WIPO Domain Name Decision: D2004-0895

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Robert Downey Jr. v. Mercedita Kyamko

Case No. D2004-0895

1. The Parties

The Complainant is Robert Downey Jr, Los Angeles, California of United States of America, represented by Quinn Emanuel Urquhart Oliver & Hedges, LLP, United States of America.

The Respondent is Mercedita Kyamko, Pampanga of Philippines.

2. The Domain Name and Registrar

The disputed domain name <robertdowneyjr.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2004. On October 28, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On October 29, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com 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. 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”).

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 November 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2004.

The Center appointed John Swinson as the sole panelist in this matter on November 25, 2004. 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.

4. Factual Background

The Complainant is an individual and a well-known actor. The Complainant made his first onscreen appearance in 1970, and has since appeared in numerous movies including Air America (1990), Chaplin (1992) and Natural Born Killers (1994). The Complainant received Oscar, Golden Globe, and British Academy Award nominations for his role in Chaplin. In 2000, the Complainant was awarded a Golden Globe award for his role in the television series Ally McBeal.

The disputed domain name was registered by the Respondent on March 2, 1999.

On November 26, 2004, this Panelist attempted to access the website at the disputed domain name, and the domain name automatically resolved to the website at <clubpink.com>, which contains pornographic content.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) the Complainant is considered by many critics as one of the most talented and versatile actors of his generation;

(b) as a famous person, the Complainant has a common law trade mark in his public name. The Complainant’s “ROBERT DOWNEY JR.” trade mark has become famous and is unquestionably associated in the public’s mind with the Complainant;

(c) the disputed domain name is identical or confusingly similar to the “ROBERT DOWNEY JR.” trade mark in which the Complainant has rights;

(d) the Respondent has had no sanctioned involvement with the Complainant and has not been granted any rights to use the “Robert Downey Jr.” name by the Complainant;

(e) the Respondent has not used and is not using the disputed domain name in connection with the bona fide offering of goods or services and the Respondent has not presented any legitimate reason for their use of the Complainant’s trade mark in the disputed domain name;

(f) the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain. The Respondent intended to divert persons looking for the name “Robert Downey Jr.” to the Respondent’s website and to capitalise on the Complainant’s famous trade mark; and

(g) the Respondent registered and used the disputed domain name in bad faith. The Respondent’s use of the Complainant’s mark is likely to cause confusion on the part of Internet users as to whether the Complainant sponsors, approves or is affiliated with the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

In accordance with Rule 5(e) of the Rules, this dispute shall be decided on the basis of the Complaint alone.

6. Discussion and Findings

In order to qualify for a remedy, the Complainant must make out the three elements set out in paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(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.

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

There are two elements that a Complainant must establish under paragraph 4(a)(i) of the Policy – that the Complainant has rights in a trade mark or a service mark, and that the disputed domain name is identical or confusingly similar to the mark.

Famous people using their name in trade and commerce can have a common law trade mark in their public name. See Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; Van Morrison and Exile Productions Limited v. Unofficial Club de Van Morrison, WIPO Case No. D2002-0417 and Nicole Kidman v. John Zuccarini d/b/a Cupcake Party WIPO Case No D2000-1415. The Panel accepts the Complainant’s contention that the Complainant’s longstanding involvement in the motion picture and television industries has resulted in the “Robert Downey Jr.” name becoming unquestionably associated, in the public’s mind, with the Complainant.

“Robert Downey Jr.” is not a typical name. “Robert Downey Jr.” is a well-known name in which the Complainant has common law trade mark rights.

Accordingly, the Panel finds that the Complainant is the owner of the common law trade mark “ROBERT DOWNEY JR.” and that the disputed domain name is identical to this common law trade mark.

Accordingly, the Panel finds that the Complainant has established valid rights in the mark “ROBERT DOWNEY JR.” sufficient for the purposes of paragraph 4(a)(i).

Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Complainant states that he has not consented to the use of his name by the Respondent at any time and that the Respondent has no right or legitimate interest in the use of the disputed domain name.

Paragraph 4(c) of the Policy sets out three elements, any of which may be effective to demonstrate the Respondent’s legitimate rights in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely:

(i) before any notice of the dispute, the Respondent used the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the domain name; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark of the Complainant.

The Respondent had the opportunity to respond and present evidence in support of the elements in paragraph 4(c) of the Policy. The Respondent chose not to do so and has not filed any response in this proceeding establishing any circumstances that could demonstrate any rights or legitimate interest to the disputed domain name.

The Complainant is not entitled to relief simply by default, however the Panel can and does draw evidentiary inferences from the failure to respond. See Royal Bank of Canada v. D3M Domain Sales (eResolution Case No. AF-0147).

The Panel finds that the Respondent has not used and is not using the disputed domain name in connection with a bona fide offering of goods or services as defined in paragraph 4(c)(i) of the Policy.

The use of somebody else’s well-known name or trade mark as a domain name does not constitute a “bona fide” offering of goods or services where the website owner has no registered or common law rights to the mark, and the only reason to use the trade mark as a domain name is to attract customers who were not looking for an adult sex site, but were instead looking for information pertaining to the Complainant. See Motorola Inc. v. NewGate Internet Inc. WIPO Case No. D2000-0079.

As stated in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847, “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or service…. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy”.

The Panel does not find any apparent association between the Respondent’s name and the disputed domain name which may indicate that the Respondent has been commonly known by the name “Robert Downey Jr” or a similar name.

The Panel also finds that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name, in accordance with paragraph 4(c)(iii) of the Policy. In the absence of contrary evidence, the Panel accepts the Complainant’s contention that the disputed domain name is being used by the Respondent for commercial gain. Specifically, the Panel accepts the Complainant’s contention that the website located at <clubpink.com> offers fee-based content.

The Panel finds that the disputed domain name is being used by the Respondent to misleadingly divert consumers to the Respondent’s website. The Respondent’s website does not appear to have any connection with the Complainant or his work. The only available explanation is that the Respondent is using the Complainant’s mark to attract Internet users who might not otherwise be attracted to the Respondent’s website for the Respondent’s commercial gain. Such forwarding of Internet user traffic does not constitute legitimate, non-commercial or fair use of the domain name.

There is no evidence before the Panel that suggests that the Respondent has any rights or legitimate interests in the domain name. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied by the Complainant.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith as:

(a) the Respondent registered and used the disputed domain name intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark through use of the Complainant’s famous mark and directing Internet users to an unrelated commercial website; and

(b) although the Complainant does not participate in pornographic films, the Respondent’s use of the Complainant’s mark may cause the public to believe that the Complainant sponsors, approves or is affiliated with the Respondent; and

Paragraph 4(b) of the Policy contains a non-exhaustive list of circumstances which, if found to be present, will be evidence of registration and use of a domain name in bad faith. These circumstances include:

the Respondent, by using the domain name, intentionally attempting to attract for commercial gain, Internet users to the Respondent’s website (or other online location) by creating a likelihood of confusion with the Complainant’s mark as to the source of sponsorship, affiliation, or endorsement of the Respondent’s website (paragraph 4(b)(iv) of the Policy).

The Panel finds that the Respondent, by registering and using the disputed domain name, clearly appears to be drawing on the established reputation of the Complainant to attract Internet users to the Respondent’s website at <clubpink.com> for commercial gain. (See the reasons set out in section A (“Identical or Confusingly Similar”) and section B (“Rights or Legitimate Interests”) above). See also National Hockey League And Lemieux Group Lp v. Domain For Sale, WIPO Case No. D2001-1185, Nokia Corporation v. Nokiagirls.com aka IBCC, WIPO Case No. D2000-0102, Benetton Group SpA v. Domain for Sale, WIPO Case No. D2001-1498 National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118 and Yahoo! Inc. v. Yahoosexy.com, Yahoo-sexy.com, Yahoosexy.net, Yahousexy.com and Benjamin Benhamou, WIPO Case No. D2001-1188.

Accordingly, the Panel finds that the Respondent, through the registration and use of the disputed domain name, intentionally attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion as to the Complainant’s association with the website, and that the continued use of the disputed domain name will tarnish the Complainant’s famous mark.

The Panel notes the decision in Shelton J. Lee (a.k.a. Spike Lee) v. Mercedita Kyamko, WIPO Case No. D2004-0483, involving the same respondent and a similar fact situation.

The Panel finds that paragraph 4(a)(iii) of the Policy is also satisfied.

7. Decision

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, <robertdowneyjr.com>, be transferred to the Complainant.

John Swinson
Sole Panelist

Dated: December 2, 2004