The Complainant is Omar Epps of United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Registrant Registrant info@fashionid.com Registrant [2812136] of Hong Kong SAR of People's Republic of China.
The disputed domain name <omarepps.com> (the “Domain Name”) is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2010. On June 4, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. On June 7, 2010, Moniker Online Services, LLC 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 June 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Parties of the Respondent's default on June 30, 2010.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on July 6, 2010. 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.
The Complainant is Omar Epps, a well-known American film and television actor and musician who has had extensive international commercial success. He has been active in the entertainment industry since 1991, and has over 30 film and television credits to his name (13 of which were released prior to the registration of the Domain Name in 2002), including roles in the highly successful television series “ER” (which also occurred prior to 2002) and “House M.D.”
The Respondent registered the Domain Name on January 8, 2002. At the time of the Panel's decision, the Domain Name resolved to a website containing sponsored links, some of which purport to relate to the Complainant but in fact resolve to unrelated websites.
The Complainant's submissions can be summarised as follows:
(a) the Complainant has, by virtue of his extensive commercial use of his own name in entertainment, acquired common law trademark rights in the name OMAR EPPS;
(b) the Domain Name <omarepps.com> is identical to the Complainant's common law trademark;
(c) the Complainant has never authorized the Respondent to use the name OMAR EPPS, and the Respondent has no legitimate licensing or business relationship with the Complainant;
(d) the Respondent is using the Domain Name to intentionally attract, for commercial gain, Internet users to the website associated with the Domain Name by creating a likelihood of confusion with the Complainant as to source, sponsorship or affiliation;
(e) the Domain Name was registered some years after the Complainant had been active in the entertainment industry, such that the Respondent would have had actual notice of the Complainant and his rights in his personal name; and
(f) the Respondent is a serial cybersquatter who has repeatedly engaged in a pattern of registering domain names incorporating the names of celebrities and famous brands, as evidenced by the current registrations held by him and previous administrative complaint proceedings in which the Respondent to the present proceedings was named as the respondent.
The Respondent did not reply to the Complainant's contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant's evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true: Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used by the Respondent in bad faith.
A Complainant in an administrative complaint must first establish that there is a relevant trade mark or service mark in which he has rights. Here, the rights the Complainant relies on arise by virtue of Mr. Epps' use of his own name in the entertainment industry since around 1991.
It is well established that the Policy protects rights in unregistered marks: SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131; Imperial College v. Christopher Dessimoz, WIPO Case No. D2004-0322. Further, previous panels have found that a complainant can establish common law rights in a personal name, where the name is being used in trade or commerce (i.e. so that the personal name acts as a mark associated with the product, being, in the case of a performer, the performer's provision of entertainment services): see Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; Carmen Electra a/k/a Tara Leigh Patrick v. Network Operations Center, WIPO Case No. D2003-0852.
Having considered the evidence submitted by the Complainant, the Panel accepts that the Complainant can claim rights in his personal name as an unregistered common law trade mark. The Panel notes that Mr. Epps has been active in the entertainment industry for almost 20 years, performing under the name OMAR EPPS and has achieved significant fame around the world, such that the name OMAR EPPS is immediately and distinctively recognisable as being associated with Mr. Epps as an entertainer and specifically with his provision of entertainment services.
Having determined that the Complainant has such rights, the Panel also considers that the Complainant has established the second element of paragraph 4(a)(i) of the Policy. The Domain Name is identical to the Complainant's name, the addition of the gTLD “.com” being here irrelevant to the enquiry into identicality or confusing similarity: Rohde & Schwarz GmbH & Co. HG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762.
The Panel therefore finds that paragraph 4(a)(i) of the Policy has been satisfied.
As to the issue of whether the Respondent has any rights or legitimate interests in respect of the Domain Name, the Complainant relies on the fact that it has not licensed or authorised the Respondent to use the name OMAR EPPS in any way, as well as the fact that there is no affiliation, association or relationship of any kind between the Respondent and the Complainant.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests in the dispute domain name, the onus shifts to the respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that there is no evidence to show that the Respondent has any rights in any trade marks or service marks which are identical, similar or related to the Domain Name. Therefore, the Panel will assess the Respondent's rights (or lack thereof) in the Domain Name based on the Respondent's use of the Domain Name, in accordance with the available information.
At the time of the Complaint, the Domain Name resolved to a website which contained sponsored links to products and services that are unrelated to the Complainant, and for which the Respondent undoubtedly collects referral fees. Such use has been consistently held in appropriate circumstances not to be a legitimate offering of goods or services (see PRL USA Holdings, Inc v. LucasCobb, WIPO Case No. D2006-0162).
Based on the evidence submitted by the Complainant and particularly given the fact that the website to which the Domain Name resolves displays links to what purports to be information on Omar Epps, but instead contains more sponsored links, the Panel accepts that the Respondent is trading on the likelihood that Internet users will be attracted to the Respondent's website because of the fame and reputation of the Complainant, and this would, in turn, generate revenue for the Respondent. Using a domain name to intentionally trade on the fame or reputation of another constitutes unfair use, and cannot amount to a bona fide offering of goods or services: see Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “madonna.com”, WIPO Case No. D2000-0847, and Chinmoy Kumar Ghose v. ICDSoft.com & Maria Sliwa, WIPO Case No. D2003-0248.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant has made extensive commercial use of his name as a common law trade mark from as early as 1991, and the mark OMAR EPPS is well-known in a number of jurisdictions. As such, the Panel considers that it is unlikely that the Respondent did not have any knowledge of the Complainant's trade marks at the time of registering the Domain Name in 2002.
It is also clear from the circumstances of the case, and the fact that the website to which the Domain Name resolves contains links purporting to contain information on the Complainant that the Respondent trades on the likelihood that Internet users will assume that there is some connection between the Respondent's website and the Complainant, and derives commercial advantage from that assumption in the form of referral fees. This is indicative of bad faith: Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085 and Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556.
The Panel also notes that the Respondent is listed as the registrant of a number of other domain names that incorporate the names of public personalities and famous brands, and has been listed as a respondent in a number of other domain name disputes: see for example Red Lion Hotels Corporation v. Registrant info@fashionid.com +1.25255572 Registrant, WIPO Case No. D2007-0600, LTD Commodities, Inc. v. Registrant info@fashionid.com 9876543210/Registrant, WIPO Case No. D2002-1062 and Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499, all of which resulted in a finding against the Respondent. These cases demonstrate that the Respondent has engaged in a pattern of Domain Name hijacking which, considered together with the other circumstances of the case, further supports the Panel's finding that the Respondent has registered and used the Domain Name in bad faith.
The Panel therefore finds that the Respondent has registered and used the Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
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 <omarepps.com> be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Dated: July 19, 2010