In the recent decision of Francine Drescher v. Stephen Gregory (WIPO D2008-1825, January19, 2009), a single member panel was faced with a dispute over the domain www.frandrescher.com. Complainant is the well known actress who starred the CBS series “The Nanny” from 1993 through 1999. She has appeared in other television shows and movies and has also written a memoir. Respondent is an individual based in the Philippines with a P.O. Box listed as the contact address. The domain information indicated that it was created on March 1, 1999.
The Panel reviewed the ICANN approved UDRP policy elements for domain disputes wherein the Complainant must prove that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and (iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
The Panel addressed the first prong of the test the Panel acknowledges that although Complainant claims only common law trademark rights, nonetheless previous cases have applied the policy to well-known actors and actresses. As a result the Panel found the domain was identical or confusingly similar to Complainant’s common-law trademark.
The Panel next addressed whether Respondent had any rights or legitimate interests in the domain. The Panel noted that respondent is not known by the name used within the domain, but further addresses the legitimate rights issue in connection with the third prong. The Panel then reviews the “registered and used in bad faith” third prong in more detail.
The Panel notes that the disputed domain redirects users to a different domain, namely, http://www.clubpink.com/. This web site displayed text warning no children allowed and indicating that one must be at least 18 to enter. Upon clicking a link, the user is then brought to another domain, namely, http://www.feeds.pornication.com/. Complainant claims this diversion is for commercial gain. The Panel explained:
Even if it is not the Respondent who personally gains from this diversion, but instead either the operators of the website operating from the domain name or the commercial entities to which that website directs Internet users, it does not matter. As this Panel stated in V&S Vin&Sprit AB v. Corinne, Ducos, WIPO Case No. D2003-0301 (another case in which there was diversion to pornographic content), provided that the respondent intends that someone shall gain from the diversion, then the case will fall within the example of circumstances indicating bad faith set out at paragraph 4(b)(iv) of the Policy.
The Panel goes further to note that showing bad faith use is not enough, and proof of bad faith registration is also required. The Panel made some interesting observations and conclusions. First the Panel questioned why the domain had been in use for nearly 10 years without complaint and quoted another case regarding delay which stated:
“…, if a complainant delays in bringing proceedings he will make matters more difficult for himself. First, there is the fact that a complainant must prove not only bad faith use but bad faith registration. Often it is possible to infer bad faith registration from bad faith use, but the longer the delay between registration and the commencement of proceedings, the less likely it is that a panel will be prepared to do so. A complainant may, therefore, need to bring forward direct evidence to address the issue of bad faith registration. Second, there is the possibility that the use that the registrant has made of the domain name since registration may in some cases result in him having developed a right and legitimate interest in the name. … There is also the more general point that extensive delay without explanation may in certain circumstances result in adverse inferences of fact against a complainant.” HRB Royalty, Inc. v. Asif Vadaria, WIPO Case No. D2007-1658
Regardless, the Panel moved forward with its analysis and made additional findings. One such finding included the fact that the WhoIs record registrant details included the words “This Domain is for Sale.” The Panel found that although there was no evidence submitted noting when that for sale information was added to the WhoIs record, or more specifically if it was there from the original registration date, that it would infer such bad purpose of registration.
Ultimately, the Panel found in favor of Complainant and ordered to TRANSFER the domain
