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.
