The Complainant is Ms. Barkha Dutt of New Delhi, India, represented by Saikrishna & Associates, India.
The Respondent is easyticket, Kapavarapu, Vas of Hyderabad, India appearing pro se.
The disputed domain name <barkhadutt.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2009. On September 22, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 22, 2009 GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2009. The Response was filed with the Center on October 12, 2009.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on October 16, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Barkha Dutt, the Complainant in the present dispute, is a journalist known for her proficiency in frontline reporting from conflict regions. Her work in this area has won her several accolades and her reporting style has inspired Hindi films such as “Lakshya”.
The Complainant is a known media figure and anchors television talk shows. She is also recognized for her writings and contributions to news and current affairs discussions in various media.
The disputed domain name <barkhadutt.com> was registered on January 8, 2007.
The Complainant works with the NDTV News Channel as Group Editor and is an anchor for “We the People”, an award winning television talk show. She also hosts a daily primetime show called “The Buck Stops Here”. The Complainant initially acquired fame as a broadcast journalist reporting from Kargil and from other conflict zones such as Kashmir, Afghanistan, Pakistan and Iraq. The youngest journalist to receive the Padmashri Award, India's highest civilian honor, she has received more than thirty national and international awards, which include: “Global Leader for Tomorrow Award” from the World Economic Forum, and the “Commonwealth Broadcasters' Award” for Journalist Frontline reporting on the Kargil conflict between India and Pakistan, 1999.
The Complainant claims that her name is widely recognized by the public and any reference to “Barkha Dutt” is instantly associated with her alone, as the renown Indian journalist and no other entity has rights to use the name. The Complainant writes columns for leading daily newspapers such as Hindustan Times and Khaleej Times and is nominated as a member of the National Integration Council of India. She has also been recognized as “ASIA 21 Fellow” by the New York based Asia Society. The Complainant states that her name is distinctive and has acquired secondary meaning, which has trademark significance. Her name therefore ought to be accorded protection as a trademark and a domain name serves as an identity mark on the Internet.
The Complainant asserts that due to the fame associated with her name, she enjoys the status of a celebrity, and it is well-known that celebrities have the right to restrain third parties from exploiting their name and fame. The Complainant cites UDRP cases where celebrities have obtained the transfer of domain names bearing their names, stating that, such cases recognize common law trademark rights in celebrity names without a formal trademark registration. The Complainant asserts that celebrities also commonly use domain names incorporating their name to host websites to be in touch with their fans and the public. Therefore the disputed domain name, which wholly incorporates her name, not only impinges her rights, but also causes deception and confusion to users.
The Complainant states that she has not authorized the Respondent to use her name. Further, as the Respondent's name is not “Barkha Dutt”, he has no interest in the name. The purpose of the Respondent's registration of the domain name is for renting, selling or otherwise transferring it for valuable consideration or for deriving illegal gains by capitalizing on the fame and goodwill associated with her name. He has placed links such as “Car Insurance”, “Insurance Rates” “Questionnaire On Reverse Mortgage” and “Real Estate” on the website connected to the domain name. Internet users may be misled to think that the Complainant endorses these links.
The use of her name in this manner, by the Respondent to derive commercial gain is unauthorized and illegal, states the Complainant. The Complainant therefore requests for transfer of the disputed domain name for the above stated reasons and as the Respondent's registration precludes her from using a domain name that incorporates her name.
The Respondent requests the Panel to deny the remedies sought for by the Complainant for the following arguments:
The Respondent states that the words “Barkha” and “Dutt” are Sanskrit word, where the word “Barkha” means, rain or life giving, while the word “Dutt” means “adaption” in Sanskrit. According to the Respondent, the literal dictionary meaning of the composite term “Barkhadutt” is “adaption of rain/life giving”. The Respondent further states that he had registered the disputed domain name two years ago with the intention of developing it into a fan site or blog dedicated to rains and rain harvesting.
The Respondent further states that he is the owner of several domain names and goes on to state that his collection of domain names does not include celebrity names or “copyright names”. He further states that he owns “dictionary domains or brandable 4 letter names”. The Respondent has provided examples of two other domain names owed by him “meltingMoments.com and “assetAudit.com”, which purportedly show the use of two dictionary words in conjunction, to form one composite term.
The Respondent emphasizes that he has rights in the disputed domain name because his only intention in registration of the disputed domain name, was to run a website related to rains and rainwater preservation. In his words:
“I am ready to give the domain name to anyone who spends to develop this domain for that purpose. I am ready to give it for free, if the domain name is used for dictionary meaning of the domain name. If she thinks, she is a celebrity by being a journalist, I have no problems in giving the domain name to her, but she should use it for the literal meaning of the domain name”.
The Respondent argues that he has not used the domain name in bad faith and he denies ever having used it for gambling, pornography or any such illegal activity. The Respondent further states that he has not used the domain name in relation to journalism, which is the field of the Complainant's work.
The Policy requires the Complainant to establish three elements under paragraph 4(a) to obtain transfer of the disputed domain name.
(i) 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
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name was registered and is being used in bad faith by the Respondent.
The first element under paragraph 4(a) requires the Complainant to establish that the domain name registered by the Respondent is identical or confusingly similar to a mark in which she has rights.
Common law rights are sufficient to support a claim under the Policy and a complainant need not hold a registered trademark to establish rights in a mark. Jeffrey Archer v. Alberta Hotrods tda CLEBRITY 1000, WIPO Case No.D2006-0431. A celebrity's name can serve as a trademark when it is used to identify the celebrity's performance services. See for instance Kevin Spacey v. Alberta Hot Rods, NAF Claim No. FA0205000114437. The name in question should actually be used in trade and commerce to prove rights. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions at paragraph 1.6 that states: unregistered personal name when used in trade or commerce can establish common law trademark rights in the name.
The specific question that arises in the present dispute is whether the use of the Complainant's name in broadcast journalism is considered as use in commerce. Trademark rights have been recognized for the fame associated with media persons and television broadcasters. Broadcasting services rendered by television talk show hosts like Larry King, Tucker Carson and Jay Leno, whose names have acquired fame as broadcast journalists are found to have trademark rights in their names. See Larry King v. Alberta Hot Rods , WIPO Case No. D 2005-0570 <larryking.com>; Tucker Carlson v. Domain Privacy Ltd., WIPO Case No. D2008-0474 <tuckercarlson.com>; Jay Leno v. Guadalupe Zambrano, WIPO Case No. D2009-0570 <thejaylenoshow.com>.
The Panel finds, based on the substantial evidence provided by the Complainant, that she has acquired considerable fame associated with her name as a television reporter and as a talk show host. The Panel accepts the Complainant's contention that due to her fame she has acquired the status of a celebrity broadcast journalist who regularly appears in the media. In the light of this finding, the Panel is convinced that due to her fame the public has come to recognize and identify the Complainant with her services as a television broadcast journalist and the Complainant therefore has unregistered common law trademark rights in her name.
The Panel finds no merit in the argument extended by the Respondent that the dictionary meaning of the term “Barkhadutt” is “adaption of rain/life giving” in Sanskrit. It is well established that dictionary words or personal names that have acquired fame are found to have secondary meaning and have obtained distinctiveness in commerce which have protectable trademark rights. For instance, in World Natural Bodybuilding Federation, Inc. v. Daniel Jones The DotCafe, WIPO Case No.D2008-0642, the domain name <pronaturalmuscle.com>, consisting of the generic, dictionary words, “pro”, “natural” and “muscle”, used in combination was found to have acquired secondary meaning due to its use in commerce. The Complainant in the present dispute has established that her name BARKHA DUTT has acquired fame and secondary meaning due to use in commerce prior to the Respondent's registration of the disputed domain name, therefore the Respondent arguments do not help the Respondent's case.
The Panel finds that the disputed domain name is identical to the Complainant's name and mark in which the Complainant has unregistered rights.
The Complainant has accordingly satisfied the requirements under the first element of the Policy, paragraph 4(a).
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie showing that the Respondent lacks rights and legitimate interests in the domain name. If the Complainant makes a prima facie case, the burden shifts to the Respondent to demonstrate rights or legitimate interests in the domain name. See 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
The Complainant has asserted that the Respondent is not known by the domain name and has not been given any authorization to use her name and mark and therefore has no rights to register and use of the domain name. The Panel finds there is nothing on record to suggest otherwise, as the Respondent does not appear to be known by the domain name or have any business known by the domain name. It is well established that if a respondent uses a complainant's well-known name/mark without authorization, such use of the complainant's famous name/mark is not bona fide use. See Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872. If a respondent uses a famous name/mark of a complainant to lure Internet users, it does not confer rights or legitimate interests. See Nik Carter v. the Afternoon Fiasco, WIPO Case No. D2000-0658. The Panel therefore finds the Complainant has made a prima facie showing that the Respondent lacks rights in the domain name.
The Respondent can establish rights or legitimate interests in the domain name, under paragraph 4(c) of the Policy if one of these circumstances are found present:
(i) Before any notice of the dispute the Respondent's use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) The Respondent as an individual, business or other organization has been commonly been known by the domain name, even if no trademark rights have been acquired by the Respondent; or
(iii) The Respondent uses the domain name for legitimate non-commercial or fair use purposes, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
To determine if a respondent has rights or legitimate interests in the domain name, some relevant factors considered by other UDRP panels are: Length of use and the fame associated with a well-known name/mark, David Gilmour, David Gilmour Music Limited and David Glimour Music Overseas Limited v. Emanno Cenicolla, WIPO Case No. D2000-1459, likelihood of the respondent's knowledge when adopting the domain name or circumstances to show that the respondent knew or had knowledge of the complainant's mark, or the domain name registration was made long after the complainant had established rights in the name/mark. Madonna Ciccone,p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.
The Respondent has argued that he had registered the domain name two years ago with the intention of developing it into a fan site or blog dedicated to rains and information relating to rain harvesting. The Panel finds the Respondent has provided no evidence whatsoever of this contemplated fair use of the domain name in dispute. Further, the Respondent's arguments do not appear to be consistent with his present use of the disputed domain name. Screen shots of the Respondent's website connected to the disputed domain name show various Pay Per Click (PPC) links placed on the website. Numerous UDRP decisions have found that placing such links particularly if the links are not sponsored by the legitimate owner of the famous name/mark is not bona fide use –See Tucker Carlson supra.
The Panel therefore finds the domain name at issue is presently being used to attract users to generate traffic with the intention to derive revenue from the resulting traffic. The Respondent's use of the domain name for merchandising the Complainant's name/mark in this manner to derive revenue from web traffic due to the fame associated with the Complainant's name/mark does not help the Respondent's case.
The Panel finds the Respondent in the present case has failed to demonstrate any right or legitimate interest in the domain name e.g. i) use of the domain name in connection with a bona fide offering of goods or services, ii) that he is commonly known by the domain name, iii) any legitimate non-commercial of fair use of the domain name.
The Panel finds, for the reasons discussed, the Complainant has established the requirements under paragraph 4(a)(ii) of the Policy that the Respondent lacks rights or legitimate interests in the domain name.
The third element under paragraph 4(a) requires the Complainant to establish that the domain name registered by the Respondent was registered and used in bad faith.
It is well recognized that a celebrity is entitled to the right of exploiting the economic value of his/her name and fame. Publicity rights are recognized as genre of intellectual property rights and are considered a reward or incentive for the celebrity's work, which can be used by the celebrity to derive monetary benefits through endorsements or merchandising products or services. Such rights are assignable and inheritable rights.
The right to commercially use or exploit ones own name, vests with the person who has worked to create the fame and can lawfully restrict any other third party from exploiting that fame for commercial purposes.
The Indian courts have recognized that a celebrity's fame is a protectable right. In ICC Development International Ltd. v. Arvee Enterprises & Anr. 2003 (26) PCT 245 (Del), it was held by the Delhi High Court that using a celebrity's fame and popularity without his or her authorization is not legitimate use. A celebrity therefore has a valid cause of action for opportunistic commercial exploitation and any unauthorized use of his or her name.
Paragraph 4(b)(iv) of the Policy makes reference to circumstances indicating bad faith registration and use of the domain name if it is made with an intention to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location.
The fact that the Respondent in the present case has chosen a domain name that is identical to the Complainant's name and mark and has placed links to derive revenue from Internet traffic shows that it is likely that the Respondent has registered the domain name due to the fame associated with the Complainant's name and mark. Where the Complainant's fame precedes the Respondent's registration of the domain name, there is a strong suggestion that the Respondent has selected the domain name because of the fame of the name and mark and not because of some interest of his own. See Nicole Kidman v. John Zuccarini d/b/a Cupcake Party, WIPO Case No. D2000-1415.
Consistent with the Panel's finding that the Complainant is a well-known broadcast television personality and that the public associates the name “Barkha Dutt” with the Complainant, it is clear that the Respondent has intentionally attempted to attract, for commercial gain, users to his website for commercial gain by creating a likehood of false association with the Complainant's name and mark as to the source, sponsorship, affiliation or endorsement of his website. Under paragraph 4(b)(iv), this is evidence of bad faith registration an use. The circumstances of the present case show that the Respondent has targeted the Complainant's name and mark and not the generic or descriptive expression in the name. Unauthorised use of a famous name/mark as a marketable commodity to promote another's goods and services is bad faith use, Freddy Adu v. Frank Fushille, WIPO Case No. D2004-0682.
The Panel finds that the Complainant has met the burden of proving bad faith registration and use under paragraph 4(a)(iii) of the Policy for the reasons discussed above.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <barkhadutt.com> be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Dated: October 30, 2009