Ms. Esther Heesch v. esther heesch
Claim Number: FA1306001505507
Complainant is Ms. Esther Heesch (“Complainant”), represented by Paul Anderson of Ritholz Levy Sanders Chidekel & Fields LLP, New York, USA. Respondent is esther heesch (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <estherheesch.com>, registered with eNom, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2013; the National Arbitration Forum received payment on June 18, 2013.
On June 21, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <estherheesch.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 July 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 2013 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@estherheesch.com. Also on July 1, 2013, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
i. Complainant is unaware of any information or evidence that “esther heesch” is the actual name of Respondent or anyone associated with Respondent, or that Respondent is commonly known by such name.
ii. The site contained adult-oriented material and links to additional sites which contained the same material, including without limitation the following websites: <haarfetisch.com> and <naked-in-the-snow.com>.
iii. The domain name now resolves to a generic website landing page.
i. Complainant believes that Respondent is squatting on the disputed domain name primarily for the purpose of selling the domain name to Complainant for valuable consideration in excess its actual costs.
ii. Complainant plans intentionally to attract users to its website by creating a likelihood of confusion regarding Complainant’s sponsorship, affiliation, or endorsement of Respondent’s website.
iii. Respondent’s use of Complainant’s own name and mark to profit from the goodwill associated therewith and direct Internet users to adult-oriented websites is further evidence of Respondent’s registration and use of the disputed domain name in bad faith.
iv. Even if the domain name is not actively used, bad faith can be inferred from non-use.
v. It is clear that Respondent deliberately registered <estherheesch.com> because it is the name of a person who is well known to the public.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant, Ms. Esther Heesch, is a super model who is a rising star in the fashion and modeling agencies.
2. Complainant has established common law trademark rights to ESTHER HEESCH.
3. Respondent registered the <estherheesch.com> domain name on December 31, 2012.The site used to contain adult-oriented material and links to additional sites which contained the same material but. the domain name now resolves to a generic website landing page.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant submits that she is a rising star in the fashion and modeling agencies. Complainant argues that she is an international supermodel represented by the prestigious agency, Next Model Management. The Panel notes that although Complainant has not registered the ESTHER HEESCH mark with a trademark agency, Policy ¶ 4(a) (i) does not require a valid trademark registration if Complainant can establish common law rights in the mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant contends that through years of continuous use in commerce in the United States and abroad, the name “Esther Heesch” has acquired the sufficient secondary meaning under applicable intellectual property law so that common law trademark rights exists in the name even without a federal or state trademark registration. Complainant asserts that in the second half of 2012, she walked and modeled in runway shows for Prada, Salavatore Ferragamo, Chanel, and other international brands. Complainant also states that she has also appeared in major ad campaigns for See by Chloe, Valentine, and Benetton, and was recently profiled by the New York Times Style Magazine and WhiteLies Magazine. Additionally, Complainant maintains a popular, frequently-visited Facebook “Fan Page” which receives daily posts and other feedback from fans in the United States and throughout the world. Complainant has stated that ESTHER HEESCH has been used continuously for years in commerce throughout the United States and around the world. Complainant concludes that such a use of the ESTHER HEESCH mark by Complainant evidences a common law trademark as the Complainant’s name has achieved commercial finality and diffusion. The Panel notes that Complainant’s own evidence illustrates that Complainant is a “16-year old German model.” The Panel further note that based upon the limited information in Complainant’s record—namely the dates provided in a Google web search—it would seem that the domain name was registered (December 31, 2012) at a relatively early point in Complainant’s new and up-and-coming career as a professional model. In Devin Harris v. Andrey Serkov / Domain Names Sale Lease Individual, FA 1342145 (Nat. Arb. Forum Oct. 12, 2010), the Panel concluded that Complainant proved that the DEVIN HARRIS mark had become sufficiently connected to Complainant’s career as a professional basketball player through his strong showings in high school, college, and eventually professional basketball games. As the Panel accepts that the evidence and submissions on behalf of Complainant show that she has established common law rights in the ESTHER HEESCH mark , the Panel finds that Complainant has met her burden under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ESTHER HEESCH mark Complainant claims that as the domain name at issue, <estherheesch.com>, is also Complainant’s own name, it is evident that this domain name is identical to Complainant’s name and trademark. The Panel notes that Respondent removes the space in the ESTHER HEESCH mark and adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name. The Panel determines that Respondent’s elimination of spaces and addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) determination. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Thus, the Panel holds that Respondent’s <estherheesch.com> domain name is identical to Complainant’s ESTHER HEESCH mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that she must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s name and common lw trademark ESTHER HEESCH trademark and to use the identical name in its domain name;
(b) Respondent then used the disputed domain name to resolve to a website which displayed pornography and which is now linked to a generic website landing page;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant contends that it is unaware of any information or evidence that “esther heesch” is the actual name of Respondent or anyone associated with Respondent, or that Respondent is commonly known by such name. Complainant argues that when she first learned of the site operated under the disputed domain name, the named registrant was “Detlev Mrugala,” with a purported address in Germany. Complainant asserts that her attorneys then contacted “Detlev Mrugala” via email and received no response. Complainant contends that within one week after that email, the disputed domain name was transferred to an “Egbert Mugala,” at the same purported address in Germany and sharing the same IP address and phone number as “Detlev Mrugala.” Complainant asserts that her attorneys then filed the original Complaint against “Egbert Mugala” and circulated copies of the same to “Egbert” via email and physical mail in accordance with the UDRP rules. Complainant alleges that within a matter of days, the <estherheesch.com> domain name was transferred yet again, from “Egbert Mugala” to “esther heesch.” In Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003), the panel found that respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name.” As the Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name, the Panel holds that Respondent is not commonly known by the <estherheesch.com> domain name under Policy ¶ 4(c)(ii);
(e) Complainant asserts that the site located at the <estherheesch.com> domain name contained pornographic material and links to additional sites which contained the same material, including without limitation the following websites: <haarfetisch.com> and <naked-in-the-snow.com>. The Panel observes that Respondent’s <estherheesch.com> domain name resolves to a webpage containing adult-oriented material along with the banner “Cam to Cam Free Login Chat & Live Sex.” See Exhibit B. The Panel notes that Complainant alleges that Respondent is the same person/entity as “Detlev Mrugala” and “Egbert Mugla,” and thus Complainant believes the adult-oriented content that appeared on the domain name before the current registrant was listed in the WHOIS can fairly be traced to Respondent. As the Panel agrees that Respondent controlled this domain name during this time period, the Panel finds that Respondent’s use of the <estherheesch.com> domain name to provide adult-oriented material is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii));
(f) Complainant claims that the domain name is currently used to host an “under construction” message, although Complainant does not provide any evidence to this effect. The Panel finds that while an inactive website may be less susceptible to transfer than a domain name littered with adult-oriented material, the Policy does not consider an inactive use as being a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that she must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent is squatting on the disputed domain name primarily for the purpose of selling the domain name for valuable consideration in excess its actual costs. The Panel notes that there is no evidence of any offer to make a sale of this domain name. As the Panel draws the inference from all the evidence that Respondent registered the <estherheesch.com> domain name for the purpose of selling it to Complainant for excess its out-of-pocket costs, the Panel holds that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
Secondly, Complainant contends that Respondent is using the disputed domain name for the purpose of intentionally attracting users to its website by creating a likelihood of confusion regarding Complainant’s sponsorship, affiliation, or endorsement of Respondent’s website. Complainant alleges that Respondent’s use of Complainant’s own name and mark to profit from the goodwill associated therewith and direct Internet users to adult-oriented websites is further evidence of Respondent’s registration and use of the disputed domain name in bad faith. The Panel notes that Respondent’s <estherheesch.com> domain name was linked to a website containing adult-oriented material. See Exhibit B. Complainant claims that this could result in attracting Internet users to Respondent’s website for commercial gain. Prior panels have found that a respondent’s use of a disputed domain name to provide adult-oriented material constitutes bad faith use and registration of the domain name as it tarnishes a Complainant’s mark and image for no purpose other than to drum up revenue for Respondent. See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)). Accordingly, the Panel determines that Respondent has registered and is using its <estherheesch.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Thirdly, the Panel notes that although the domain name is now used to host an “under construction” page, the domain name had been registered in December 31, 2012. While Complainant alleges that it has been known by the mark in trade for many years, the Panel agrees that Respondent’s bad faith under Policy ¶ 4(a)(iii) may be predicated upon Respondent’s opportunistic bad faith in registering a domain name that is identical to the mark for Respondent’s own benefit. See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Fourthly, Complainant claims that it is clear that Respondent deliberately registered <estherheesch.com> because it is the name of a person who is well known to the public. Complainant further contends that the uncommon and unique nature of Complainant’s name evidences Respondent’s deliberate registration of a domain name containing Complainant’s mark. The Panel notes that Respondent appears to have registered the domain name in December 2012, at a time when Complainant was starting to become a known figure in the world of professional modeling. Therefore, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ESTHER HEERSCH mark and in view of the conduct that Respondent has engaged in since then Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <estherheesch.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 26, 2013
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