The Complainant is Miranda Kerr of Beverly Hills, California, United States of America, represented by Jirsch Sutherland Intellectual Property, Australia.
The Respondent is orangesarecool.com of London, United Kingdom of Great Britain and Northern Ireland, represented by Lewis & Lin, LLC, United States of America.
The disputed domain names <kerr-miranda.com>, <mirandakerr.com>, <mirandakerrconnection.com> and <mirandakerrweb.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2013. On March 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 22, 2013, the Registrar 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 March 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response April 16, 2013. The Response was filed with the Center on April 17, 2013.
The Center appointed Karen Fong, Richard W. Page and G. Gervaise Davis III as panelists in this matter on May 6, 2013. 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.
The Complainant is a famous Australian model who has established a significant reputation within the modeling industry as well as worldwide reputation in her name Miranda Kerr. She is now considered one of the world’s top 10 models. She started modeling at the age of 13 in 1997 in Australia. She moved to the United States of America in 2004 after establishing herself as a leading international model representing well known major international fashion labels and brands in runway and print and television advertising campaigns. Her reputation increased when she signed with cosmetics giant, Maybelline New York in 2006 and America’s largest lingerie chain, Victoria’s Secret in 2007 as the first Australian “Angel”. These advertisements and televised fashion shows appear worldwide. Her global reputation rose even further when she married the famous film star, Orlando Bloom in 2010.
In 2009, the Complainant launched a line of skin care products under the name Kora Organics by Miranda Kerr. These products are promoted and sold through the website “www.koraorganics.com”. The skin care products won the Australia InStyle Women of Style and InStyle Reader’s Choice Award in 2012. In 2010, the Complainant released a book that she written called “Treasure Yourself.”
The Complainant owns a trade mark registration for her name MIRANDA KERR in Australia registered on March 28, 2012. The Complainant also has unregistered trade mark rights in the name MIRANDA KERR by reason of her extensive use and promotion of the name in relation to modeling, beauty products and related products and services. The Complainant owns the following domain names which consists of her name Miranda Kerr, <mirandakerr.net> and <mirandakerr.com.au>. The first connects to her personal website which includes a link to “www.koraorganics.com”. The second resolves to “www.koraorganics.com”.
The Respondent hosts and operates websites which are focused on celebrities. This includes the websites connected to the Domain Names. <mirandakerrweb.com> (“Domain Name 1”) was registered on April 17, 2009; <mirandakerr.com> (“Domain Name 2”) was registered on April 15, 2005 by another party and acquired by the Respondent in 2010; <kerr-miranda.com> (“Domain Name 3”) was registered on August 23, 2011 and <mirandakerrconnection.com> (“Domain Name 4”’) was registered on May 6, 2012.
Domain Name 1 and Domain Name 2 are connected to a website (“Website 1”) which is a fan site containing photographs and news about the Complainant. Appearing prominently on the home page are the words “Miranda Kerr Fan”. There were also unrelated third party ads with pay-per-click links. These were removed after the commencement of these proceedings. Domain Name 3 and Domain Name 4 are presently connected to a website (“Website 2”; together “the Websites”) which is also a fan site containing photographs and news about the Complainant. Appearing prominently on the home page are the words “Miranda Kerr Source”. There were also unrelated third party ads with pay-per-click links. These were removed after the commencement of these proceedings. At the time of the filing of the Complaint, Domain Name 4 was not connected to an active website. It contained the statement “Coming Soon”.
Identical or Confusingly Similar
1. The Complainant has common law rights in her own name MIRANDA KERR through the name being featured in media in Australia and abroad; print and television advertising campaigns for major international fashion brands since 1997.
2. By 2005, (the date of the registration of the earliest Domain Name), her name had acquired “secondary meaning” and had become distinctive of the Complainant entitling her to protection of the name in Australia, the United Kingdom and the United States.
3. Since 2005, the Complainant has expanded the use of MIRANDA KERR including using it in relation to a range of skin care products as well as an author of her book. The Complainant has an online social media strategy and increasing online presence.
4. The Complainant has a registered trade mark in Australia since March 28, 2012.
5. The Domain Names are substantially identical to the MIRANDA KERR trade mark, appearing in its entirety in each of the Domain Names, thus leading to consumer confusion.
6. The addition of the generic words “connection” and “web”’ will not prevent confusion.
Rights or Legitimate Interests
7. There is no evidence that the Respondent is using the Domain Names in connection with a bona fide offering of goods and services.
8. Although the Websites claim to be fan sites, the information provided about the Complainant is confusing and limited. More space is devoted to unrelated third party advertisements and links.
9. The Websites have been set up for the purpose of generating revenue from pay-per-click and banner advertising. The links on the Websites do not appear connected to the Respondent.
10. Even though the Domain Name 4 was not connected to an active website at the time of the filing of the Complaint, in all likelihood the purpose of the website to be set up would also be to generate revenue from advertising third party products and services.
11. The Complainant has not authorized or licensed the Respondent to use the MIRANDA KERR trade mark in connection with the Domain Names or the Websites.
12. No individual, business, or other organization including the Respondent is commonly known by the Domain Names. The Respondent has no demonstrable interests in the name Miranda Kerr and no affiliation with the Complainant.
13. The real purpose for the Respondent’s use of the Domain Names is to misleadingly attract and divert Internet users to the Websites for commercial gain as well as to trade off the Complainant’s reputation and goodwill in the MIRANDA KERR trade mark.
14. The disclaimers on the Websites are located inconspicuously on the homepage which has advertisements of and links to third party goods and services. They are inadequate to dispel the initial confused interest which drives internet users to the Websites.
15. The Respondent’s conduct is preventing the Complainant from exercising hers rights to the MIRANDA KERR trade mark, managing her presence on the Internet and is disrupting her online social media strategy.
16. The Domain Names are potentially depriving the Complainant of visits by Internet users to the Complainant’s websites. Website 1 discloses that the site attracts around 1.5 million visitors.
17. The Respondent is tarnishing the Complainant’s reputation by associating it with advertisements for adult movies on Website 1.
Registered and Used in Bad Faith
18. The Domain Names were registered in order to prevent the Complainant as owner of the MIRANDA KERR trade mark from using the mark in a corresponding domain name and has engaged in a pattern of such conduct. The Respondent owns the website “www.fanfusion.org” (“the Fan Fusion Website”) which hosts various celebrity fan sites on condition that she owns the domain names for the purpose of placing “pay per click”, “banner advertisements” on the corresponding websites. The Respondent owns thousands of domain names that are identical or confusingly similar to the trade marks of others.
19. The Domain Names were registered with the bad faith intent of exploiting and profiting from the Complainant’s rights in the MIRANDA KERR trade mark and to take advantage of the Complainant’s commercial reputation.
20. A twitter account “@mirandakerrweb” links Website 1. The purpose is to confuse and mislead Internet users and direct them to the Respondent’s website for commercial gain.
21. The Respondent is using the MIRANDA KERR trade mark to confuse Internet users into visiting the Websites by creating a likelihood of confusion as to whether the Complainant was the source, sponsor or affiliate or endorser of these websites. Such confusion is also intended to generate “pay per click” advertising revenues.
22. The use of Domain Names that are so obviously connected to a well known person by the Respondent who has no connection to the Complainant suggests opportunistic bad faith. A substantial proportion of Internet users visiting the Websites will be doing so in the hope and expectation of reaching a site of or authorized by the Complainant.
23. The Complainant began using the MIRANDA KERR trade mark long before the Respondent registered the Domain Names.
1. The Fan Fusion Website (formerly “www.orangesarecool.com”) which is owned by the Respondent is a labour of love born out of the pure unadulterated enthusiasm of its founder, a star-obsessed fan, Sarah Reynolds in 2008.
2. The Fan Fusion Website hosts fan sites for the Respondent as well as third parties. The goal of Fan Fusion Website is to bring fans together. It presently hosts over 1,500 fan sites.
3. The Respondent considers the Fan Fusion Website as a hobby site rather than as a business. The founder does it because of her love of and obsession with celebrities.
4. The Respondent makes no money from the Domain Names.
5. The ads on the fan sites are for the purpose of offsetting maintenance and server costs.
6. The Complainant is the Respondent’s favourite female celebrity.
7. Domain Name 2 was registered by a third party on April 15, 2005. The Respondent acquired it in 2010 and started using it in connection with a fan site for the Complainant. The Complainant has only voiced it opposition to the Domain Name 2, some eight years after the Domain Name 2 was first registered. The Respondent registered Domain Name 1 for its own use in connection with a Miranda Kerr fan site. Domain Name 3 and Domain Name 4 were registered for use by the Respondent on behalf of its clients.
8. The Respondent has received overwhelming support from other celebrities for its fan sites. This includes emails of thanks, videos and content posting and tweets of the URLs of the fan sites to followers. There has only been one other complaint by a celebrity in relation of a fan site operated by the Respondent.
Identical or Confusingly Similar
9. The Respondent accepts the Complainant’s submissions in relation to this element.
Rights or Legitimate Interests
10. The Respondent however asserts that it has rights and legitimate interests in relation to the Domain Names. It relies on the following grounds: a) Failure on the part of the Complainant to bring a claim against the Domain Name 2 for eight years, the delay on which the Respondent relied on in developing the fan site to the Respondent’s detriment; b) Legitimate noncommercial fair use of the Domain Name 2 on the part of the Respondent; and c) Bona fide use of the Domain Name 2 in connection with a legitimate fan site.
11. Laches
- The Complaint should be barred on the basis of laches as the Complainant waited eight years after the Domain Name 2 was registered and four years after the Respondent acquired the Domain Name 2 and started developing the fan site before commencing proceedings.
- Other UDRP panels have recognized that similar delays are not excusable.
- The Respondent relied on the Complainant’s failure to take action against the first registrant of Domain Name 2 who operated the Website linked to it as a link farm.
- The Respondent relied invested a substantial amount of time and money developing and maintaining the Website connected to the Domain Name 2.
- If the harm caused to the MIRANDA KERR trade mark was as great as alleged than the Complainant should have acted sooner rather than co-exist with the Respondent who relied on the silence to build a fan site.
- It would be unfair to allow the Complainant to bring a claim at this late date.
12. Legitimate Noncommercial Fair use
- The Respondent’s use of the Domain Name 2 is first and foremost a noncommercial use without intent for commercial gain. UDRP panels have held that the registrant of a bona fide fan site possesses legitimate rights and interests in the domain name underlying the site.
- A degree of incidental commercial activity may be permissible in certain circumstances e.g. where such activity is of an ancillary or limited nature or bears some relationship to the site’s subject.
- The use of the Domain Name 2 was without intent for commercial gain or to misleadingly divert consumers or to tarnish the trade mark at issue. The Respondent is driven solely by the founder’s obsession with celebrities.
- The small amount of Google advertising on the Website connected to the Domain Name 2 was for the sole purpose of offsetting server and maintenance costs.
- The Respondent does not register the Domain Names for profit and does not charge clients to host fan sites. All the time and money from her own pocket is done voluntarily.
- The Website connected to the Domain Name 2 contains several disclaimers. Since the Complaint, the disclaimer on the Welcome page has been expanded.
13. Bona Fide Use in connection with a legitimate fan site
- The use by the Respondent of the Domain Name 2 as a fan site since April 2009 gives rise to presumptive rights because it was use prior to notice of a dispute.
Registered and Used in Bad Faith
14. The Respondent contends that the Complainant has failed to produce evidence to support any of the bad faith factors under paragraph 4(b) of the Policy.
15. The Respondent did not register the Domain Names to sell to the Complainant or any other party.
16. The Respondent has not engaged in a pattern of conduct to prevent trade mark owners from reflecting their trade marks in domain names. Whilst the Respondent owns a number of celebrity domain names, it has never prevented any celebrity from registering its own domain names. Not all registration of celebrity names as domain names are acts of bad faith. The Policy provides that the intention matters. Further the Domain Name 2 cannot have been very important as it took the Complainant eight years to file a complaint.
17. The Respondent did not seek to disrupt the business of a competitor since it was using the Domain Names as a fan site. The Respondent does not see the Complainant as a competitor. The registration was in good faith. The Website connected to the Domain Names does not disrupt the Complainant’s business. The Complainant uses other domain names for her business interests. The claims of disruption to the Complainant’s business ring hollow as the Complainant took no action for eight years.
18. The Respondent has not intentionally attempted to attract the Complainant’s Internet customers to its site for financial gain. Whilst there is no dispute that the Respondent hoped to attract the Complainant’s fans to the Website connected to the Domain Name 2, the Respondent’s intent was not to profit but rather to build a community for fans of the Complainant. The website looks and feels like a fan site which the Respondent has volunteered hundreds of hours of its time and attention. It is not a hastily constructed advertising page intended to generate revenue off a celebrity’s fame. The Google ads that appeared on the Website were not for profit but to defray costs of operating the Website. These ads have since been disabled. So even if the Panel finds that the site was a “for profit”’ commercial venture, it does not mean that the Complaint succeeds. The Respondent has a history of developing non-profit, noncommercial fan sites which repeat support from lots of celebrities. As such the registration and use of the Domain Names cannot be in bad faith. The silence of the Complainant for eight years does not turn the Respondent into a bad faith actor now that she has decided that the Domain Name 2 is central to her business plans.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are 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 in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
The Panel is satisfied that the Complainant has established that she has registered trade mark rights to the MIRANDA KERR trade mark in 2012. She also has unregistered or common law rights in the MIRANDA KERR name prior to 2009/2010. It should be noted that for the purposes of this element the date the Complainant acquires the trade mark rights is irrelevant as there is no specific reference in the UDRP to the date of acquisition of the trade mark rights.
Paragraph 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that:
“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 [see also paragraph 1.7 below]. 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.”
“The name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier for the business engaged in, or a religious leader), or making broad unsupported assertions regarding use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights.”
In this case, the MIRANDA KERR name is a distinct identifier of the services she provides which is that of a model. The MIRANDA KERR name is also used for commercial purposes (skin care products for example). She is booked as a model by her name, she is known by her name and she appears in print under her name. She is also paid because of her name and image. She does not fall into the category of a person with a famous name who does not actually use her name in connection with the business she is engaged in (see for e.g. Vanisha Mittal v. [email protected], WIPO Case No.D2010-0810).
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Complainant’s MIRANDA KERR trade mark is the dominant portion of the Domain Names. The addition of the words “web” and “connection” does nothing to minimise the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic top level domain suffix “.com”. The Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights.
It is well established that, as it is put in paragraph 2.1 of the WIPO Overview 2.0 that 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 does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
Paragraph 2.5 of the WIPO Overview 2.0 provides for two views in relation to the treatment of fan sites by UDRP panels. The first view is that the registrant of an active and noncommercial fan site may have rights and legitimate interests in the domain name that includes the complainant's trademark. The site should be actually in use, clearly distinctive from any official site, and noncommercial in nature. UDRP Panels have found that a claimed fan site which includes pay-per-click links or automated advertising would not normally be regarded as a legitimate noncommercial site. However, some panels have recognized that a degree of incidental commercial activity may be permissible in certain circumstances (e.g., where such activity is of an ancillary or limited nature or bears some relationship to the site's subject).
The second view is that 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, or seeks to derive commercial advantage from its registration and use. Also, where the domain name is identical to the trademark, UDRP panels have noted that such respondent action prevents the trade mark holder from exercising its rights to the trade mark and managing its presence on the Internet.
The Complainant has made the requisite prima facie case. The burden of coming forward with evidence of rights or a legitimate interest thus shifts to the Respondent.
The Respondent’s first submission is that the Complaint should fail under this element on the basis of the defence of laches. The Respondent contends that the failure on the part of the Complainant to bring a claim against the Domain Name 2 for eight years after it was registered caused it detriment as it relied on such delay in developing it as a fan site.
In line with the view expressed in paragraph 4.6 of the WIPO Overview 2.0, the Panel takes the view that the doctrine or defense of laches should not generally apply in UDRP cases and although it accepts that it is possible this defence may be applicable in limited circumstances. The defence of acquiescence and laches is difficult to establish. Mere failure to sue without some positive act of encouragement, is not in generally enough to give a defence. (Habib Bank Ltd v Habib Bank AG Zurich [1982] RPC 1). The Respondent submits that many celebrities support its fan sites and send emails, videos and content to these sites. This is not the case with the Complainant. There is no evidence that the Complainant encouraged or allowed the Respondent to assume to its detriment.
In any event for this Panel, the relevant date for consideration is not the date of first registration of the Domain Name 2 but the date of acquisition of the Domain Name 2 by the Respondent which it states in its Response is 2010. Generally, a transfer of ownership of a domain name constitutes a new registration, and UDRP panels typically look only at the claimed rights and interests of the current registrant in determining whether that registrant has rights or legitimate interests. The defence of laches does not apply in this case.
In the Response, the Respondent appears only to refer to the Domain Name 2 (or at least mainly) in its arguments. This may be a typographical error on its part. The Panel will assume that the submissions in relation to laches applies to the Domain Name 2 but the submissions in relation to legitimate noncommercial fair use and bona fide use in connection with a legitimate fan site relates to the Domain Names.
The Panel after considering all the arguments made and evidence submitted on both sides in relation to whether the fan sites connected to the Domain Names operate in a manner which establishes rights or legitimate interests in the Domain Names finds that the Respondent has failed to do so under paragraph 4(c)(i) of the Policy.
Prior to the filing of the Complaint, the Websites were generating revenue from pay-per-click and banner advertising. The links on the Websites do not appear connected to the Respondent and therefore cannot be considered as incidental commercial activity linked to the subject. The Complainant has never authorized, licensed of endorsed the use by the Respondent of the MIRANDA KERR trade mark. The Respondent’s activities in connection with the Websites prior to the filing of the Complaint did not amount to making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the MIRANDA KERR trade mark. Further, in view of the Respondent’s failure to prove that the Websites are legitimate fan sites, the Panel rejects the Respondent’s submissions that it has been making a bona fide use of the Domain Names in connection with legitimate fan sites.
For reasons given there, the Panel finds that the Respondent has failed to establish that it has rights or legitimate interests in the Domain Names.
To succeed under the Policy, a complainant must show that the domain names have been both registered and used in bad faith. It is a double requirement.
The Respondent has not only admitted that it was aware of the Complainant’s MIRANDA KERR trade mark, the Complainant was the Respondent’s founder’s favourite female celebrity. The intention, it would appear, was to attract Internet users to the Websites which were not noncommercial sites. This it did so by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Websites. The fact that the Domain Names incorporate the Complainant’s well-known trade mark in its entirety is in the Panel’s view evidence that the registration of the Domain Names were in bad faith.
The Panel also concludes that the actual use of the Domain Names was in bad faith.
The Respondent’s model of operating the Fan Fusion Website and registering multiple celebrity personal names as domain names amounts to a pattern of conduct of preventing a trade mark holder from reflecting the mark in a corresponding domain name as many of these personal names are trade marks as well. There is no requirement that the other trade mark owners have to be shown to have complained or filed UDRP proceedings (Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty,WIPO Case No. D2009-0798).
The use of the Complainant’s trade mark either as or as the dominant part of the Domain Names is intended to capture Internet traffic from Internet users who are looking for information, photographs and film clips about the Complainant as well as about the Complainant’s products. The Domain Names and the content of the Websites are calculated to confuse Internet users that the Respondent is an authorised franchisee, licensee or somehow connected with the Complainant when this is not the case. This shows a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s Websites and the products sold on them were authorised or endorsed by the Complainant.
The above is clearly bad faith under paragraphs 4(b)(ii) and (iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Names are in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <kerr-miranda.com>, <mirandakerr.com>, <mirandakerrconnection.com> and <mirandakerrweb.com>, be transferred to the Complainant.
Karen Fong
Presiding Panelist
Richard W. Page
Panelist
G. Gervaise Davis III
Panelist
Date: May 28, 2013
Stay updated! Get new cases and decisions by daily email.
