WIPO Arbitration
and Mediation Center
ADMINISTRATIVE PANEL DECISION
Helen Fielding v. Anthony Corbert aka Anthony Corbett
Case No. D2000-1000
1. The Parties
The Complainant is Helen Fielding, an individual, with address in Los Angeles,
California, USA.
The Respondent is Anthony Corbert, also known as Anthony Corbett, with address
in Plantation, Florida, USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain name is "bridgetjones.com".
The registrar of the disputed domain name is Network Solutions, Inc., with
business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
a) Complainant initiated the proceeding by the filing of a complaint by e-mail
received by the WIPO Arbitration and Mediation Center ("WIPO") on
August 9, 2000, and by courier mail received by WIPO on August 10, 2000.
Payment by Complainant of the requisite filing fees accompanied the courier
mailing. On August 16, 2000, WIPO transmitted a Request for Registrar Verification
to the registrar, Network Solutions, Inc (with the Registrar’s Response received
by WIPO on August 21, 2000). On August 16, 2000, WIPO completed its formal filing
compliance requirements checklist.
b) On August 21, 2000, WIPO transmitted notification of the complaint and commencement
of the proceeding to Respondent via e-mail, telefax and courier mail. WIPO also
transmitted such notification to Complainant’s Technical Contact via e-mail,
telefax and courier mail.
c) On August 21, 2000, WIPO transmitted notification to Respondent of its default
in responding to the complaint via e-mail, telefax and courier mail.
d) On September 11, 2000, WIPO invited the undersigned to serve as panelist
in this administrative proceeding, subject to receipt of an executed Statement
of Acceptance and Declaration of Impartiality and Independence ("Statement
and Declaration"). On September 11, 2000, the undersigned transmitted
by fax the executed Statement and Declaration to WIPO.
e) On September 12, 2000, Complainant and Respondent were notified by
WIPO of the appointment of the undersigned sole panelist as the Administrative
Panel (the "Panel") in this matter. WIPO notified the Panel that,
absent exceptional circumstances, it would be required to forward its decision
to WIPO by September 25, 2000. On September 12, 2000, the Panel received
an electronic file in this matter by e-mail from WIPO. The Panel subsequently
received a hard copy of the file in this matter by courier mail from WIPO.
The Panel has not received any requests from Complainant or Respondent regarding
further submissions, waivers or extensions of deadlines, and the Panel has not
found it necessary to request any further information from the parties (taking
note of Respondent’s default in responding to the complaint). The proceedings
have been conducted in English.
4. Factual Background
Complainant has registered the word trademark "BRIDGET JONES" in
the United Kingdom, Reg. No. 2,149,373, dated October 28, 1997, covering, inter
alia, pharmaceutical preparations; sound recordings, video recordings and
cinematographic films; artists’ materials; furniture; clothing, and; various
foods (Complaint, Annex 6). This registration is valid and subsisting. The "BRIDGET
JONES" mark has been used in connection with the marketing and sale of
literary works since at least 1995 (based on the initial date of serialized
publication of such works), and continues to be used in commerce. The "BRIDGET
JONES" mark has been used by Complainant in at least 32 countries,
including the United States (id., Annex 5). Approximately one million
literary works marketed under the name "BRIDGET JONES" have been sold
in the United States (id., para. 12(c)).
According to the registrar’s verification response to WIPO, dated August 21, 2000,
"Anthony Corbert" is the listed registrant of the domain name "BRIDGETJONES.COM".
The Administrative Contact is "Corbett [sic], Anthony". The addresses
listed for the registrant and the Administrative Contact are identical. (Registrar’s
Response, supra). A Network Solutions’ WHOIS database search indicates
that the record of registration was created on October 8, 1998, and that the
record was last updated on October 8, 1998 (Complaint, Annex 1).
On February 23, 2000, Complainant’s legal representatives sent a cease and
desist letter to Respondent, demanding transfer of the disputed domain name
to Complainant (letter from Harbottle & Lewis to Anthony Corbert, id.
Annex 8). Respondent did not respond to this letter or to a subsequent e-mail
message from Complainant’s counsel (id.)
Complainant subsequently contacted Respondent by telephone to discuss her interest
in the disputed domain name. She reported her conversation with Respondent to
her counsel as follows:
"Hi Elizabeth
have spoken to anthony corbett who actually seemed quite reasonable.
He said he was a fan and was planning to set up a fan club.
I said had he done anything yet.
He said a couple of friends had written some stuff.
I said I wanted to do a Bridget Jones site and would he give me it back?
He said well e-mail me and tell me ‘what you're proposing’
I said what do you mean.
He said – are you expecting me to give it back?
I said ‘Yes! why what did you have in mind?’
He said ‘well let me think about it. My friends have done quite a bit of work,
um, e-mail me with your proposal.
I said ‘what information do you need.’
He said well let me think about it.
I said I'd really like to have it back as Bridget Jones is my baby and I'm
really excited about the site. Maybe they could call theirs something else like
bridget Jones fans.
He said OK he'd think about it. and said he'd met me at a reading I did a couple
of years ago.
I said it would be nice if we could sort it out without going through lawyers.
He said Ok he'd think about it. It was all very friendly so I'll e-mail him
on Monday and see how we go!
…
All best – Helen"
(E-mail from Helen Fielding to Elizabeth Kiernan Earl of July 8, 2000, Complaint,
Annex 8).
A follow-on e-mail was sent from Complainant to Respondent, under supervision
of Complainant’s counsel, as follows:
"hello anthony,
It was good to make contact with you on saturday.
As you know, I've been creating Bridget Jones for over five years now, and
have put hours and hours and years and years into making her who she is, and
carefully guarding the unique atmosphere around her, not least by registering
various trade mark rights. She is very precious to me. I've been doing a lot
of work building her website and trying to make it really funny and true to
her.
Bridgetjones.com is the obvious and right name for Bridget's site. I would
so much appreciate it if you would let me take the name back. I know that you've
registered it, but I'm sure you'll understand my feeling that it is she - and
me - who in a bigger, fairer sense have the real right to it.
If you do want to start a fan site that would be great and I'm sure there are
lots of other names we could come up with that would do the job.
Will you now e-mail me back to confirm that you are happy to transfer the domain
name to me?
All the best
Helen Fielding"
(Text as recorded in e-mail from Fielding to Kiernan Earl of July 10, 2000,
Complaint, Annex 8. Underlining indicates counsel’s recommendations to proposed
text by Complainant.)
Respondent replied as follows:
"Dear Helen,
It was good speaking with you and I was interested to read your e-mail. I understand
your investment, both financial and emotional in Bridget, and
I agree that bridgetjones.com would be a logical home on the web for her.
My colleagues and I have spent considerable time and expense formulating our
plans
for a web-based fan site, and we are excited about the possibilities such a
site offers,
especially in view of the upcoming film.
I would consider an offer in the region of $15,000 to be appropriate compensation.
I look forward to hearing from you
Sincerely
Anthony Corbett"
(E-mail from Anthony Corbett to Helen Fielding of July 13, 2000, Complaint,
Annex 8)
Complainant responded with the following message:
"Thanks for your e-mail. I was extremely surprised at the price you want
for the domain name. I understand that domain names generally cost no more than
about $70 to register and it is not as if your material will go to waste, as
it can be easily hosted at another domain name. You yourself agree that bridgetjones.com
is the right and logical place for her on the web.
Can you let me know and see examples of the work which you and your colleagues
have done?
I hope we can come to an amicable arrangement about this without having to
resort to the ICANN or some other legal action.
I look forward to hearing from you.
HF"
(E-mail prepared for Complainant by counsel and transmitted by Complainant
to Respondent on or about July 14, 2000, Complaint, Annex 8)
Respondent did not reply to Complainant’s e-mail message of July 14, 2000.
Other than Respondent’s asserted preparations to use the disputed domain name
to host a "Bridget Jones" fan club, there is no evidence on the record
of this proceeding of any use or preparations to use the disputed domain name.
The Service Agreement in effect between Respondent and Network Solutions subjects
Respondent to Network Solutions’ dispute settlement policy, the Uniform Domain
Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and
with implementing documents approved by ICANN on October 24, 1999. The Uniform
Domain Name Dispute Resolution Policy (the "Policy") requires that
domain name registrants submit to a mandatory administrative proceeding conducted
by an approved dispute resolution service provider, of which WIPO is one, regarding
allegations of abusive domain name registration (Policy, para. 4(a)).
5. Parties’ Contentions
A. Complainant
Complainant alleges that she is the well-known author of literary works featuring
a fictional female character "Bridget Jones." Complainant’s literary
works have been marketed widely in many countries, including the United Kingdom
and the United States. The title of the first novel concerning this fictional
character is "Bridget Jones’ Diary: A Novel", and that title has sold
approximately three million five hundred thousand (3,500,000) copies worldwide
in its hardback and paperback editions combined. Complainant has registered
the name "Bridget Jones" as a trademark in the United Kingdom, and
has applied for registration in other countries, including the United States.
A motion picture based on Complainant’s "Bridget Jones" fictional
character is in production, and is reported on by the press.
In addition to transmitting a cease and desist letter and follow-up e-mail,
Complainant’s counsel attempted to contact Respondent by telephone, but was
unsuccessful in so doing. Complainant successfully contacted Respondent by telephone,
and the results of that conversation are included in the Complaint (see
Factual Background, supra).
Complainant alleges that the disputed domain name is identical or confusingly
similar to a trademark in which Complainant has rights.
Complainant alleges that Respondent has no rights or legitimate interests in
the disputed domain name. Respondent does not have Complainant’s authorization
to use the name, the name was already in use by Complainant when Respondent
registered the disputed domain name (and was known to Respondent), Respondent
has not provided evidence of demonstrable preparations to use the name in connection
with a bona fide offering of goods or services, Respondent is not commonly known
by the disputed domain name, and Respondent is not making a legitimate non-commercial
or fair use of the name.
Regarding the issue of Respondent’s bad faith, Complainant states in
its own words:
"11.5 The Complainant contends that the Respondent has registered and
is using the domain name in bad faith in violation of the Policy at paragraph
4(a)(iii) on the following grounds:-
(i) At the time of the registration of the domain name by the Respondent the
mark <BRIDGET JONES> was well known both in the UK and the US. The Complainant
had substantial goodwill in the mark since 1995 and had registered trade mark
rights since October 1997;
(ii) In November 1999 the sequel Bridget Jones novel ‘The Edge of Reason’ was
published in the UK and later published in the US in February 2000 and in other
parts of the world. It strains belief that the Respondent would not have known
about the Complainant's legitimate interest in the mark and in the domain name
and therefore had actual knowledge or should have reasonably known that the
Complainant had prior rights in the mark;
(iii) The Respondent has asked for $15,000 (US Dollars) from the Complainant
for the transfer of the domain name. This represents a significant uplift in
the original cost of registering the name and a cynical attempt to exploit the
value of the intellectual property rights in the name particularly in view of
the upcoming film as evidenced by the Respondent writing ‘We are excited about
the possibilities such a site offers, especially in view of the upcoming film,’
(iv) The Complainant has reason to believe that the domain name was registered
in order to prevent Complainant as owner of the trade mark from reflecting the
mark in a corresponding domain name. This is evidenced by the fact that the
Respondent admits in correspondence with the Complainant at Annex 8 ‘bridgetjones.com
is the right place for her’; and
(v) the Complainant has reason to believe that the domain name was registered
primarily to attract for financial gain Internet users to the Respondent's web
site or other on-line location, by creating a likelihood of confusion with the
Complainant's mark as to the source, sponsorship, affiliation, or endorsement
of the Respondent's web site." (Complaint, para. 11.5)
Complainant refers to precedents of various administrative panels established
under the Policy. Complainant refers to precedents of United Kingdom and United
States courts in support of its legal arguments.
Complainant requests that the Panel ask the registrar to transfer the domain
name "bridgetjones.com" from Respondent to it (id., para. 11.12).
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy")
adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on
August 26, 1999, (with implementing documents approved on October 24, 1999),
is addressed to resolving disputes concerning allegations of abusive domain
name registration. This sole panelist has in an earlier decision discussed the
background of the administrative panel procedure, and the legal characteristics
of domain names, and refers to this earlier decision for such discussion 1.
The Panel will confine itself to making determinations necessary to resolve
this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process
requirements be met. Such requirements include that a respondent have notice
of proceedings that may substantially affect its rights. The Policy, and the
Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"),
establish procedures intended to assure that respondents are given adequate
notice of proceedings commenced against them, and a reasonable opportunity to
respond (see, e.g., para. 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary
to notify the Respondent of the filing of the Complaint and initiation of these
proceedings, and that the failure of the Respondent to furnish a reply is not
due to any omission by WIPO. E-mail exchanges between Complainant and Respondent
indicate that Respondent receives e-mail messages at the address used by WIPO
to transmit documents to him (see Factual Background, supra).
Paragraph 4(a) of the Policy sets forth three elements that must be established
by a complainant to merit a finding that a respondent has engaged in abusive
domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark
or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain
name; and
(iii) Respondent’s domain name has been registered and is being used in bad
faith.
Each of the aforesaid three elements must be proved by a complainant to warrant
relief.
Because the Respondent has defaulted in providing a response to the allegations
of Complainant, the Panel is directed to decide this administrative proceeding
on the basis of the complaint (Rules, para. 14(a)), and certain factual conclusions
may be drawn by the Panel on the basis of Complainant’s undisputed representations
(id., para. 15(a)).
Complainant is the holder of a trademark registration for the word mark "BRIDGET
JONES" and has used that mark in commerce (see Factual Background,
supra). Complainant’s registration of the "BRIDGET JONES" mark
in the United Kingdom constitutes prima facie evidence of its validity in United
Kingdom law 2. Complainant also has made out a prima facie
case for common law trademark rights in the "BRIDGET JONES" mark in
the United States 3, and Respondent has not challenged
this case. The Panel determines that Complainant has rights in the trademark
"BRIDGET JONES". Based on the October 28, 1997, date of Complainant’s
registration of the trademark "BRIDGET JONES" in the United Kingdom,
and without prejudice to whether Complainant may hold earlier-arising rights
in the mark, the Panel determines that Complainant’s rights in the mark arose
prior to Respondent’s registration, on October 8, 1998, of the disputed domain
name "bridgetjones.com".
Respondent has registered the domain name "bridgetjones.com". This
name is identical to Complainant’s trademark "BRIDGET JONES", except
that (1) the domain name eliminates the space between the words "Bridget"
and "Jones", (2) the domain name adds the generic top-level domain
name ".com", and (3) the domain name employs lower case letters, while
the mark is generally used with initial capital letters.
Insofar as domain names are not case sensitive, and the elimination of space
between terms is dictated by technical factors and common practice among domain
name registrants, the Panel concludes that use of the lower case letter format
in "bridgetjones.com", and the elimination of a space between the
words "Bridget" and "Jones" to form that name, are differences
without legal significance from the standpoint of comparing "bridgetjones.com"
to "Bridget Jones" 4. Similarly, the addition of
the generic top-level domain (gTLD) name ".com" is without legal significance
since use of a gTLD is required of domain name registrants, ".com"
is one of only several such gTLDs, and ".com" does not serve to identify
a specific service provider as a source of goods or services 5.
For purposes of this proceeding, it is unnecessary to decide whether, in light
of these factors, Respondent’s domain name is "identical" to Complainant’s
trademark, since Respondent’s domain name "bridgetjones.com" is without
doubt confusingly similar to Complainant’s trademark "Bridget Jones".
Complainant has met the burden of proving that Respondent is the registrant
of a domain name that is identical or confusingly similar to a trademark in
which the Complainant has rights, and it has thus established the first of the
three elements necessary to a finding that Respondent has engaged in abusive
domain name registration.
The second element of a claim of abusive domain registration is that the Respondent
has no rights or legitimate interests in respect of the domain name (Policy,
para. 4(a)(ii). The Policy enumerates several ways in which a respondent
may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation,
if found by the Panel to be proved based on its evaluation of all evidence presented,
shall demonstrate your rights or legitimate interests to the domain name for
purposes of Paragraph 4(a)(ii)
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly
known by the domain name, even if you have acquired no trademark or service
mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name,
without intent for commercial gain to misleadingly divert consumers or to tarnish
the trademark or service mark at issue." (Policy, para. 4(c))
There is no evidence on the record of this proceeding to suggest that Respondent
has used or prepared to use the disputed domain name in connection with a bona
fide offering of goods or services, nor is there any suggestion that Respondent
has been commonly known by the disputed domain name.
In telephone conversation and an exchange of e-mail correspondence initiated
by Complainant (following the transmission of a cease and desist demand from
her counsel and attempts by her counsel to contact Respondent by telephone),
Respondent indicated that he intended to use the disputed domain name to establish
a fan club devoted to Complainant’s fictional "Bridget Jones" character.
In the abstract, the use of a domain name incorporating a trademarked literary
name to establish a fan club might constitute legitimate noncommercial or fair
use of that name. However, there are several factors that persuade the Panel
that a finding of legitimate noncommercial or fair use of Complainant’s trademark
is not warranted in this proceeding.
First, the Panel notes that while paragraph 4(c)(i) of the Policy refers to
"preparations to use" a domain name in the context of offering goods
or services, paragraph 4(c)(iii) refers only to the active "making"
of a "legitimate noncommercial or fair use". The express language
of the Policy indicates that its drafters intended to limit the circumstances
in which legitimate noncommercial or fair use could successfully be claimed.
Applying the express language of the Policy to Respondent’s claim of legitimate
noncommercial or fair use, the Panel finds that Respondent is not "making"
such legitimate non-commercial or fair use of Complainant’s mark in the disputed
domain name.
The Panel recognizes that there are contexts in which the registrant of a domain
name should not be expected to make immediate use of that name, including for
legitimate noncommercial or fair use purposes. For example, this sole panelist
on a previous occasion has observed that a requirement of immediate use in hosting
websites critical of trademark holders might stifle free expression by allowing
such trademark holders to initiate abusive domain name proceedings before such
domain names could effectively be put to active use 6. Also,
this sole panelist has recognized that a delay in using a domain name for a
legitimate noncommercial or fair use purpose in response to a cease and desist
demand might be justified 7.
In the present proceeding, Respondent registered the disputed domain name approximately
two years ago. He has not made active use of the disputed domain name to host
a web-based fan club, nor has he made any other apparent use of the name. Although
Respondent has asserted that he and his "friends" or "colleagues"
have worked on plans for such a fan club, in response to Complainant’s request
and in response to the initiation of this proceeding, he has not provided any
evidence of such plans. In concrete terms, the only evident use by Respondent
of the disputed domain name has been to offer it for sale to Complainant at
a substantial price. Under these circumstances, the Panel considers it appropriate
to apply the express language of the Policy. Respondent is not "making"
a legitimate non-commercial or fair use of the disputed domain name, and has
not established a legitimate non-commercial or fair use of Complainant’s mark.
Consequently, Complainant has established the second element necessary to succeed
on a claim of abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but
without limitation", be evidence of bad faith (Policy, para. 4(b)). Among
these circumstances are (1) that the domain name has been registered or acquired
by a respondent "primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the complainant who is the owner
of the trademark or service mark or to a competitor of that complainant, for
valuable consideration in excess of [respondent’s] documented out-of-pocket
costs directly related to the domain name" (Id., para. 4(b)(i));
(2) that a respondent has registered the domain name "in order to
prevent the owner of the trademark or service mark from reflecting the mark
in a corresponding domain name, provided that [the respondent has] engaged in
a pattern of such conduct" (id., para. 4(b)(ii)), and (3) that
a respondent "by using the domain name, … [has] intentionally attempted
to attract, for commercial gain, Internet users to [its] web site or other on-line
location, by creating a likelihood of confusion with the complainant’s mark
as to the source, sponsorship, affiliation, or endorsement of [respondent’s]
web site or location of a product or service on [its] web site or location"
(id., para. 4(b)(iv)).
In this case, Respondent offered to sell the disputed domain name to Complainant
in response to a cease and desist demand from Complainant’s counsel, followed
by a direct request from Complainant to transfer the name to her. Standing alone,
an offer to sell a domain name in response to a demand from another party does
not constitute bad faith within the meaning of the Policy. There is nothing
inherently wrongful in the offer or sale of domain names, without more, such
as to justify a finding of bad faith under the Policy. However, the fact that
domain name registrants may legitimately and in good faith sell domain names
does not imply a right in such registrants to sell domain names that are identical
or confusingly similar to trademarks of others without their consent.
Respondent in this case has offered to sell to Complainant, at a substantial
price, a domain name corresponding to a trademark in which Complainant has rights.
Respondent was demonstrably aware of Complainant’s interests in the "Bridget
Jones" name and mark when he registered the disputed domain name. Respondent
was (and is) aware of the commercial value of Complainant’s mark as the means
to distinguish Complainant’s literary works and related products from those
of other authors. Under these circumstances, it is reasonable to infer that
Respondent registered the disputed domain name with the intention of selling
it to Complainant for valuable consideration in excess of his out-of-pocket
expenses directly related to the name. This constitutes bad faith within the
meaning of paragraph 4(b)(i) of the Policy.
Complainant has established the third and final element necessary for a finding
that the Respondent has engaged in abusive domain name registration.
The Panel will therefore request the registrar to transfer the domain name
"bridgetjones.com" to the Complainant.
- Decision
Based on its finding that the Respondent, Anthony Corbert (also known as Anthony
Corbett), has engaged in abusive registration of the domain name "bridgetjones.com"
within the meaning of paragraph 4(a) of the Policy, the Panel orders that
the domain name "bridgetjones.com" be transferred to the Complainant,
Helen Fielding.
Frederick M. Abbott
