In the recent decision of Lynda Carter v. Alberta Hot Rods (Nat. Arb. Forum 1253377, May 4, 2009) a single member panel was faced with a dispute over the domain www.lyndacarter.com The disputed domain was registered in 1996 by Respondent, which at the time of the dispute was being redirected to www.celebrity1000.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 whether the disputed domain is identical or confusingly similar to Complainant’s mark, the Panel noted that Complaint does not have a registered mark for LYNDA CARTER. However, the Panel explained that under the ICANN UDRP Policy section 4(a)(i) Complainant can provide evidence of common law rights through a showing of sufficient secondary meaning. The Panel found that Complainant’s use of LYNDA CARTER in connection with her television, film and stage career performances, over 25 years, was sufficient to establish such secondary meaning. The Panel found that Complainant satisfied the first prong of the test.
Next the Panel addressed the second prong of the test, whether Respondent had any rights or legitimate interests in the domain. The Panel explained that once Complainant made a prima facie case, the burden shifted to Respondent. Since Respondent failed to respond to the dispute, an assumption is made that there are no rights or legitimate interests. However, the Panel still provided an analysis and noted:
Respondent is using its <lyndacarter.com> domain name to redirect Internet users to Respondent’s commercial <celebrity1000.com> domain name, which contains information about a variety of entertainers and advertisements in competition with Complainant’s business as a performer. The Panel finds this use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)…. The WHOIS information and record do not indicate Respondent is commonly known by the <lyndacarter.com> domain name. The WHOIS information lists Respondent as “Alberta Hot Rods.” The record indicates Complainant has never authorized Respondent to use her LYNDA CARTER mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
The Panel then moved to the final prong, whether the disputed domain was registered and used in bad faith.
Complainant has asserted Respondent is a seasoned cybersquatter who has been a party to numerous UDRP decisions in which the domain names at issue were transferred to the respective complainants in those proceedings. The Panel finds Respondent’s actions constitute a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii)…. Respondent’s disputed domain name redirects Internet users to celebrity information and advertisements that compete with Complainant’s performance business. The Panel finds Respondent’s use constitutes disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). … Respondent is using the website resolving from its confusingly similar disputed domain name to redirect Internet users to a website that contains information and advertisements that compete with Complainant. Respondent presumably profits from this use of the confusingly similar disputed domain name in the form of click-through fees. Additionally, Respondent’s use of Complainant’s LYNDA CARTER mark creates a likelihood of confusion regarding the source of the content resolving from the disputed domain name. The Panel finds this is an attempt by Respondent to profit from the goodwill associated with Complainant’s mark. Therefore, the Panel finds Respondent’s attempt to profit from its use of the confusingly similar disputed domain name constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(iv).
Ultimately, the Panel found that Complainant satisfied all three elements and ordered the domain to be TRANSFERRED.
