Catherine Cookson Charitable Trust v. Alberta Hot Rods
Case No. D2008-0888
1. The Parties
The Complainant is Catherine Cookson Charitable Trust, Gateshead, Tyne & Wear, United Kingdom of Great Britain and Northern Ireland, represented by Gaby Hardwicke Solicitors, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Alberta Hot Rods, High Prairie, Alberta, Canada.
2. The Domain Name and Registrar
The disputed domain name <catherinecookson.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2008. On June 12, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On June 12, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 24, 2008. 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 June 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2008.
The Center appointed John Swinson as the sole panelist in this matter on July 24, 2008. 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 Catherine Cookson Charitable Trust, a charity established on February 17, 1977 in the UK with registered charity number 272,895. The charity was established by the famous author Dame Catherine Cookson. The income generated from the literary works of Dame Catherine Cookson is used, by the charity, for the relief of poverty, the advancement of education, the advancement of religion and for any purpose beneficial to the community.
The Respondent is a Canadian based business in Alberta.
5. Parties’ Contentions
A. Complainant
The Complainant makes the following contentions:
The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The Complainant is the registered proprietor of Community trade mark number 005832076 for the mark CATHERINE COOKSON. The disputed domain name is identical to the Complainant’s registered mark with the addition of “.com”. The Complainant uses the mark in connection with the literary works written by Dame Catherine Cookson, the copyright in which vests in the Complainant.
There exists long standing unregistered rights to the trade mark CATHERINE COOKSON. The Complainant is a charity established by the author, Dame Catherine Cookson, and her advisors on February 17, 1977 to use the revenue produced by the author’s literary works for charitable ends.
On the death of Dame Catherine Cookson in 1998, the copyright in her literary works passed by testamentary provision to the Complainant. The Complainant is the sole proprietor of the goodwill in the name Catherine Cookson deriving from the literary works, the stage and screen adaptations, the merchandising and by any other means.
The Respondent has no rights or legitimate interest in respect of the disputed domain name
The disputed domain name resolves to the website “www.newsalbum.com”. The website contains an astrological profile of Catherine Cookson and links to other sites on a “pay per click” basis.
The Respondent does not, and does not intend to, use the disputed domain name in connection with any bona fide offering of goods and services.
The Respondent does not have any trade mark rights, reputation or legitimate interests in the disputed domain name.
The disputed domain name was registered and is being used in bad faith
The Respondent has engaged in a pattern of registering the names of well known personalities as “.com” domain names including current celebrities and deceased authors. The Respondent’s activities have been the subject of numerous complaints under the UDRP and have, in many cases, resulted in the transfer of those domain names to the complainants.
The website to which the disputed domain name resolves contains pay per click advertising for items such as astrological profiling and celebrity news. The disputed domain name is only being used to boost traffic to the Respondent’s website and increase revenue to the Respondent by means of the featured advertising.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the domain name registered by the Respondent 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
To prove this element the Complainant must prove that it has trade or service mark rights and that the disputed domain name is identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant has registered trade marks rights in CATHERINE COOKSON (see Community Trade Mark No. 005832076).
The disputed domain name contains the entirety of the Complainant’s trade mark in CATHERINE COOKSON. It is well established that the specific top level domain, such as “.com”, “.net” or “.travel”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. TheMudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).
The Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trade mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out an initial prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
The Complainant has asserted that the Respondent does not, and has not demonstrated an intention to, use the disputed domain name in connection with any bona fide offering of goods and services – it is used in connection with generating revenue from “pay per click” advertisements at the website “www.newsalbum.com”. The Complainant has also asserted that the Respondent does not have trade marks or a reputation in the disputed domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name. However, the Respondent did not submit a response or attempt to demonstrate any rights or legitimate interest in the disputed domain name.
The Panel notes that none of the circumstances mentioned in paragraph 4(c) are present. The Panel visited the disputed domain name on July 28, 2008. As at that date the disputed domain name was being used by the Respondent in connection with its Celebrity 1000 website. There is no evidence that the Respondent is commonly known by the disputed domain name. The Panel considers that the Respondent uses the disputed domain name to mislead Internet users looking for Catherine Cookson or the Complainant to a commercial website for the Respondent’s financial benefit. Such use is not bona fide. The Panel agrees with the findings of several previous panels that the Respondent’s use of celebrity names in domain names in connection with that the Celebrity 1000 website does not to constitute legitimate noncommercial or fair use: see Jeffrey Archer v. Alberta Hotrods tda CELEBRITY 1000,
WIPO Case No. D2006-0431.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trade mark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The Respondent has engaged in a pattern of conduct of registering the names of famous people in order to prevent them from reflecting their name and trade mark in a corresponding domain name. In this case, the Respondent has registered the name of the famous author, Catherine Cookson, to prevent the Complainant from reflecting its registered trade mark, CATHERINE COOKSON, in a corresponding domain name. There have been a number of findings of bad faith against the Respondent in relation to domain name disputes involving famous people such as e.g. <larryking.com>, <jeffreyarcher.com>, <tomcruise.com> and <michaelcrichton.com>.
Catherine Cookson was a world renowned author who wrote almost 100 books which were translated into at least 20 languages. Many of Catherine Cookson’s books have been transferred to stage, film and television. The Complainant was created by Catherine Cook. At the time of registration of the disputed domain name in 1996, Catherine Cookson and the Complainant, were, and had been for a number of years, world famous. The Panel infers that the Respondent was aware of the Complainant and of the goodwill the Complainant’s trade mark and the Catherine Cookson name has generated. The Panel finds that the Respondent registered the disputed domain name in bad faith.
The disputed domain name currently resolves to the Respondent’s Celebrity 1000 website. The Respondent earns revenue from diverting users to its sponsored links on that website. The Respondent’s use of the disputed domain name has demonstrably been to attract, for financial gain, Internet users to the Respondent’s website, by creating the likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Panel finds that the Respondent is using the disputed domain name in bad faith.
The disputed domain name has been registered since 1996. Ordinarily, the length of time which has elapsed between the registration of the disputed domain name and the bringing of the Complaint may have been a cause of concern as, in some cases, delay has been considered to be a waiver of rights. However, the Panel adopts the reasoning of the panels in Dire Straits (Overseas) Limited v. Alberta Hot Rods,
WIPO Case No. D2007-0778 and Tom Cruise v. Network Operations Center/Alberta Hot Rods,
WIPO Case No. D2006-0560. The Respondent has not suffered from the delay and the delay does not impact on the Complainant’s right to obtain relief.
The evidence, in the Panel’s view, supports the conclusion that the Respondent sought to profit from, or exploit the trade marks of the Complainant. Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.
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, <catherinecookson.com> be transferred to the Complainant.
John Swinson Sole Panelist
Dated: July 30, 2008
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