Helen Fielding v. Anthony Corbett

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Helen Fielding v. Anthony Corbert aka Anthony Corbett

Case No. D2000-1000

1. The Parties

The Complainant is Helen Fielding, an individual, with address in Los Angeles,

California, USA.

The Respondent is Anthony Corbert, also known as Anthony Corbett, with address

in Plantation, Florida, USA.

2. The Domain Name(s) and Registrar(s)

The disputed domain name is "bridgetjones.com".

The registrar of the disputed domain name is Network Solutions, Inc., with

business address in Herndon, Virginia, USA.

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

a) Complainant initiated the proceeding by the filing of a complaint by e-mail

received by the WIPO Arbitration and Mediation Center ("WIPO") on

August 9, 2000, and by courier mail received by WIPO on August 10, 2000.

Payment by Complainant of the requisite filing fees accompanied the courier

mailing. On August 16, 2000, WIPO transmitted a Request for Registrar Verification

to the registrar, Network Solutions, Inc (with the Registrar’s Response received

by WIPO on August 21, 2000). On August 16, 2000, WIPO completed its formal filing

compliance requirements checklist.

b) On August 21, 2000, WIPO transmitted notification of the complaint and commencement

of the proceeding to Respondent via e-mail, telefax and courier mail. WIPO also

transmitted such notification to Complainant’s Technical Contact via e-mail,

telefax and courier mail.

c) On August 21, 2000, WIPO transmitted notification to Respondent of its default

in responding to the complaint via e-mail, telefax and courier mail.

d) On September 11, 2000, WIPO invited the undersigned to serve as panelist

in this administrative proceeding, subject to receipt of an executed Statement

of Acceptance and Declaration of Impartiality and Independence ("Statement

and Declaration"). On September 11, 2000, the undersigned transmitted

by fax the executed Statement and Declaration to WIPO.

e) On September 12, 2000, Complainant and Respondent were notified by

WIPO of the appointment of the undersigned sole panelist as the Administrative

Panel (the "Panel") in this matter. WIPO notified the Panel that,

absent exceptional circumstances, it would be required to forward its decision

to WIPO by September 25, 2000. On September 12, 2000, the Panel received

an electronic file in this matter by e-mail from WIPO. The Panel subsequently

received a hard copy of the file in this matter by courier mail from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding

further submissions, waivers or extensions of deadlines, and the Panel has not

found it necessary to request any further information from the parties (taking

note of Respondent’s default in responding to the complaint). The proceedings

have been conducted in English.

4. Factual Background

Complainant has registered the word trademark "BRIDGET JONES" in

the United Kingdom, Reg. No. 2,149,373, dated October 28, 1997, covering, inter

alia, pharmaceutical preparations; sound recordings, video recordings and

cinematographic films; artists’ materials; furniture; clothing, and; various

foods (Complaint, Annex 6). This registration is valid and subsisting. The "BRIDGET

JONES" mark has been used in connection with the marketing and sale of

literary works since at least 1995 (based on the initial date of serialized

publication of such works), and continues to be used in commerce. The "BRIDGET

JONES" mark has been used by Complainant in at least 32 countries,

including the United States (id., Annex 5). Approximately one million

literary works marketed under the name "BRIDGET JONES" have been sold

in the United States (id., para. 12(c)).

According to the registrar’s verification response to WIPO, dated August 21, 2000,

"Anthony Corbert" is the listed registrant of the domain name "BRIDGETJONES.COM".

The Administrative Contact is "Corbett [sic], Anthony". The addresses

listed for the registrant and the Administrative Contact are identical. (Registrar’s

Response, supra). A Network Solutions’ WHOIS database search indicates

that the record of registration was created on October 8, 1998, and that the

record was last updated on October 8, 1998 (Complaint, Annex 1).

On February 23, 2000, Complainant’s legal representatives sent a cease and

desist letter to Respondent, demanding transfer of the disputed domain name

to Complainant (letter from Harbottle & Lewis to Anthony Corbert, id.

Annex 8). Respondent did not respond to this letter or to a subsequent e-mail

message from Complainant’s counsel (id.)

Complainant subsequently contacted Respondent by telephone to discuss her interest

in the disputed domain name. She reported her conversation with Respondent to

her counsel as follows:

"Hi Elizabeth

have spoken to anthony corbett who actually seemed quite reasonable.

He said he was a fan and was planning to set up a fan club.

I said had he done anything yet.

He said a couple of friends had written some stuff.

I said I wanted to do a Bridget Jones site and would he give me it back?

He said well e-mail me and tell me ‘what you're proposing’

I said what do you mean.

He said – are you expecting me to give it back?

I said ‘Yes! why what did you have in mind?’

He said ‘well let me think about it. My friends have done quite a bit of work,

um, e-mail me with your proposal.

I said ‘what information do you need.’

He said well let me think about it.

I said I'd really like to have it back as Bridget Jones is my baby and I'm

really excited about the site. Maybe they could call theirs something else like

bridget Jones fans.

He said OK he'd think about it. and said he'd met me at a reading I did a couple

of years ago.

I said it would be nice if we could sort it out without going through lawyers.

He said Ok he'd think about it. It was all very friendly so I'll e-mail him

on Monday and see how we go!

…

All best – Helen"

(E-mail from Helen Fielding to Elizabeth Kiernan Earl of July 8, 2000, Complaint,

Annex 8).

A follow-on e-mail was sent from Complainant to Respondent, under supervision

of Complainant’s counsel, as follows:

"hello anthony,

It was good to make contact with you on saturday.

As you know, I've been creating Bridget Jones for over five years now, and

have put hours and hours and years and years into making her who she is, and

carefully guarding the unique atmosphere around her, not least by registering

various trade mark rights. She is very precious to me. I've been doing a lot

of work building her website and trying to make it really funny and true to

her.

Bridgetjones.com is the obvious and right name for Bridget's site. I would

so much appreciate it if you would let me take the name back. I know that you've

registered it, but I'm sure you'll understand my feeling that it is she - and

me - who in a bigger, fairer sense have the real right to it.

If you do want to start a fan site that would be great and I'm sure there are

lots of other names we could come up with that would do the job.

Will you now e-mail me back to confirm that you are happy to transfer the domain

name to me?

All the best

Helen Fielding"

(Text as recorded in e-mail from Fielding to Kiernan Earl of July 10, 2000,

Complaint, Annex 8. Underlining indicates counsel’s recommendations to proposed

text by Complainant.)

Respondent replied as follows:

"Dear Helen,

It was good speaking with you and I was interested to read your e-mail. I understand

your investment, both financial and emotional in Bridget, and

I agree that bridgetjones.com would be a logical home on the web for her.

My colleagues and I have spent considerable time and expense formulating our

plans

for a web-based fan site, and we are excited about the possibilities such a

site offers,

especially in view of the upcoming film.

I would consider an offer in the region of $15,000 to be appropriate compensation.

I look forward to hearing from you

Sincerely

Anthony Corbett"

(E-mail from Anthony Corbett to Helen Fielding of July 13, 2000, Complaint,

Annex 8)

Complainant responded with the following message:

"Thanks for your e-mail. I was extremely surprised at the price you want

for the domain name. I understand that domain names generally cost no more than

about $70 to register and it is not as if your material will go to waste, as

it can be easily hosted at another domain name. You yourself agree that bridgetjones.com

is the right and logical place for her on the web.

Can you let me know and see examples of the work which you and your colleagues

have done?

I hope we can come to an amicable arrangement about this without having to

resort to the ICANN or some other legal action.

I look forward to hearing from you.

HF"

(E-mail prepared for Complainant by counsel and transmitted by Complainant

to Respondent on or about July 14, 2000, Complaint, Annex 8)

Respondent did not reply to Complainant’s e-mail message of July 14, 2000.

Other than Respondent’s asserted preparations to use the disputed domain name

to host a "Bridget Jones" fan club, there is no evidence on the record

of this proceeding of any use or preparations to use the disputed domain name.

The Service Agreement in effect between Respondent and Network Solutions subjects

Respondent to Network Solutions’ dispute settlement policy, the Uniform Domain

Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and

with implementing documents approved by ICANN on October 24, 1999. The Uniform

Domain Name Dispute Resolution Policy (the "Policy") requires that

domain name registrants submit to a mandatory administrative proceeding conducted

by an approved dispute resolution service provider, of which WIPO is one, regarding

allegations of abusive domain name registration (Policy, para. 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges that she is the well-known author of literary works featuring

a fictional female character "Bridget Jones." Complainant’s literary

works have been marketed widely in many countries, including the United Kingdom

and the United States. The title of the first novel concerning this fictional

character is "Bridget Jones’ Diary: A Novel", and that title has sold

approximately three million five hundred thousand (3,500,000) copies worldwide

in its hardback and paperback editions combined. Complainant has registered

the name "Bridget Jones" as a trademark in the United Kingdom, and

has applied for registration in other countries, including the United States.

A motion picture based on Complainant’s "Bridget Jones" fictional

character is in production, and is reported on by the press.

In addition to transmitting a cease and desist letter and follow-up e-mail,

Complainant’s counsel attempted to contact Respondent by telephone, but was

unsuccessful in so doing. Complainant successfully contacted Respondent by telephone,

and the results of that conversation are included in the Complaint (see

Factual Background, supra).

Complainant alleges that the disputed domain name is identical or confusingly

similar to a trademark in which Complainant has rights.

Complainant alleges that Respondent has no rights or legitimate interests in

the disputed domain name. Respondent does not have Complainant’s authorization

to use the name, the name was already in use by Complainant when Respondent

registered the disputed domain name (and was known to Respondent), Respondent

has not provided evidence of demonstrable preparations to use the name in connection

with a bona fide offering of goods or services, Respondent is not commonly known

by the disputed domain name, and Respondent is not making a legitimate non-commercial

or fair use of the name.

Regarding the issue of Respondent’s bad faith, Complainant states in

its own words:

"11.5 The Complainant contends that the Respondent has registered and

is using the domain name in bad faith in violation of the Policy at paragraph

4(a)(iii) on the following grounds:-

(i) At the time of the registration of the domain name by the Respondent the

mark <BRIDGET JONES> was well known both in the UK and the US. The Complainant

had substantial goodwill in the mark since 1995 and had registered trade mark

rights since October 1997;

(ii) In November 1999 the sequel Bridget Jones novel ‘The Edge of Reason’ was

published in the UK and later published in the US in February 2000 and in other

parts of the world. It strains belief that the Respondent would not have known

about the Complainant's legitimate interest in the mark and in the domain name

and therefore had actual knowledge or should have reasonably known that the

Complainant had prior rights in the mark;

(iii) The Respondent has asked for $15,000 (US Dollars) from the Complainant

for the transfer of the domain name. This represents a significant uplift in

the original cost of registering the name and a cynical attempt to exploit the

value of the intellectual property rights in the name particularly in view of

the upcoming film as evidenced by the Respondent writing ‘We are excited about

the possibilities such a site offers, especially in view of the upcoming film,’

(iv) The Complainant has reason to believe that the domain name was registered

in order to prevent Complainant as owner of the trade mark from reflecting the

mark in a corresponding domain name. This is evidenced by the fact that the

Respondent admits in correspondence with the Complainant at Annex 8 ‘bridgetjones.com

is the right place for her’; and

(v) the Complainant has reason to believe that the domain name was registered

primarily to attract for financial gain Internet users to the Respondent's web

site or other on-line location, by creating a likelihood of confusion with the

Complainant's mark as to the source, sponsorship, affiliation, or endorsement

of the Respondent's web site." (Complaint, para. 11.5)

Complainant refers to precedents of various administrative panels established

under the Policy. Complainant refers to precedents of United Kingdom and United

States courts in support of its legal arguments.

Complainant requests that the Panel ask the registrar to transfer the domain

name "bridgetjones.com" from Respondent to it (id., para. 11.12).

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy")

adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on

August 26, 1999, (with implementing documents approved on October 24, 1999),

is addressed to resolving disputes concerning allegations of abusive domain

name registration. This sole panelist has in an earlier decision discussed the

background of the administrative panel procedure, and the legal characteristics

of domain names, and refers to this earlier decision for such discussion 1.

The Panel will confine itself to making determinations necessary to resolve

this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process

requirements be met. Such requirements include that a respondent have notice

of proceedings that may substantially affect its rights. The Policy, and the

Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"),

establish procedures intended to assure that respondents are given adequate

notice of proceedings commenced against them, and a reasonable opportunity to

respond (see, e.g., para. 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary

to notify the Respondent of the filing of the Complaint and initiation of these

proceedings, and that the failure of the Respondent to furnish a reply is not

due to any omission by WIPO. E-mail exchanges between Complainant and Respondent

indicate that Respondent receives e-mail messages at the address used by WIPO

to transmit documents to him (see Factual Background, supra).

Paragraph 4(a) of the Policy sets forth three elements that must be established

by a complainant to merit a finding that a respondent has engaged in abusive

domain name registration, and to obtain relief. These elements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark

or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain

name; and

(iii) Respondent’s domain name has been registered and is being used in bad

faith.

Each of the aforesaid three elements must be proved by a complainant to warrant

relief.

Because the Respondent has defaulted in providing a response to the allegations

of Complainant, the Panel is directed to decide this administrative proceeding

on the basis of the complaint (Rules, para. 14(a)), and certain factual conclusions

may be drawn by the Panel on the basis of Complainant’s undisputed representations

(id., para. 15(a)).

Complainant is the holder of a trademark registration for the word mark "BRIDGET

JONES" and has used that mark in commerce (see Factual Background,

supra). Complainant’s registration of the "BRIDGET JONES" mark

in the United Kingdom constitutes prima facie evidence of its validity in United

Kingdom law 2. Complainant also has made out a prima facie

case for common law trademark rights in the "BRIDGET JONES" mark in

the United States 3, and Respondent has not challenged

this case. The Panel determines that Complainant has rights in the trademark

"BRIDGET JONES". Based on the October 28, 1997, date of Complainant’s

registration of the trademark "BRIDGET JONES" in the United Kingdom,

and without prejudice to whether Complainant may hold earlier-arising rights

in the mark, the Panel determines that Complainant’s rights in the mark arose

prior to Respondent’s registration, on October 8, 1998, of the disputed domain

name "bridgetjones.com".

Respondent has registered the domain name "bridgetjones.com". This

name is identical to Complainant’s trademark "BRIDGET JONES", except

that (1) the domain name eliminates the space between the words "Bridget"

and "Jones", (2) the domain name adds the generic top-level domain

name ".com", and (3) the domain name employs lower case letters, while

the mark is generally used with initial capital letters.

Insofar as domain names are not case sensitive, and the elimination of space

between terms is dictated by technical factors and common practice among domain

name registrants, the Panel concludes that use of the lower case letter format

in "bridgetjones.com", and the elimination of a space between the

words "Bridget" and "Jones" to form that name, are differences

without legal significance from the standpoint of comparing "bridgetjones.com"

to "Bridget Jones" 4. Similarly, the addition of

the generic top-level domain (gTLD) name ".com" is without legal significance

since use of a gTLD is required of domain name registrants, ".com"

is one of only several such gTLDs, and ".com" does not serve to identify

a specific service provider as a source of goods or services 5.

For purposes of this proceeding, it is unnecessary to decide whether, in light

of these factors, Respondent’s domain name is "identical" to Complainant’s

trademark, since Respondent’s domain name "bridgetjones.com" is without

doubt confusingly similar to Complainant’s trademark "Bridget Jones".

Complainant has met the burden of proving that Respondent is the registrant

of a domain name that is identical or confusingly similar to a trademark in

which the Complainant has rights, and it has thus established the first of the

three elements necessary to a finding that Respondent has engaged in abusive

domain name registration.

The second element of a claim of abusive domain registration is that the Respondent

has no rights or legitimate interests in respect of the domain name (Policy,

para. 4(a)(ii). The Policy enumerates several ways in which a respondent

may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation,

if found by the Panel to be proved based on its evaluation of all evidence presented,

shall demonstrate your rights or legitimate interests to the domain name for

purposes of Paragraph 4(a)(ii)

(i) before any notice to you of the dispute, your use of, or demonstrable preparations

to use, the domain name or a name corresponding to the domain name in connection

with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly

known by the domain name, even if you have acquired no trademark or service

mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name,

without intent for commercial gain to misleadingly divert consumers or to tarnish

the trademark or service mark at issue." (Policy, para. 4(c))

There is no evidence on the record of this proceeding to suggest that Respondent

has used or prepared to use the disputed domain name in connection with a bona

fide offering of goods or services, nor is there any suggestion that Respondent

has been commonly known by the disputed domain name.

In telephone conversation and an exchange of e-mail correspondence initiated

by Complainant (following the transmission of a cease and desist demand from

her counsel and attempts by her counsel to contact Respondent by telephone),

Respondent indicated that he intended to use the disputed domain name to establish

a fan club devoted to Complainant’s fictional "Bridget Jones" character.

In the abstract, the use of a domain name incorporating a trademarked literary

name to establish a fan club might constitute legitimate noncommercial or fair

use of that name. However, there are several factors that persuade the Panel

that a finding of legitimate noncommercial or fair use of Complainant’s trademark

is not warranted in this proceeding.

First, the Panel notes that while paragraph 4(c)(i) of the Policy refers to

"preparations to use" a domain name in the context of offering goods

or services, paragraph 4(c)(iii) refers only to the active "making"

of a "legitimate noncommercial or fair use". The express language

of the Policy indicates that its drafters intended to limit the circumstances

in which legitimate noncommercial or fair use could successfully be claimed.

Applying the express language of the Policy to Respondent’s claim of legitimate

noncommercial or fair use, the Panel finds that Respondent is not "making"

such legitimate non-commercial or fair use of Complainant’s mark in the disputed

domain name.

The Panel recognizes that there are contexts in which the registrant of a domain

name should not be expected to make immediate use of that name, including for

legitimate noncommercial or fair use purposes. For example, this sole panelist

on a previous occasion has observed that a requirement of immediate use in hosting

websites critical of trademark holders might stifle free expression by allowing

such trademark holders to initiate abusive domain name proceedings before such

domain names could effectively be put to active use 6. Also,

this sole panelist has recognized that a delay in using a domain name for a

legitimate noncommercial or fair use purpose in response to a cease and desist

demand might be justified 7.

In the present proceeding, Respondent registered the disputed domain name approximately

two years ago. He has not made active use of the disputed domain name to host

a web-based fan club, nor has he made any other apparent use of the name. Although

Respondent has asserted that he and his "friends" or "colleagues"

have worked on plans for such a fan club, in response to Complainant’s request

and in response to the initiation of this proceeding, he has not provided any

evidence of such plans. In concrete terms, the only evident use by Respondent

of the disputed domain name has been to offer it for sale to Complainant at

a substantial price. Under these circumstances, the Panel considers it appropriate

to apply the express language of the Policy. Respondent is not "making"

a legitimate non-commercial or fair use of the disputed domain name, and has

not established a legitimate non-commercial or fair use of Complainant’s mark.

Consequently, Complainant has established the second element necessary to succeed

on a claim of abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but

without limitation", be evidence of bad faith (Policy, para. 4(b)). Among

these circumstances are (1) that the domain name has been registered or acquired

by a respondent "primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the complainant who is the owner

of the trademark or service mark or to a competitor of that complainant, for

valuable consideration in excess of [respondent’s] documented out-of-pocket

costs directly related to the domain name" (Id., para. 4(b)(i));

(2) that a respondent has registered the domain name "in order to

prevent the owner of the trademark or service mark from reflecting the mark

in a corresponding domain name, provided that [the respondent has] engaged in

a pattern of such conduct" (id., para. 4(b)(ii)), and (3) that

a respondent "by using the domain name, … [has] intentionally attempted

to attract, for commercial gain, Internet users to [its] web site or other on-line

location, by creating a likelihood of confusion with the complainant’s mark

as to the source, sponsorship, affiliation, or endorsement of [respondent’s]

web site or location of a product or service on [its] web site or location"

(id., para. 4(b)(iv)).

In this case, Respondent offered to sell the disputed domain name to Complainant

in response to a cease and desist demand from Complainant’s counsel, followed

by a direct request from Complainant to transfer the name to her. Standing alone,

an offer to sell a domain name in response to a demand from another party does

not constitute bad faith within the meaning of the Policy. There is nothing

inherently wrongful in the offer or sale of domain names, without more, such

as to justify a finding of bad faith under the Policy. However, the fact that

domain name registrants may legitimately and in good faith sell domain names

does not imply a right in such registrants to sell domain names that are identical

or confusingly similar to trademarks of others without their consent.

Respondent in this case has offered to sell to Complainant, at a substantial

price, a domain name corresponding to a trademark in which Complainant has rights.

Respondent was demonstrably aware of Complainant’s interests in the "Bridget

Jones" name and mark when he registered the disputed domain name. Respondent

was (and is) aware of the commercial value of Complainant’s mark as the means

to distinguish Complainant’s literary works and related products from those

of other authors. Under these circumstances, it is reasonable to infer that

Respondent registered the disputed domain name with the intention of selling

it to Complainant for valuable consideration in excess of his out-of-pocket

expenses directly related to the name. This constitutes bad faith within the

meaning of paragraph 4(b)(i) of the Policy.

Complainant has established the third and final element necessary for a finding

that the Respondent has engaged in abusive domain name registration.

The Panel will therefore request the registrar to transfer the domain name

"bridgetjones.com" to the Complainant.

Decision

Based on its finding that the Respondent, Anthony Corbert (also known as Anthony

Corbett), has engaged in abusive registration of the domain name "bridgetjones.com"

within the meaning of paragraph 4(a) of the Policy, the Panel orders that

the domain name "bridgetjones.com" be transferred to the Complainant,

Helen Fielding.

Frederick M. Abbott

Sole Panelist

Dated: September 25, 2000

Footnotes:

1. See Educational Testing Service v. TOEFL, Case No.

D2000-0044, decided March 16, 2000.

2. See FIRST COUNCIL DIRECTIVE of 21 December 1988 to

approximate the laws of the Member States relating to trade marks (89/104/EEC),

OJ L 040 , 11/02/1989 P. 0001 – 0007, and Section 72 of the Trade Marks

Act 1994 (UK). See, e.g., Aktiebolaget Volvo v. Heritage (Leicester)

Ltd, Chancery Division (UK), May 7, 1999. See also W.R. Cornish, Intellectual

Property, at 17-09 (4th ed. 1999).

3. In the United States, the title of a literary or artistic

work may acquire (at least) common law trademark status. See, e.g., Dr.

Seuss Enterprises v. Penguinbooks USA, 109 F.3d 1394 (9th Cir.

1997). See also J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair

Competition §§10:1-10:4 (4th ed. 1996 and updated).

4. See Brookfield Communications v. West Coast Entertainment,

174 F.3d 1036, 1055 (9th Cir. 1999).

5. See Sporty's Farm v. Sportsman's Market,

202 F.3d 489, 498, (2d Cir. 2000), citing Brookfield, id. For purposes

of its decision, the Panel need not address whether ".com" may be

capable of acquiring secondary meaning in another context.

6. Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico,

Case No. D2000-0477, decided July 20, 2000.

7. Apple Computer, Inc. v. DomainHouse.com, Inc., Case No.

D2000-0341, decided July 5, 2000.