Sofia Vergara has won control of the domain name SofiaVergara.org which the domain owner alleged was a fan site for the Golden Globe, Primetime Emmy Award, and Screen Actors Guild Award nominated actress who currently stars in the Emmy Award winning television series, Modern Family.
Ms. Vergara appears to own SofiaVergara.com which is registered to the World Entertainment Agency of Miami.
Here are the relevant facts and findings from the one person UDRP panel decision issued by WIPO Arbitration and Mediation Center:
“In addition to her acting career, the Complainant has provided endorsements for Pepsi and Covergirl and has released, under her own name, lines of fragrances, clothing, footwear, jewellery, accessories and furniture. As a result of these activities, Forbes magazine ranked her No. 32 in its listing of the World’s 100 Most Powerful Women in 2014.
The Complainant has secured a number of trademark registrations for SOFIA VERGARA in the USA for a range of goods and services
The disputed domain name was registered by the Respondent on July 30, 2014.
The disputed domain name resolves to a website headed “SofiaVergara.org” and, at least some times, the tag line “We Love Her”.
The right hand side of the website includes a series of photographs which are apparently taken from the Complainant’s Instagram stream.
The bulk of the site appears to be posts with short reports about and photographs of a number of celebrities. Each of the posts also has at least one “rotating” hyperlinked pay-per-click advertisement.
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, a trademark in which the Complainant has rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for SOFIA VERGARA referred to in section 4 above. That is sufficient to satisfy the first part of the inquiry.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.
The Complainant states that she has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with her. The Complainant has not licensed the Respondent to use her trademark. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
In these circumstances, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent’s answer is that he registered the disputed domain name and is using it for a fan site and emphasizes the use of the tag line “We Love Her” to reinforce his bona fides.
The Respondent says further that he has not sought to commercialise a “.org” domain name which are generally run and are understood by the general public to be not for profit enterprises. He says:
The fan site was intended to curate stories related to Ms. Vergara and celebrities associated with her.
Any discussion of other celebrities was incidental or an editorial decision that should be considered protected free speech. There is no evidence of any content featuring anything the [sic] could be construed as competition with Ms. Vergara.
Exhibit D to the Complaint includes a print out of the website to which the disputed domain name resolved just before the Complaint was filed.
It essentially reflects the website as operating at the time of this decision save, as the Respondent notes, the tag line “We Love Her” appears at or near the top of the web page or the display of the URL in the browser.
As noted above, a column down the right hand side of the website, approximately one quarter of the page’s width, features a pay-per-click advertisement at the top and then a number of photographs from the Complainant’s Instagram stream.
The Complainant contends that these photographs have been obtained unlawfully or at least without authorization and contribute to the website being mistaken for an official website of the Complainant. The Respondent disputes this and claims the terms of the Instagram licence agreement permit the usage in question.
It is unnecessary to decide that issue.
The main part of the website, extending across some two thirds to three quarters of the website’s width are “posts” with reports about activities of other celebrities.
Each of these posts features a pay-per-click advertisement.
If one clicks on the “Read more” button contained within a post, one is taken to a blank page for comments. The Respondent says that these are blank because of the short time the website has been in operation.
If one clicks on the photograph of the celebrity in question in the “post”, one is taken to another “gossip” website at “www.justjared.com”, which appears to be the source of the “posts” on the Respondent’s website to which the disputed domain name resolves.
The central point here is that, apart from the Instagram stream, the website which the disputed domain name resolves to essentially consists of posts about other celebrities and pay-per-click advertisements. The Complainant does not appear to be the subject of any of the “posts” on the website to which the disputed domain name resolves or, if she is, her “appearances” are as only one of very many.
Given these posts make up by far the bulk of the website, it is hardly fair to characterize them as only “incidental” to discussion of the Complainant or matters related to her. It is also not apparent how or in what way the posts are posts about celebrities associated with the Complainant given the number and diversity of celebrities about whom there are posts. The posts do not appear to be about activities the other celebrities are engaging in with the Complainant. Nor given the diversity of celebrities involved do they appear to be actors she is working with or celebrities particularly associated with her.
The Instagram stream is of course related to the Complainant. By extent of the website it takes up and number of photographs included in the stream compared to the number of “posts”, however, it is plainly subsidiary to the “posts” about celebrity gossip. If its use were taken to suggest that the Complainant is responsible for the “posts” or lending her imprimatur to them, it would be quite misleading.
The number and prominence of the pay-per-click advertisements precludes the apparent claim that the website is a noncommercial or not for profit operation.
It may well be perfectly legitimate for the Respondent to post “news” or gossip snippets about any celebrities that catch his interest. The vice in the conduct, at least for present purposes, is not the posting of such snippets but the use of the Respondent’s trademark to attract traffic to his website. That does not qualify as “fair use” under the Policy.
Having regard to all these matters, the Panel rejects the proferred justification that the disputed domain name is legitimately being used as a fan site.
The tag line “We Love Her”, which the Respondent relies on so heavily, could suggest that; but is ambiguous and could equally reflect an authorized site. In any event, it does not reflect the substance of the website itself. The Respondent has not rebutted the prima facie case established by the Complainant.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Respondent’s claim that the disputed domain name was acquired to operate a fan site establishes that the Respondent was well and truly aware of the Complainant when the Respondent registered the disputed domain name. The Complainant’s name is of course also her registered trademark.
The Panel finds that use of the disputed domain name to generate revenues from pay-per-click advertising associated with stories about other celebrities is use of the disputed domain name in bad faith. The (or the bulk of the) stories and the pay-per-click advertisements have no association with the Complainant. The Respondent therefore appears essentially to be using the Complainant’s name and trademark to attract users to his website to generate pay-per-click revenues unfairly. That is not use of the Complainant’s trademark in good faith under the Policy.
It is plain from the Response that the Respondent registered the disputed domain name to use it for the website which it is currently being used for. It follows that the Respondent also registered the disputed domain name in bad faith under the Policy.
The Panel notes further that, after receipt of a letter of demand from the Complainant’s lawyers, the Respondent offered to sell the disputed domain name to the Complainant for USD 10,000. That appears to be an amount well in excess of the likely costs of registering the disputed domain name. The Respondent does not seek to justify the demand on that basis but rather says it is perfectly legitimate for him to charge what he thinks the disputed domain name is worth. In the absence of a right or legitimate interest in the disputed domain name, however, that position cannot be supported.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.”