In the recent domain name dispute decision of Kate Hudson v. Fei Zhu FA1290319 (Nat. Arb. Forum, December 8, 2009) a three member Panel was faced with a dispute over the domain www.katehudson.com. Kate Hudson is the famous actress who has been in countless movies, and according to the decision has used her name commercially since 1999.  Respondent registered the domain in 2006 and  failed to respond to the Complaint.

Paragraph 4(a) of the ICANN UDRP 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 Kate Hudson did not have a federal trademark registration for her name, but reviewed the information provided to determine if she could establish secondary meaning in her common law rights. The Panel found that she had established those rights through continuos and extensive commercial use that predated the registration of the domain.  The Panel determined that the disputed domain was identical to the KATE HUDSON mark.

Moving to the second element, rights or legitimate interests, the Panel explained that Kate Hudson made out a prima facie case under this section of the Policy. As a result the Panel concluded that since the burden shifts to Respondent and Respondent failed to provide a response, then there was no evidence suggesting any rights or legitimate interests.

In addrrssing the final element, bad faith, the Panel noted that the disputed domain resolved to a parked web site with unrelated third-party links and adult oriented links. This was found to be bad faith, in and of itself. For these reasons, the Panel’s analysis stopped there.

Ultimately, the Panel found that all three elements were shown and ordered the domain be TRANSFERRED.

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.