Laches in UDRP case (6)

8/8/2019 Laches in UDRP case (6)

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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tom Cruise v. Network Operations Center / Alberta Hot Rods

Case 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 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 ofRegistrars 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 (theRules), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (theSupplemental Rules).
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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 to

ensure 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 Registrars verification report, Respondent is the registrant of the disputed domain name. 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 Respondents websitelocated at www.celebrity1000.com(the Celebrity 1000 website). As of November 2005, the homepage forthat 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 information

in 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 any

way 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.comwebsite pending resolution of this dispute. Response, Exhibit 1, Declaration of Jeff Burgar.


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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,1WIPO Case No.D2000-1838;Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872; Kevin Spacey v.

Alberta Hot Rods, NAF Case No. FA114437; Jeffrey Archer v. Alberta Hotrods tda CELEBRITY 1000,WIPOCase No. D2006-0431.In these cases, Respondent was found to have engaged in abusive domain nameregistration and use, and Respondents 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 ofJerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616,Respondent prevailed against a claim ofabusive domain name registration and use. The panel in that case found that Respondent had no reason tobelieve that the disputed domain name 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 Spaceydecision, supra, on similar facts. (See further discussion of prior decisionsinvolving Respondent, infra.).

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 resolution

service provider, of which the Center is one, regarding allegations of abusive domain name registration anduse (Policy, paragraph 4(a)).

5. Parties Contentions

A. 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, TOM

CRUISE 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 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 Respondents 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 Complainants rights in its mark. Until recently, the disputed domainname redirected Internet users to Respondents 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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domain name to a website which is almost entirely comprised of third party advertisements that have norelation to, or affiliation with, Tom Cruisethe one link on the Site entitled Tom Cruise links to inactive orcached pages provided by third parties that do not appear to be updated, reviewed or modified by theRegistrant [sic]. Complainant argues that Respondent is using the disputed domain name for commercialgain by creating a likelihood of confusion as to Complainants sponsorship, affiliation with or endorsement ofRespondents website.

Complainant further refers to previous disputes under the Policy involving Respondent in which Respondentwas found to have engaged in a pattern of registering the names of famous people to prevent the owners oftrademarks or service marks from reflecting those marks in corresponding domain names. Complainantargues that Respondent has continued this pattern of bad faith registration in connection with the disputeddomain name.

Complainant requests the Panel to order the registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent expressly disclaims a challenge to Complainants rights in a trademark, and expresslydisclaims a challenge to an identity or confusing similarity between the disputed domain name and the mark.(Respondent does not dispute this element of the Policy.)

Respondent asserts that it has rights and a legitimate interest in the disputed domain name. Respondentcontends that its website is a fan site dedicated to Tom Cruise, and that the right for individuals to operatenon-misleading commercial or non-commercial informative websites is recognized and establishes alegitimate interest in the domain name under the Policy. Respondent refers to several panel decisions whichhave recognized rights or legitimate interests in such uses. Respondent further argues that the right forindividuals to operate celebrity fan sites is protected by the First Amendment of the United StatesConstitution, citingAnna Nicole Smith c/o CMG Worldwide v. DNS Research, NAF Case No. FA220007.Respondent claims that having advertisements on its website that generate revenue does not make its useillegitimate. Respondent argues that disclaimers on the Celebrity 1000 and Tom Cruise websites supportthe legitimacy of its use.

Respondent observes that the most recent use in connection with the Tom Cruise fan site does not include

biographical information, but does contain a primary link that generated search results for Tom Cruise,along with other general entertainment links. Respondent asserts that it intended to link that site to the TomCruise section of the Celebrity 1000 website, but did not do so before it disabled the site pending resolutionof this dispute. Respondent asserts that the website at www.celebrity1000.com is a legitimate fan websitenetwork in which Respondent has invested hundreds of thousands of dollars and substantial effort, whichuse also establishes Respondents legitimate interest. Respondent notes that this site involves a bona fideoffering of goods and services, and that it has been recognized as a legitimate website network in otherUDRP and court decisions.

Respondent states that a crucial issue in deciding whether there is legitimate interest is whether Internetusers are being misleadingly diverted. Respondent observes that it has operated a fan website withinformation about Tom Cruise and used the disputed domain name in connection with Celebrity 1000which posts biographical information about Tom Cruise, along with links to other fans sites. It argues thatInternet users will get what they expect, that is, information, and not products or services, when entering thedisputed domain name into a browser.

Respondent states that it is irrelevant whether Complainant has authorized use of his mark in the disputeddomain name.

Respondent states that it has in no way sought to tarnish the reputation of the Complainant.

Respondent observes that in a number of cases under the Policy in which respondents were found to lacklegitimate interests in fan websites, this was because they had only planned to create a website. In thiscase, Respondent has long operated its fan website.


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Respondent states that it is not engaged in bad faith registration or use. Respondent has made no effort tosell the disputed domain name to Complainant, to disrupt his business or to profit by creating a likelihood ofconfusion. It notes that at the time Respondent registered the disputed domain name the Policy had notbeen adopted. Accordingly, Respondent could not have acted in bad faith when registering the disputeddomain name because the only law available suggested that such use was lawful.

Respondent argues that while previous panels have found it to have engaged in a pattern of registering the

trademarks of third parties to prevent them from registering those marks in domain names, this Panel shouldnot be prejudiced by those decisions. It should engage in an independent review of the facts.

Respondent contends that if the maintenance of its fans sites is disreputable, then so too are numerouspopular magazines and television shows focused on celebrity news.

The Respondent argues that Internet users entering www.tomcruise.com in their browsers are not seekingthe actor in person, nor would they expect that the actor is endorsing the website. Instead, the Internet useris looking for information about the actor. Respondent provides such information. For this reason,Respondent is not misleading Internet users.

Respondent argues that Complainants 10-year delay in initiating this action indicates that Complainant didnot believe Respondent truly had been acting in bad faith. Respondent cites prior cases under the Policy inwhich failure to act was taken as evidence that a complainant was not suffering harm or did not believe therespondent was intentionally diverting Internet users. Respondent refers to one case in which a panelindicates that failure to act may constitute a waiver of rights to request a domain name be transferred (AnnaNicole Smith, supra, but see discussion infra).

Respondent argues that, to the extent prior decisions under the Policy may support a finding of abusivedomain name registration and use here, those cases may have been wrongly decided. The Panel is urgedto follow the minority of decisions which support its position, which Respondent believes are better decided.

Respondent requests the Panel to reject Complainants request for a finding of abusive domain nameregistration and use.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registrationand use. The Panel will confine itself to making determinations necessary to resolve this AdministrativeProceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Suchrequirements include that a respondent have notice of proceedings that may substantially affect its rights.The Policy and the Rules establish procedures intended to ensure that respondents are given adequatenotice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules,paragraph 2(a)).

Respondent has filed a comprehensive Response to the Complaint, and the Panel concludes thatRespondent had adequate notice of these proceedings and a reasonable opportunity to respond.

Paragraph 4(a) of the Policy sets forth three elements that must be proved by a complainant to obtain reliefunder the Policy. These elements are that:

(i) respondents domain name is identical or confusingly similar to a trademark or service mark in which thecomplainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and


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(iii) respondents 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.

A. Identical or Confusingly Similar

Complainant Tom Cruise, a well-known actor, asserts trademark and service mark rights in his name (seeFactual Background and Parties Contentions, supra). Respondent, through counsel with experience andexpertise in representing clients in proceedings under the Policy, has expressly waived a challenge toComplainants rights in a trademark and service mark, as well as to identity or confusing similarity betweenthe mark and the disputed domain name.

The Panel accepts the pleading of the parties and finds that Complainant has trademark and service markrights in the name Tom Cruise for purposes of this proceeding, and that the disputed domain name is identical to the Complainants TOM CRUISE mark for purposes of the Policy.2

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that the respondent has norights or legitimate interests in respect of the domain name (Policy, paragraph 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 provedbased on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to thedomain 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 domainname or a name corresponding to the domain name in connection with a bona fide offering of goods orservices; 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 forcommercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.(Policy, paragraph 4(c)).

Respondent claims rights or legitimate interests in the disputed domain name. Respondents principalargument for rights or legitimate interests is that it is engaging in legitimate noncommercial or fair use ofthe name.

Respondents use of celebrity names in domain names in connection with its Celebrity 1000 website (incircumstances very similar to those found here) has been found by several panels established under thePolicy not to constitute legitimate noncommercial or fair use. Already in February 2001, a panel found Solong as the admitted bunch of celebrity domain names were all directed to the www.celebrity1000.com site,the Respondents conduct must be characterized as a stockpiling of leading artistes names, their onlysubstantial function then being to attract people to view advertising on the site. Celine Dion and Sony Music

Entertainment (Canada) Inc. v. Jeff Burgar operating or carrying on business as Celine Dion Club, WIPOCase No. D2000-1838. The panel went on to consider Respondents claim that it intended to sever theindividual celebrity domain name and establish a stand-alone site for the artist and asked whether that couldalter the situation, concluding Are they not seeking merely to achieve their previous position by lesstransparent means? Id.

In 2002, a panel considered very similar conduct to that here in Kevin Spacey v. Alberta Hot Rods, NAFCase No. FA114437. The panel concluded on the subject of the Respondents assertion of legitimatenoncommercial or fair use, Respondents use of the domain name for an unauthorizedfan site, as an apparent stratagem after previously using the site to direct Internet traffic to its owncommercial site, demonstrates that Respondent is not making fair use of the domain name within the
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meaning of the Policy It is worth noting that the three-member panel which decided unanimously againstRespondent in that case included the presiding panelist in BruceSpringsteen v. Jeff Burgar and BruceSpringsteen Club, WIPO Case No. D2000-1532, which had previously rendered a majority opinion in favorof Respondent. Regarding that panelists change of views, the unanimous decision stated Furthermore, twoyears after the Springsteen case, the persistent behavior of this Respondent in the registration of celebritynames militates against the benefit of the doubt which the Panelist afforded the Respondent in the previouscase. Kevin Spacey, supra.

A three-member panel in Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872, rejectedRespondents assertion of legitimate noncommercial or fair use on essentially the same grounds as thepanels in Celine Dion and Kevin Spacey.

Respondents use of the disputed domain name to link to the Celebrity 1000 website wasnot a legitimate noncommercial or fair use. It was not noncommercial because the use was predominantlyfor the purpose of generating advertising revenues. It was not fair because Internet users were brought toa general website with information about a wide variety of celebrities and related matters that were notspecifically tied to Tom Cruise. The TOM CRUISE trademark was effectively being used to promote othercelebrities and, predominantly, advertising of third-party products. See, e.g., HBP, Inc. v. Front and CenterTickets, Inc.,WIPO Case No. D2002-0802 and Pfizer Inc v. Van Robichaux, WIPO Case No. D2003-0399,for discussion of fair use elements.

This Panel thus agrees with the finding in the Celine Dion, Kevin Spaceyand Dr. Michael Crichtonproceedings that Respondents use of celebrity names in connection with the Celebrity 1000 website isprincipally directed to driving Internet users to a website which is a vehicle for generating advertisingrevenues. The advertisements on the Celebrity 1000 website are not a minor incident to the provision ofinformation. They form a substantial part of its operation. The individual celebrity names are not usedprincipally to provide information to the public. The information provided at the website for individualcelebrities is rather limited. The principal purpose is to channel Internet users to a series of advertisements.

Respondents recent shift to linking the disputed domain name directly to a Tom Cruise website does notcure the problem of failure to establish legitimate noncommercial or fair use. This tactic already was rejectedin the Celine Dion and Kevin Spaceydecisions. In any event, because the Tom Cruise website was almostwholly devoted to third-party advertisement links, it is difficult to see how this would better qualify as fair useof Complainants mark (even with an intended link to the www.celebrity1000.com website).

Respondent has made reference to a decision which supported its use of a celebrity name in connectionwith its Celebrity 1000 website, The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No.D2002-0616. The facts and the reasoning of the panel in that case are distinguishablefrom those here. The subject of the disputed domain name in that case did not, during his lifetime, use hisname for commercial purposes. The public did not and, for the most part does not connect, the name AlbertEinstein to a type of commercial service. After his death, family members were able to register the AlbertEinstein name as a trademark in France, and that allowed the first element of the Policy to be satisfied.However, the panel in the Hebrew Universitycase held that Respondent in Canada would have had noreasonable expectation that trademark rights in Albert Einstein existed, and so did not register or use thedisputed domain name in bad faith. Moreover, Internet users would not have expected a domain namerelating to the deceased scientist to take them to a website promoting or providing his commercial services,so they were not misled.

Respondent has referred to its right of free speech under the First Amendment to the United States

Constitution. Respondent effectively relies on a reference to the First Amendment in theAnna Nicole Smithdecision, supra. The exclusive rights granted to trademark holders, like the exclusive rights granted tocopyright holders, by their nature impose a certain limitation on freedom of expression. The right of freespeech is recognized under the Policy, inter alia, in paragraph 4(c)(iii), further to which Respondent isallowed to make legitimate noncommercial or fair use of a domain name. The Panel is well aware of theimportance of the First Amendment and freedom of expression. By limiting Respondents use ofComplainants trademark in the disputed domain name, the Policy by definition effects some limitation onRespondents scope of expression. However, it does this in a way consistent with the balancing of interestsinherent in the general recognition of trademark rights. Free speech does not by definition entail a right totake unfair commercial advantage of a trademark.
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Respondent has also referred to a federal district court decision as speaking favorably of RespondentsCelebrity 1000 website (Kevin Spacey v. Jeff Burgar, 207 F. Supp. 2d 1037 (CD Cal. 2001)). The quotefrom the district court decision provided by Respondent is, in the view of this Panel, neutrally descriptive.The district court dismissed the subject cause of action on jurisdictional grounds, and the decision does notfurther Respondents defense here.

Respondent also argues that the disputed domain name was used prior to notice of a dispute in connection

with a bona fide offering of services.

The Panel accepts that provision of information regarding celebrities may constitute services, and thatservices may be provided either on a commercial or noncommercial basis within the meaning of paragraph4(c)(i) of the Policy (see discussion in 2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO Case No.D2004-0001, referring also to Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross,WIPO Case No. D2001-1042).

Respondent has used the disputed domain name to direct Internet users to a website, which for five years(according to Respondent) did not include biographical information about Complainant, but substantialadvertisement of third-party products. From 2001, Respondents general Celebrity 1000 website includedeight paragraphs of information about Complainant on an internally-linked subpage, but the homepageremained substantially devoted to third-party products and links. Most recently, the disputed domain namehas identified a site almost wholly devoted to third-party products and advertisement. The Panel does not

consider this pattern of usage of the disputed domain name to constitute a bona fide offer of services(whether or not prior to notice of a dispute). The Panel considers that Respondent has attempted to takeunfair advantage of Complainants rights in his mark by using it to attract Internet users to a website largelydevoted to third-party advertisement and links. Respondents alleged bona fide use of the disputed domainname is a pretext for attracting Internet users to its advertising and revenue-generating site. See, e.g., DJRHoldings, LLC v. Paul Gordon a/k/a IQ Management Corporation, NAF Case No. FA141813.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, among others, shall be evidence ofthe registration and use of a domain name in bad faith: a respondent has registered the domain name inorder to prevent the owner of the trademark or service mark from reflecting the mark in a correspondingdomain name, provided that the respondent has engaged in a pattern of such conduct (paragraph 4(b)(ii));or, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain,

Internet users to its website or other on-line location, by creating a likelihood of confusion with thecomplainants mark as to the source, sponsorship, affiliation, or endorsement of the respondents website orlocation or of a product or service on the respondents website or location (paragraph 4(b)(iv)).

Respondent has been found by previous panels under the Policy to have engaged in a pattern of registeringdomain names to prevent the owners of marks from registering them. See Celine Dion and Kevin Spacey,supra. Respondents similar course of conduct here with respect to Complainants trademark and servicemark justifies an adverse finding under the terms of paragraph 4(b)(ii).

There is one question outstanding: does the fact that Complainant delayed for 10 years following registrationof the disputed domain name to bring this action against Respondent act as a bar to a finding in favor ofComplainant?

Respondent in its pleadings argued that Complainants authorization or lack thereof for its use of the

disputed domain name is irrelevant to the Panels decision whether Respondent has engaged in abusivedomain name registration and use. To the extent Respondent has argued that Complainants delayconstitutes an implicit authorization or approval of Respondents conduct, the fact that authorization isirrelevant, in Respondents view, effectively moots the issue of implicit authorization.

Respondent refers to certain decisions which it says stand for the proposition that a delay of even two yearsin initiating a claim under the Policy acts as a waiver of rights. The panel inAnna Nicole Smith c/o CMGWorldwide v. DNS Research, NAF Case No. FA220007, suggested that failing to act within a reasonabletime constitutes a waiver. The cases cited by the panel in that case do not lend much support to thatproposition. Its first citation was toXFM Limited v. Intervid Limited,WIPO Case No. D2000-1298. In that
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case, the panel said that the complainants delay in bringing a claim was one in a series of factors that tilteda delicate balance in favor of the respondent, where certain factual assertions of the respondent weredifficult to disprove and the panel considered that the complainant had not generally satisfied its burden ofproof. The decision does not stand for the proposition that delay in bringing a claim generally acts as awaiver of the right to do so. The reference by the panel inAnna Nicole Smith, supra, to Jeremy Grodberg v.Rugly Enterprises LLC, NAF Case No. FA092975, is mystifying. In that case, the complainant had failed toact to establish rights in a trademark or service mark in a timely manner so as to be able to protect his

alleged (but non-existent) mark under the Policy. It is difficult to understand the reference to delay in bringinga claim. This Panel does not accept that there is meaningful precedent under the Policy for refusing toenforce trademark rights on the basis of a delay in bringing a claim following use of a disputed domainname. The panel in The Hebrew University, supra, much relied on by Respondent here, in fact rejects thenotion that there is a doctrine of laches or limitation period in the Policy.

To the extent that it may be relevant, Respondent has made no credible argument that it has or will sufferinjury because of Complainants delay in initiating this proceeding. While Respondent claims to haveinvested hundreds of thousands of dollars in its Celebrity 1000 website, it does not assert that it did sospecifically based on the disputed domain name. Respondent registered a substantial number of celebrityname-based domain names, and over the past several years, it has lost a number of those as aconsequence of proceedings under the Policy. There is no evidence that Respondent has altered itsbehavior as a result of Complainants delay, or that Respondent has suffered because of it.

With that said, the Panel considers that it would be relevant to its decision if there was some firm indication,express or tacit, that Complainant had consented to Respondents use of its trademark in the disputeddomain name (cf.,2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO Case No. D2004-0001). In thisproceeding, there is no indication of any correspondence between Complainant and/or any representative ofComplainant, on one side, with Respondent, on the other, or similar evidence, to suggest or imply thatComplainant may have approved of or condoned Respondents use. Without some substantial evidence toindicate that Complainant approved of or condoned Respondents use of his mark in the disputed domainname, the Panel is not prepared to import a bar against his cause of action.

The Panel finds that Complainant has proved the three elements necessary to obtain relief under the Policyand that accordingly the disputed domain name should be transferred to Complainant.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, thePanel orders that the domain name, , be transferred to the Complainant.

Frederick M. AbbottPresiding Panelist

Sally M. AbelPanelist

David SorkinPanelist

Dated: July 5, 2006

1Jeff Burgar is president of Alberta Hot Rods. See, Declaration of Jeff Burgar, Response, Exhibit 1.

2The Panel notes that there might be proceedings under the Policy where the pleadings of the parties couldnot be accepted as the basis for a determination, such as where those pleadings are manifestly inconsistentwith the terms of the Policy. There is no such manifest inconsistency or other extraordinary factor operating
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against acceptance of the will of the parties here. The Panel does not consider it necessary to furtherexamine the subject issue.

Documents

Laches in UDRP case (6)