Domain Name Shame

Decedent Domain Name

On December 5, 1999, Respondent registered the domain name "celiacruz.com".  Celia Cruz was a world famous Cuban salsa singer who died on July 16, 2003. She was internationally recognized as the "Queen of Salsa" and during her lifetime received countless awards and honors, including three Grammy Awards, four Latin Grammy Awards, the Lifetime Achievement Award of the Smithsonian Institution and many others. Several streets have even been named in her honor.

The disputed domain name resolves to a portal site with links to a variety of businesses including travel, accommodation, finance, electronics, insurance and many other services.  The site recognized that Celia Cruz was "one of the greatest musical talents of the 20th century" and featured in bold type the words "Great Collection of Celia Cruz Music CDs" which provided a link to a site at www.eTours.com providing travel and accommodation services.  Relying on the common law rights of Celia Cruz having descended to her estate, her estate's sole executor appointed Complainant as his attorney-in-fact to bring this WIPO action, alleging that Ms. Cruz, and by devolution her estate, owns and controls common law trademark rights in the name Celia Cruz.

Ordering transfer of the disputed domain name to Complainant, the Panel found that the record clearly established that the deceased was one of the best known and most widely acclaimed performers in her field, having been known and promoted by reference to her name to such an extent that she had established strong and substantial common law trademark rights in the name "Celia Cruz".  In the absence of a response by Respondent, the Panel assumed that Respondent could not rebut Complainant's prima facie showing that Respondent had no rights or legitimate interests in the disputed domain. Since the disputed domain name was registered long after the name and reputation of Celia Cruz had been established and the honors conferred upon her had been widely publicized, it was presumed that Respondent's use of the domain name as evidenced by its website content had been for the purpose of capitalizing on her name's reputation to attract Internet users to its website for commercial gain.  Eventus Management, Inc. v. Twenty Four Hours, LLC, WIPO Case No. D2009-0067

The Famous-Name Domain-Name

The Complainant, Tucker Carlson, is an “internationally famous television news anchor and author, most famous for his role as anchor of the eponymous televised newsmagazines Tucker (MSNBC) and Tucker Carlson: Unfiltered (PBS), as well as his role as co-host of Crossfire (CNN).”  Complainant alleges that the name ‘Tucker Carlson’ has acquired secondary meaning and, as a result, has obtained common law trademark status. Respondent, owner of the disputed domain name www.tuckercarlson.com, failed to reply to the complaint.

While the UDRP does not protect personal names, “in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name.”  Ultimately, the Panel found enough evidence documenting the name was being used in commerce and found that the Complainant had established common law trademark rights in the mark.  In addition, in following well-established principal in ignoring the top-level domain name (i.e., ‘.com’), the Panel found the name (‘tuckercarlson’) to be identical to the mark (‘Tucker Carlson’).

The disputed domain name resolves to a website that “provides links to websites that purport to sell products or provide information relating to Mr. Carlson and his services established under the ‘Tucker Carlson’ mark.”  After a finding that the Respondent had no rights or legitimate interest in the mark, the Panel also found that the disputed domain name was registered and being used in bad faith and “that the links on the website associated with the disputed domain name may indeed create a likelihood of confusion with the ‘Tucker Carlson’ mark . . .”  Interestingly, the Panel also considered the evidence presented by the Complainant indicating that the Respondent had offered to sell the disputed domain name for $1,088.00 and agreed with the Complainant’s contentions that “this figure likely exceeds any registration and maintenance costs.”  The Panel found for the Complainant and ordered transfer of the disputed domain name to him.  Tucker Carlson v. Domain Privacy Ltd.,  WIPO Case No. D2008-0474

Hey, Hey, Hey...The Cosby Kids Domain Name Exploits

The domain name "cosbykids.com" was registered by the Respondent in this case to resolve to a website entitled "Cosby Kids", which contained a link to the Respondent's "GO Times" website, an e-commerce store, and also contained links to third-party websites providing various entertainment-related goods and services.  Bill Cosby, the well-known comedian, writer, actor and producer who, among other things, developed the popular animated television series "Fat Albert and the Cosby Kids", took issue with this alleged infringement on his trademark rights in "Cosby Kids" and "Cosby" and filed a WIPO proceeding seeking transfer of the domain name.

Given Bill Cosby's extensive use of the marks "Cosby Kids" and "Cosby" in connection with his entertainment goods and services, the Panel recognized the impressive number of panelists in other WIPO proceedings that have recognized that celebrities who use their given names for commercial purposes may establish common law rights in their name sufficient to invoke the Policy, and were persuaded that Bill Cosby had established common law trademark rights or service mark rights in "Cosby" and Cosby Kids".

The Respondent, known for registering other domain names containing third-party trademarks, was readily found lacking in rights or legitimate interest in the disputed domain name, as well as having registered and used the domain in bad faith, particularly since he used the domain for commercial profit and to exploit Bill Cosby's marks.  Ordering that the disputed domain name be transferred, the Panel noted that "when a domain name is so obviously connected with a Complainant and its products or services, its very use by a registrant with no connection to the Complainant suggests 'opportunistic bad faith'".  Mr. William H. Cosby, Jr. v. Research Required, Inc., WIPO Case No., D2007-1556.

Don't Mess With Donald Trump...Or His Domain Name

Sandra Long Consulting ("SLC"), based in Baltimore, Maryland, found out the hard way not to mess with "The Donald" Trump. SLC registered the domain name "trumplogos.com", resolving it to a website providing search results and links to real estate, travel, investment and other websites, some of which were associated with Trump and some of which were direct competitors with Trump.

Not one to rest on his laurels, Trump successfully got ownership of the domain transferred to him in a WIPO proceeding against SLC.  The sole panelist ordering the transfer had no issue in holding Trump's clear rights in the TRUMP mark and reaffirmed the well-established principle that the inclusion of a generic term -- here, the generic term "logos" -- does not defeat the similarity created by use of a Complainant's mark.  In determining SLC's bad faith intent in its registration and use of the mark, the panelist found persuasive the fame and reputation of the TRUMP mark, as well as the domain's resolve to commercial sites whereby SLC clearly appeared to be trading on Trump's fame and goodwill to attract Internet users to SLC's site. 

Donald J. Trump v. Sandra Long Consulting, WIPO Case No. D2007-1226

Saturday Night Live Alum Kevin Nealon Fights Lapse of Eponymous Domain Name

Kevin Nealon, of Saturday Night Live fame, wasn't laughing when his domain name "kevinnealon.com" lapsed when he failed to receive renewal notices from his registrar for the period 2006-2007.  Prior to the domain's lapse, Nealon's website contained information relating to his services and accolades.  Seizing the opportunity, an unrelated third party registered the lapsed domain soon thereafter in February 2007 and the website became a portal of commercial links. 

Nealon filed a complaint with the WIPO Arbitration and Mediation Center and successfully obtained transfer of the domain name.  In ordering the transfer, the sole panelist, among other things, agreed with Nealon that the registrant of a domain name based on another's notoriety is evidence of opportunistic bad faith, which was further accentuated by the timing of the registration of the domain immediately after Nealon's registration lapsed. 

Lesson learned? Don't rely on your registrar as your sole means for notice of renewal if you value and want to maintain your domain. 

Kevin Nealon v. WhoIs Protection, WIPO Case No. D2007-1225