WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Emile Levisetti v. Tian Yi Tong Investment, Ltd.
Case No. D2015-0123
1. The Parties
The Complainant is Emile Levisetti of Los Angeles, California, United States of America, represented by The Law Offices of Melissa K. Dagodag, United States of America.
The Respondent is Tian Yi Tong Investment, Ltd. of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <emilelevisetti.com> is registered with GoDaddy.com, LLC. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2015. On January 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 27, 2015, 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. On February 3, 2015, the Complainant filed an amended Complaint.
The Center verified that the amended 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 February 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2015.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on March 9, 2015. 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 factual background is taken from the information provided by the Complainant.
Emile Levisetti is the real name of an American television and film director, producer, writer and actor. He has been engaged in entertainment since 1987. The Complainant does not have a registered trademark over his name but relies on common law rights.
The Respondent has not directly provided any information about itself or its business. It appears to be a registrant of domain names on a large scale, including some domain names that embody the names of entertainers.
The Respondent is the registrant of the disputed domain name, which appears from the WhoIs record to have been created on August 12, 2008 and remains currently registered.
5. Parties’ Contentions
A. Complainant
The Complainant contends that he has rights in his personal name EMILE LEVISETTI as a common law trademark. He asserts that he has been well-known for 20 years and his work under his name as a television and film director, producer, writer and actor has been featured in numerous television programs and motion pictures. He has consistently used his name in his professional and commercial business. It is submitted that, in the context, his name constitutes a common law trademark, in part because it has been used in respect of his supply of goods or services.
In support of his assertion that his name is a distinctive identifier of his services, the Complainant tenders in evidence a list of examples:
A Google search for “Emile Levisetti” showing that all first page results returned refer to the Complainant or his professional works;
An Internet Movie Database (IMDB) listing showing extensive creative credits attributed to the Complainant;
Sample named photographs used by the Complainant for the solicitation of work as an actor;
Trade guild membership cards and documentation (Producers Guild of America, Directors Guild of America, Screen Actors Guild - American Federation of Television and Radio Artists) in the Complainant’s name;
Media coverage and industry credit for the Complainant’s role in the film “Bix”, which was screened at the Cannes Film Festival;
Examples of the Complainant’s works for sale through well-known online retailers;
Sample on-air screen credits for the Complainant in television shows;
Sample screens from the Complainant’s current promotional business site.
The Complainant contends that the disputed domain name <emilelevisetti.com> is effectively identical to his name. Furthermore, the Respondent by holding the disputed domain name has been passing itself off as the Complainant.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been licensed or authorised by the Complainant to use the name “Emile Levisetti” and there is no reason to believe the Respondent has acquired any such rights independently. The Respondent is not commonly known by the disputed domain name. No significant use is being made of the website to which it resolves, which is a holding page.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. There has been no significant content on the website to which the disputed domain name resolves except for a “coming soon” notice.
The Complainant says that the Respondent is the registrant of some 4,000 domain names without apparent legitimate commercial purpose. The Complainant says that following a previous case under the Policy in which the same Respondent was found to have registered 28 domain names containing the names of actors, the Complainant has identified another 7 such registrations by the Respondent, namely <willrothhaar.com>, <ezraswerdlow.com>, <fredstoller.com>, <owenburke.com>, <edbye.com>, <ashleysherman.com>, and <robertopurvis.com>. It is submitted that the Respondent is engaged in the registration of domain names in order to prevent the owners of the relevant trademarks from reflecting them in corresponding domain names.
The Complainant states that he has not received any reply to multiple communications sent since 2012 to the Respondent’s contact details of record.
The Complainant has cited references to previous decisions under the Policy that he considers may support his position.
The Complainant requests that the disputed domain name be transferred to himself.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Panel notes that the appointed courier service was unable to deliver the Complaint and associated documents to the Respondent owing to the physical address of record being deficient. There was no reply to emails sent by the Center to the email addresses of record provided by the Respondent.
Paragraph 1 of the Rules defines a respondent as “the holder of a domain-name registration against which a complaint is initiated”. The Panel is satisfied that the Center, by addressing the Complaint and the notice of commencement of this proceeding in accordance with the registrant contact details provided, has fulfilled its obligations to attempt to contact the Respondent in the manner prescribed by paragraphs 2 and 4 of the Rules.
A. Identical or Confusingly Similar
The Complainant is required to prove that he has rights in a trademark or service mark. He concedes that he holds no registered trademark and relies on his common law rights.
The Complainant has produced documentary evidence, collected over a period of at least 20 years, of his name having been famous and a distinctive identifier of services and goods of unquestionably a commercial nature, as summarised in section 5. A above. These have included services and goods sold as a television and film director, producer, writer and actor. For the purposes of the Policy, in this case, the Panel finds the Complainant’s name to be a valuable asset that has achieved the status of a distinctive common law trademark.
The disputed domain name is <emilelevisetti.com>. Disregarding the generic Top-Level Domain (gTLD) designation “.com”, as is conventional, it would not be possible to create a domain name more confusingly similar to the Complainant’s trademark EMILE LEVISETTI than <emilelevisetti.com>, which is effectively identical. The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted prima facie that the Respondent has not been authorised in any way to use the Complainant’s trademark.
The Respondent has the opportunity to establish in the terms of paragraph 4(c) of the Policy, or otherwise, that it has rights or legitimate interests in a disputed domain name, by demonstrating:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent has not made any showing under paragraph 4(c) of the Policy or replied at all. The Respondent does not claim to have made any use of the disputed domain name for a bona fide offering of goods or services or for any noncommercial or fair purpose, and does not claim to be known as Emile Levisetti. The Panel finds for the Complainant in terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.
The disputed domain name has been registered for more than 6 years without, apparently, any significant use as a website beyond a holding page and no evidence of use for an active email address. The Respondent has provided no explanation and the manner in which the disputed domain name may infringe the Policy must be deduced from the available evidence.
Paragraph 4(b)(ii) of the Policy is pertinent. The Complainant, having rights for the purposes of the Policy in the common law trademark EMILE LEVISETTI, may wish to register the domain name <emilelevisetti.com> in order to reflect his trademark. His right to do so is on a first-come basis and is subject to there having been no prior legitimate registration of the same domain name (for instance by a person genuinely of the same name). The Complainant’s research has found evidence of 7 other recognised actors whose names have been registered as domain names without explanation by the Respondent, which presumably has not acted at the behest of people commonly known by the corresponding names or trademarks, constituting evidence of an apparent pattern of such activity. The Panel further notes Charles Esten v. Tian Yi Tong Investment, Ltd.,WIPO Case No. D2014-1443. On the balance of probabilities, the most overt consequence of the Respondent’s registration of the disputed domain name is found to be to block the Complainant from registering the disputed domain name, as part of a pattern of such conduct, which leads the Panel to a finding of registration in bad faith under paragraph 4(b)(ii) of the Policy.
The criteria in paragraph 4(b) of the Policy are evidence of the “registration and use” of a domain name in bad faith. Nevertheless, having regard to all the surrounding circumstances and on the balance of probabilities, the Panel also finds the disputed domain name to have been used in bad faith insofar as it embodies a well-known trademark and has been kept without plausible explanation or reasonable prospect of legitimate use by the Respondent (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The registration of at least 8 actors’ names as domain names in this way (and reputedly another 28 by the same Respondent: Charles Esten v. Tian Yi Tong Investment, Ltd.,supra), begs the question of the Respondent’s ultimate purpose in doing so. It is implausible that the Respondent intended to block the Complainant’s registration of the disputed domain name without further purpose. In January 2012 the Complainant made an offer through the GoDaddy Domain Buy Service with a view to possibly buying the disputed domain name from the Respondent. The fact that the Respondent never replied cannot be taken as an indication that the disputed domain name was not intended for eventual sale. On the contrary, having regard to all the circumstances and the Respondent’s evident corporate experience in the handling of domain names, of which it as some 4,000 according to the Complainant’s research, the Respondent might have anticipated some escalation of the purchase offer whilst trying to avoid overtly offering the disputed domain name for sale within the meaning of paragraph 4(b)(i) of the Policy. It is not necessary, however, to make a definitive finding under paragraph 4(b)(i) of the Policy since registration and use in bad faith has been found under paragraph 4(b)(ii) of the Policy.
7. Decision
For 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 <emilelevisetti.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Sole Panelist
Date: March 16, 2015
