The Complainant is The Estate of Cheri Blum, C/O Wild Apple Graphics, Woodstock, United States of America, represented by Venable, LLP, United States of America.
The Respondent is k, j, Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <cheriblum.com> is registered with Network Solutions,
LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2006. On January 24, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On January 25, 2006, Network Solutions, LLC 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 27, 2006. The Center verified that the Complaint together with the amendment to 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 February 3, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 24, 2006.
The Center appointed Daniel J. Gervais as the sole
panelist in this matter on February 28, 2006. 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 the estate of a well-known US painter
and muralist, Cheri Blum, who died in November of 2003. She began her career
as an artist in 1991. The domain name was initially held by Ms. Blum’s
exclusive publisher, Wild Apple Graphics, but lapsed due to an administrative
error at the time of renewal. The Respondent then registered the domain name
<cheriblum.com> in October of 2005.
5. Parties’ Contentions
A. Complainant
The Complainant contends that Ms. Cheri Blum had common law trademark rights in her name under US trademark law due to its continued use over a period of 12 years until her death in 2003, and by her estate since then. The domain name is identical to the common law trademark.
The Respondent has no rights or legitimate interests in the domain name. He was never known by that name nor has he ever had any association with Ms. Blum.
The domain name was registered and used in bad faith. The Respondent operates a “link farm” in order to attract Internet users to its web sites, for commercial gain. The fact that the domain name leads to such sites is annoying to Internet users and misleads the public by creating a false association between the Respondent and Ms. Blum.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1);
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.2); and
3. The domain name has been registered and is being used in bad faith (see below, section 6.3).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
6.1 Is the domain name Identical or Confusingly Similar to a Trademark in which Complainant has Rights?
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As to the first issue, this case raises the question
whether, and under what circumstances, does a person’s name not registered
as a trademark become protected as a common law trademark? This matter was dealt
with in a number of previous decisions under the Policy, including Julia
Fiona Roberts v. Russell Boyd, WIPO Case
No. D2000-0210; Jeanette Winterson v. Mark Hogarth, WIPO
Case No. D2000-0235; Dr. Michael Crichton v. In Stealth Mode, WIPO
Case D2002-0874; Daniel C. Marino, Jr. v. Video Images Productions, et
al.WIPO Case No. D2000-0598; Israel
Harold Asper v. Communication X Inc,WIPO
Case No. D2001-0540; Ahmanson Land Company v. Save Open Space and Electronic
Imaging Systems, WIPO Case No. D2000-0858;
and Ahmanson Land Company v. Vince Curtis, WIPO
Case No. D2000-0859. In the Asper case, the panelist noted that there
were “two dominant concerns inducing the protection of marks. The first
is the protection of consumers who associate the name with goods and services
of a known source and quality. The second is to preserve the value of goodwill
built up over time by the owner of the mark. In the case of those (primarily
entertainers and professional athletes) who sell their goodwill to others in
the marketing of goods and services not directly associated with the holder,
the first rationale, above, is likely to be dominant. This is much less likely
to be the case with other personal name marks, particularly those, which have
not obtained a secondary meaning.” The panelist also noted that to be
protected as a trademark the name had to be used for “the purpose of merchandising
or other commercial promotion of goods or services” (para. 6.24).
The law is not identical in all jurisdictions on this point, as was noted in
the Second WIPO Report (The Recognition of Rights and the Use of names in
the Internet Domain Name System, September 3, 2001, at paragraphs 171-173
and 181-198). However, names of famous artists can be protected in many jurisdictions
under trademark law. See, e.g., for France,Société pour l’œuvre
et la mémoire d’Antoine de Saint Exupéry-Succession Saint Exupéry - D’Agay
v. The Holding Company, WIPO Case No. D2005-0165
(mark was registered); and in the United Kingdom, Ricky Skaggs v. W. Ignacio
Vincente, WIPO Case No. D2000-1134.
In United States trademark law, a distinction is made between trademark protection
and the right of publicity. The difference, as noted in J. Thomas McCarthy’s
well-known treatise, largely stems from the historical fact that the right of
publicity had its origins in the law of “privacy,” whereas the law
of trademarks had its origins in the tort of fraud. While the key to the right
of publicity is the commercial value of a human identity, the key to the law
of trademarks is the use of a word or symbol in such a way that it identifies
and distinguishes a commercial source. Thus, while a trademark identifies
and distinguishes a commercial source of goods and services, the “persona”
protected by right of publicity law identifies a human being. (See McCarthy,
The Rights of Publicity and Privacy at paragraph 5:6 et seq. (2d ed. 2000 as
revised). See also the WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, at para.
1.6
Whether a person’s name has acquired secondary meaning (and hence may claim protection as a common law trademark) requires a factual determination. Factors that a panel might consider include (a) whether the name is common (which reduces the possibility of acquiring secondary meaning); (b) whether the name was used in connection with goods or services in a commercial context; and (c) the time period over which the name was so used. In this case, the facts introduced in evidence by the Complainant show that there are only three persons named “Cheri Blum” in the United States, that the name was used in connection with works of art sold through major retailers in that country, and that this took place for at least 15 consecutive years. These facts are sufficient to establish common law rights in the name CHERI BLUM.
On the second issue (identity or similarity), the
facts clearly favor the Complainant. The domain name is identical to the trademark,
except for the generic top-level domain name “.com.” As a rule,
addition of the generic top-level domain (gTLD) reference, which is necessary
for a domain name to be operational, does not alter the mark, and is sufficient
to establish functional identity with the complainant’s mark. See Pomellato
S.p.A v. Richard Tonetti, WIPO Case No.
D2000-0493, Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO
Case No. D2001-0015, Société Générale and Fimat International Banque
v. Lebanon Index/La France DN and Elie Khouri, WIPO
Case No. D2002-0760.
The Panel thus finds for the Complainant on the first part of the test.
6.2 Does the Respondent Have Rights or Legitimate Interests in the domain name?
The Complainant submits that the Respondent has no rights or legitimate interests in the domain name based on Complainant’s prior use of the CHERI BLUM mark. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests to use the domain name.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] 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 trade mark or service mark at issue.”
In cases involving a person’s name, an interest might be shown where the Respondent’s name is the same. This is clearly not the case here. There are no elements showing that the Respondent is or was commonly known by the domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. On the contrary, the uncontradicted evidence submitted by the Complainant points to a pattern of cybersquatting and creating link farms by the Respondent.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
6.3 Was the domain name Registered and Used in Bad Faith?
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name 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 the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to 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 Respondent’s web site or location or of a product.
There is ample evidence of the situation described in paragraph (iv). The Respondent registered the domain name in bad faith. It is reasonable to conclude that only someone who was familiar with the name CHERI BLUM and what it stands for would have gone through the trouble of registering the domain name. The domain name was used to attract Internet users, for commercial gain, to the Respondent’s web site or other on-line locations, 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 or of a product. The Respondent’s intention was to free-ride on the Complainant’s goodwill.
The Panel finds for the Complainant on this third element of the test.
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 <cheriblum.com> be transferred to the Complainant.
Daniel J. Gervais
Sole Panelist
Date: March 8, 2006
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