Intellectual Property Rights | Passing Off | Personality Rights | Trade Mark | Uncategorized

Julia Fiona Roberts v. Russell Boyd

Julia Fiona Roberts v. Russell Boyd

Case No. D2000-0210 before WIPO Arbitration and Mediation Center

Date of decision: 29th May, 2000

The Complainant was Ms. Julia Fiona Roberts, a famous film actress who had appeared in films such as Notting Hill, Pretty Woman, Erin Brockovich etc. The Complainant was widely featured in celebrity publications, movie reviews, and entertainment publications and television shows, and had earned two Academy Award nominations at the time of the present case. The Respondent registered the domain name www.juliaroberts.com.

As of 24th March, 2000 the website featured a photograph of a woman named “Sari Locker”. The Respondent has placed the domain name up for auction on the commercial auction website, “eBay”.

The Respondent has also registered over fifty (50) other domain names, including names incorporating other movie stars such as Al Pacino.

Complainant filed the present Complaint before WIPO for transfer of the said domain name to her.

428px-Julia_Roberts_(43838880775)

(Image Credits: GabboT, available at: (commons.wikimedia.org/wiki/File:Julia_Roberts_(43838880775).jpg), last visited on 23rd June, 2020)

Complainant’s Contentions:

  • The registered domain name is identical or confusingly similar[1] to the Complainant’s name on which she had common law rights.
  • The Respondent had no rights or legitimate interests in respect of the domain name[2];
  • The domain name has been registered and is being used in bad faith.[3]

Respondent’s Contentions:

  • Respondent has rights and legitimate interest in the domain name because of his registration and use of the domain name.
  • Respondent’s registration and use of the domain is in good faith.

Observations of WIPO Panel

On Rights of Complainant and similarity of domain name to Complainant’s name

  • Registration of Complainant’s name as a registered trademark or service mark was not necessary and that the name “Julia Roberts” has sufficient secondary association with Complainant that common law trademark rights do exist under United States trademark law.
  • The Policy does not require that the Complainant should have rights in a registered trademark or service mark. It is sufficient that the Complainant should satisfy the Administrative Panel that she has rights in common law trademark or sufficient rights to ground an action for passing off.
  • The domain name was identical to or confusingly similar with Complainant’s name. Therefore, the Panel finds that the requirement of the Policy paragraph 4(a)(i) is satisfied.

On whether the Respondent had Rights or Legitimate Interest in the domain name

  • Respondent has no relationship with or permission from Complainant for the use of her name or mark. The domain name was registered in 1998 when Complainant had already acquired common law trademark rights in her name. The original content posted on the website had little if anything to do with Julia Roberts. It was not until this dispute arose that her likeness was posted.
  • In addition, Respondent admits that he has registered other domain names of other well-known movie and sports stars and had placed the disputed domain name for auction on eBay Respondent has failed to show (i) use of the domain name in connection with any goods or services, (b) knowledge that he is known by the domain name (iii) fair use of the domain name; or (d) any other fact to demonstrate his legitimate interest.
  • Therefore, the Panel finds that Respondent has no rights or legitimate interest in the domain name and that the requirement of the Policy paragraph 4(a)(ii) is satisfied.

On Bad Faith of Respondent

  • The domain name has been registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.
  • The Respondent admits that he has registered other domain names including several famous movie and sports stars demonstrating a pattern of such conduct.
  • Therefore, the Panel finds that Respondent has registered and used the domain name in bad faith and that the requirement of the Policy paragraph 4(a)(iii) is satisfied.
  • In addition, the Respondent has placed the domain name up for auction on the commercial website eBay. When considered in conjunction with the pattern of registrations described above, the Panel finds that such action constitutes additional evidence of bad faith.

 Resultantly, the domain name was transferred to the Complainant.

[1] Policy Paragraph 4 (a) (i), Uniform Domain Name Dispute Resolution Policy, 1999

[2] Id. at Policy Paragraph 4 (a) (ii)

[3] Id. at Policy Paragraph 4 (a) (iii)

 

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