The Elizabeth Taylor Trust, Interplanet Productions Limited and The Elizabeth Taylor Cosmetics Company v. Corinne Bali
Claim Number: FA1411001590913
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 Corinne Bali (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <liztaylor.photography> ('the Domain Name'), registered with Enom.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 19, 2014; the National Arbitration Forum received payment on November 19, 2014.
On November 20, 2014, Enom confirmed by e-mail to the National Arbitration Forum that the <liztaylor.photography> domain name is registered with Enom and that Respondent is the current registrant of the name. Enom has verified that Respondent is bound by the Enom registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANNs Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 15, 2014 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.photography. Also on November 24, 2014, 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 November 24, 2014.
A timely Additional Submission was received from Complainant on November 24, 2014.
A timely Additional Submission was received from Respondent on November 25, 2014.
On December 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne 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 name be transferred from Respondent to Complainant.
A. Complainant
<<The Submissions of the Complainant in the Complaint can be summarised as follows
Elizabeth Taylor was one of the most recognised and famous personalities in the world. She was an award winning actress, a respected producer, author, humanitarian and business entrepreneur. The international press and media frequently referred to Ms. Taylor as 'Liz Taylor.'
In 1978 Ms. Taylor assigned rights in her name, likeness and appearance to one of the Complainants: Interplanet Productions Limited ('Interplanet'). In the 1980s Ms Taylor and Interplanet licensed the ELIZABETH TAYLOR name and mark to the Elizabeth Taylor Cosmetics company ('ETC'), another Complainant in connection with cosmetics, perfumes and skin care products. ETC then launched a successful line of perfumes and colognes under the ELIZABETH TAYLOR mark and has obtained US and non US trade mark registrations for that mark for those goods. In 2005, Ms. Taylor and Interplanet launched a line of jewellery under the ELIZABETH TAYLOR mark. Interplanet has obtained US trade mark registrations for the ELIZABETH TAYLOR mark for jewellery, headwear, pre-recorded DVDs, downloadable video recordings and entertainment services. Upon her death on March 23, 2011, The Elizabeth Taylor Trust ('the Trust'), also a Complainant, succeeded to all of Ms Taylor's post mortem publicity rights not previously assigned to Interplanet, including but not limited to her name, voice and likeness. Interplanet has filed three US trade mark applications for Liz Taylor for cosmetics and fragrances, jewellery and watches and clothing and footwear.
Long after Ms Taylor reached celebrity status the Respondent registered the Domain Name on February 14, 2014. The Domain Name incorporates the TAYLOR part of the ELIZABETH TAYLOR and adds LIZ, the short form of Elizabeth, and nickname most associated with Ms Taylor. The Respondent has never used the Domain Name in relation to bona fide services. Complainants’ have no relationship with the Respondent and have not given permission or authorised the Respondent to register and use the Domain Name. Respondent has not been commonly known by the Domain Name.
Respondent had actual knowledge of the Complainant's rights in the ELIZABETH TAYLOR mark and that the LIZ TAYLOR nickname is associated with Ms Taylor when she registered the Domain Name.
The name links to a Pay Per click landing site including links to other third party web sites selling various goods and services that are unrelated to any goods and services offered or sold by Complainants. No demonstrable preparations have been made to use the Domain Name. This is not a legitimate non-commercial or fair use or a bona fide offering of goods and services.
The Respondent's registration and use of the Domain Name creates a likelihood of confusion with Complainant's ELIZABETH TAYLOR mark. The addition of the gTLD .photography does not negate the confusingly similar aspects of the Domain Name. Domain Name has been registered in bad faith to attract Internet users seeking ELIZABETH TAYLOR products online to the Respondent's web site. Respondent derives commercial benefit from the site through click through fees. Alternative the passive holding of the name constitutes bad faith. >>
B. Respondent
The Respondent filed only a very short informal response the contentions in which can be summarised as follows:
The assertions are without merit regarding the Respondent's intentions to fool potential buyers from the Trusts’ business. The Domain Name is intended to be a fan page. I purchased the name from a reputable registrar that runs a trade mark check before granting ownership. If there is any wrongdoing you should contact the Registrar.
The accusation of being in bad faith is frivolous since there is no website yet associated with this name. There are obviously no commercial benefits, click through fees, redirection to commercial web sites etc.
C. Additional Submissions
Complainant’s Additional Submissions can be summarised as follows:
The response submitted by the Respondent fails to conform with the basic standards required by the ICANN rules. As such the Response must be given little weight.
Respondent's informal response fails to controvert the critical issues of the Complainant's rights, confusing similarity of the ELIZABETH TAYLOR mark and the Domain Name, actual knowledge by the Respondent of the ELIZABETH TAYLOR mark, the Respondent's lack of legitimate interests, no relationship with or permission from the Complainants and no evidence that Respondent commonly known by the Domain Name. and no use or development of the Domain Name for bona fide offering of goods and services.
By admitting the Domain Name is to be used as a fan page the Respondent admits she had actual knowledge of the fame of the ELIZABETH TAYLOR mark and the LIZ TAYLOR nickname and that this fame was her primary motivating factor in registering the Domain Name based on the goodwill associated with the Complainant's mark.
Use of a domain name identical or confusingly similar to a famous celebrity's mark is not a bona fide use within the meaning of the Policy, even if used in connection with a proposed fan site. In any event the Respondent offers no evidence to establish any current activities to launch such a site.
In response to the Complainant's Additional Submission the Respondent replied informally with the e mail:
'Please stop harassing me I already answered you. I bought this domain name to a serious web site so if they were not honest you should go to them now. They will reimburse me and you will be able to have this domain name. Thank you'
There was an additional informal response attached to the e mail which can be summarised as follows:
Since there is no harm to the Trust I feel my freedom of expression is violated by the Complainant's attempt to shut down my project to create a website, a shrine dedicated to a legendary actress.
There is no loss to the Trust and the Complaint is an intimidation attempt. Many Liz Taylor domains can be purchased from any US Registrar. Unless the Complainant can prove by showing a dollar amount that I intended to fool the Trust's clients to enrich myself it has no case. The Domain Name website is not even online.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are three Complainants. 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 Panel finds that each Complainant has either shown it has registered or unregistered rights in the mark ELIZABETH TAYLOR and/or LIZ TAYLOR and, as such, sufficient nexus has been shown. The Panel notes Tasty Baking Co. & Tastykake Invs v Quality Hosting, FA 208854 (Nat. Arb. Forum December 28, 2003) where the panel treated the two complainants as a single entity where both parties held rights in trade marks contained within the disputed domain names.
Elizabeth Taylor, now deceased, was a famous actress frequently referred to by the media as 'Liz Taylor'.
The panel finds from the evidence that ETC is the owner of inter alia US registrations for ELIZABETH TAYLOR for perfumes and launched a successful line of perfumes under the ELIZABETH TAYLOR mark in 1991. Interplanet has obtained US trade mark registrations for the ELIZABETH TAYLOR mark for films (1942), jewellery (2010), gaming devices (2005) and entertainment services (2013), first use in commerce recorded in brackets. Upon her death on March 23, 2011, The Trust, also succeeded to all of Ms Taylor's post mortem publicity rights not previously assigned including but not limited to her name, voice and likeness.
The name links to a Pay Per click landing site including links to other third party web sites selling various goods and services that are unrelated to any goods and services offered or sold by Complainants.
The Respondent states that the Domain Name is to be used in relation to a fan site, but despite being afforded the opportunity in a Response and an additional submission to prove this the Respondent has not provided any evidence at all of demonstrable preparations towards this purpose.
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.
The panel finds that ETC is the owner of inter alia US registrations for ELIZABETH TAYLOR for perfumes and launched a successful line of perfumes under the ELIZABETH TAYLOR mark in 1991. Interplanet has obtained US trade mark registrations for the ELIZABETH TAYLOR mark for films (1942), jewellery (2010), gaming devices (2005) and entertainment services (2013), first use in commerce recorded in brackets. Upon her death on March 23, 2011, The Trust, also succeeded to all of Ms Taylor's post mortem publicity rights not previously assigned including, but not limited to her name, voice and likeness.
Complainants have demonstrated longstanding rights in the registered trade mark ELIZABETH TAYLOR, in particular for perfume and jewellery. The Complainants point out that apart from the gTLD “.photography” the Domain Name consists of the TAYLOR part of the ELIZABETH TAYLOR mark prefixed with LIZ which is a commonly used abbreviation for ELIZABETH. In a previous decision The Elizabeth Taylor Trust, Interplanet Productions Limited and The Elizabeth Taylor Cosmetics Company v Brian Hope FA 1205001445233 (National Arb. Forum June 22, 2010) the panel held that the domain names liztaylor.com, liztaylor.net and liztaylor.org were confusingly similar to the Complainants’ ELIZABETH TAYLOR mark, satisfying paragraph 4 (a) (i) of the Policy. The Panel in this case is prepared to agree similarly that, in this case, disregarding the gTLD which does not perform a distinguishing role within the Domain Name, that the remainder of the Domain Name ‘liztaylor’ is confusingly similar to a trade mark in which the Complainants have rights, namely ELIZABETH TAYLOR.
In any event, at minimum, there is residual goodwill in the LIZ TAYLOR nickname for the celebrity and acting services of the deceased actress Elizabeth Taylor. The Trust and Interplanet between them hold those rights by succession and assignment respectively. As such the Panel is prepared to hold that the Complainant's have rights in the LIZ TAYLOR mark. As such, in addition, since the gTLD .photography does not serve to distinguish the Domain Name from the LIZ TAYLOR mark owned by the Complainants the Panel also holds that the Domain Name is identical for the purposes of the Policy with a mark in which the Complainants have rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Complainant points out that Respondent is not commonly known by the Domain Name and has not been authorised to use it by the Complainants. Despite the Respondent's assertion that the site is to be used for a fan site, the Respondent has not produced any evidence of the same, despite being given the opportunity to do so in her response and an additional submission.
Instead the evidence shows the Domain Name has been used to link to a pay-per-click website incorporating a generic search engine and links to other third party commercial web sites. The Panel notes Disney Enters. Inc. v Dot Stop FA 145227 (Nat Arb. Forum Mar 17 2003), where the Panel concluded that the respondent's diversionary use of the complainant's mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites was neither a bona fide offering of goods and services nor a legitimate non-commercial or fair use of the disputed domain names. The Panel concludes that the evidence does not show that the Respondent has any rights or legitimate interests in the Domain Name under para 4 (c) (i) or (iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <liztaylor.photography> domain name be TRANSFERRED from Respondent to Complainant (the First Complainant in the absence of nomination by the Complainants otherwise).
Dawn Osborne, Panelist
Dated: December 16, 2014
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