In the recent domain name dispute of Dorothy Lane Market v. Tony Chang FA1271237 (Nat. Arb. Forum August 18, 2009) a single member Panel was faced with a dispute over the domain www.killerbrownie.com. Complainant markets and sells a multilayed brownie called the KILLER BROWNIE. The maintain a web site at www.dorothylane.com and have a federal trademark registration for KILLER BROWNIE with rights dating back to at least 1988. Respondent registered the disputed domain in September 2006 and failed to respond to the dispute.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.
In addressing the first element, the Panel noted that the disputed domain contained all of complainant’s mark, with the omission of the space between the words and the addition of the generic top level domain “.com” The Panel found the domain was identical to Complainant’s mark.
Moving onto the second element, the Panel explained that although Complainant had shown a prima facie case, it would still review the record. The disputed domain resolved to a web site containing Respondent’s personal biography and resume. The Panel found “that Respondent’s use of the identical <killerbrownie.com> domain name, to divert Internet users to a website that is unrelated to Complainant’s KILLER BROWNIE mark, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii), respectively.” The Panel also noted that Respondent was not commonly know by the disputed domain.
Moving to the final element, bad faith, the Panel explained that under the Policy, “that it may look beyond the Policy ¶ 4(b) elements while considering a Policy ¶ 4(a)(iii) analysis, and may find bad faith registration and use from the totality of the circumstances under Policy ¶ 4(a)(iii).” The Panel found that there appeared to be no commercial use of the site, but that the disputed domain lends itself to the impression that there was a goal of confusion.
Ultimately, the Panel found that Complainant satisfied all elements of the Policy and ordered the domain be TRANSFERRED.
DefendMyDomain Commentary: At first blush, it is unclear why the Panel did not view Respondent’s use of a personal web site as fair use. Actual review of the disputed site may better answer that question. For instance, the site was purportedly registered by Respondent in 2006 yet it has a “2000-2008″ copyright notification on the site. Also it lists a different domain at the bottom, www.eliminated.org, which has the identical information. Therefore one can only assume there was never an intention to actually use the site as a blog, despite wording on the site to the contrary. Since the Panel decision did not mention any of these facts we cannot assume they were actually considered. If they weren’t considered, then we have concerns about the potential implications of this decision. As usual the world of domain disputes remains uncertain.