The Elizabeth Taylor Trust, Interplanet Productions Limited and The Elizabeth Taylor Cosmetics Company v. Brian Hope
Claim Number: FA1205001445233
Complainant is The Elizabeth Taylor Trust, Interplanet Productions Limited and The Elizabeth Taylor Cosmetics Company (“Complainant”), represented by Stephen J. Strauss of Fulwider Patton LLP, California, USA. Respondent is Brian Hope (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <liztaylor.com>, <liztaylor.net>, and <liztaylor.org>, registered with GoDaddy Software, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 22, 2012; the National Arbitration Forum received payment on May 22, 2012.
On May 23, 2012, GoDaddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <liztaylor.com>, <liztaylor.net>, and <liztaylor.org> domain names are registered with GoDaddy Software, Inc. and that Respondent is the current registrant of the names. GoDaddy Software, Inc. has verified that Respondent is bound by the GoDaddy Software, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@liztaylor.com, postmaster@liztaylor.net, postmaster@liztaylor.org. Also on May 24, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 5, 2012.
A timely Additional Submission was received from Complainant on June 11, 2012. In response thereto, a timely Additional Submission was received from Respondent on June 18, 2012.
On June 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is comprised of three entities related to the well-known late actress Elizabeth Taylor, who was commonly referred to by others as “Liz Taylor.” Taylor assigned rights in her name, likeness, and appearance to Interplanet Productions Limited (“Interplanet”) in 1978. In the 1980s Taylor and Interplanet licensed the ELIZABETH TAYLOR name and mark to The Elizabeth Taylor Cosmetics Company (“Cosmetics Company”). The Elizabeth Taylor Trust is the successor in interest to Taylor’s persona and publicity rights not previously assigned to Interplanet. Both Interplanet and Cosmetics Company hold various trademark registrations for the ELIZABETH TAYLOR mark.
In January 2012 Interplanet filed three U.S. trademark applications covering the mark LIZ TAYLOR for cosmetics and fragrances, jewelry and watches, and clothing and footwear. These applications were filed under section 1(b) of the Lanham Act, based upon an intent to use the mark in commerce.
Respondent registered the disputed domain name <liztaylor.com> on July 16, 1997, and the other two disputed domain names, <liztaylor.net> and <liztaylor.org>, on July 29, 2003. Complainant alleges that Respondent has never used or developed these domain names in connection with a bona fide offering of goods or services. The <liztaylor.com> domain name links to a page that advertises the three disputed domain names for sale, while the other two domain names resolve to pages that include links to third-party websites selling cosmetics in competition with Cosmetics Company.
Complainant states that its representatives contacted Respondent in January 2012 regarding the acquisition of the disputed domain names; in reply thereto, Respondent offered to sell the domain names for $2 million.
Complainant contends that the disputed domain names are identical or confusingly similar to the marks ELIZABETH TAYLOR and LIZ TAYLOR, in which Complainant claims rights. Complainant further contends that Respondent has no rights or legitimate interests in respect of the disputed domain names. In support thereof, Complainant states that it has no relationship with Respondent; that it has not granted Respondent permission nor authorized Respondent to use the disputed domain names; and Respondent has not been commonly known by the domain names. Complainant asserts that Respondent has not used the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use, nor made demonstrable preparations for such use.
Finally, Complainant alleges that the disputed domain names were registered and are being used in bad faith. In support thereof, Complainant contends that the disputed domain names were registered in an attempt to purposely attract Internet users seeking Complainant’s products to Respondent’s websites for commercial gain, and in the alternative, Respondent’s passive holding of the domain names constitutes evidence of bad faith. Complainant accuses Respondent of a pattern of bad faith conduct by registering multiple domain names incorporating the LIZ TAYLOR mark. Complainant asserts that Respondent’s general offer to sell the disputed domain names on the <liztaylor.com> website and his offer to sell them to Complainant for $2 million demonstrate both bad faith and a lack of rights or legitimate interests.
B. Respondent
Respondent asserts that he has common-law rights in LIZ TAYLOR as an assumed name, as he has used that name for most of his life for his transgendered alter ego. He states that he adopted the name because he was once very close to a person named Liz Taylor. He acknowledges that he had heard of the actress Elizabeth Taylor when he registered the disputed domain names, and he knew that she was an actress, but was not familiar with her movies and did not know that her name had been used in connection with the sale of products. He states that he is planning to undergo sexual reassignment surgery in the future, after which time he will be able to “fully utilize” the domain names, although he also states that he may sell the domain names in order to pay for the surgery. In support of these statements, Respondent submitted a copy of web page of the surgeon that he intends to consult for the surgery.
Respondent contends that the disputed domain names and LIZ TAYLOR are not identical to nor covered by Complainant’s ELIZABETH TAYLOR mark. He also states that Taylor hated being called “Liz.” He denies knowledge of the contents of the pages to which <liztaylor.net> and <liztaylor.org> redirect, and states that he has not profited in any manner from these pages.
Respondent alleges that Complainant was aware of Respondent’s rights in the mark when it sought to acquire the disputed domain names from him and when Interplanet applied to register LIZ TAYLOR as a trademark. Respondent states that he is considering filing a lawsuit alleging trademark infringement and other claims against Complainant on this basis. He accuses Complainant of having acted in bad faith, and asks the Panel to find that Complanant has engaged in attempted reverse domain name hijacking.
C. Additional Submissions
Aside from pointing out various procedural irregularities in the Response (which the Panel deems inconsequential under the circumstances presented here), Complainant’s Additional Submission merely reiterates arguments made in its initial submission, and Respondent’s Additional Submission merely responds thereto. Neither party has identified any exceptional circumstances that would warrant consideration of additional material, and no such circumstances are apparent to the Panel. The Panel therefore declines to consider the substance of the Additional Submissions.
The Panel finds that the disputed domain names are confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and have been used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Preliminary Issue: Multiple Complainants
In the instant proceedings, the Complaint has been brought jointly by three entities. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” The latter requirement appears to have been met here, and the Panel considers it appropriate to treat the three entities as the Complainant for purposes of these proceedings.
Complainant has longstanding rights in the registered trademark ELIZABETH TAYLOR, a mark closely associated with the late actress of the same name, who was often referred to by others as “Liz Taylor.” Although Complainant does not appear to have any trademark rights in LIZ TAYLOR, the Panel is of the view that the disputed domain names are confusingly similar to Complainant’s ELIZABETH TAYLOR mark, satisfying paragraph 4(a)(i) of the Policy.
Complainant’s allegations and the evidence submitted in support thereof suffice to state a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain names. The burden of production thus shifts to Respondent, to come forward with concrete evidence of his rights or legitimate interests, since such information tends to lie particularly within a Respondent’s knowledge. See, e.g., Teledrift Co. v. Perkins, FA 1423203 (Nat. Arb. Forum Feb. 23, 2012).
Respondent asserts that he has for some time used “Liz Taylor” as the name of his alter ego, and that he registered the disputed domain names because they reflect that name. However, Respondent has failed to offer any evidence that he is known by that name (despite having submitted 11 annexes to his Response, comprising nearly 100 pages), and acknowledges that he has not begun to “fully utilize” the domain names. Nor has he offered any evidence to support his claimed reason for adopting the name. Cf. Mattel, Inc. v. Mattel, FA 372847 (Nat. Arb. Forum Feb. 15, 2005) (finding in favor of domain name registrant who apparently had adopted the surname “Mattel” for reasons unrelated to complainant’s mark, and who presented evidence including certificate of naturalization, driver’s license, and other supporting documents).
Based upon the evidence presented, the Panel concludes that Complainant has met its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
It is unclear to the Panel why Respondent registered the disputed domain names and has continued to maintain those registrations. While Respondent claims that he registered them to reflect the assumed name of his alter ego, he has presented no evidence to support this claim, and the claim is belied by the evidence that is before the Panel, including Respondent’s website advertising the domain names for sale. Based upon the available evidence, it appears more likely that Respondent registered the disputed domain names intending to profit from their similarity to Complainant’s mark.
Under paragraph 4(b)(i) of the Policy, bad faith registration and use is evidenced by circumstances indicating that a domain name was registered primarily for the purpose of selling the registration at a profit to the owner of a corresponding trademark or competitor thereof. The Panel finds this provision applicable here, and accordingly finds that the disputed domain names were registered and are being used in bad faith.
Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <liztaylor.com>, <liztaylor.net>, and <liztaylor.org> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 22, 2012
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