Tom Welling v. Kenneth Gold
Claim Number: FA1106001393893
Complainant is Tom Welling (“Complainant”), represented by Victor K. Sapphire of Connolly Bove Lodge & Hutz LLP, California, USA. Respondent is Kenneth Gold (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tomwelling.com>, registered with REGISTER.COM, INC.
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.
Hon. Sir Ian Barker as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2011; the National Arbitration Forum received payment on June 17, 2011.
On June 16, 2011, REGISTER.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <tomwelling.com> domain name is registered with REGISTER.COM, INC. and that Respondent is the current registrant of the name. REGISTER.COM, INC. has verified that Respondent is bound by the REGISTER.COM, 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 June 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2011 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@tomwelling.com. Also on June 22, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 July 12, 2011.
On July 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker as Panelist.
On July 19, 2011, a timely Additional Submission was received from the Complainant.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant is a well-known actor in television and film, as well as being a television producer and entrepreneur. His career goes back to before 2001, the year when he won the ‘Teen Choice Award’. He has earned various nominations for awards and actual awards. He is executive producer for the TV drama series ‘Hellcats’ and makes public appearances for charity and humanitarian causes.
The Complainant has acted the part of ‘Superman’ on the hit TV series ‘Smallville’, plus featuring in other popular series. For all of his activities he is, and has been, known by the name ‘Tom Welling’.
The disputed domain name was registered by the Respondent on April 23, 2001, at a time when the Complainant had been using the name ‘Tom Welling’ before nationwide audiences in the TV series ‘Judging Amy’ and at a time when it had been announced that he was to be leading actor in the then – new series ‘Smallville’ – a recasting of the Superman story.
Although the Complainant has no registered trademarks, it has been accepted in many UDRP decisions that performers/actors may have common law trademark rights in their names. Because of the goodwill generated by the Complainant’s performances and profile, he has a common law trademark in the name ‘Tom Welling’.
On March 10, 2011, the Complainant caused a ‘cease and desist’ letter to be sent to the Respondent regarding the use of the disputed domain name. No reply was received.
The Respondent has used the disputed domain name in connection with an unauthorized ‘fan site’, featuring unlicensed photographs, videos and personal information about the Complainant. This generates revenue for the Respondent and/or the owner/operator of the site. Advertisements on the site can produce ‘click-through’ revenue to the Respondent.
The disputed domain name is identical to the Complainant’s common law mark trademark.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant gave him none. The use by the Complainant of his mark predates the registration of the disputed domain name. The Respondent is not entitled to reflect the Complainant’s trademark in a domain name. It is not a fair use of the mark.
The Respondent is taking advantage of the fact that an internet user would expect to obtain authorised information about the Complainant and his business on a website using his name. The disputed domain name will erroneously lead internet users to believe that it is associated with, endorsed by and otherwise sponsored by the Complainant.
The Respondent is not commonly known by the disputed domain name and none of the situations under Paragraph 4(c) of the Policy applies to him.
Whilst the Respondent may have a limited right to create a ‘fan site’ devoted to the Complainant, using the common law mark in a domain name is an improper use of the mark, especially when it attracts internet users for commercial gain. Because of the Complainant’s heavy involvement in the entertainment industry, considerable public interest in and goodwill towards him has been generated. The Respondent can reach this consumer audience by the promotion of his services and third party links, giving the impression that such links are endorsed or sponsored by the Complainant.
The disputed domain name was registered and is being used in bad faith by reason of the above. The Respondent must have known of the Complainant’s reputation when he registered the disputed domain name in 2001.
B. Respondent
The Respondent is the webmaster and editorial director for “Media Blvd Magazine” which was created by him. This website focuses on ‘in-depth celebrity interviews’ and is hosted under an ‘Ad Supported Free Hosting Agreement’ with an internet service provider “Web Media Entertainment, dba Media Blvd” (the “ISP”).
The disputed domain name is on a similar website, hosted under a similar arrangement. The disputed domain name is owned by the Respondent and its registration predates the formation of the above ISP. The disputed domain name has hosted a fan site for the past 10 years. Originally it was maintained by the Respondent but more recently by volunteers under his direction.
The Respondent has never received monetary compensation of any sort from any of the activities relating to the disputed domain name or from its internet service providers. The terms of his present employment preclude him from receiving monetary benefits from any commercial source.
The Respondent accepts that the Complainant has established that he does have rights and a trademark in the name in question. He relies on the defenses provided by Paragraph 4(c)(i) and/or (iii) of the Policy.
The fan site at the disputed domain name has existed for some 10 years. No attempt has been made by the Respondent or by others connected by the site to contact the Complainant or any representatives. The site contains disclaimers to the effect that the Complainant has no connection with the site and that no derogatory or paparazzi-type material would be allowed on it.
There are precedents under the Policy where such fan sites have been allowed. See RAI Radiotelevisione Italia Spa v. Prescetelli, D2002-0716 (WIPO), where the Panel held that while a respondent using a domain name for a non-commercial fan site may not have a legitimate interest under the Policy, its use may be regarded as in good faith, absent other incriminating circumstances.
The Complainant’s allegations of commercial use fail because the disputed site is and has been hosted by the ISP on the basis of the SP making no charge for the use of webspace and server, in exchange for running a banner advertisement which benefits neither the webmaster nor the Respondent. Specific terms were exhibited to the Response, as well as a letter (but not a statement under penalty) from the owner of Media Blvd, Keith Follett. This model is currently employed by “The Fan-Site Network” for some 1,800 fan sites. Under this model, webmasters and owners of domain names receive no commercial gain despite the presence of banner advertisements. See Nintendo of America Inc. v Alex Jones, D2000-0998 (WIPO November 17, 2000) was cited as a case where a respondent had not sought commercial gain from a fan site.
In 1999, the Respondent was involved in the creation of a fan site <crashdown.com> (a tribute to the show “Roswell”) which is still hosted under the above arrangements. This website was highly successful. Consequently, when Smallville came along, it was seen as featuring a similar theme to that in Roswell – i.e. an alien teen on earth based on Superman
His sole reason for the registration of the disputed domain name was to establish a fan site for this actor in the new series, in an attempt to recreate the synergy with the cast, network, and show runners that had existed with Roswell. At, or about the same time, various websites were launched which were fan sites for multiple cast members including Kristen Kreuk, Eric Johnson, Allison Mack, Sam Jones, and the current Complainant. The show runners and cast of Smallville showed little or no interest in similar activities as the Roswell cast had earlier, and the majority of these domains and sites were discarded quickly. The website at the disputed domain name was the sole survivor of the Respondent’s attempt to establish a fan site presence around the series Smallville.
The Respondent’s activities on the Internet, before and since registration of the disputed domain name have involved an established pattern of extremely successful fan-site creation and maintenance and significant charity and positive public relations activities (the disputed domain name was never used in such a fashion). This has led to goodwill with many people and entities within the entertainment industry. The Respondent’s current efforts further support his goodwill intention, since his major online activity involves a new media journalism/entertainment portal, from which free publicity is eagerly sought after by many publicists for their celebrities and film production, through extensive interviews and licensing of video and press release content to be displayed on the Respondent’s primary website, <mediablvd.com>.
The Respondent has also appeared on a DVD boxed set for the series Battlestar Galactica, as a fan and digital journalist invited to promote the Sci Fi’s Ghost Hunters series. He is listed as a producer, publisher, or relevant party on multiple books, musical CDs and other entertainment vehicles, all of which are functions that he has provided without compensation to himself, and at times, at personal expense. Celebrities associated with the series Smallville have been interviewed and featured, at either the invitation of individual, network, or Smallville series publicists. The Respondent is also involved in comments about various shows, including Smallvile.
The Yahoo site registry has, since at least 2003, shown the site as a fan site for the Complainant. The site has never been used for any derogatory comment. There is no bad faith in the way in which this fan site was registered or is operating. The Respondent has demonstrated patterns of goodwill in his internet activities. Disclaimers are shown on the website to the effect that this is not an official site for the Complainant.
C. Additional Submissions
The Respondent’s claims that his interest in the site is a legitimate non-commercial use are without merit, given the obvious commercial benefit derived from the advertising banners on the web page. The advertisements relate to a variety of goods unconnected with the Complainant’s show, none of which promotes the ISP in a revenue-neutral way. A close-up of the home page shows an advertisement promoting what appears to be a review/ratings website.
This manner of advertising using placements alone is enough to qualify as “commercial use.” See General Motors LLC v Vinh Pham, D2011-0454 (WIPO April 25, 2011).
Even though the Respondent claims he receives no gains from the on-site commercial activity, he enjoys the ISP’s hosting services for free, which is a commercial benefit derived directly from the placement of the advertising. The content of a website to which a disputed domain name resolves, however, legitimate the context may otherwise be, is not generally relevant: If it is relevant, it is in a negative sense as when the website content demonstrates that the intent is to trade off a complainant’s goodwill. See Tyra Banks & Telepicture Productions Inc v. Hemany Infrastructure Private Ltd, FA1330940 (Nat. Arb. Forum August 3, 2010); see also Dr Buzz Aldrin v. Cathal Dunphy, FA1326949 (Nat. Arb. Forum July 8, 2010).
The Respondent enjoys commercial benefit from the advertising at the site of the disputed domain name through his involvement with the ISP which is the beneficiary of the advertising revenue. He says that he is the founder, webmaster and editorial director of Media Blvd Magazine hosted by the ISP. The letter signed by one ‘Keith Follett’ to the effect that the Respondent has not received any commercial gain from the use of the disputed domain name is not a sworn statement and is not presented on company letterhead. It should be disregarded. The statement that the Respondent has not been the beneficiary “of any ad-based payment from any third party” does not address the fact that the ISP is not a third party to the Respondent.
The Respondent’s appeals to authority and credentials undermine his credibility. This is obviously a commercial transaction.
In the Nintendo case, there was benefit to the complainant and clear evidence the respondent had not sought commercial gain. The advertisements here are random and insensitive to the context of a fan site where the domain name comprises the entire name of the individual the object of the fan site.
Bad faith can be found because the Respondent at the time of registration knew that he could not make use of the disputed domain name without infringing on the trademark owner’s rights. See Cellular One Group v. Brien, D2000‑0028 (WIPO March 16, 2000). Here, the Respondent registered the Complainant’s entire name and mark after learning of the Complainant’s impending role in Smallville. He thus prevented the Complainant from reflecting the mark in a corresponding domain name.
Fan sites do cause confusion as to their source, sponsorship, affiliation or endorsement. The Respondent’s attempt to extend his fan site activities reveals a pattern of conduct indicating bad faith. He involved himself with unauthorized sites of other cast members. He more recently registered domain names without authorization of other entertainment celebrities.
The Respondent’s disclaimer is practically invisible and fails adequately to mitigate consumer confusion.
1. The disputed domain name is identical to the common law trademark in which the Complainant has rights.
2. The Respondent has no rights or legitimate interests in the disputed domain name.
3. The disputed domain name has been registered and is being 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:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Respondent has conceded that the Complainant has trademark rights in his personal name. The disputed domain name is identical to the Complainant’s name which has become a common law mark. Accordingly, the first limb of Paragraph 4(a) of the Policy has been established.
Had there not been this admission by the Respondent, the Complainant may have had some difficulty in establishing the first limb – probably not insurmountable in this case - because of the lack of a registered trademark. Where a personal name, unregistered as a trademark, is being used in trade and commerce, proof of the person’s name as a distinctive identifier of goods or services offered under that name would normally be required. Merely having a famous name which is not so used is not necessarily sufficient to demonstrate unregistered trademark rights.
See WIPO Overview of WIPO Panel Views on Selected Panel Questions (2nd edition) (“WIPO Overview”) at ¶¶ 1.6 and 1.7. See also Ted Turner & Ted Turner Film Properties LLC v Mazen Fahmi, D2002-0251 (WIPO July 4, 2002); Aspen v Communications Inc., D2001-0540 (WIPO June 21, 2006) for detailed analyses of claims for trademarks in personal names. Here, the Complaint dwells at length on the Complainant’s celebrity status but is rather short on his name being a positive identifier of goods and services.
The Complainant gave the Respondent no rights to reflect his common law trademark in a domain name. accordingly, the focus shifts to the Respondent to show that he comes within one of the situations set out in ¶ 4(c) of the Policy. The Respondent quoted ¶¶ 4(c)(i) and (iii). By his emphasis on the Respondent’s lack of monetary gain from the site, it seems that the defense really relies on ¶ 4(c)(iii) which reads:
“Whether Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue:”
The WIPO Overview, at ¶2.5, addresses the question whether a fan site can generate rights or legitimate interests in a domain name. It records two views as follows:
“View 1: 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. Panels have found that a claimed fan site which includes pay-per-click (PPC) 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).
Relevant decisions:
Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross,
WIPO Case No. D2001-1042, <garyjennings.com>, Denial
2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO Case No. D2004‑0001,
<patbenatar.com>, Denial
Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560, <tomcruise.com>, Transfer
Estate of Francis Newton Souza v. ZWYX.org Ltd., WIPO Case No. D2007-0221, <fnsouza.com>, Denial
Ain-Jeem, Inc. v. Barto Enterprises, Inc., Philip Barto, WIPO Case No. D2007-1841, <kareemabduljabbar.com>, Transfer
The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057, <jenniferlopez.net> inter alia, Transfer
View 2: 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, panels have noted that such respondent action prevents the trademark holder from exercising its rights to the trademark and managing its presence on the internet.
Relevant decisions
David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Emanno Cenicolla, WIPO Case No. D2000-1459, <davidgilmour.com>, Transfer
Stoneygate 48 Limited and Wayne Mark Rooney v. Huw Marshall, WIPO Case No. D2006-0916, <waynerooney.com>, Transfer
David Foox v. Kung Fox and Bill Hicks, WIPO Case No. D2008-0472, <davidfoox.info> inter alia, Transfer
Russell Peters v. George Koshy and Navigation Catalyst Systems, Inc., WIPO Case No. D2009-0173, <russelpeters.com>, Transfer
Giochi Preziosi S.P.A. v. VGMD NetWeb S.L., WIPO Case No. D2009-0542, <gormiti.mobi>, Denial
This Panelist adheres to the second view above and to the comments expressed by him in the majority decision in Richard Starkey v. Mr. Bradley, FA 874575 (Nat. Arb.Forum February 12, 2007 ). Even if the first view on the WIPO Overview were accepted, it is doubtful whether the present situation would come within that view, gien that there are PPC links or automated advertising on the Respondent’s website.
In the present case, the following factors bring the Panel to the conclusion that the defense has not been made out:
(a) The manner of advertising placements qualify as a “commercial” use (as distinct from a “non-commercial” use as required by ¶ 4(c)(iii)). These placements relate to goods and services unrelated to the Complainant or his show.
(b) Even if the Respondent receives free hosting from the ISP, the arrangement whereby the ISP places the banner placements as a return is a commercial arrangement. Not all commercial arrangements require the exchange of money.
The situation such as the present, where a third party takes it upon him/herself to adopt, without adornment, the trade or service mark of another in a domain name and to use it to connect to a website has been well summarised by an experienced Panelist in the following extracts from David Foox v. Kung Fox & Bill Hicks, D2002-0472 (WIPO July 25, 2002) in these words, which the present Panel endorses:
“(a) The Panel approaches the question in this way. What is the consequence of a third party adopting for itself the name/trade mark (without any addition or adornment) of a trade mark owner and using it to connect to a website? The inevitable consequence is that there will be initial interest confusion. A substantial proportion of internet users visiting the site will be doing so in the hope and expectation of reaching a site of (or authorized by) the trade mark owner. When they reach the site they may realize that they have been duped, but in any event the registrant’s objective of bringing them there will already have been achieved.”
(b) “Even if the Panel is wrong on that latter score, the Panel is nonetheless satisfied that a use of a domain name to cause confusion to Internet users by impersonating the trade mark owner cannot give rise to a right or legitimate interest whether the motivation is commercial or non-commercial. Essentially, any use which gives rise to a right or legitimate interest must be fair and impersonation is not fair.”
Here, the Respondent has used the Complainant’s name without any adornment in a domain name which gives rise to a website. It does not matter that the website is a “fan site”. The Panel need not enquire whether the Respondent’s motivation is commercial or noncommercial, nor whether he does or does not receive monetary compensation.
What matters is that Internet users are likely to go to the site expecting it to bear some endorsement from the Complainant and/or some official connection with him. If the disputed domain name had contained some indication that the Internet user was entering a fan site (such as, for example, <tomwellingfanclub.com>, the position might be different.
As for the disclaimer, as is noted in the WIPO Overview at ¶ 3.5, by the time the Internet user reaches and reads any disclaimer, the objective of attracting visitors to the website by means of the Complainant’s mark has been achieved. The “initial interest” confusion has occurred. In the present case, the disclaimer is not particularly prominent and is set in smallish typeface. It is hardly enough to be fully appreciated by all visitors, given that the use of the Complainant’s name without anything to indicate a fan site in the domain name must predicate the initial view that the website has some endorsement from the Complainant.
Accordingly, the Respondent has not proved that he comes within any of the limbs of ¶ 4(c) of the Policy and the Complainant has proved the second limb of ¶ 4(a).
Much of the discussion about legitimate rights and interests is relevant also to the discussion on bad faith.
Bad faith registration must be proved separately from bad faith use. Were it not for the Respondent’s admission of the circumstances under which he registered the disputed domain name in 2001, the Complainant might have had difficulty in proving bad faith registration by the Respondent in 2001. The Complainant had no registered trademark then, nor has he offered any explanation for the inordinate delay of some 10 years between the registration of the disputed domain name by the Respondent and the lodging of the Complaint by the Complainant.
Whilst this Panelist staunchly maintains that the equitable doctrine of laches does not per se provide a defense to a complaint by a tardy complainant, nevertheless, the greater the period elapsing between domain name registration and complaint filing, the harder it is for a complainant to prove bad faith registration in the absence of a registered trademark existing at that time.
Absent the Respondent’s admission, the Complainant, in circumstances such as the present, would normally have to demonstrate that the Complainant’s common law mark (which might be unassailable as such today) was sustainable as such in 2001. The Complaint lacks specificity as to the extent of the common law mark in 2001 when the Complainant’s career was in a much earlier phase than it is at present. The criteria mentioned in ¶ 1.7 of the WIPO Overview on what is needed to establish a common law mark do not seem fulfilled in the material provided by the Complainant when the 2001 situation is assessed.
However, the Respondent has admitted that he registered the Complainant’s name in a domain in 2001 on learning that the Complainant had been cast as the lead in Smallville. Clearly, by registering a domain name identical to the Complainant’s name, he effectively prevented the Complainant from reflecting his mark in a domain name, thereby necessarily causing confusion to visitors to the website who might well think that the website had some endorsement from the Complainant. The fact of registering the name without anything to indicate that the website was to be a fan site would convey that initial impression and thus run foul of Article 4(b)(ii) of the Policy.
The Respondent also admitted that he set up the website under the rather unusual advertising arrangements in order to draw an audience of fans interested in the Complainant and his affairs. He has never made contact with the Complainant and ignored the “cease and desist” letter.
The Respondent’s conduct in registering the names of other members of the Smallville cast as domain names shows a pattern of registering the names of actors without seeking their agreement. This too is an indication of bad faith registration and use.
The inference of bad faith registration and use is clearly available from an overview of the Respondent’s conduct. Accordingly, the Complainant has proved the third limb of ¶ 4(a) 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 <tomwelling.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Sir Ian Barker QC, Panelist
Dated: July 29, 2011
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