The Complainant is Pamela Anderson of Los Angeles, California, United States of America, represented by CMG Worldwide, Inc., United States of America.
The Respondent is Alberta Hot Rods of High Prairie, Alberta, Canada.
The disputed domain name <pamanderson.com> is registered with CORE Internet Council of Registrars.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2010. On July 12, 2010, the Center transmitted by email to CORE Internet Council of Registrars a request for registrar verification in connection with the disputed domain name. On July 13, 2010, CORE Internet Council of Registrars transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 13, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 2, 2010. The Response was filed with the Center on August 2, 2010.
The Center appointed Brigitte Joppich, William R. Cornish and The Hon. Neil Brown QC as panelists in this matter on August 25, 2010. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
The Complainant is a Canadian-born actress, widely known for her acting and modeling, especially since 1992 for her role in the “Baywatch” television series, which, according to Guinness World Records, became the most widely viewed TV series in the world ever, with an estimated weekly audience of more than 1.1 billion in 142 countries in 1996. The Complainant has also been featured on ten covers of the Playboy Magazine and has appeared in TV shows such as “Dancing with the Stars”, “Home Improvement” and “V.I.P.”.
The Complainant is registered owner of numerous trademark registrations and applications for PAMELA ANDERSON, including United States trademark registration no. 3023474 PAMELA ANDERSON, filed on September 24, 2004, United States trademark registration no. 3841846 PAMELA ANDERSON, filed on October 30, 2006, United States trademark registration no. 2938721 PAMELA ANDERSON, filed on November 7, 2002, United States trademark registration no. 2913615 PAMELA ANDERSON, filed on November 7, 2002, United States trademark registration no. 2913614 PAMELA ANDERSON, filed on November 7, 2002 and United States trademark registration no. 2913613 PAMELA ANDERSON, filed on November 7, 2002 (hereinafter referred to as the “PAMELA ANDERSON-Marks”). The trademarks cover various goods and services in classes 3, 9, 14, 25 and 35.
The disputed domain name has been registered by the Respondent on March 1, 1997 and is currently not used in connection with an active website.
The parties have been involved in an earlier UDRP proceeding concerning the domain names <pamelaanderson.com>, <pamelaanderson.net> and <pamelalee.com>, which resulted in the transfer of those domain names (see Pamela Anderson v. Alberta Hot Rods, WIPO Case No. D2002-1104). Furthermore, the Respondent has previously been involved in numerous other domain cases where the transfer of domain names at issue to the respective complainant was ordered (see Ashley Judd v. Alberta Hot Rods, Jeff Burgar, WIPO Case No. D2009-1099 (<ashleyjudd.com>); Sandra Bullock v. Network Operations Center c/o Alberta Hot Rods, NAF Claim No. 1269834 (<sandrabullock.com>); Cameron Diaz v. Network Operations Center c/o Alberta Hot Rods, NAF Claim No. 1259470 (<camerondiaz.com>); Lynda Carter v. Alberta Hot Rods, NAF Claim No. 1253377 (<lyndacarter.com>); Legislator 1357 Limited, Legislator 1358 Limited, Ian Fleming Limited v. Alberta Hot Rods, WIPO Case No. D2008-0832 (<ianfleming.com>); Catherine Cookson Charitable Trust v. Alberta Hot Rods, WIPO Case No. D2008-0888 (<catherinecookson.com>); Dire Straits (Overseas) Limited v. Alberta Hot Rods, WIPO Case No. D2007-0778 (<direstraits.com>); Patricia Ann Romance Peterson, Romance Productions Ltd. v. Network Operations Center/Alberta Hot Rods, WIPO Case No. D2006-1431 (<trisharomance.com>); Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560 (<tomcruise.com>); H-D Michigan Inc. v. Network Operations Center c/o Alberta Hot Rods, NAF Claim No. 671212 (<harleydavidsonracing.com> et al.); Larry King v. Alberta Hot Rods, WIPO Case No. D2005-0570 (<larryking.com>); Amber Smith v. Network Operations Center c/o Alberta Hot Rods, NAF Claim No. 371622 (<ambersmith.com>); JRR Tolkien Estate Limited v. Network Operations Center, Alberta Hot Rods, WIPO Case No. D2003-0837 (<jrrtolkien.com>); TT Merchandising, Inc. v. Alberta Hot Rods, NAF Claim No. 139661 (<travistritt.com>); Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872 (<michaelcrichton.com>); Kevin Spacey v. Alberta Hot Rods, NAF Claim No. 114437 (<kevinspacey.com>); Michael Andretti v. Alberta Hot Rods, NAF Claim No. 99084 (<michaelandretti.com>)).
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The Complainant contends that her name serves as a trademark based on her fame as a world-famous actress, that the public has associated her name with her acting services since 1992 and that she is professionally known as “Pam Anderson”. The Complainant further contends that the Respondent has been using her service mark and trademark since it registered the disputed domain name in 1997, at which time she had already acquired celebrity status through both her acting and modeling activities, that the Respondent’s registration of the disputed domain name was a blatant attempt to take advantage of the fame associated with her and that the Respondent’s continued control of the disputed domain name after being ordered to transfer domain names to her in an earlier proceeding clearly demonstrates its bad intent.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as the Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offer of goods or services, as the Respondent is not and has never been, as an individual or business, commonly known by the name “Pam Anderson” or the disputed domain name, as the Respondent has never had any connection with the Complainant or been authorized to use the Complainant’s name, as the disputed domain name is confusingly similar to the Complainant’s service mark and trademark, “Pam” being a common short version of “Pamela”, as the Respondent’s use of the disputed domain name has been to mislead Internet users, causing them to believe that they are accessing a site that is associated or affiliated with the Complainant, and as the Respondent’s (non-)use tarnishes the Complainant’s trademark and service mark.
(3) The disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent has exhibited a pattern of registering famous names and marks for the purpose of exploiting it for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name from trademark or service mark owners, that the Respondent has also exhibited a pattern of registering domain names for the purpose of preventing trademark or service mark owners from reflecting their marks in corresponding domain names, and that the Respondent registered and used the disputed domain name upon constructive knowledge of the Complainant’s service mark and trademark (well-known in Canada in 1997, the year of the registration of the disputed domain name) with the intent to divert Internet traffic from the Complainant’s legitimate commercial website <PamelaAnderson.com>.
The Respondent first contends that the name “Pam Anderson” or the disputed domain name is not identical to the Complainant’s real name, Pamela Denise Anderson, and that the Complainant’s trademarks are all registered for PAMELA ANDERSON and not PAM ANDERSON. Furthermore, the Respondent contends that there is no confusing similarity between the disputed domain name and the Complainant’s name.
The Respondent claims that the Complainant’s evidence is mostly old but in no way solid evidence of any tremendous degree of confusion with this particular domain name as required under the Policy.
The Respondent states that the Complainant failed to prove that all or the majority of searches for “Pam Anderson” lead to the <pamanderson.com> error page and that there is confusion based on the Respondent’s website. The Respondent further contends that the Complainant did not provide any evidence that the Respondent infringed the Complainant’s trademarks through its use of the disputed domain name and that the Complainant has failed to show any evidence of damage or tarnishment to the reputation or fame of Pamela Denise Anderson involving the Respondent or the use of disputed domain name.
The Respondent accuses the Complainant of reverse domain name hijacking as the Complainant’s registration of trademarks differing from her real name “Pamela Denise Anderson” demonstrates an attempt to cover “as broad a swath of territory as possible” and to secure as many domain names as possible by abusing the UDRP process.
The Respondent claims that the Complainant did not produce any evidence of a trademark or service mark registered for “Pam Anderson”, nor any other evidence of being able to protect, or even trying to protect, rights in the words or name “Pam Anderson” in the 13 years since the disputed domain name was first registered. In this context, the Respondent relies on the Doctrine of Laches and argues that the Complainant, through lack of diligence in protecting her so-called service mark, long ago willingly relinquished any rights to an exclusive ownership of the personal name “Pam Anderson”.
The Respondent claims to have, as a respected publisher of a wealth of information, including biographical data, used the disputed domain name in connection with various websites in the past, all featuring biographical information about various famous personalities, dead or alive.
With regard to bad faith, the Respondent states that the disputed domain name was registered in 1997, before the UDRP came into existence in 1999 and before any notion of bad faith existed, and that the Respondent, in the absence of a “bad faith” rule and in light of brick and mortar cases involving book titles, news and magazine publishing and web headlines and articles, logically and reasonably assumed registration was fair and legitimate.
Finally, the Respondent states that the Complainant presented no evidence of any attempt to extort money in the cases cited, in this case of <pamanderson.com>, or in any case involving any domain name owned by the Respondent.
Assuming for present purposes that it was the Respondent who first registered the domain name in 19971, the first point to be dealt with is the question whether or not the Policy is applicable in the present case. In fact, the disputed domain name was registered before the UDPR was adopted. However, all gTLD domains became subject to the Policy as of its adoption. Registrants of earlier registered domain names either accepted the Policy or forfeited their domain names. The applicability of the UDRP to domain names registered before August 26, 1999, when the Policy was adopted, has been confirmed ever since the first UDRP decision (see World Wrestling Federations Entertainment, Inc. v. Michael Bosman, WIPO Case D1999-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001; AFMA, Inc., v. Globemedia, WIPO Case No. D2001-0558; Airport Authority v. Hong KongAirport Inc., WIPO Case No. D2001-1417; Those Characters From Cleveland Inc. v. User51235 (38so92lf@whois-privacy.net), WIPO Case No. D2006-0950). Furthermore, the registrar of the disputed domain name confirmed that the Policy applies to the disputed domain name. Therefore, the Panel has no doubt that the UDRP does apply to this case.
The second point to be dealt with is the Respondent’s reliance upon the doctrine of laches. In many common law jurisdictions, such doctrine (dealing with undue delay in asserting a legal claim) is recognized, but it is not an arbitrary or technical doctrine and its application depends on the facts of each particular case. Laches essentially consists of the lapse of time coupled with the existence of circumstances which make it inequitable to enforce a claim.
The Panel does not regard laches as an appropriate defense to the Complaint made in this case.
From a legal point of view, to the extent that laches is recognized under common law, it is an equitable doctrine and anyone seeking to rely on it must come to the tribunal “with clean hands”. As the Respondent has acted in bad faith, which will be discussed below, such remedy is not available to him in the present case. Moreover, the remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid confusion in the future as to the source of communications, goods, or services; as previous Panels have found: the Policy does not contemplate a defense of laches, which some panels have found to be inimical to the Policy’s purposes (cf. The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; FabJob Inc. v. Compana LLC, WIPO Case No. D2006-0610).
The Panel therefore concludes that the defense of laches does not apply to this UDRP proceeding and will not withhold a decision in favor of the Complainant on the ground that the Complainant failed to seek transfer of the domain name more promptly.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; 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.
The Complainant refers to rights arising from trademarks and from her personal name and surname as a world-famous actress.
Common law rights have been found sufficient for the purposes of a complaint under the UDRP in a number of cases (see Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299; Philip Berber v. Karl Flanagan and KP Enterprises, WIPO Case No. D2000-0661; Israel Harold Asper v. Communication X Inc. WIPO Case No. D2001-0540). The Panel finds that in this case the Complainant can rely on common law rights, as her name PAMELA ANDERSON is well-known for her acting in the TV series “Baywatch”, which, according to the Guinness Book of World Records, is the most watched TV show in the world of all time, and as she is using this name commercially (see Pamela Anderson v. Alberta Hot Rods, WIPO Case No. D2002-1104).
However, it is questionable whether the Complainant can rely on common law rights in the name PAM ANDERSON as well. The Complainant made few assertions in this regard, mainly stating that “Pam Anderson” is one of the Complainant’s alternate names. However, the Panel is convinced that the disputed domain name is in any case confusingly similar to the Complainant’s name and trademarks PAMELA ANDERSON for the following reasons:
“Pam” is a common abbreviation of “Pamela”. Given that the Complainant is well-known for her acting, the public will presume that “Pam Anderson” stands for the Complainant. It is a widely held view among panelists that a common abbreviation of a term may be confusingly similar under the Policy with its long form (see Six Continents Hotels, Inc., Inter-Continental Hotels Corporation v. South East Asia Tours, WIPO Case No. D2004-0388, finding that <interconhotels.com> is confusingly similar to the INTERCONTINENTAL trademark; Express Messenger Systems, Inc. v. Golden State Overnight, WIPO Case No. D2001-0063, finding that <calovernight.com> is confusingly similar to the CALIFORNIA OVERNIGHT service mark; Canadian Tire Corporation, Limited v. Juancho Feliciano, WIPO Case No. D2005-0375, finding that <cantire.biz> is confusingly similar to the CANADIAN TIRE trademark;, The Gap, Inc. v. Texas Internet, WIPO Case No. D2009-0123, finding that <olnavy.com> is confusingly similar to the OLD NAVY trademark; Rug Doctor L.P. v. Domain Strategy, Inc., WIPO Case No. D2002-0355, finding that <rugdr.com> is confusingly similar to the RUG DOCTOR trademark).
Furthermore, it is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
As a result, the Panel finds that disputed domain name is confusingly similar to the Complainant’s rights and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which suffice to demonstrate a respondent’s rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of disproving that case with appropriate evidence in rebuttal will then shift to the respondent.
The Complainant inter alia contends that the Respondent has no rights or legitimate interests in the disputed domain name as it has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, that the Respondent is not and has never been, as an individual or business, commonly known by the name “Pam Anderson” or the disputed domain name, and that the Respondent has never had any connection with the Complainant nor has been authorized to use the Complainant’s name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The unsupported arguments of the Respondent do not suffice to rebut the Complainant’s prima facie case, let alone positively establish rights or legitimate interests under the Policy. The Respondent claims to have, as a respected publisher of a wealth of information, including biographical data, used the disputed domain name in connection with various websites in the past, all featuring biographical information about various famous personalities, dead or alive. However, the Respondent did not provide any evidence of any contemplated good faith use and therefore failed to prove rights or legitimate interests in the disputed domain name under the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive. The Complainant must show that the domain name was registered in bad faith and is being used in bad faith (see Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Telstra Corporation Limited v. Adult Web Development and Telstraexposed, WIPO Case No. D2002-0952; Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No. D2003-0758).
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of (and intent to benefit from) the Complainant and her rights in PAMELA ANDERSON. Such bad faith registration cannot possibly result from knowledge of the Complainant’s registered PAMELA ANDERSON-Marks, as such marks were all applied for many years after the registration of the disputed domain name. However, the Panel is convinced that the Complainant owned common law rights in PAMELA ANDERSON at the time of the registration of the disputed domain name and that the Respondent was aware of the Complainant (and the commercial value of her name) when registering the disputed domain name. The Complainant provided evidence that she has been widely known for her acting since 1992, when she started acting in the TV show “Baywatch”. Given the Complainant’s broad media coverage and the fact that the Respondent registered the disputed domain name in a chronological sequence with the domain names disputed in Pamela Anderson v. Alberta Hot Rods, supra, (<pamelaanderson.com> registered on November 6, 1996; <pamanderson.com> registered on March 1, 1997; <pamelalee.com> registered on March 27, 1997; <pamelaanderson.net> registered on February 25, 1998), it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s rights. This finding is further supported by the fact that the Complainant seems drawn towards registering well-known people’s names as domain names and therefore seems to be familiar with or at least interested in celebrities. The Panel is therefore satisfied that the Respondent registered the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.
As the domain name is not actively used by the Respondent but merely points to a website displaying an “Error-Forbidden” message, the Panel has to decide whether or not the Respondent's (non-)use of the disputed domain name is to be considered as bad faith use under the Policy.
It is a consensus view that the lack of active use of a domain name does not as such prevent a finding of bad faith. In such cases the panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include a complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name (see Question 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions; Telstra Corporation Limited v. Nuclear Marshmallows, supra; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131).
In the present case, the Respondent failed to provide evidence of any actual or contemplated good faith use. On the other hand, the Complainant provided evidence that she is well-known for her acting and modeling services and enjoyed broad media coverage in the past.
In the view of the Panel, the facts of this case do not allow for any plausible actual or contemplated active use of the disputed domain name by the Respondent in good faith. The Panel is therefore convinced that, even though the disputed domain name has not yet been actively used, the Respondent's non-use of the disputed domain name amounts to use in bad faith.
Furthermore, the finding of bad faith is supported by the fact that the Respondent was ordered to transfer domain names to the respective complainant in at least 18 earlier proceedings where registration and use in bad faith were established. The Respondent therefore engaged in a pattern of conduct aimed at preventing owners of a trademark or service mark from reflecting their marks in a corresponding domain name as required under paragraph 4(b)(ii) of the Policy.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.
The Respondent requests a finding of reverse domain name hijacking. This is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Moreover, paragraph 15(e) of the Rules provides as follows: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
In the present case, where the Complainant owns several registered marks and common law rights in a name confusingly similar to the second level of the disputed domain name and where the Complainant’s common law rights clearly predate the Respondent’s domain name registration, there is no room for a reverse domain name hijacking order.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <pamanderson.com> be transferred to the Complainant.
Brigitte Joppich
Presiding Panelist
William R. Cornish
Panelist
The Hon Neil Brown QC
Panelist (Dissenting)
Date: September 8, 2010
On balance, it must be said that the Complainant has satisfied the generally applied test for determining if a celebrity has acquired a common law trademark and that that test was met before the Respondent registered the disputed domain name in 1997.
In any event, the Complainant owns several registered trademarks for PAMELA ANDERSON and is able to rely on those trademarks for the purposes of the first element that must be established under the Policy, although those trademarks were registered long after the registration of the disputed domain name.
In this Panelist’s assessment, the more difficult question is whether the disputed domain name is confusingly similar to the trademarks. The Complainant says that the public would assume that the Pam Anderson of the disputed domain name is referring to the PAMELA ANDERSON of the trademarks, in part because the Complainant uses the name Pam Anderson in her profession as well as Pamela Anderson. The Respondent says on the contrary that this conclusion is not justified, that it is overreaching to say that the disputed domain name is confusing to anyone, when the Complainant has not registered PAM ANDERSON as a trademark and that the sole question is whether the disputed domain name is confusingly similar to the trademark, without speculating on the Respondent’s intentions.
As with most issues, this question will be decided only by going back to basic principles and applying them. In this regard, it is as basic a principle in applying the UDRP as can be found that, in making the comparison between the domain name and the trademark, a strict comparison must be made without having regard to extraneous evidence of any sort. Thus, complainants frequently argue, with success, that a respondent may not rely on a website showing the actual use of a domain name to establish that it is not confusingly similar to a trademark. If this is so, it must be equally true that a complainant cannot rely on other evidence like the Complainant’s alternative names, to prove confusing similarity when there is some doubt about it.
Comparing the disputed domain name <pamanderson.com> with the trademark PAMELA ANDERSON and with nothing else, the conclusion has to be that it is, of course, possible that the former is confusingly similar to the latter, but not on the balance of probabilities, which is the standard of proof that must be applied. That is so because the objective bystander may well conclude that the Complainant’s full name, in the form of Pamela Anderson, is so ingrained in the public psyche that the disputed domain name must be referring to someone other than the famous celebrity, for to invoke the Complainant, it would have to include her real name. In other words, there must be real doubt whether the Pam Anderson of the disputed domain name is invoking the PAMELA ANDERSON of the trademark rather than the many other persons named Pam Anderson who are known to exist.
Although the matter cannot be free from doubt, it therefore seems in the view of this Panelist very dubious whether the first element has been made out.
But because of this doubt, the substance of this case must be determined by reference to the other elements required to be considered under paragraph 4(a) of the Policy.
The facts of this case put it in something of a unique situation. On the one hand there is no evidence that the Respondent has used the disputed domain name for commercial purposes that could be described as inappropriate or deceptive. Nor is this the sort of case where it can be said that the domain name has been registered to trade off “the reputation of the complainant’s mark by attracting users to the respondent’s web site, or diverting users to the sites of the complainant’s competitors.” (Lindsay, International Domain Name Law, at p 279). On the other hand, there is no evidence that the disputed domain name has been used for purposes that are now well established as legitimate, such as for bona fide commercial purposes, bringing the case within paragraph 4(c)(i), or as a fan site or free speech or criticism site, bringing it within paragraph 4(c)(iii) of the Policy.
Indeed, the evidence falls within a very small compass. The Complainant alleges that the disputed domain name resolves to an error message and that the Respondent is “luring Internet users to an unkempt website [and that] Respondent’s use tarnishes Complainant’s trademark and service mark.” On the Respondent’s part, it points to the lack of evidence disproving his or anyone else’s entitlement to use the name in a domain name, but it also points to the lack of any action over many years to prevent the use of the name Pam Anderson or the image of the Complainant herself. It goes further, however and says that over the years the disputed domain name has in fact been used for disseminating information about “various famous personalities.” He denies that his website is “unkempt” and says that the reality is that it has been used in the past, although it is not now being maintained.
On this evidence, this Panelist finds it is unsafe to make a positive finding that the Respondent has not rebutted the prima facie case that the majority claims has been made out. Although these issues cannot be resolved conclusively, the Respondent’s case has, on balance, three features that this panelist finds tilt the scales its way.
First, it has put in its own evidence of the apparently legitimate use of the domain name in the past to disseminate biographical information, a use that was held to be legitimate in The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616. There are, of course, differences between the facts of that case and the facts of the present case and the panel on that occasion made it plain that:
“The Panel agrees that it is necessary to determine in each case whether, in all the circumstances, a Complainant has demonstrated lack of rights or legitimacy within the Policy on the part of a Respondent. Previous cases involving the same Respondent’s activities cannot be determinative.”
On the undisputed facts of the present case, whatever the facts may have been in other cases, the Respondent contends that the disputed domain name has been used for the dissemination of information. Although evidence of such contention may not have been provided by the Respondent, nor has the Complainant contended otherwise. Assuming the Respondent’s contention is truthful, this Panelist finds it is unwarranted to find that such a use of a domain name is anything other than legitimate and there is nothing in the Policy or the applicable law to justify such a contrary finding.
Secondly, the Respondent has used a famous name (assuming Pam Anderson is to be equated with Pamela Anderson) for non-commercial purposes in a way that such names are freely used on the Internet and also in other media and without besmirching or tarnishing it or using it for any improper or misleading purpose.
Thirdly, if the Respondent’s proof is inadequate, that has been brought about by the inordinate delay of the Complainant in bringing this claim, a delay that she has not explained, despite the issue’s having been squarely raised in the Response. In that regard, it should be noted that this Panelist has, inter alia, expressed the view that the non-applicability of laches in UDRP proceedings should be revisited2 and that, whatever name is given to them, unexplained delays during which rights have been allowed to accumulate, should be taken into account.
In the present case, the domain name has been registered for 13 years, which calls for an explanation; moreover, 7 years have passed since the Complainant recovered three other domain names invoking her name in Pamela Anderson v. Alberta Hot Rods, supra, at which time the Complainant was or should have been aware of the domain name at issue in the present case and yet took no action to recover it prior to bringing these proceedings. In these circumstances, especially as the delay is unexplained or exculpated, in this Panelist’s view it is wrong to ignore it, wrong to reward complainants who engage in it and reasonable to take it into account as one of several factors helping the panel to come to a decision, even if it is not conclusive.
In particular, the real issue in this case is whether the Respondent has been using the disputed domain name legitimately by reason of the use having been made of it during these intervening years. The panel is expected to make some rational examination of the evidence to help it come to a conclusion on that issue. If it is difficult for the panel to be conclusive about the issue in the light of what has happened in the last 13 years, as it is, that result has been brought about by the delay itself and the delay has been occasioned by the Complainant. In those circumstances, any doubt on the issue of the legitimacy of the disputed domain name should be resolved against the Complainant.
Accordingly, for these reasons this Panelist finds it is unwise to conclude from the evidence and arguments that the Respondent does not have a right or legitimate interest in the disputed domain name.
That being so, it is not necessary to consider the further issue of bad faith although, in all the circumstances, a finding of bad faith registration and use is not warranted.
The Hon Neil Anthony Brown QC
Panelist (Dissenting)
September 8, 2010
1 The Panel notes that the present registrar of the disputed domain name, CORE Internet Council of Registrars, has confirmed the original registration date for the disputed domain name as being in 1997, at which time the registrar was Network Solutions. CORE has indicated that the disputed domain name was only transferred to them as registrar in 2001, and that the oldest WhoIs data CORE has on record for the disputed domain name is from 2003. CORE has accordingly been unable to confirm the name of the registrant of record for the disputed domain name at the time of its initial registration in 1997. Although the matter is not entirely free from doubt, the Panel will proceed for present purposes on the assumption that the Respondent did indeed register the disputed domain name in 1997 as it claims to have done.
2 http://www.managingip.com/Article/2628659/Internet-IP-Archive/Opinion-Should-laches-be-a-defence-in-UDRP-proceedings.html