In the recent domain name dispute decision of Ashley Judd v. Alberta Hot Rods, Jeff Burgar (WIPO D2009-1099, September 25, 2009), a single member Panel was faced with a dispute over the domain www.ashleyjudd.com. Judd is the well known actress who has appeared in countless film and television roles throughout the 1990’s and 2000’s. Respondent registered the disputed domain in 1996 and failed to reply to the Complaint.

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which she has rights; (ii) that the Respondents have no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

In addressing the first element, the Panel noted that Judd had common law rights in her name.

It is well-established that where an actor has a sufficient reputation for her professional work under her name or stage name, that name is a marke in which she has rights for the purpose of the UDRP: see, for example, Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210. The Panel finds on the evidence that the Complainant has amply sufficient reputation to satisfy this requirement. As a result, the Panel found the Judd satisfied the first element.

Moving to the second element, the Panel found that Respondent had failed to use the domain in connection with a bona fide offering of goods or services. Instead the panel found that the disputed domain was used to drive traffic to another web site with the intention of obtaining revenue from sponsored links. The Panel also found that Respondent was not commonly known by the disputed domain.

Moving to the final element, bad faith, the Panel noted that Judd’s reputation as an actress had been well established by 1996. Additionally, the Panel found that Respondent engaged in a pattern of registering domain containing names of famous actors and celebrities. The Panel declined to apply any possible defense of laches. Ultimately, the Panel found that there was no contrary evidence and concluded that Judd satisfied all the elements. The Panel ordered the domain be TRANSFERRED.

Tags: Celebrity, Common Law Trademark, Redirected, Transferred

This entry was posted on Thursday, October 8th, 2009 at 12:20 pm and is filed under Trademark, UDRP, WIPO. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.