WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cornelia Funke v. Andrew Clayton

Case No. D2011-1480

1. The Parties

The Complainant is Cornelia Funke of Dusseldorf, Germany, represented by Olswang LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Andrew Clayton of London, United Kingdom of Great Britain and Northern Ireland, appearing pro se.

2. The Domain Name and Registrar

The disputed domain name <corneliafunke.com> is registered with 1&1 Internet AG.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2011. On September 2, 2011, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On September 2, 2011, 1&1 Internet AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2011. The Response was filed with the Center on September 29, 2011 (local time at the Respondent’s address).

The Center appointed Adam Taylor as the sole panelist in this matter on October 5, 2011. 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.

The Response does not conform to the requirements of Rule 5(b) of the Rules. Amongst other things, it omits the certification required by Rule 5(b)(viii) that the information contained in the Response is to the best of the Respondent's knowledge complete and accurate, that the Response is not being presented for any improper purpose, and that the assertions in the Response are warranted under the Rules and applicable law.

Paragraph 10(d) provides that the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

Some UDRP panels have held that where a deficient response clarifies an issue fundamental to a dispute, and its admission will not prejudice either party or substantially delay the proceeding, it may be appropriate to take the contents of the response into account. See, e.g., NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A., WIPO Case No. D2008-1984.

In this case, the deficient Response does indeed clarify a fundamental issue in that it is the only document which sets out the Respondent’s explanation of its purpose in registering the disputed domain name. The Panel sees no reason as to why its admission would prejudice either party and the Complainant has not contended otherwise. When considering the veracity of the Respondent’s assertions, the Panel can take account of the lack of a certification of truth. Admission of the Response will not cause substantial delay to the proceeding as it was filed on time.

Accordingly, the Panel had decided to admit the Response.

The Complainant made a supplemental filing on October 17, 2011 – the day before this decision was due. In view of the outcome of this case, it is unnecessary for the Panel to decide whether or not to admit this filing. The Panel has not taken it into account.

4. Factual Background

The Complainant is a successful and well-known German author. Since 1988 she has published more than 40 books in 45 different countries and in 37 different languages. She has sold over 18 million copies of her works worldwide. She has won many literary awards. Her books are principally childrens’ fiction and she has been referred to in the press as “the German JK Rowling”.

The disputed domain name was registered on September 22, 2002.

At some point thereafter, the disputed domain name was used for a registrar parking page with sponsored links to self-publishing and other websites.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant has achieved international recognition and critical acclaim for her works such that the name “Cornelia Funke” has come to be recognized by the general public as indicating an association with works written by her. The Complainant has acquired common law rights in her name.

Rights or Legitimate Interests

The disputed domain name was registered in 2002, long after the Complainant first became famous. The Complainant cannot tell if the Respondent is the original registrant of the disputed domain name. In any event the Respondent is not known by the name “Cornelia Funke”, has no association with that name and does not own any registered trademarks that correspond to that name.

Given the level of publicity which the Complainant had achieved before registration of the disputed domain name, the Respondent must be taken to have knowledge of the Complainant’s pre-existing rights. The disputed domain name was registered to trade off the Complainant’s extensive reputation.

Given the Complainant’s profession, the sponsored listings on the website are likely to lead consumers to believe that the disputed domain name is associated with the Respondent when it is not. It is not clear whether the Respondent is receiving revenues from the advertising but, in any event, the webpage is inactive to the extent that it has not been made active by the Respondent.

The fact that the webpage has not been actively used since 2002 is further evidence of a lack of rights or legitimate interests.

Registered and Used in Bad Faith

The Complainant is the only person who could have legitimately registered the disputed domain name. Given the Respondent’s name, there is no logical reason why he would wish to register the disputed domain name unless he was fully aware of the association with the Complainant and her common law rights. The Respondent could only have had dishonest intentions.

The Respondent knowingly breached the representations made in the registration agreement that neither the disputed domain name nor the manner in which it was used infringed the rights of any third party.

The disputed domain name was registered in bad faith to take unfair advantage of the Complainant’s name. The Complainant believes that the Respondent may have done so to disrupt the Complainant’s business, to prevent the Complainant from reflecting her name in a corresponding domain name, or for extortion purposes.

The disputed domain name is a passive holding constituting use in bad faith.

The Complainant is the only person who could use the disputed domain name in good faith. Any traffic received by the website at the disputed domain name can only be because of the association with the Complainant. Even if the domain name becomes active, the Respondent would not be able to use the disputed domain name legitimately to offer goods and services in a way which will not lead to confusion as to the origin of those goods and services.

B. Respondent

The Respondent registered the disputed domain name in good faith with the intention of creating a fan website and to give away signed books as prizes.

The site’s content would be updated by fans and would include facts and figures, book and film news, competitions for rare signed books, links to the works of other children’s authors and a link to the Complainant’s official site.

Before releasing the site, the Respondent has spent a significant amount of money buying a large number of signed first editions by the author at a price of £5,000 for use in conjunction with the site.

The project had not yet been fully realized due to a number of personal factors but the Respondent is still working on the project and intends to launch the site when practical.

There are plenty of other unofficial fan and tribute sites on the web and it is proven that they benefit the people they support.

The Complainant owns <corneliafunke.de>, <cornelia-funke.com> and <cornelia-funke.net>, all of which are directed to the Complainant’s official site at “www.corneliafunkefans.com”. There is no reason why the Complainant’s site cannot be called “www.cornelia-funke.com” or something similar and/or for her site to include “The Official Website” to avoid any possible confusion in future.

A similar example is “www.philip-pullman.com” which is the website of the award-winning author Philip Pullman.

The Respondent initially used a holding page but this only had 355 visits from 2008 to 2011 and so it had no impact on the Complainant’s main site, which remains number one on Google.

The website is defaulted to the registrar parking page. The Respondent has not knowingly set this up and does not receive any income from the links.

The Respondent has never offered the disputed domain name for sale.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states as follows:

“1.6 Can a complainant show UDRP-relevant rights in a personal name?

… Consensus view: Personal names that have been registered as trademarks are generally protected under the UDRP. While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person's name as a distinctive identifier of goods or services offered under that name would normally be required … A trademark-equivalent basis has been found in the common law action of passing-off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP.”

There have been a number of UDRP cases where commercially successful authors have established common law rights in their personal names on the basis that these have become distinctive identifiers of the goods or services offered under those names. See, e.g.Jeanette Winterson v. Mark Hogarth,WIPO Case No. D2000-0235; Louis De Bernieres v. Old Barn Studios Limited,WIPO Case No. D2001-0122 and Reza Pahlavi v. iranian security, Reza Pahlavi(511723), DNS MANAGER, ABSOLUTEE CORP. LTD., Harris Fellman, Steve Renner,WIPO Case No. D2009-1501.

The Complainant undoubtedly comes within this category. In this case, it is not in dispute that, as an author, the Complainant has used her name for trade or commerce and that she has achieved worldwide fame in that capacity.

The Panel therefore concludes that the Complainant has established unregistered trade mark rights in the name “Cornelia Funke”.

The disputed domain name is identical to the Complainant’s trade mark, disregarding the gTLD suffix “.com”.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP … If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”

The Respondent claims that he initially operated his own holding page at the disputed domain name and exhibits statistics which he says show that there have been 355 visits in the period 2008 to 2011. In fact, the timescale shown in the Respondent’s screenshot appears to be “26/8/11” to “22/9/11”, i.e. one month, not three years. More importantly, the Respondent does not exhibit the holding page or even explain its contents. Accordingly, this falls well short of use or demonstrations to use the disputed domain name in connection with bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the Policy.

In any case, it is not in dispute that the disputed domain name has been used for a registrar parking page with sponsored links to self-publishing and other websites (although the Respondent states that he did not knowingly set this up or receive any income from the links). Paragraph 2.6 of WIPO Overview 2.0 states:

“2.6 Do parking and landing pages or pay-per-click links generate rights or legitimate interests in the disputed domain name?

…[p]anels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" … or from "legitimate noncommercial or fair use" of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value … By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”

In this case, the disputed domain name does not consist of dictionary or common words. Furthermore, the links are based on the “trademark value” as virtually all of the links on the (undated) screenshot exhibited by the Complainant are book-related. This clearly derives from the Complainant’s association with the book industry. Therefore, even if the Respondent were able to rely on the registrar’s use of the disputed domain name as a parking page, in the Panel’s view this would not generate rights or legitimate interests in the disputed domain name.

There is no evidence that paragraph 4(c)(ii) of the Policy applies.

As to 4(c)(iii), the Respondent claims that its ultimate purpose in registering the disputed domain name was to create a fan site. For reasons explained below, the Panel is sceptical about this claim. In any case, the Respondent admits that he has not used the disputed domain name in this way to date and so it cannot be said that he “is [emphasis added] making a legitimate noncommercial or fair use” of the disputed domain name.

Even if the Respondent had used the disputed domain name for a genuine noncommercial website, this would still not suffice as the Panel subscribes to View 2 in paragraph 2.5 of WIPO Overview 2.0:

“A respondent does not have rights or legitimate interests in expressing its view, even if positive, on an individual or entity by using an identical or confusingly similar domain name, if the respondent is intentionally misrepresenting itself as being (or as in some way associated with) that individual or entity…. Also, where the domain name is identical to the trademark, panels have noted that such respondent action prevents the trademark holder from exercising its rights to the trademark and managing its presence on the Internet.”

In this case, the disputed domain name is identical to the Complainant’s trademark and, in the Panel’s view, the Respondent is thereby misrepresenting itself as being associated with the Complainant.

For these reasons, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

In the Panel’s opinion, by virtue of the registrar parking page alone the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.

See paragraph 3.8 of WIPO Overview 2.0 which states:

“Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an "automatically" generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks. It may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show that profit or "commercial gain" was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant. Reasons may include that a rights holder should be able to rely on the registrant for enforcement purposes, or that such registrant has undertaken not to infringe third party rights in its registration agreement (see paragraph 2 of the UDRP). … Some panels have found that the inclusion of such advertising links may not necessarily be a basis for finding respondent bad faith where shown to be genuinely automated, and there is no evidence that the respondent influenced the advertising content, and the respondent credibly denies knowledge of the complainant's trademark and there is no evidence of the respondent previously being put on notice of such mark, and other indicia of cybersquatting are not present.”

In this case, the Respondent admits that he was aware of the Complainant when he acquired the disputed domain name.

Accordingly, although the Respondent states that he did not knowingly set up the parking page, or receive any income from the links, the fact that a registrar has provided a parking page does not absolve the Respondent from liability. See, e.g., Missoni S.p.A v T.N.T. TerrificNTerry Inc., WIPO Case No. DWS2008-2003 and Express Scripts, Inc. v. Windgather Investments Ltd./Mr. Cartwright,WIPO Case No. D2007-0267. And it is irrelevant that the Respondent is not itself making any commercial gain from the parking page. UDRP panels have held that paragraph 4(b)(iv) of the Policy does not require the owner of the domain name to be the entity that commercially gains from the diversion. See, e.g., Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857 discussed in Missoni S.p.A, and Express Scripts, supra.

Even if there had been no registrar parking page, the Panel would still have found registration and use in bad faith.

The Respondent has not launched his allegedly intended fan site despite having had some nine years to do so - assuming that the Respondent was the original registrant of the disputed domain name in 2002 (and he has not suggested otherwise). The Respondent claims that the project has not yet been realized due to “personal factors” but he does not explain what these are, let alone supply any supporting evidence. He says he is still working on the project but provides no evidence of those preparations. The Respondent claims to have spent some £5000 buying first editions signed by the Complainant. Again, the Respondent has provided no proof. The Panel also takes into account the lack of a certification of truth in the Response. Accordingly, in the Panel’s view, the Respondent has not provided a credible explanation of his purpose in registering the disputed domain name.

As explained above, even if the Respondent did indeed intend to set up a genuine noncommercial fan site (and the Respondent has not clearly stated that the envisaged fan site was noncommercial), by using a name which is identical to the Complainant’s trademark, the Respondent would intentionally have been misrepresenting himself as being associated with the Complainant.

The Respondent asserts that the Complainant could use one of her other domain names, e.g. <cornelia-funke.com>, as her official site and label it as “The Official Website” to avoid any confusion in future. However, that would not have avoided confusion. The Panel considers that the continuing concurrent use by the Respondent of the disputed domain name, identical to the Complainant’s trademark, would still be bound to have confused a significant number of people into thinking that the Respondent’s website was associated with the Complainant.

For all of the above reasons, the Panel finds that the Complainant has established the third element of paragraph 4(a) 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 disputed domain name, <corneliafunke.com>, be transferred to the Complainant.

Adam Taylor
Sole Panelist
Dated: October 19, 2011