seeking to demonstrate that it has registered trademark and/or service mark rights in the name “Tony Snow” or whether it is relying on potential unregistered rights, i.e. common law trademark rights in the name or indeed whether it is seeking to reply on unregistered rights in the Program names. The contention appears to be something of a catch all and states that the disputed domain name is:

“identical to the “name/mark” “Tony Snow” and is confusingly similar in relation to the name/mark “Weekend Live with Tony Snow” and formerly of “Fox News Sunday with Tony Snow.””

The phrasing “name/mark” makes it appear that potential registered trademark or service mark rights exist in “Tony Snow”, “Weekend Live with Tony Snow” and “Fox News Sunday with Tony Snow”. However, no trademark or service mark rights were specified. In response to the subsequent Procedural Order the Complainant did provide proof of a trademark registration, that of “Fox News Sunday”, registered with the USPTO under No. 2093658 though this has little relevance to the disputed domain name <tonysnow.com>.

The Complainant has therefore not demonstrated that it has registered trademark or registered service mark rights in the name “Tony Snow”. However, the Policy is not restricted to registered rights and so the question is whether or not the Complainant has unregistered or so-called common law rights in the name “Tony Snow”.

The Complainant contends that it has been established that well-known personalities are able to prevent the unauthorized registration of domain names in appropriate cases and the Complaint relies on three authorities:

“Nicole v. John Zuccarini, WIPO case no. D2000-1415, (January 21, 2001), Fox News Network, LLC v. Reid,WIPO Case No. D2002-1085 (February 18, 2003), Fox News Network, LLC v. Michele Dinoia, WIPO Case No. D2002-1082 (February 9, 2003).”

The Panel agrees in principle with this contention, provided that the necessary common law rights are established, clearly each case must be considered on its particular facts.

In the first case relied upon, properly named Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415, two domain names were in dispute, namely <nicholekidman.com> and <nicolekidmannude.com>. With regard to whether the Complainant, Nicole Kidman, had established common law trademark rights in her name, the uncontested factual background in this case was very persuasive and clearly evidenced. It stated that:

“Kidman is a well-known film actress. She has starred in numerous motion pictures including Eyes Wide Shut (1999), Practical Magic (1998), The Peacemaker (1997), Batman Forever (1995), To Die For (1995), My Life (1993), Far and Away (1992), Billy Bathgate (1991), Days of Thunder (1990), and Dead Calm (1988). She has received various awards for her acting, including the Golden Globe Award in 1996 for her role in To Die For.”

The Panel concluded that:

“there is little question but that Kidman has established common law trademark rights in her name. By virtue of her successful films, she has achieved renown, and the use of her name in connection with entertainment services provides a strong indication of source.”

The Panel also concluded that the disputed domain names were identical or confusingly similar and the disputed domain names were duly transferred.

The second case cited by the Complainant is actually a case in which the Complainant itself has already succeeded; Fox News Network, LLC. v. Michele Dinoia, WIPO Case No. D2002-1082. The disputed domain name in this case was <oreillyfactor.com> and the Panelist in that case stated, with respect to whether or not the Complainant manages to prove the first ground of existing trademark/service mark rights that:

“It is established that well-known entertainers and personalities are able to prevent the unauthorized registration of domain names in appropriate cases. Refer: Nicole Kidman v. John Zuccarin, WIPO Case No. D2000-1415 (January 23, 2001). That is, because of Ms. Kidman’s renown and the use of her name in connection with entertainment services, which provided a strong indication of source. The same broad principles apply here.”

“The Complainant relies on trade mark rights which may have been recently lodged but rely on first use in commerce going back to 1996, these rights being associated with “The O’Reilly Factor”, a news program hosted by Mr. Bill O’Reilly on the Fox News Channel. This is not disputed by the Respondent.

The Complainant asserts that the Domain Name is synonymous with its news channel and with its host Mr. Bill O’Reilly. The Complainant’s evidence is not particularly enlightening on why this is so, but there is just enough in the Complaint to get the Complainant over this first hurdle.”

The Panel concluded that the Complainant had the necessary rights in view of the recently lodged trademark rights THE O’REILLY FACTOR and that the disputed domain name <oreillyfactor.com> was identical or confusingly similar to the trademark rights. The disputed domain name was duly transferred.

However, the present Panel finds that firstly this case is not particularly relevant since the transfer was decided on the basis of trademark rights which “may have been recently lodged” together with alleged first use in commerce of the program name “The O’Reilly Factor” dating back to 1996. The case was not decided on the unregistered or common law trademark rights in the personal name of the program host Mr. Bill O’Reilly.

Secondly, the Panel in that case concluded that though the Complainant’s evidence was “not particularly enlightening” it did however conclude that “there is just enough in the Complaint to get the Complainant over this first hurdle” i.e. the existence of a trademark or service mark and the domain name being identical to that mark. In the present case regarding the disputed domain name <tonysnow.com> there are no such registered or lodged trademark or service mark rights for Tony Snow.

The third case cited by the Complainant is again one in which the Complainant itself has already succeeded; Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085. In this case the disputed domain name was <billoriley.com> and the Complainant appears to have sought to rely once again on the twin arguments of its registered trademark rights in THE O’REILLY FACTOR and possible common law rights in the personal name of Bill O’Reilly. The Panelist concludes on the facts in an almost identical manner regarding whether or not the Complainant manages to prove the first ground of existing trademark/service mark rights. The panelist notes once again that the Complainant’s evidence was “not particularly enlightening” but that “there is just enough in the Complaint to get the Complainant over this first hurdle.”

The facts before the present Panel concerning the domain name <tonysnow.com> are similar in many respects to this third case, Fox News Network, LLC v. Warren Reid (WIPO Case No. D2002-1085). We have the Complainant alleging rights in the name of a host, this time Tony Snow, as well as being “the exclusive owner of all copyright, trademark and other intellectual property rights associated with the program in question”. There is also a similarity in the Complainant’s evidence not being particularly enlightening. However, on this occasion there is no registered trademark equivalent to THE O’REILLY FACTOR. In essence we have the same Complainant relying upon Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 cited as evidence of an established principle that well known personalities are able to prevent unauthorized registration of domain names in appropriate cases, bolstered by success in two previous cases.

As previously highlighted, it seems to be more or less broadly accepted that well known personalities can avail themselves of the UDRP to seek to have a registered domain name that is identical to their personal name transferred in appropriate cases, though panelists by no means always agree upon this. Much depends upon the particular facts and the degree of celebrity or fame. What all panelists do agree on however is the need to prove that the prior rights exist and this needs to be evidenced i.e. the Complainant, in the absence of prior registered trademark and/or service mark rights, has the burden of clearly demonstrating, i.e. proving, that it has common law rights in the name “Tony Snow” or the program names “Weekend Live with Tony Snow” and “Fox News Sunday with Tony Snow”.

The present Complainant relies upon the assertions that it operates Fox News Channel, a 24 hour cable news channel, available in approximately 90 million homes in the United States of America and that the domain name is synonymous with Fox News Channel, and the programs: “Weekend Live with Tony Snow” and “Fox News Sunday with Tony Snow”.

The assertion that someone is well known or famous is subjective, but certainly easier to prove in the case of celebrities known worldwide such as Nicole Kidman and Julia Roberts and in the Complaints concerning these celebrities such assertions were also evidenced and thus clearly proven. However when someone has a lesser degree of renown, there is a greater need for this evidence, and thus in the view of the Panel, the lesser the degree of fame the greater the evidential burden becomes. One might say that the level and quality of the evidence necessary should be inversely proportional to the notoriety of the person concerned. In any event it needs to be clear, cogent and convincing.

Having provided no documentary evidence, the Complainant is fortunate that the degree of fame of Tony Snow is easily verifiable for instance by entering “Tony Snow” as a search term on “www.google.com” and the Panel therefore concludes that there is clear, cogent and convincing evidence that common law trademark rights exist in the personal name Tony Snow in the United States.

In the present case of <tonysnow.com> however, the Complainant is not the well known individual concerned, Tony Snow, rather it is Fox News Network. The Complaint did not include an assertion or evidence that Tony Snow had assigned any rights in his personal “mark” which relates to his personal reputation and fame rather than that of the Complainant. In the view of this Panel, it cannot be assumed that an employer owns the rights in the personal names of all its employees, without clear acquisition of those rights.

Indeed, some previous UDRP decisions have gone so far as refusing to transfer the domain name in question because the Complaint was not brought in the name of the person whose name was reflected in the domain name see UBS AG v. has book publishers, Inc, WIPO Cases No. D2001-0637 and WIPO Case No. D2001-0639.

This very issue was raised in another previous case filed by the Complainant and decided in July of last year; Fox News Network, L.L.C. v. Kenneth A. Young, WIPO Case No. D2003-0407. This case concerned the domain name <gretavansusteren.com>. The personal name in question was that of the host of the Complainant’s news and interview program “On the Record with Greta Van Susteren”. The Panel in that case found that the Complainant, Fox News Network:

“had provided no evidence to support the contention that it had acquired all rights in Ms Van Susteren’s name, and in those circumstances the Panel is not prepared to assume that it has”.

It is perhaps surprising that the Complainant has not learned from its previous experiences. It is sailing very close to the wind with respect to the evidence initially provided. However the Panel considers it would have been unfair and not in the interests of justice to have penalized the Complainant in this respect, particularly as the Respondent did not itself respond to the contentions, hence the issuing of the Procedural Order covering such assignment of rights and additional evidence, the response to which satisfies the Panel.

The question remaining is whether the Complainant could restrain the use of the disputed domain name in a Court of Law, whether this is on the basis of a common law approach of passing off or a civil law approach of unfair competition. Although the Complainant has provided assertions and little evidence, its claims have been fairly easily confirmed by the Panel and this enables the Complainant to pass the first hurdle.

Thus the Panel finds that the disputed domain name is identical or confusingly similar to the common law trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, which, if shown by the Respondent to be present, are considered as suitable evidence of the Respondent’s rights or legitimate interests in respect of the disputed domain name. However, the primary burden is on the Complainant to show that the Respondent has no such rights or legitimate interests. Once the Complainant has made out a prima facie case, it is up to the Respondent to demonstrate the contrary.

The Panel accepts that the Complainant has made out such a prima facie case, by not responding the Respondent has not demonstrated the contrary and thus the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

A non-exhaustive list of what constitutes bad faith registration and use is set out in paragraph 4(b) of the Policy. The Complainant relies on 4(b) (iv):

“By using this Domain Name, the Respondent had intentionally attempted to attract, for commercial gain, Internet users that would be attempting to find a domain name related to Tony Snow, the program or FNC.”

The bad faith concept necessarily involves the registrant registering the disputed domain name with the Complainant or its trademarks in mind. The fact that the Complainant and one of its employees are well known in the United States does not necessarily follow that they are well known in China. The Complainant has produced no evidence to suggest why it or Tony Snow should be well known in China. If the Fox News Channel is available in China for instance, the provision of evidence such as a broadcasting schedule would have been useful. In response to the Procedural Order however the Complainant did demonstrate the existence of relevant web pages namely the “Tony Snow Show” homepage on the world wide web at “www.foxnews.com/tonysnow” as well a weekly column by Tony Snow entitled “Tony Snow’s America” and a daily blog both available at”www.foxnews.com”. As such the Panel can assume such sites are accessible in China.

It may well also have been possible to demonstrate the bad faith of the Respondent in a number of other ways such as proving that he had a pattern of bad faith registrations, a registrant search today is standard practice and easily carried out and may well illustrate that the Respondent has a pattern of bad faith. The Complainant did not seek to reinforce its case in any such way.

The Respondent did not respond to the Complaint. The lack of evidence on the part of the Complainant is compensated for by the behavior of the Respondent on receipt of the Complaint. The fact that there was a transfer of the disputed domain name within 24 hours of the original notification of these administrative proceedings, such transfer being in clear breach of paragraph 8 (a) of the Policy which provides that a “registrant may not transfer its domain name to another registrant or to another registrar during a pending administrative proceeding”, is hardly the practice of an entity or person acting in good faith. Additionally, whilst the use by the Respondent of a whois alias service, the Whois Privacy Protect Service, may not necessarily be an indication of bad faith on its own since Internet users are entitled to seek privacy as regards the public display of their personal details, such use in the circumstances is suspect to say the least and appears to be an attempt by the Respondent to avoid identification. The Respondent has not provided any reason for its registration of the disputed domain name, and the Panel cannot see any reason for the Respondent to have registered the disputed domain name other than to seek to attract Internet users who might be looking for information on or information by Tony Snow or Fox News Network and it would be natural to commence such a search with “www.tonysnow.com”. The Panel therefore considers that the Respondent indeed had Tony Snow in mind when registering the disputed domain name.

Finally, as noted in the Complainant’s response to the Procedural Order the Respondent has emailed the Complainant stating that “we don't want the domain anyway” and the Panel accepts this as the current intention of the Respondent in view of the fact this Complaint has been brought.

Therefore, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.

D. In Summary

In the view of this Panel, well known personal names are generally protected under the UDRP against bad faith, abusive, misleading or unfair registration as domain names. However, each case will turn upon its facts and protection may be granted if the personal name passes either of the two prongs below:

(1) Where the personal name in question is protected by a registered trademark or service mark and the Complainant is able to demonstrate its rights by a copy of such registration.

(2) Where no such registered rights exist, common law trademark rights may come to the rescue of a Complainant. However it is crucial for the Complainant to evidence those rights by providing convincing evidence. The Complainant needs to be able to be in a position to potentially restrain the use of the disputed domain name in a Court of Law, whether this is on the basis of a common law approach of passing off or a civil law approach of unfair competition. The level and quality of the evidence necessary should be inversely proportional to the notoriety of the person concerned.

As the degree of fame decreases from clearly identifiable celebrities with worldwide renown, to nationwide renown or to less well known authors, actors or businessmen with limited renown in a specific field, the burden of proof on the Complainant increases and the need for clear and convincing evidence becomes paramount. Without such compelling evidence proving the prior right, a Complainant may fall at the first hurdle. Such evidence may also prove crucial at the third hurdle of proving bad faith registration and use in seeking to prove that the personal name in question is known in the jurisdiction where the Respondent is situated, since the Complainant needs to demonstrate that the Respondent was aware of the Complainant at the time of registering the domain name.

If the Complainant does not provide such evidence then it runs a serious risk that the Respondent may be able to sufficiently muddy the waters and prevent a transfer. In this instance the Complainant was perhaps fortunate that the Respondent defaulted and did not reply, indeed the Respondent’s behavior on receipt of the Complaint assisted the Complainant’s case.

 

7. Decision

For all the foregoing reasons the Panel orders that the disputed domain name <tonysnow.com> be transferred to the Complainant.

 

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David Taylor
Sole Panelist

Dated: July 22, 2004