In a recent domain dispute decision of Pearl Jam, LLC. f/k/a Pearl Jam, A General Partnership v. J.S.E. Janssen a/k/a Stijn Enzo Holding BV (Nat. Arb. Forum 1262659, July 1, 2009) a single member Panel was faced with a dispute over the domain www.tenclub.org. Pearl Jam is the popular and well known rock band who has been cranking out hits since the early 90’s. Pearl Jam established an authorized fan club known by the mark TEN CLUB. The band maintains a web site at www.pearljam.com and www.tenclub.net. Pearl Jam’s debut album was entitled TEN and had amazing success. Respondent replied to the Complaint stating that the domain was going to be used as follows:

Tenclub is a specific project. Respondent is in the process of setting up a church/club in which all sorts of activities will take place. The essence of the project is that its members will dedicate ten per cent of their time and money to each other.  Thus, learning that sharing will bring a better human society. That is where the name Ten club comes from. There is absolutely no financial perspective, except being able to pay for the costs of the project. Currently, Respondent is looking at buildings, the structure and the communication, hence the website.

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the 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.

The Panel addressed some procedural issues first, noting that requests were made to Respondent to provide certain documents and translations of certain documents, which the Respondent did not provide. Additionally, Complainant points out, although the Panel does not address, the fact that this domain was once the subject of a prior domain dispute. Specifically, Pearl Jam had already won a dispute over this domain in the decision of Pearl Jam, A General Partnership v. Jongcheol Lee (Nat. Arb. Forum 406483, March 17, 2005). Pearl Jam explained that the registrar did not cooperate or agree to transfer the domain. It is unclear why the transfer was not enforced.

In addressing the first element, the Panel quickly found the domain was identical or confusingly similar to Pearl Jam’s multiple U.S. and foreign trademark registrations for TEN CLUB. Most of the Panel’s decision centered around the second element. The Panel found Pearl Jam established a prima facie case, shifting the burden to Respondent. In response to Respondent’s assertions about the proposed use of the domain the Panel explained:

The Panel believes that none of these unsupported contentions of Respondent is evidence that before any notice to Respondent of the dispute, he used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services according to Policy ¶ 4(c)(i). For instance, Respondent fails to show that he has posted any contents related to the purported uses of the domain name (“church/club”) on the website at the disputed domain name. Nor does he submit any affidavit or documents evidencing any preparations to use the domain name.

The Panel went further to break down Respondent’s evidence by stating:

The Panel cannot overlook the fact that in Respondent’s attachment to the email with the Response, he added the “®” symbol to the TenClub term, thus attempting to create the false impression that he owned a registered trademark. Only after this Panel requested Respondent to submit a full translation of the attachment in Dutch, it appeared that no such trademark registration had ever been granted. As a result from Respondent’s failure to comply with the request from the Panel, there is no evidence that Respondent has even applied for a trademark registration before the Benelux trademark office. Respondent’s failure to comply with the Panel’s requests of full translations of the attachments in Dutch allows the Panel to infer that such translations would not have been favorable to Respondent, pursuant to Rules ¶ 14(b).

As a result, the Panel found that Respondent failed to establish any rights or legitimate interests. The Panel also discussed the third element, bad faith. The Panel found that Respondent was extracting a financial benefit from click-through fees generated as a result of the parked web site. Additionally, the Panel noted that although Respondent claimed to never have heard about the TEN CLUB associated with Pearl Jam, the postings on the disputed domain led the Panel to infer otherwise.

Ultimately, the Panel found Pearl Jam had established all three elements and ordered to TRANSFER the domain.

DefendMyDomain Commentary:
It is unclear why or how Pearl Jam was unable to get a successful transfer after the 2005 domain decision. Regardless, it is more puzzling that the Panel made no affirmative discussion about the prior decision and the effect it may have had on the current decision.

In the recent domain dispute decision of Victoria’s Secret Stores Brand Management, Inc. v. Open Water Enterprises Limited c/o Louis S (Nat. Arb. Forum 1264419, June 29, 2009) a single member Panel was faced with a dispute over the domain www.victoriasecretangelcard.com. We know that you do not live under a rock so we will avoid discussing the fame of Victoria’s Secret. Victoria’s Secret maintains a web site at www.victoriassecret.com.

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 domain contained all of Complainant’s mark VICTORIA’S SECRET with the addition of the descriptive phrase “angel card” on the end. There was no mention in the decision though that the disputed domain dropped an “s” from the domain name, although it generally has no significance in the domain dispute world. These descriptive words were not sufficient enough for Respondent’s use and thus Complainant satisfied the first element.

Moving to the second element, whether Respondent had any rights or legitimate interests in the domain, the Panel explained that Complainant set forth a prima facie case, shifting the burden to Respondent. The Panel found that Respondent was using the domain to divert viewers to competitors of Victoria’s Secret for commercial gain. Further, the Panel found that the Whois information associated with Respondent showed Respondent was not commonly known by the domain name.

Moving to the last element, bad faith, the Panel stated as follows:

Respondent’s disputed domain name resolves to a website that displays links to third-party websites, some of which directly compete with Complainant’s business.  The Panel finds Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii)….Respondent presumably received payment for displaying links to Complainant’s competitors on the website which resolved from the confusingly similar <victoriasecretangelcard.com> domain name.  Thus, the Panel finds Respondent is attempting to profit from the goodwill associated with Complainant’s mark, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).

As a result, the Panel found that Victoria’s Secret proved all three elements and agreed to TRANSFER the domain.

In the recent domain dispute decision of The Weather Channel, Inc. v. Versata Software, Inc. (WIPO D2009-0548, June 23, 2009) a single member Panel was faced with a dispute over the domain www.weatherchannelkids.com. The Weather Channel has provided a cable network since 1982 and maintain two relevant web sites at www.weather.com and www.theweatherchannelkids.com Complainant submitted evidence that it has provided features on its web site for children since at least 2002 and created another domain www.weatherclassroom.com in 2003. Respondent was using the disputed domain to redirect viewers to www.porntube.com.

Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following: (i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and (ii) That the disputed domain name has been registered and is being used in bad faith.

In addressing the first element, the Panel noted that the domain only differed from Complainant’s mark in that it also added the generic words “the” and “kids” making it nearly identical to the mark. The Panel found Complainant satisfied this element.

In the second element the Panel noted that Complainant did not authorize Respondent to use the mark THE WEATHER CHANNEL. Additionally, the Panel found that Respondent was not commonly known by the domain name. Respondent failed to file a response thus failing to discharge the evidentiary burden which shifted after Complainant proved a prima facie case.

Moving to the third element, bad faith, the Panel noted that Respondent must have been aware of Complainant’s mark due to its worldwide recognition. The Panel further explained:

The Respondent has offered no reason for its choice of the Domain Name, and there is no apparent connection between the three words which constitute the Domain Name and the use of the Domain Name for links to pornography websites. Furthermore, the evidence establishes that the Respondent has in the past registered domain names for the bad faith purpose of trading off trademark owners’ goodwill in their marks.

As a result, the Panel found Complainant proved all elements and agreed to TRANSFER the disputed domain.

In the recent domain dispute decision of Sigourney Weaver v. Stephen Gregory a/k/a ‘THIS DOMAIN NAME IS FOR SALE’ (Nat. Arb. Forum 1256394, May 22, 2009) a three member Panel was faced with a dispute over www.sigourneyweaver.com. We all know who Sigourney Weaver is, so we won’t waste time with her list of credits. (Although she deserves an extra nod of appreciation for the Alien movies) Respondent, purportedly located in the Philippines, registered the disputed domain in 1999, nearly 20 years after her emergence in the entertainment world. Weaver argued that the disputed domain was being used to automatically forward to a pornographic web site located at www.clubpink.com which then takes the user to www.nymphogirls.com. Weaver also argued that Respondent was using the domain to sell it for profit, based upon the Whois information which stated “Stephen Gregory ‘THIS DOMAIN NAME IS FOR SALE.’”

Under the ICANN UDRP policy Complainant must prove (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 Weaver did not have a federal registration for her name and thus reviewed the evidence to determine if she possessed common law rights. The Panel found that her career has made her sufficiently famous and that she demonstrated secondary meaning to establish common law rights. Thus the Panel found that the domain was identical to Weaver’s rights in the mark.

Moving to the second element, the Panel noted that Weaver made a prima facie case that Respondent lack any rights or legitimate interests. This was based on the fact that Respondent was not commonly known by the disputed domain name, as stated earlier regarding the Whois information. Additionally, since the domain was being linked to pornographic material, this use was not in connection with a bona fide offering of goods and services. The Panel noted that Respondent stopped the forwarding to the pron web sites after receiving a cease and desist from Complainant. Lastly, the Panel found that since Respondent was offering to sell the domain this showed a lack of legitimate rights or interests in the domain.

Moving to the final element, bad faith, the Panel noted that Respondent had been involved in numerous prior analogous UDRP proceedings and that he engaged in a pattern of bad faith registration and use. Additionally, the Panel noted that the pornographic nature of the redirected web site also satisfied the bad faith element.

Ultimately, the Panel ruled to TRANSFER the disputed domain.

In the recent domain dispute of ETW Corp. and Eldrick ‘Tiger’ Woods, for itself, Tiger Woods and his minor child, Charlie Axel Woods v. Josh Whitford (Nat. Arb. Forum 1263352, June 24, 2009) a single member Panel was faced with a dispute over the domain www.charlieaxelwoods.com. Essentially, this case was brought by Tiger Woods on behalf of his second son Charlie Axel Woods. Tiger Woods remains one of the most famous people in the world, let alone the greatest golfer. He maintains a web site at www.tigerwoods.com.

In all ICANN UDRP cases Panels review, and Complainants must prove three elements: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the 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 this case the Panel reviewed arguments submitted by both parties. Woods relied upon a federal trademark registration for his own name as well as common law rights in his son’s name. Tiger Woods’ son was born on February 8, 2009 and the disputed domain was registered on February 9, 2009. Tiger argued that the domain was being held primarily for the purpose of selling it. Tiger argued that Respondent listed the domain for sale on eBay nine days after its acquisition stating:

“This is your chance to own the domain to a future golf legend or use it in some way to extord (sic) the current golf legend for some extra cash (not highly recomended (sic) seeing he has lots of money and lawyers.)  I personally feel someone much more into golf would appreciate the address much more than myself.  I am not really sure why I bought the domain, but since I am loosing (sic) my job on the 1st of April anything sounded like a good idea.” 

Tiger further argued that the Whois information for the domain directed viewers to the eBay listing as well. (The current Whois information has been changed and is now hidden through a privacy service).

The Respondent made several counter arguments. Respondent argued that Tiger Woods had no rights under the Policy to the domain since there was no common law protection for Charlie Axel Woods. Respondent claimed that a birth certificate did not create rights. In addressing the bona fide legitimate noncommercial use of the domain, Respondent stated he was using the domain as a fan page. Respondent claimed his eBay listing was satire.

In light of the arguments presented, the Panel addressed the first element, wether the domain was identical or confusingly similar to a protectable mark. First the Panel found that the domain was not sufficiently similar to the TIGER WOODS mark. The Panel agreed it was identical to the name Charlie Axel Woods, but proceeded through an analysis of whether such name was a protectable common law mark. The Panel relied upon the Wipo Report of the Second WIPO Internet Domain Name Process, The Recognition of Rights and the Use of Names in the Internet Name System (2001) and upon the case of Planned Parenthood Federation of America, Inc. and Gloria Feldt v. Chris Hoffman, D2002-1073 (WIPO March 6, 2003), which explained the current status of most “personal name” disputes. Specifically that case stated as follows:

The Panelist divided the personal name cases into six categories. The category that includes the most cases is that involving persons from the entertainment industry. The second most numerous category was that of professional athletes. The four other categories, with few cases in each (some overlapping) were authors, business people, royalty and politicians. The Panel found that the cases effectively required that for a personal name to be eligible for trademark or service mark status it needed to be used “for the purpose of merchandising or other commercial promotion of goods or services.” …Later cases have held that in order for a personal name to acquire trademark or service mark status in a jurisdiction that recognizes common law marks, the personal name must be used in connection with the commercial offering of goods or services and must have acquired secondary meaning as the source of such goods or services.

In light of the WIPO report and prior case decisions, the Panel found that Woods presented no evidence that Charlie Axel Woods was used in connection with commercial offering of goods and services or that it had acquired secondary meaning. The Panel found Woods failed to satisfy the first element and declined to consider the other elements. The Panel DENIED the request for transfer.

In the recent domain dispute of Dollywood Company v. Dewayne Hensley (Nat. Arb. Forum 1256567, May 22, 2009) a single member Panel was faced with a dispute over www.dollywoodresort.com. Dolly Parton is too famous to provide a factual background, but many of you may not know that she also lends her name to a theme park located in Tennessee, aptly named DOLLYWOOD. The Dollywood company owns a trademark registration for DOLLYWOOD with rights dating back to 1986 and they maintain a web site at www.dollywood.com.

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.

The Panel addressed the first prong and recognized Complainant’s registered trademark rights as established under paragraph 4(a)(i) of the UDRP ICANN Policy. The Panel found that the domain name encompassed all of the mark DOLLYWOOD with the addition of a generic term “resort.” In light of this the Panel found Complainant satisfied the first element.

Moving to the second element, whether the Respondent had any rights or legitimate interests in the domain, the Panel found that Complainant made a prima facie case causing the burden of proof to shift to Respondent. Since Respondent failed to respond to the Complaint the Panel assumed no rights or legitimate interests existed, however, still chose to review the record. The Panel noted that the domain did not resolve to an active web site, which was not a bona fide offering of goods or services and was not considered legitimate non-commercial or fair use. Additionally, the Panel found that Respondent was not commonly known by the disputed domain as stated in Policy paragraph 4(c)(ii).

Moving to the final element, bad faith, the Panel explained that “the enumerated Policy ¶ 4(b) factors are not exhaustive, and thus the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii).” Since the web site did not resolve to an active site, the Panel found that it was indicative of bad faith registration and use under the Policy paragraph 4(a)(iii).

Ultimately, the Panel found that Complainant satisfied all of the elements and ruled to TRANSFER the disputed domain.

In two recent domain dispute decisions Tiffany (NJ) LLC and Tiffany and Company v. Tiffany Store Net (WIPO D2009-0427, June 9, 2009) and Tiffany (NJ) LLC, and Tiffany and Company v. Vincent & Co. (WIPO D2009-0428, June 9, 2009) a single member Panel addressed the domains www.tiffanystore.net and www.tiffanylife.com respectively. Although the decisions were separate, the same Panelist handled the opinions. Tiffany and Company is the famous international jewelry store which maintains a web site at www.tiffany.com.

Under the ICANN UDRP policy a Complainant must prove (i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in the disputed domain name; and (iii) that the respondent’s domain name has been registered and is being used in bad faith.

In the first decision, www.tiffanystore.net the Panel reviewed the first of the three elements noting that the domain encompassed all of the mark TIFFANY. The crux of the decision though rested in the second element, wherein the Panel noted that Respondent’s web site claimed to sell identical goods manufactured by or for the Complainant, but that Respondent was not an authorized reseller and would not provide a certificate of authenticity. The Panel explained:

Respondent’s website disclaimer as to the lack of any relationship to or authorization from Complainant for sale of jewelry similar to or even identical to Complainant’s jewelry does not make Respondent’s offering of goods and services bona fide under paragraph 4(c)(i) of the Policy. In this regard, it is immaterial whether the goods may be “counterfeit”, as Complainant contends (without submitting evidence on the point), or “authentic” or “from the same factory”, as Respondent’s website asserts. In either event, as evidenced by Complainant’s submission of pages from Respondent’s website, Respondent’s use of Complainant’s famous trademarks in the Domain Name and throughout the Domain Name website is a clear attempt to confuse consumers and divert them to Respondent’s competing website.

Moving to the last prong, bad faith, the Panel relied on Policy paragraph 4(b)(iv) to note that Respondent had to know of Complainant’s well known trademark when it registered and used the domain. Additionally, the Panel found that Respondent’s use of Complainant’s TIFFANY marks on the domain to describe the jewelry was evidence of likelihood of confusion. Ultimately, the Panel ruled to TRANSFER the domain.

In the second dispute, www.tiffanylife.com the Panel made a similar quick analysis regarding the first element, and finding that the domain contained all of the Complainant’s mark with the addition of the descriptive word “life.” In this decision the Panel simply relied on Complainant’s prima facie showing of no rights in regards to the second element. The Panel noted that, according to Complainant, Respondent used the TIFFANY marks throughout the web site to confuse consumers.

Moving to the bad faith element, the Panel again relied on paragraph section 4(b)(iv) in finding that Respondent must have known about Complainant’s TIFFANY marks prior to the registration and use. Respondent’s use of the domain was found to attract users to this competing site for commercial gain by creating a likelihood of confusion. Ultimately, the Panel agreed to TRANSFER this domain as well.

In a recent domain dispute decision of MagicJack LP v. Neil Adams 1258600 (Nat. Arb. Forum June 11, 2009), a single member Panel was faced with a dispute over the domain www.canadianmagicjack.com. Complainant sells the popular MAGICJACK voice over Internet protocol (VOIP) device which permits customers to make and receive calls through an Internet connection. The MAGICJACK product has been marketed and sold since at least March 2008 and they maintain a web site at www.magicjack.com. Complainant has a federally registered trademark for MAGICJACK. Respondent registered the disputed domain on August 1, 2008. Complainant contends that Respondent’s domain offers telephone service identical to its own service, including International local phone numbers that can be forwarded to existing U.S. Magic Jack numbers. Complainant also argues that Respondent sent MagicJack’s CEO an email taunting them and admitting that Respondent crossed into the U.S. border to purchase and resell Complainant’s device in Canada. Respondent claimed that since Complainant had only applied for a trademark application as of May 13, 2008, that Respondent had prior Canadian rights since it was in business as of April 30, 2008.

A review of the three ICANN UDRP policies requires a Complainant to prove (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the 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 explained that merely adding the geographic term “Canadian” was not a significant alteration to result in a distinguishable domain. The Panel found that the domain contained all of Complainant’s mark and determined that Complainant therefore satisfied this element.

Moving to the second element, whether Respondent had any rights or legitimate interests in the domain, the Panel found that Complainant made a prima facie case and thus shifted the burden of proof to the Respondent. The Panel explained that Respondent failed to show it had any rights or legitimate interests and used the domain knowing of Complainant’s rights. The Panel further found Respondent used the domain to draw Internet traffic to advertise competing goods and services. Additionally Respondent was not commonly known by the disputed domain according to the WHOIS records. Lastly, the Panel addressed Respondent’s Canadian trademark application priority theory and explained:

Respondent asserts its registration of the disputed domain name predates Complainant’s rights in the mark because Complainant’s application with the Canadian Intellectual Property Office (“CIPO”) for its MAGICJACK mark has yet to be granted registration.  The Panel notes, however, that Complainant has provided evidence of the June 10, 2008 USPTO registration of its MAGICJACK mark, prior to Respondent’s registration of the disputed domain name.  The Panel chooses to dismiss Respondent’s argument here. 

Moving to the final element, the Panel found that using the domain to compete with Complainant’s business was evidence of bad faith. Additionally, the use of the domain would create a likelihood of confusion pursuant to ¶4(b)(iv) of the Policy. Ultimately, the Panel found that Complainant satisfied all of the elements, and agreed to TRANSFER the disputed domain.

In a recent domain dispute decision of N.V. Organon and Schering Plough Corporation v. Fields Law Firm and Stephen Fields (Nat. Arb. Forum 1259266, June 16, 2009) a single member panel was faced with a dispute over www.nuvaringsideeffects.com. Complainant is the owner of the popular contraceptive device and NUVARING and owns federal trademark registrations for same. Complainant maintains a web site at www.nuvaring.com. Respondent is a personal injury law firm and maintains a web site at www.injurygroup.com. Complainant contends that the disputed domain is being used by Respondent to confuse the public and tarnish the goodwill and reputation of Complainant. The Complaint explains that when a user goes to the disputed domain it seeks to solicit customers to file lawsuits against Complainant resulting from use of the NUVARING. Specifically, Complainant contends the disputed domain includes headings such as “NuvaRing Class Action Information,” “NuvaRing Side Effects – NuvaRing Law Suit,” “NuvaRing Warnings,” “NuvaRing Blood Clot,” NuvaRing pulmonary Embolism,” and “NuvaRing Lawsuit.” Respondent contends that it is using the domain in connection with a bona fide offering of goods and services, prior to notification of any dispute. Further, Respondent claims it is using the domain in a nominative fair use manner for referring to Complainant’s and their NuvaRing product. Both parties provided additional submissions which expounded on their original arguments.

Under the ICANN UDRP Policy paragraph 4(a) the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interest in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

The Panel addressed the first element, whether the domain was identical or confusingly similar to Complainant’s mark. The Panel found the domain contained Complainant’s entire mark and merely added generic words such as “side” and “effects.” This element favored transfer of the domain to Complainant.

Moving to the second element, whether Respondent had any rights or legitimate interests in the domain, the Panel noted that Complainant must first establish a prima facie case. The Panel explained:

Complainants’ evidence establishes that (i) Respondents are not licensees of Complainants, nor have they received permission or consent to use Complainants’ trademark; (ii) Complainants have prior rights in that trademark which precede Respondents’ registration of the Domain Name; and (iii) Respondents are not commonly known by the trademark.  Complainants have thus made a prima facie showing that the Respondents have no legitimate rights or interest in the domain name.

The burden then shifted to Respondent and the Panel made a finding that “Respondents prove[d] that they are using it to offer legal services in connection with consumers who may have been harmed by Complainant’s product and to provide[d] information to the public about Complainant’s product.” The Panel also reviewed and applied the standard for nominative fair use argued by Respondent, and as established by the 9th Circuit Court of Appeals case of  New Kids on the Block v. News Am Publ’g. Inc., 971 F.2d 302, 308 (9th Cir. 1991).  The New Kids case standard is as follows:

(1) The product or service in question must be one not readily identifiable without use of the trademark; (2) only so much of the mark may be used as is reasonably necessary to identify the product or service; and (3) the use must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

The Panel found that Respondent did establish its nominative fair use of the mark per appellate court precedent. The Panel also addressed Complainant’s assertion of initial interest confusion, noting as follows:

This Domain Name contains nothing to suggest that the related website would be sponsored or endorsed by Complainants or anyone else seeking to promote the NuvaRing product.  The message in the Domain Name tends in the opposite direction.  The plain meaning of the words “NuvaRing side effects” is much closer to “the NuvaRing may be dangerous or have risks associated with it” than to the kind of message that would be offered by its manufacturer.  A reasonable consumer would not assume that a website by this name would be sponsored by the manufacturer of the named product.  A description of “side effects” might be included in a website sponsored by the manufacturer, but “side effects” would not likely be in the name of the website itself.

The Panel also found that Respondent’s use of a disclaimer on the web site was further evidence of their legitimate rights and interests since it immediately and sufficiently informs users of the non-affiliation. Lastly, Complainant cites to three prior domain decisions where an attorney was using domains to promote lawsuits against AIG. (See American International Group, Inc. v. Debra Speyer, FA 422815 (Nat. Arb. Forum Apr. 7, 2005), American International Group, Inc. v. Debra Speyer, FA 481752 (Nat. Arb. Forum June 28, 2005), and American International Group, Inc. v. Bruce Levin, FA 591254 (Nat. Arb. Forum Dec. 21, 2005)). The Panel distinguished all these cases since nominative fair use was not asserted by respondent in any of the cited cases and because “the fact that the Respondents’ use of the Domain Name here may not fit within the provisions of Policy ¶ 4(c)(iii) does not preclude them from establishing their rights or legitimate interest in some other fashion, which they have.”

Ultimately, the Panel found that Claimant did not satisfy the second element and DENIED the request for transfer. The Panel did not address the bad faith element in light of the failure to prove the second element.

In the recent domain dispute decision of Jim Carrey v. BWI Domains (WIPO D2009-0563, June 16, 2009) a single member Panel was faced with a dispute over the domain www.jimcarrey.com. We are going to assume you know who Jim Carrey is and refrain from providing a list of accolades and accomplishments. Jim Carrey argued that Respondent was using the domain to misdirect users to pay-per-click linking portals for financial benefit.

UDRP policy provides that if the Complainant is to succeed, he must prove each of the three ICANN UDRP elements referred to in paragraph 4(a) of the Policy, namely that; (i) the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith.

In addressing the first element, the Panel noted that Jim Carrey does not have a registered trademark for JIM CARREY. The Panel explained that other prior panels “held that in order for an individual to rely on unregistered trade mark rights he or she must be able to demonstrate use of the mark in trade or commerce. Merely having a famous name is not necessarily sufficient to demonstrate unregistered trademark rights.” As a result personal names can serve as common law marks by showing they have “acquired secondary meaning if a substantial segment of the public understand the designation, when used in connection with services or business, not as a personal name, but as referring to a particular source or organization.” In light of this standard the Panel made the following finding:

By virtue of the success of his numerous films the Complainant has achieved renown as one of the world’s most famous actors and comedians. The Panel considers that the use of the Complainant’s name in connection with entertainment services provides a strong indication of source.

Moving to the second prong the Panel found that Jim Carrey made a prima facie case based on showing the domain name was identical or confusingly similar, that Respondent was not commonly known by the disputed domain and that Respondent was not authorized to use the mark. The Panel explained:

The Panel accepts that the Complainant has established common law trade mark rights in his name and has a substantial worldwide reputation in the JIM CARREY trade mark. The Respondent has provided no explanation for its use of the Complainant’s trade mark and considering that it registered the Disputed Domain Name as recently as 2007, the Panel infers that the Respondent must have been aware of the Complainant’s rights and expressly choose the Disputed Domain Name for the purpose of deriving revenue from a pay-per-click linking portal.

Moving to the third element the Panel reasoned that in light of Jim Carrey’s substantial reputation and evidence presented there was no objective reason other than to create a likelihood of confusion, therefore creating a finding of bad faith.

Ultimately, the Panel agreed to TRANSFER the domain.