The Complainants in WIPO Case No. D2015-1189 are Kylie Jenner, Kylie Jenner, Inc. and Whalerock Celebrity Subscription LLC of Santa Monica, California, United States of America (“USA”), internally represented.
The Complainants in WIPO Case No. D2015-1190 are Kendall Jenner, Kendall Jenner, Inc. and Whalerock Celebrity Subscription LLC of Santa Monica, California, USA, internally represented.
The Respondent in WIPO Case No. D2015-1189 is Thevan Thirumalla, TVM Names of Kottayam, Kerala, India, self-represented.
The Respondent in WIPO Case No. D2015-1190 is Jorly James, Cooknames of Puthencavu, Kerala, India, self-represented.
The disputed domain names, <kyliejenner.com> ( WIPO Case No. D2015-1189) and <kendalljenner.com> ( WIPO Case No. D2015-1190) (the “Domain Names”), are registered with eNom (the “Registrar”).
The Complaints were filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2015. On July 10, 2015, the Center transmitted by email to the Registrar requests for registrar verification in connection with the Domain Names. On the same date, the Registrar transmitted by email to the Center its verification responses confirming that the Respondents are listed as the registrants and providing the contact details.
The Center verified that the Complaints 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 Respondents of the Complaints, and the proceedings commenced on July 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for the Responses was August 5, 2015. The Responses were filed with the Center on August 5, 2015.
The Center appointed Tony Willoughby as the sole panelist in this matter on August 14, 2015. 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 Complainants in each case have requested that the Complaints be consolidated and the Panel has decided that it is appropriate that they should be consolidated. The Panel’s reasoning is set out in section 6.B below. Henceforth, where the context so admits, “Complainants” refers to the first-named Complainants in each case (i.e., Kylie Jenner and Kendall Jenner) and “Respondents” refers to both Respondents.
The Complainants are sisters. They are celebrities in the USA and first came to public attention on a large scale when they appeared (as themselves) in the first episode of a US reality television show entitled “Keep Up With The Kardashians”, which was premiered on October 14, 2007. The show centres around the Kardashian-Jenner family of which the Complainants are part. The show is currently in its tenth season and the Complainants have appeared in a large number of episodes. As at October 14, 2007 Kendall Jenner was three weeks short of twelve years of age and Kylie Jenner was ten years of age.
The Domain Names were registered on October 18, 2007.
From about 2009 to 2010 the Complainants commenced modeling careers and over the last three or four years have launched various fashion-related products by reference to their names.
Kendall Jenner’s company, Kendall Jenner, Inc. is the registered proprietor of inter alia US Service Mark Registration No. 4,407,580 dated September 15, 2011 (registered September 24, 2013) KENDALL JENNER (standard characters) in class 41 for various entertainment services including “personal appearances by a celebrity, actress and model.”
Kylie Jenner’s company, Kylie Jenner, Inc. is the registered proprietor of inter alia US Service Mark Registration No. 4,440,696 dated September 15, 2011 (registered November 26, 2013) KYLIE JENNER (standard characters) in class 41 for various entertainment services including “personal appearances by a celebrity, actress and model.”1
The Domain Names have been connected to blog websites featuring numerous references to the Complainants as well as advertising links to a variety of websites, some of them offering adult material and products such as sex pills, being matter with which the Complainants do not wish to be associated.
The Complainants request that the Complainants’ Complaints be consolidated.
The Complainants contend that the Domain Names are identical or confusingly similar to trade marks in which the Complainants have rights, that the Respondents have no rights or legitimate interests in respect of the Domain Names and that the Domain Names were registered and are being used in bad faith.
The Respondents do not deny that they were aware of the Complainants when they registered the Domain Names, but rest their case mainly on the fact that the Complainants had no relevant trade mark rights as at the date of registration of the Domain Names. They also contend that they have done nothing in relation to the Domain Names, which could be categorized as use in bad faith. They have used the Domain Names continuously since 2007 as “titles” for news, social media and blog websites and information sites for millennials.
According to paragraph 4(a) of the Policy, for this Complaint to succeed, the Complainants must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) The Respondents have no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
First, however, it is necessary to address the Complainants’ request for consolidation.
As indicated in section 3 above the Panel has concluded that it is appropriate that the Complainants’ objections to the Domain Names be heard as one consolidated complaint, notwithstanding the Complainants are different individuals with different trade mark rights and the Domain Names are held in the names of different registrants.
The issue of consolidation is dealt with in paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), which reads as follows:
“Can multiple complainants bring a single consolidated complaint against a respondent? Can a single consolidated complaint be brought against multiple respondents?
WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted.”
Dealing first with the registrants of the Domain Names, the Panel is in no doubt that they are either one and the same person or, failing that, are very closely associated and acting in concert. The Domain Names are essentially the names of two sisters, the Domain Names were registered on the same day through the same Registrar and have been connected to websites, which mutatis mutandis are in substance identical. Both registrants are situated in Kerala and the contact telephone number provided to the Registrar is the same for both registrations. Moreover, the Responses were mutatis mutandis word-for-word identical.
As for the Complainants, they are identically placed insofar as their trade mark rights are concerned. Their grievances against the Respondents are the same. The Respondents have taken their names and have used them in a substantially identical fashion.
The Panel finds that it is equitable and procedurally efficient that the Complaints be consolidated.
For the purposes of this assessment under this element of the Policy the date that the Complainants’ trade mark rights came into existence is irrelevant provided that they were in existence as at the date of the Complaint. In this case the Complainants each have trade mark registrations covering their names predating the Complaints (see section 4 above) and the Domain Names at the second level are identical to those registered trade marks.
The Panel finds that the Domain Names are identical or confusingly similar to the Complainants’ respective trade marks.
The Domain Names were registered four days after the Complainants’ names came to the attention of the US public at large in the first episode of the widely viewed US television reality show “Keep Up With The Kardashians”. The Respondents have used the Domain Names not merely for the blog sites that they claim those sites to be, but also for commercial gain through advertising links having no association with the Complainants and, indeed, some of those links being to websites with which the Complainants understandably have no wish to be associated (see paragraph 4 above). It is noteworthy that the Respondents do not attempt in their Responses to address the Complainants’ allegations as to the commercial links featuring on their websites.
The websites to which the Domain Names are connected feature no disclaimer of any kind, despite the fact that most people looking at the Domain Names are likely to assume them to be in some way officially associated with the individuals bearing those names, namely the Complainants.
In the Panel’s view hijacking individuals’ names in this way without permission and for personal gain is an unacceptable abuse of the system and cannot sensibly be said to give rise to rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondents have no rights or legitimate interests in respect of the Domain Names.
It will be noted that to succeed under this head a complainant must prove that the disputed domain name was registered in bad faith and is being used in bad faith. Here, the Panel is satisfied that the Respondent’s use of the Domain Names as described in section 4 and 6.D above is an abusive, bad faith use of those names. The issue as to whether or not the Domain Names were registered in bad faith is explored below.
Paragraph 4(b) of the Policy provides a non-exhaustive list of examples of what can constitute bad faith in this context and all of them involve taking unfair advantage of a complainant’s trade mark in some way either to exploit the value of the trade mark or to damage the trade mark owner or its business.
As at the date of registration of the Domain Names the Complainants had no registered trade mark rights in respect of their names or if they had any such unregistered rights, there is no evidence to that effect in the papers before the Panel. As at that date it appears that the only event which might be said to have given rise to any reputation and goodwill in respect of the Complainants’ names was their prior appearance (aged 10 and nearly 12 respectively) in a reality TV show. The Panel does not know the extent of that appearance (or whether they may have been even paid for that appearance). Accordingly, there is nothing in the record to support the existence of any unregistered trade mark rights at that time and their registered rights only arose some years later (see section 4 above).
How therefore can it be said that when the Respondents registered the Domain Names they did so in order to take unfair advantage of the Complainants’ then non-existent trade marks? The issue is addressed in paragraph 3.1 of the WIPO Overview 2.0, which poses the question: “Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?” For present purposes it is only necessary to set out here part of the answer:
“In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark. (In all such cases, in order to have a chance to succeed in any filed UDRP complaint, the complainant must actually demonstrate relevant trademark rights, as these are a precondition for satisfying the standing requirement under the first element of the UDRP for rights in a mark.)”
Were the Respondents aware of the Complainants when they registered the Domain Names? Clearly, they were. The circumstances (the nature of the Domain Names and the timing of the registrations) leave no room for doubt. (See also in this regard Stoneygate 48 Limited and Wayne Mark Rooney v. Huw Marshall, WIPO Case No. D2006-0916.)
Why did they adopt the Complainants’ names for the Domain Names? They each say in their Responses: “We registered the domain in 2007 and picked the name along with few others that sounded very American as title for a news, blog and information site for millennials.”
The Complainants are indeed “very American” and they do indeed fall within the description of “millennials”. When their names came to the attention of the Respondents they were among the youngest, if not the youngest, of the Kardashian-Jenner clan, a family of celebrities with a significant reputation and goodwill in the world of sport, entertainment and fashion. It would have been surprising if the Complainants had not followed in the footsteps of their parents and older siblings, as they now have.
The Panel is of the view that the Respondents selected the names of the Complainants for the Domain Names in anticipation of the reputation and goodwill (i.e. trade mark rights) that those names were likely to attract and have in fact attracted. The unfair commercial advantage to the Respondents is obvious.
The Panel is of the view that this is one of those cases identified in the paragraph quoted above from paragraph 3.1 of the WIPO Overview 2.0 where the registration of the Domain Names was clearly intended “to take advantage of the Complainants’ likely rights” in their names and falls foul of paragraphs 4(a)(iii) and 4(b) of the Policy.
The Panel finds that the Domain Names were registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <kyliejenner.com> be transferred to the Complainant, Kylie Jenner, and that the Domain Name <kendalljenner.com> be transferred to the Complainant, Kendall Jenner.
Tony Willoughby
Sole Panelist
Date: August 21, 2015
1 While the Complainants’ registrations identified above are service marks rather than trade marks, for convenience the Panel refers to them throughout this decision as trade marks, given the fact that the Respondents refer to them a trade marks and there is no significance in the distinction.