WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arthur Golden v. Galileo Asesores S.L.

Case No. D2006-1215

1. The Parties

The Complainant is Arthur Golden, Brookline, United States of America, represented by Kane Kessler, PC, United States of America.

The Respondent is Galileo Asesores S.L., Madrid, Spain.

2. The Domain Names and Registrar

The disputed domain names <arthurgolden.com> and <arthurgolden.net> are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2006. On September 22, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On September 22, 2006, Go Daddy Software 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 September 27, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2006.

The Center appointed Daniel J. Gervais, David Perkins and Manuel Moreno-Torres as panelists in this matter on December 1, 2006. The Panel finds that it was properly constituted. Each member of 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 author of the well-known novel Memoirs of a Geisha, which was translated into several languages, including Spanish, and made into a famous motion picture. The novel was published in 1999, and over 5 million copies were sold in English alone.

In 2000, the Respondent registered the domain names.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that he has common law rights in his name as a source identifier for literary and artistic products. As a result of the tremendous success of the novel Memoirs of a Geisha, ARTHUR GOLDEN has acquired distinctiveness and has functioned as a mark in that the name is recognized by the public as indicating an association with literary and artistic properties.

The two domain names are identical to ARTHUR GOLDEN, except for the addition of the top-level domain names “.com.” and “.net.”

The Respondent has no rights or legitimate interests in the domain names. He is not licensed by the Complainant, he is not known by the domain names, nor has he made a legitimate noncommercial use or any demonstrable preparations for a bona fide use of the domain names.

The domain names were registered and are used in bad faith. The Respondent has registered several domain names corresponding to the names of famous persons, a number of which were transferred to their rightful owners after decisions rendered under the Policy. See, e.g.,Lorenzo Silva Amador v. Galileo Asesores S.L., WIPO Case No. D2000-1697. This prevents the Complainant from reflecting his name in corresponding domain names.

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 names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A);

2. The Respondent has no rights or legitimate interests in respect of the domain names (see below, section B); and

3. The domain names have been registered and are being used in bad faith (see below, section C).

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.

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) are the domain names 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 or unregistered trademark-or under a trademark-related doctrine such as passing off? 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 (hereinafter “Winterson”); Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. 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; Isabelle Adjani v. Second Orbit Communications, Inc.,WIPO Case No. D2000-0867; Billy Connolly v. Anthony Stewart, WIPO Case No. D2000-1549;Alain Delon Diffusion S.A. .v. Unimetal Sanayi ve Tic A.S., WIPO Case No. D2000-0989; Ahmanson Land Company v. Save Open Space and Electronic Imaging Systems, WIPO Case No. D2000-0858; Rosa Montero Gallo v. Galileo Asesores S. L. WIPO Case No. D2000-1649; 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 asecondary 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, and Winterson, supra. Because the Respondent resides in Spain, the Panel also considered Spanish law. Protection of unregistered famous names used as identifiers is also compatible with Articles 4 and 8(5) of Council Regulation (EC) No 40/94 of December 20, 1993 on the Community trademark¹ of the Directive 89/104/EEC of the Council, of December 21, 1988, to Approximate the Laws of the Member States Relating to Trademarks², and more recently in the Spanish Trade-Mark Law (Ley 17/2001).

In United States of America 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) - see Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596; (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 the name Arthur Golden is associated with the literary products of the Complainant. These facts are sufficient to establish common law rights in the name ARTHUR GOLDEN. In fact, it is precisely the famous nature of the Complainant’s name which is the probable cause of the registration of the domain names by the Respondent.

On the second issue (identity or similarity), the facts clearly favor the Complainant. The domain names are identical to the trademark, except for the generic top-level domain names “.com” and “.net.” 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.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in the domain name based on Complainant’s prior use of the ARTHUR GOLDEN mark. The Respondent, who 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 trademark 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 trademark 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 by the Respondent.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

C. 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 website 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 website or location or of a product.

There is evidence of the situation described in paragraph (ii). The Respondent registered the domain names in bad faith. It is reasonable to conclude that only someone who was familiar with the name ARTHUR GOLDEN and what it stands for would have gone through the trouble of registering the domain names. The fact that the Respondent registered several other domain names reflecting names of famous artists and creators (including author Rosa Montero Gallo, well-known film director Lorenzo Silva Amador and member of the Royal Spanish Academy José Luis Sampedro Sáez), is indicative of a pattern for the purposes of paragraph 4(b)(ii).

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 names <arthurgolden.com> and <arthurgolden.net > be transferred to the Complainant.

Dated: December 15, 2006

¹ OJ L 011, 14.1.1994, p. 1.

² OJ L 40, 11.2.1989, p. 1.