The Complainant is Ernesto Bertarelli of Geneva, Switzerland, represented by Addleshaw Goddard, United Kingdom of Great Britain and Northern Ireland.
The Respondent is c/o ernestobertarelli.com / Nicholas Tee, Premier Management Ltd, of Auckland, New Zealand.
2. The Domain Name and Registrar
The disputed domain name <ernestobertarelli.com> is registered with DSTR Acquisition. I, LLC d/b/a 000Domains.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2009. On April 1, 2009, the Center transmitted by email to DSTR Acquisition. I, LLC d/b/a 000Domains.com a request for registrar verification in connection with the disputed domain name. On April 1, 2009, DSTR Acquisition. I, LLC d/b/a 000Domains.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 7, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center in its email further informed the Complainant the Complaint did not include a proper mutual jurisdiction submission as required under paragraph 3(b)(xiii) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). The Complainant filed an amendment to the Complaint on April 9, 2009. 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” or “UDRP”), 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 April 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2009.
On April 24, and April 27, 2009, the Center received a request from the Respondent to extend the time to submit its Response. The Center taking into account the Respondent's stated reasons for the request and further considering the Complainant's comments granted the extension of time until May 18, 2009. The Response was filed with the Center on May 18, 2009.
The Center appointed John Swinson as the sole panelist in this matter on May 27, 2009. 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.
On May 29, 2009, at the request of the Panel, the Center issued Administrative Panel Order No. 1, allowing the Complainant the opportunity to submit further evidence supporting its claim for trade mark rights. The Respondent was also given the opportunity to submit evidence as to this issue. The due date for the decision was extended to June 15, 2009.
The Respondent submitted further material on June 5, 2009. The Complainant sought a further extension until June 9, 2009 which the Panel granted. The Complainant submitted its further documentation in accordance with Administrative Panel Order No. 1 on June 9, 2009.
4. Factual Background
The Complainant is an individual living in Switzerland. In 2009, he was ranked as number 52 in Forbes' world billionaires list. He inherited a pharmaceutical business from his father in 1996, managed it with a focus on biotech, and sold it in 2006.
The Complainant also formed the Alinghi yacht racing syndicate and won the America's Cup (from New Zealand) in 2003 and again in 2007.
The website at the disputed domain name displays the following title: “Ernesto Bertarelli - The Fun Club”. It also contains banners stating that the website is “100% Kiwi owned” or “100% NZ owned”, and provides an opportunity for users to wish good luck to the New Zealand America's Cup team. The website also contains the following statement on the homepage:
This website is dedicated to the man who won the 31st and 32nd America's Cup using New Zealand crew, New Zealand technology and therefore virtually a New Zealand boat.
Unbeknown to many yachting fans around the world, it is widely believed that Ernesto Bertarelli really would prefer if Emirates Team New Zealand won back the America's Cup. This is perfectly understandable when you remember that over 4 years is a very long time to live with such a guilty conscience.
5. Parties' Contentions
A. Complainant
The Complainant makes the following contentions:
The Complainant has trade mark rights in his name ERNESTO BERTARELLI. He has achieved worldwide recognition as a professional sportsman (an elite yachtsman who has won numerous races) and businessman (he was once the CEO and deputy chairman of Serono, a well known pharmaceutical company, is a current board director of UBS and co-founder of the Bertarelli Foundation).
A Complainant may rely on his or her rights in their own name under the Policy. The Complainant has common law rights in the ERNESTO BERTARELLI trade mark. The disputed domain name is identical to the mark, as it mirrors the exact name of the Complainant.
The Respondent is not the owner or licensee of any rights in the Complainant's trade mark. Nor has the Respondent been commonly known by the disputed domain name. It is not clear what name the Respondent is commonly known as, because the Respondent has concealed its identity in the Whois database.
There is no evidence of the Respondent's use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The website operating from the disputed domain name has been used in a variety of non-legitimate commercial ways since registration.
The Respondent is not making legitimate non-commercial fair use of the disputed domain name. The website has been used to criticise the Complainant. For example, the website has stated “the site which you might be able to visit in the future to make fun of the intrepid sailor, Ernesto “Ernie the Sailor Boy” Bertarelli.”
Where a respondent is using a trade mark in relation to a criticism site or fan site, the domain name will be considered to be an abusive registration where the intention is clearly to cause initial interest confusion, and exploit that confusion to express the Respondent's views of the trade mark owner (negative or positive).
While the Respondent has a right to express its opinion, this does not equal a right to use a domain name which is confusingly similar to the Complainant's trade mark. It is particularly so in this case, as the Respondent has used a domain name which is identical to the Complainant's mark, rather than one which is confusingly similar.
The Respondent also cannot assert that a criticism site constitutes a legitimate interest if it has made an offer to sell the disputed domain name, which has happened in this case. The Respondent also pursues other commercial interests in relation to the disputed domain name, and this cannot constitute legitimate interest. Further, registration of a domain name for purposes of satire or parody does not establish a right to use a mark in respect of which the Complainant owns the intellectual property rights.
The disputed domain name could not have been chosen by the Respondent for any reason other than its association with the Complainant's mark, and the Respondent does not, and cannot, have any rights or legitimate interest in the disputed domain name.
Bad faith can be found where a respondent cannot use a domain name without violating the complainant's rights, for example, when the complainant's name was famous at the time of registration.
The Respondent's registration has prevented the Complainant from reflecting his trade mark and name in a corresponding domain name. The fact that this would prevent the Complainant from running his own legitimate website would have been evident to the Respondent.
The Complainant denies that he was ever contacted by the Respondent for his approval of the Respondent purchasing the disputed domain name. Even if the Complainant had received such correspondence (and failed to respond), it would still not entitle the Respondent to register the disputed domain name. It would also demonstrate that the Respondent was aware that it was not entitled to register the name without the Complainant's permission.
The Respondent acquired the disputed domain name for the purpose of selling it in excess of the Respondent's documented out of pocket costs. Previous content on the website displayed a “For Sale” sign (for at least 5 months), or information about an auction of the disputed domain name (via the “Trademe” website) and encouragement of offers. The website also stated at one time that the Respondent had decided to test the market and bidding had reached $81,000. The website was later updated (after January 25, 2008) to state that the offer was only a publicity stunt to raise the website's profile. However it is likely that the change was due to correspondence received from the Complainant's solicitors of April 2, 2008.
The Respondent is using the disputed domain name website to lure unsuspecting Internet users searching for information on the Complainant. The Respondent is benefitting financially from such use. From 2003 to 2005, the website was called “The US Shopping City”, and contained links to online stores. From 2005 the website contained links which directed the user to other websites operated by the Respondent, such as “www.property-investments.co.nz” which was operated for commercial gain. The Respondent is using the disputed domain name to pass itself off as the Complainant.
The Respondent also provided incorrect details for the Whois database, and refuses to reveal its true identity. The original registrant was listed as Yorkdale Limited. A Mr Jeffrey from The UK Shopping Centre responded to an email sent by the Complainant to the Whois information, stating that the contact information was incorrect. The Respondent did not provide details of the true entity at this time. The Complainant wrote again to the Respondent, asking them to update the Whois details, and the Respondent later confirmed that they did so. However they only updated the details to “c/o ERNESTOBERTARELLI.COM” as the registrant, with a US PO Box address. The contacts were listed as “privacy post” email addresses.
B. Respondent
The Respondent makes the following contentions:
The Respondent is Premier Management Ltd and Mr Nicholas Tee.
The Complainant did not enjoy common law trade mark rights at the time the disputed domain name was purchased (on March 3, 2003), and still does not enjoy such rights at the current date. If a complainant seeks to rely on common law trade mark rights, they must provide sufficient evidence of use, which shows those rights existed prior to registration of the disputed domain name.
The Complainant has provided no evidence of common law rights, and only offered speculation and conjecture. Any reference to sporting events engaged in by the Complainant took place in the past six years, and after the Respondent registered the disputed domain name. The Complainant does not appear to have any registered trade mark rights in its name.
The Policy was not originally intended to apply to “personality rights”. WIPO declined to extend the Policy to protect personal names in June 2000 and recommended that the Policy should only protect personal names to the extent they function as trade marks, or have been commercially exploited. Those who have not profited from their reputation in commerce will be excluded from coverage of the Policy. The Complainant's fame in his non-commercial activities is irrelevant.
Fame alone is not sufficient to establish common law trade mark rights in a person's name. The name must be used so that a relevant segment of the public recognises the name as a symbol which distinguishes their services from those of other service providers, or identifies particular goods or services with a single source.
At the time the Respondent registered the disputed domain name, the Complainant was virtually unknown internationally, and he could not be compared to other celebrities who have had their name protected. The Complainant's international profile is now only marginally greater than it was six years ago, and is limited to fans of America's Cup yacht racing (an event which only takes place every four years).
A Wikipedia extract proves that the Complainant is only known for two things - in association with the Serono company (which is barely recognised outside Switzerland), Team Alinghi and the America's Cup. In other encyclopedia entries, Alinghi is mentioned but the Complainant is not.
The Respondent has previously attempted to resolve the dispute amicably, by asking for clarification and evidence on the Complainant's rights. The Complainant failed to provide such evidence of trade mark rights at these times.
The Respondent has rights and legitimate interests in respect of the disputed domain name as it has operated a legitimate website providing social commentary and satire relating to the America's Cup race. The Complainant only contacted the Respondent about use of the disputed domain name more than five years after it was registered and the website had become well established. Social commentary and satire is fair and legitimate content in all forms of media, including websites. The Respondent receives no commercial or financial gain or reward from the website. The website also makes it clear that it is 100% New Zealand owned, to try and avoid misleading or causing confusion to visitors.
In the six years that the Respondent has owned the disputed domain name, it has never had any communication with the Complainant, other than to respond to emails in the past 12 months from the Complainant's solicitors. The Respondent has not approached the Complainant in respect of selling the disputed domain name. In an email dated April 8, 2008, the Respondent stated that the disputed domain name was not for sale.
When the sale of the disputed domain name was mentioned, it was for a publicity stunt, which occurred during the lead up to the America's Cup. The stunt included a radio interview with a sports commentator and was aimed at getting New Zealand supporters to send their wishes to Team New Zealand. After the event, the website was updated to indicate that it was not for sale.
The Respondent could not have registered the disputed domain name to prevent someone from reflecting their trade mark, as no trade mark existed at that time, or even now. Nor has the Respondent engaged in a pattern of conduct, as required by the Policy.
The Respondent has previously asked the Complainant to contribute content and take part in controlling the management of the website, free of charge. The Complainant did not appear to consider or discuss the invitation.
The Complainant has ignored detailed information when referring to the links on the Respondent's websites. The links provided to the Respondent's other websites are there by necessity, to enable the free flow of search engine spiders. There is little likelihood of confusion, as a large banner has been placed on the top page of the website stating that the website is 100% Kiwi owned. This makes it clear that it has no association with the Complainant who is a resident of Switzerland.
The Panel should make a finding of reverse domain name hijacking.
6. Discussion and Findings
To succeed in its claim, the Complainant must demonstrate that all of the elements in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark 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.
Paragraph 4(a) of the Policy states that the burden of proving these elements lies with the Complainant.
A. Identical or Confusingly Similar
To establish the element set out in 4(a)(i) of the Policy, the Complainant must prove that he has trade or service mark rights, and that the domain name registered by the Respondent is identical or confusing similar to the mark in which the Complainant has rights.
The Complainant does not rely on any registered trade marks, and so must establish common law rights in his personal name.
The Policy does not specifically protect personal names. A personal name, which is not registered as a trade mark, will be protected where trade mark rights have arisen through use in commerce in connection with goods or services. It is necessary to show that the person has used their name in trade for a commercial advantage, so that their name is distinctive of them and their commercial activities: 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 No. D2002-0874. Having a famous name is not necessarily sufficient -- the name must be used in commerce: Israel Harold Asper v. Communication X Inc.,WIPO Case No. D2001-0540; Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa,
WIPO Case No. D2003-0248. For example, an actor's name can serve as a trade mark as it distinguishes that actor's performances from others': see Kevin Spacey v. Alberta Hot Rods, NAF Claim No. FA114437.
The Panel must determine, then, whether the Complainant has established that ERNESTO BERTARELLI has been used by the Complainant in trade to such an extent that the Complainant has common law trade mark rights in his name.
The Complainant provided over 200 pages of newspaper, magazine and Internet articles and content to prove this element. Those pages contain many references to the roles the Complainant has had in the business, sporting and charitable realms. It is appropriate to consider his activities in those three areas in turn.
Business
There are many references to the Complainant being the chief executive of Serono (a pharmaceuticals and biotechnology company based in Switzerland, that later merged with the German company, Merck), and being on the boards of large companies, including UBS. However, based on the evidence presented in the Complaint, the Complainant did not use his own name in trade in any of these roles; rather he promoted the brands and trade marks of the companies. The Panel finds, based on the evidence before it, that the Complainant did not acquire common law rights in his name from these activities. Compare Jonathan Ive v. Harry Jones,
WIPO Case No. D2009-0301.
Sailing
The majority of the materials submitted by the Complainant on this issue relate to the Complainant's achievements in sailing, including winning the America's Cup boat race as the leader of the Swiss team, Alinghi, in 2003 and 2007, and the various news stories that surround regattas and races. In the articles and content relating to sailing, the Complainant's name is used to refer to the roles he played: leader, crew and team member. The Complainant also received individual honours in recognition of his sailing successes including the Legion d'Honneur in France and the Cavaliere di Gran Croce in Italy.
It is clear that sporting identities can have common law trade mark rights in their names where they use their name commercially. For example see Venus Williams and Serena Williams v. Allgolfconsultancy and Eileen White Byrne,
WIPO Case No. D2000-1673; Russell Coutts v. Massimo Gallotta,
WIPO Case No. D2006-0008; Stephen J. Nash aka Steve Nash v. HOOPology.com,
WIPO Case No. D2009-0225.
The overwhelming effect of the evidence is that the Complainant is famous in the sailing industry, both as a member of the crew, and as the leader and financial backer of famous sailing teams. The Panel is satisfied that, on balance, the Complainant uses his name and associated reputation in the business of competitive yacht racing. His name has become distinctive of his commercial activities in the sailing industry, and so he has acquired common law rights in his name through such use.
Charity
The Complainant jointly controls a charitable foundation called the Bertarelli Foundation along with his mother and sister. His involvement is mentioned in some of the articles presented by the Complainant as evidence in this dispute. The Bertarelli Foundation's website clearly uses the word BERTARELLI in its banner and branding.
The Panel finds that this does not necessarily assist the Complainant in relation to the first element of the Policy. The Foundation may have common law rights in relation to the word BERTARELLI, but it is not clear that the Complainant would have rights due to his management of and involvement with the Foundation.
Time that common law rights arose
The Respondent submitted that the Complainant became famous after his 2003 America's Cup win, which was after the Respondent registered the disputed domain name. The Respondent submits that the Complainant did not have common law rights in his name at the time of the registration of the disputed domain name, and so a transfer should be denied.
According to the invoice issued by 000Domains.com and provided to the Panel, the Respondent registered the disputed domain name on March 3, 2003.
The articles submitted as evidence by the Complainant dated prior to March 3, 2003 show that the Complainant was heavily involved in the sailing world in 2002 and early 2003. During that period, there were many news pieces regarding the 2003 America's Cup and the activities of many teams and personalities, including the Complainant and Alinghi. The Panel considers it clear that the Complainant was already using his reputation in his name in the business aspect of his attempt to win the America's Cup. The Panel finds, therefore, that the Complainant had common law rights in his name at the time the Respondent registered the disputed domain name.
In any case, paragraph 4(a)(i) does not require the trade mark rights to pre-date registration of the domain name: Digital Vision, Ltd. v. Advanced Chemill Systems,
WIPO Case No. D2001-0827; AB Svenska Spel v. Andrey Zacharov,
WIPO Case No. D2003-0527; Iogen Corporation v. IOGEN,
WIPO Case No. D2003-0544; Madrid 2012, S.A. v. Scott Martin-MadridMan Websites,
WIPO Case No. D2003-0598 among others. These cases all concern registered trade marks, but as a Complainant can rely on rights which arise from registration or use under the Policy, there is no reason why the result in this case would be different in relation to common law trade mark rights. Those cases confirm that the temporal connexion between trade mark rights and the registration of the disputed domain name is relevant to bad faith under paragraph 4(a)(iii) of the Policy. The Panel will consider the Respondent's argument on this point below, in relation to the third element of the Policy.
Conclusion
On the basis of the Complainant's widespread use of his personal name in relation to sailing, the Panel finds that the Complainant has trade mark rights in his name, ERNESTO BERTARELLI. As the disputed domain name is identical to this trade mark (ignoring the “.com” suffix) the first element has been met.
B. Rights or Legitimate Interests
This element, in accordance with paragraph 4(c) of the UDRP, involves a shift in the burden of proof. The 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 website owned by the Respondent serves more than one purpose. It is supportive of the Emirates Team New Zealand sailing team, and encourages visitors to send their good wishes to the team. In the Panel's view, it is critical of the Complainant, and of Russell Coutts (who has been a member of the Complainant's Alingha team). The criticism of the Complainant is veiled, achieved mostly through satire and sarcasm. The print-outs of the website submitted by the Respondent show that it has been critical of the Complainant over a long period of time.
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 that:
(i) before any notice to it of the dispute, the Respondent's 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
The Respondent does not seek to rely on paragraph 4(c)(i) or (ii).
On the evidence submitted, the Respondent has not satisfied the Panel that it is making a legitimate noncommercial or fair use of the disputed domain name in accordance with paragraph 4(c)(iii). The links which appear at the bottom of the website are links to commercial shopping sites. There are five such links. The heading above the links states: “Websites that have sponsored this site as a community service include:”
The Respondent has asserted that it receives no commercial gain from operating the website (both in its submissions and in emails to the Complainant's lawyers), but has not provided sufficient evidence to support its claim that the shopping links are noncommercial. On the evidence available, the Panel finds that the Respondent intended to make at least some commercial gain from the website at the disputed domain name by including commercial shopping website links on the page.
In addition, the website appears to “misleadingly divert consumers”, who are interested in sites about the Complainant, into visiting and viewing the Respondent's site, which is primarily about a competitor sailing team. As the Respondent is using the Complainant's exact name on a site including thinly veiled criticism of the Complainant and his sailing team, and to support a competiting team, it is difficult to find that the Respondent did not intend to tarnish the Complainant's mark.
On balance, the Panel finds that the Respondent intended to make commercial gain by diverting consumers searching for the Complainant's websites to its own website with a motive to tarnish the Complainant's name and standing.
Accordingly, the second element has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-inclusive circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that the Respondent has registered or has 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) the 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; or
(ii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iii) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 web site or location or of a product or service on the web site or location.
The Complainant included evidence that the Respondent at one stage displayed notices on the website stating that the domain name was for sale, asking for bids in an auction, and stating that the bidding was up to $81,000. The Respondent's statement that this was a “publicity stunt” is, in the Panel's opinion, difficult to believe. The Panel finds that at least some time prior to 2008 the Respondent intended to sell the domain name (or at least tested the waters to see if he could obtain a high price for the domain name) for a sum in excess of its out-of-pocket costs in accordance with paragraph 4(b)(i). While this was an offer made to the public at large, it was likely to have been directed to the Complainant because the domain name is identical to the Complainant's name.
As stated above, the Panel finds that the Respondent is likely to have received commercial gain from hosting links to shopping sites. The Panel finds that the Respondent intentionally attempted to attract Internet traffic to its site by using the Complainant's name in order to increase traffic to the Respondent's website.
As discussed above, the Respondent submitted that the Complainant did not have any rights in his name at the time the Respondent registered the disputed domain name in 2003. The Panel rejected this assertion, above. However, the lesser reputation the Complainant had at the time of registration of the disputed domain name can be relevant to the issue of bad faith. In the Panel's view, however, the lesser reputation the Complainant had does not take away from the Respondent's bad faith in registering the domain name.
Clearly the Respondent was aware of the Complainant and his reputation in relation to sailing when the Respondent registered the disputed domain name.
In those circumstances, the Panel finds the domain name was registered and is being used in bad faith (both under paragraph 4(b)(i) and (iv)) and the third element has been met.
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 <ernestobertarelli.com> be transferred to the Complainant.
John Swinson Sole Panelist
Dated: June 16, 2009
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