Ms. Barkha Dutt v. easyticket, Kapavarapu, Vas

Ms. Barkha Dutt v. easyticket, Kapavarapu, Vas

Case No. D2009-1247 before Administrative Panel, WIPO Arbitration and Mediation Center

Date of decision: 30^th October, 2009

Brief Facts:

The Complainant, Barkha Dutt, a known figure in the media and particularly recognised for her reporting from conflict regions filed the present Complaint before WIPO for transfer of domain name www.barkahdutt.com in her favour. The said domain name was registered by the Respondent.

(Image Credits: World Economic Forum from Cologny, Switzerland, available at: (commons.wikimedia.org/wiki/File:Barkha_Dutt_World_Economic_Forum_Nov_2010.jpg), last visited on 23^rd June, 2020)

Complainant’s Contentions:

• Complainant works with the NDTV News Channel as Group Editor.
• Complainant is an anchor for the show “We the People”.
• Complainant initially acquired fame as a broadcast journalist reporting from Kargil.
• Complainant is the youngest journalist to receive the Padmashri Award.
• Any reference to “Barkha Dutt” is instantly associated with Complainant.
• Complainant’s name therefore ought to be accorded protection as a trademark and a domain name serves as an identity mark on the Internet.
• Celebrities have the right to restrain third parties from exploiting their name and fame. Celebrities also commonly use domain names incorporating their name to host websites to be in touch with their fans. Therefore the disputed domain name, which wholly incorporates her name, not only impinges her rights, but also causes deception and confusion to users.
• The purpose of the Respondent’s registration of the domain name is for renting, selling or otherwise transferring it for valuable consideration or for deriving illegal gains by capitalizing on the fame and goodwill associated with her name. He has placed links such as “Car Insurance”, “Insurance Rates” etc. on the website. Internet users may be misled to think that the Complainant endorses these links.

Respondent’s Contentions:

• “Barkha” and “Dutt” are Sanskrit word, where the word “Barkha” means, rain or life giving, while the word “Dutt” means “adaption” in Sanskrit. The literal dictionary meaning of the composite term “Barkhadutt” is “adaption of rain/life giving”. The domain name was registered two years ago with the intention of developing it into a fan site or blog dedicated to rains and rain harvesting.
• Respondent has rights in the disputed domain name because his only intention in registration of the disputed domain name, was to run a website related to rains and rainwater preservation.
• Respondent has not used the domain name in bad faith or for any illegal activity.
• Respondent has not used the domain name in relation to journalism, which is the field of the Complainant’s work.

Observations of WIPO Panel:

On whether the Complainant can assert trade mark rights in her name. If yes, whether the name and domain name are identical or confusingly similar.[1]

• Common law rights are sufficient to support a claim under the Policy and a complainant need not hold a registered trademark to establish rights in a mark.
• A celebrity’s name can serve as a trademark when it is used to identify the celebrity’s performance services.
• The name in question should actually be used in trade and commerce to prove rights
• Trademark rights have been recognized for the fame associated with media persons and television broadcasters. Broadcasting services rendered by television talk show hosts like Larry King[2], Tucker Carson[3] and Jay Leno[4].
• Complainant has acquired the status of a celebrity broadcast journalist who regularly appears in the media. Due to her fame the public has come to recognize and identify the Complainant with her services as a television broadcast journalist and the Complainant therefore has unregistered common law trademark rights in her name.
• The Panel finds no merit in the argument extended by the Respondent that the dictionary meaning of the term “Barkhadutt” is “adaption of rain/life giving” in Sanskrit. It is well established that dictionary words or personal names that have acquired fame are found to have secondary meaning and have obtained distinctiveness in commerce which have protectable trademark rights.[5]
• Disputed domain name is identical to the Complainant’s name and mark in which the Complainant has unregistered rights.

On whether the Respondent had Rights or Legitimate Interest in the domain name[6]

• If a respondent uses a complainant’s well-known name/mark without authorization, such use of the complainant’s famous name/mark is not bona fide[7]
• If a respondent uses a famous name/mark of a complainant to lure Internet users, it does not confer rights or legitimate interests.[8]
• Thus, the Complainant has made a prima facie showing that the Respondent lacks rights in the domain name.
• Respondent has provided no evidence whatsoever of contemplated fair use of the domain name. Further, screen shots of the website show various Pay Per Click links. Placing such links particularly if the links are not sponsored by the legitimate owner of the famous name/mark is not bona fide[9]
• Domain name at issue is presently being used to attract users to generate traffic with the intention to derive revenue.

On bad faith of Respondent[10]

• A celebrity is entitled to the right of exploiting the economic value of his/her name Publicity rights are recognized as genre of intellectual property rights and are considered a reward or incentive for the celebrity’s work, which can be used by the celebrity to derive monetary benefits through endorsements or merchandising products or services. Such rights are assignable and inheritable rights.
• The right to commercially use or exploit one’s own name, vests with the person who has worked to create the fame and can lawfully restrict any other third party from exploiting that fame for commercial purposes.
• A celebrity therefore has a valid cause of action for opportunistic commercial exploitation and any unauthorized use of his or her name.
• Paragraph 4(b)(iv) of the Policy makes reference to circumstances indicating bad faith registration and use of the domain name if it is made with an intention to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location.
• It is clear from the facts of the case that the Respondent has intentionally attempted to attract, for commercial gain, users to his website for commercial gain by creating a likelihood of false association with the Complainant’s name and mark as to the source, sponsorship, affiliation or endorsement of his website.

 Resultantly, the domain name was transferred to the Complainant.

[1] A requirement that the Complainant needs to prove before the WIPO Panel under Policy Paragraph 4 (a)(i), UDRP, 1999

[2] Larry King v. Alberta Hot Rods, WIPO Case No. D 2005-0570

[3] Tucker Carlson v. Domain Privacy Ltd., WIPO Case No. D2008-0474

[4] Jay Leno v. Guadalupe Zambrano, WIPO Case No. D2009-0570

[5] World Natural Bodybuilding Federation, Inc. v. Daniel Jones The DotCafe, WIPO Case No.D2008-0642

[6] Another factor that needs to considered to render a decision by the WIPO Panel under Policy Paragraph 4 (a)(ii), UDRP, 1999. The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie showing that the Respondent lacks rights and legitimate interests in the domain name. If the Complainant makes a prima facie case, the burden shifts to the Respondent to demonstrate rights or legitimate interests in the domain name. Please refer point  2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, available at: https://www.wipo.int/amc/en/domains/search/overview2.0/#21, last visited on: 23^rd June, 2020

[7] Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872

[8] Nik Carter v. the Afternoon Fiasco, WIPO Case No. D2000-0658.

[9] Supra note 3

[10] Final requirement that the Complainant needs to prove before the WIPO Panel under Policy Paragraph 4 (a)(iii), UDRP, 1999