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Laches in UDRP case (6)

Laches in UDRP case (6)

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Published by: LEX-57 the lex engine on Dec 21, 2010
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WIPO Arbitration and Mediation Center 
Tom Cruise v. Network Operations Center / Alberta Hot RodsCase No. D2006-0560
1. The Parties
The Complainant is Tom Cruise, United States of America, represented by Greenberg Glusker FieldsClaman Machtinger & Kinsella, LLP, Los Angeles, California, United States of America.The Respondent is Network Operations Center / Alberta Hot Rods, High Prairie, Alberta, Canada,represented by ESQwire.com Law Firm, Cherry Hill, New Jersey, United States of America. 
2. The Domain Name and Registrar 
The disputed domain name <tomcruise.com> is registered with CORE Internet Council of Registrars. 
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2006. OnMay 4, 2006, the Center transmitted by email to CORE Internet Council of Registrars a request for registrar verification in connection with the domain name at issue. On May 5, 2006, CORE Internet Council of Registrars transmitted by email to the Center its verification response confirming that the Respondent islisted as the registrant and providing the contact details for the administrative, billing, and zone contact. Inresponse to a notification by the Center that the Complaint was administratively deficient, the Complainantfiled an amendment to the Complaint on May 12, 2006. The Center verified that the Complaint, together withthe amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name DisputeResolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of theComplaint, and the proceedings commenced May 17, 2006. In accordance with the Rules, paragraph 5(a),the due date for Response was June 6, 2006. The Response was filed with the Center on June 6, 2006.The Center appointed Frederick M. Abbott, Sally M. Abel and David Sorkin as panelists in this matter onJune 21, 2006. The Panel finds that it was properly constituted. Each member of the Panel has submittedthe Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center toensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is an actor who has appeared in numerous commercially successful films. His name, TOMCRUISE, is recognized around the world in connection with his performing services. Among the films inwhich Complainant has appeared are: “Endless Love” (1981), “The Outsiders” (1983), “Risky Business”(1983), “Top Gun” (1986), “Cocktail” (1988), “Rain Man” (1988), “Born on the Fourth of July” (1989), “Daysof Thunder” (1990), “Far and Away” (1992) “A Few Good Men” (1992), “The Firm” (1993), “Interview with aVampire” (1994), “Mission: Impossible I” (1996), “Jerry Maguire” (1996), “Magnolia” (1999), “Eyes WideShut” (1999), “Mission: Impossible II” (2000), “Vanilla Sky” (2001), “Minority Report” (2002), “The LastSamurai” (2003), “Collateral” (2004), and “War of the Worlds” (2005). Complainant has received or beennominated for numerous awards in connection with his performing services. Complaint, para. 13.According to the Registrar’s verification report, Respondent is the registrant of the disputed domain name<tomcruise.com>. According to that same report, the record of registration for the disputed domain namewas created on November 6, 1996.Until approximately April 2006, the disputed domain name directed Internet users to Respondent’s websitelocated at “www.celebrity1000.com”(the Celebrity 1000 website). As of November 2005, the homepage for that website, on which the computer user landed after entering “www.tomcruise.com” in his or her browser,was headed “Celebrity 1000, Your Ultimate Entertainment Source”, followed by the disclaimer insubstantially smaller font size: “Information on this site is for information purposes only. Nothing on this siteis to be construed as an endorsement by any celebrity or personality, unless explicitly identified, for this siteor for any information here.” The website included internal links to “Celebrity Sites”, including for TomCruise. The sub-pages for Tom Cruise included an eight paragraph biography of the actor. The informationin the biography does not appear in any way defamatory. Complaint, Annex 14. Respondent indicates thatthe Tom Cruise section of the Celebrity 1000 website has been active since at least 2001. Response,Exhibit 1, Declaration of Jeff Burgar.The Celebrity 1000 website included links to services and products that do not appear connected withComplainant. This included a “Featured Product” (an MP3 player identified by the manufacturer),advertisement for a storage service, a “Featured DVD” and “Featured Software”.The Celebrity 1000 homepage includes a general link to “merchandise”. This link presently directs Internetusers to the homepage of Amazon.com (visited by Panel, June 28, 2006).As of May 1, 2006, the disputed domain name resolved to a website headed “Tomcruise.com”, followed bythe disclaimer: “This is an UNOFFICIAL Tom Cruise fan site. This site is not affiliated or endorsed in anyway by Tom Cruise or any other party.” That site included links to “Tom Cruise”, “Entertainment”, “VideoGame”, “Music”, “DVD”, “Movie”, “TV”, “MP3 Player”, “Concert Tickets”, “Music CD”, and “Concert”. Inaddition, a section for “Sponsored Results” included links to a database offering free biographicalinformation and a site offering “Tom Cruise DVDs”. Related links appeared for various vacation cruise lines.Complaint, Annex 14.Respondent indicates that it intended to link the “www.tomcruise.com” website to the Tom Cruise fanssection of the “Celebrity 1000” website, but on May 9, 2006, Respondent disabled the “www.tomcruise.com”website pending resolution of this dispute. Response, Exhibit 1, Declaration of Jeff Burgar.
Respondent in this proceeding has been complained against in a number of earlier disputes under thePolicy. See, e.g.
, Celine Dion and Sony Music Entertainment (Canada) Inc. v. Jeff Burgar 
Dr. Michael Crichton v. Alberta Hot Rods
Kevin Spacey v. Alberta Hot Rods
, NAF Case No. FA114437;
Jeffrey Archer v. Alberta Hotrods tda CELEBRITY 1000 
In these cases, Respondent was found to have engaged in abusive domain nameregistration and use, and Respondent’s claim to fair use on the basis of its Celebrity 1000 link was rejected.Previous panels have determined that Respondent has engaged in a pattern of registering the trademarks of third parties, preventing them from registering their marks in domain names. In
The Hebrew University of Jerusalem v. Alberta Hot Rods
Respondent prevailed against a claim of abusive domain name registration and use. The panel in that case found that Respondent had no reason tobelieve that the disputed domain name <alberteinstein.com> was associated with a commercial trademark,and that Internet users would not have reasonably expected the domain name to connect them with acommercial website. In
Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club
, WIPO Case No.D2000-1532,the majority of a three-member panel decided in favor of Respondent in a factual settingsimilar to here on grounds the complainant failed to establish a lack of rights or legitimate interests, and badfaith. The presiding panelist in that case (who was part of the panel majority), later joined against theRespondent in the
Kevin Spacey 
, on similar facts. (See further discussion of prior decisionsinvolving Respondent,
).The Registration Agreement in effect between Respondent and CORE Internet Council of Registrarssubjects Respondent to dispute settlement under the Policy. The Policy requires that domain nameregistrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolutionservice provider, of which the Center is one, regarding allegations of abusive domain name registration anduse (Policy, paragraph 4(a)).
5. Parties’ ContentionsA. Complainant
Complainant asserts ownership of common law trademark and service mark rights in the term “Tom Cruise”.Complainant states that the public has come to recognize and associate the name “Tom Cruise” as asymbol that identifies and distinguishes the entertainment services provided exclusively by him, and thatthrough long and continuous use, international recognition and extensive advertising and promotion, TOMCRUISE has acquired distinctiveness and secondary meaning as a trademark and service mark.Complainant refers to previous panel decisions under the Policy which accepted that non-registeredcelebrity names or marks maintain common law trademark rights when used in connection with celebritypersonalities and the services provided therewith.Complainant alleges that the disputed domain name <tomcruise.com>is identical or confusingly similar tothe trademark in which he has rights.Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name.Respondent has not been authorized by Complainant to use the TOM CRUISE mark, expressly or byimplication. Complainant alleges that Respondent is using the TOM CRUISE trademark to attract attentionand Internet traffic to its website, thereby increasing revenues for Respondent. Complainant states that thisis not a
bona fide
offering of goods or services or legitimate noncommercial or fair use under the Policy.Complainant states that Respondent has not been commonly known by the disputed domain name.Complainant indicates that the disclaimers used by Respondent are inadequate to dispel the initial interestconfusion which drives Internet users to Respondent’s website.Complainant alleges that Respondent registered and is using the disputed domain name in bad faith.Complainant argues that Respondent was well aware of his famous name when the disputed domain namewas registered in 1996, approximately 15 years after Complainant began using his name as a service mark,so that Respondent had knowledge of Complainant’s rights in its mark. Until recently, the disputed domainname redirected Internet users to Respondent’s website at “www.celebrity1000.com”. While that websitepurported to be an “entertainment source”, it contained several banner advertisements and third-party linksthat presumably generated revenue for Respondent. More recently, Respondent has directed the disputed

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