Halle Berry wins domain name dispute case at WIPO

by Sahana Pal

Nowadays it’s rare to find a celebrity who does not have their own website. With the rise of the internet and associated social media, marketing oneself has become extremely easy as well as extremely important at the same time. However, Hollywood superstar Halle Berry was in for a rude shock last month when she found out that the website <halleberry.com> was already registered by a certain Alberta Hot Rods of Alberta, Canada.

Berry, along with her wholly-owned corporation Bellah Brands Incorporated which operates as an intellectual property holding company in respect of the HALLE BERRY trademark, then approached the WIPO Arbitration and Mediation Center[1] on February 10, 2016 for recovering the cybersquatted domain name under the Uniform Domain Name Dispute Resolution Policy (UDRP).

Claiming common law trademark rights in the name HALLE BERRY by virtue of her worldwide fame as an actress and celebrity, Berry pointed out that Bellah Brands Incorporated is the owner of word mark HALLE BERRY both as a European Community registered trademark (number 6656011, registered on November 20, 2008 in respect of international class 3) and as a USA registered trademark (number 3677810, registered on September 1, 1999 in respect of multiple international classes).

WIPO found out that the disputed domain name <halleberry.com> was registered in 1997 and although claiming to be a Halle Berry fan site, in reality it redirected to the Respondent’s “Celebrity 1000” website, featuring advertising and a wide variety of information about celebrities. In fact it turned out that the Respondent was a prolific registrant of domain names consisting of names of celebrities and had previously been involved in numerous cases for cybersquatting celebrity websites – including the likes of Pamela Anderson, Cameron Diaz, Tom Cruise, Larry King and even J.R.R. Tolkein!

WIPO then appointed Andrew D. S. Lothian as the sole panelist in this matter on March 10, who spelled out that in order to succeed, Berry must prove the following three-step test [2] –

(i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) the Disputed Domain Names have been registered and are being used in bad faith.

Accepting Berry’s rights in the word mark HALLE BERRY by virtue of the registered trademarks, and the longstanding use of her name in the entertainment industry, the Panel held that disputed domain name is alphanumerically identical in the second level to the Complainants’ HALLE BERRY common law and registered trademark – thereby satisfying the first requirement.

The Panel then went on to note that Berry had established a prima facie case, based upon the assertions that the Respondent is not known by the name “Halle Berry”; is not the owner of any HALLE BERRY trademarks; does not have Berry’s permission to use her name and/or mark; and has only ever made use of the disputed domain name to benefit from associating her celebrity status with various forms of online advertising. The Respondent did not come forward to rebut any of these claims and thus it was clear that the second test was also fulfilled.

The Panel further concluded that original use of the disputed domain name was to generate traffic resulting from interest in Berry’s well-known trademark, so that the Respondent would benefit from a corresponding increase in advertising revenue or increased clicks on sponsored links. This clearly showed Respondent’s intent to target the Complainants’ rights for commercial gain and pointed firmly in the direction of registration and use in bad faith. The fact that Respondent was previously involved in a pattern of similar behaviour did not help either.

Considering all of the above, it was decided that the disputed domain name, <halleberry.com> should be transferred to Halle Berry. Once again, this case highlighted the growing trend of riding on the coat-tails of celebrities for some quick bucks and short-lived fame – but at the same time, it also emphasized upon the no-nonsense attitude that WIPO believes in such matters.

[1] See http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-0256

[2] As outlined in paragraph 4(a) of UDRP

Sahana Pal

Assistant Editor, QMJIP