In a recent case decided under the Uniform Domain Name Dispute Resolution Policy (UDRP) by a three-member panel from the World Intellectual Property Organisation (WIPO), model and actress Pamela Anderson obtained the transfer of the domain name <pamanderson.com> (the Domain Name) even though it had been registered for 13 years. This WIPO decision gave rise to an interesting dissenting opinion by the Hon Neil Anthony Brown QC, who raised his concerns as to whether the Domain Name was confusingly similar to the Complainant’s trade mark and the length of time the Complainant had taken to bring the complaint.
Facts and Ruling
The Complainant was Pamela Anderson, a Canadian-born model and actress who became famous by featuring in a number of TV series including Baywatch, one of the most popular TV shows of all times. The Respondent was Alberta Hot Rods based in Alberta, Canada.
Widely known since she came to prominence in 1992, the Complainant had registered or filed applications for numerous trade marks in the term PAMELA ANDERSON. Interestingly, it was not the first domain name dispute between the Complainant and the Respondent since they were parties to an earlier case before WIPO whereby the Complainant obtained transfer of three domain names reproducing her name (Pamela Anderson v Alberta Hot Rods, WIPO Case No. D2002-1104). In the present case, the Domain Name was registered as early as 1997, 13 years before the Complainant filed the complaint and two years before the UDRP came into existence.
To be successful under the UDRP, a complainant must prove that:
(i) the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
With regard to the first criterion, the Complainant contended that she was professionally known as ”Pam Anderson” since ”Pam” is a common abbreviation of ”Pamela” and that the public associated her name with her acting services since 1992. To establish the second UDRP requirement, the Complainant asserted that the Respondent had not used or made demonstrable preparations to use the Domain Name since its registration and that the Respondent was not commonly known by the name ”Pam Anderson” or the Domain Name. Finally, to support her assertion in terms of the Respondent’s bad faith, the Complainant referred to numerous previous UDRP decisions against the Respondent which involved the names of other celebrities such as Cameron Diaz, Larry King or Kevin Spacey. The Complainant added that given her long established reputation in Canada, the Respondent must have had her in mind when registering and using the Domain Name.
In response to the Complainant’s assertions, the Respondent argued that the Complainant’s trade marks were all registered for ”Pamela Anderson” and it was overreaching to say that the Domain Name was identical or confusingly similar to her name. In addition, the Respondent tried to rely on the doctrine of laches to argue that the Complainant had waited too long to file a complaint. In order to rebut the Complainant’s assertion in relation to the second UDRP requirement, the Respondent claimed that it had used the Domain Name in connection with various websites in the past, all featuring biographical information about celebrities. To refute the Complainant’s allegations in terms of bad faith, the Respondent stated that the Complainant had provided no evidence of the Respondent’s intention to extort money in this instance or other instances and that in any event the Domain Name was registered in 1997 before any notion of bad faith existed. The Respondent also accused the Complainant of reverse domain name hijacking.
The Panel first tackled two preliminary issues, namely the applicability of the UDRP to the Domain Name and the recognition of the doctrine of laches as a defence under the UDRP. In relation to the first question, the Panel brushed aside the Respondent’s assertion by pointing out that when the UDRP was introduced in 1999 all registrants either accepted it or forfeited their domain names and, in the case at hand, the registrar of the Domain Name had confirmed that it was subject to the UDRP. On the second point, the majority of the Panel refused to recognise the doctrine of laches as an appropriate defence in the present case. The majority of the Panel further explained that the doctrine of laches was an equitable remedy and that ‘anyone seeking to rely on it must come to the tribunal with clean hands‘ which was not true of the Respondent given the underlying facts.
Then, the Panel dealt with the core of the complaint and whether the three requirements of the UDRP were met.
As many readers will know, UDRP disputes involving domain names reproducing personal names can be complex since celebrities without registered trade marks must prove more than their personal fame but also the use of their famous names in the course of trade. In this case, the Complainant had registered trade marks in the term PAMELA ANDERSEN but the Panel also considered that common-law rights in the name PAMELA ANDERSEN were established on the grounds that the Complainant had gained considerable fame and was using her name commercially at the time the Domain Name was registered. However as far as the term PAM ANDERSEN was concerned, the Complainant had no registered trade marks and it was questionable whether or not common-law rights could be held to exist. This was not a problem though as the Panel found that the Domain Name was confusingly similar to the Complainant’s trade marks in the term PAMELA ANDERSEN, given that ”Pam” is a widely accepted abbreviation of ”Pamela”.
Secondly, the Panel considered that since the burden of proof was on the Respondent to rebut the Complainant’s prima facie assertion of the Respondent’s lack of rights or legitimate interests, it had failed to meet this burden since its assertion of previous legitimate uses of the Domain Name was not supported by any tangible evidence.
Regarding the third prong of the UDRP, the Panel considered that the Respondent registered the Domain Name with full knowledge of the Complainant, taking into account, for instance, the previous dispute between the parties. Furthermore, bad faith was also indicated 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 names as required under paragraph 4(b)(ii) of the Policy”. As a result, the Panel concluded that the Complainant had satisfied the three requirements of the UDRP, leaving no room for a finding of reverse domain name hijacking. Thus the Panel ordered transfer of the Domain Name.
Dissenting Opinion
This decision is interesting in that it was decided by a three member Panel, but one of the Panel members, the Hon Neil Anthony Brown QC, dissented. First of all, the dissenting Panel member expressed the view that whilst it was ‘possible‘ that the Domain Name, when compared with the trade mark PAMELA ANDERSON and nothing else, was confusingly similar, it was not so on the balance of probabilities, which was the standard of proof that had to be applied. In his opinion, it was not evident that the Pam Anderson of the Domain Name referred to the Complainant, rather than the many other persons named Pam Anderson. It was therefore ‘very dubious‘ whether the first limb of the UDRP had been made out and, because of this real doubt, the dissenting Panelist stated that the substance of the case had to be determined by reference to the other requirements of the UDRP.
In a second part of his dissenting opinion, the Hon Neil Anthony Brown QC pointed out three circumstances which in his view showed that it was unwise to conclude from the evidence and arguments that the Respondent did not have rights or legitimate interests in the Domain Name. Firstly, he pointed out that the way in which the Respondent alleged it had used the Domain Name in the past (i.e. the dissemination of biographical information) had been held as legitimate in The Hebrew University of Jerusalem v Alberta Hot Rods, WIPO Case No. 2002-0616. As the Panel pointed out in that case, ‘previous cases involving the same Respondent’s activities cannot be determinative‘. Secondly, the dissenting Panelist believed that the Respondent had used the Domain Name for non-commercial purposes without intent to tarnish the Complainant’s reputation or to mislead Internet users (the Domain Name was currently not being put to any active use). Thirdly, he was of the opinion that the Panel should have taken into account the 13 years between the registration of the Domain Name and the filing of the complaint, which in his opinion called for an explanation. The dissenting Panelist considered that ‘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.’ On a more general note, this led the dissenting Panelist to express the view that the non-applicability of laches in UDRP proceedings should be revisited.
Comment
The observations made by the Hon Neil Anthony Brown QC highlight very pertinent issues. Firstly, confusing similarity between a trade mark and a domain name is often seen as relatively easy to prove, but different panels may have different views and nothing should be taken for granted. Indeed in a previous case decided by a panel from the National Arbitration Forum (StreetPrices.com, Inc. v Nett Corp, Claim Number: FA0908001280020) the Hon Neil Anthony Brown QC also issued a dissenting opinion, holding that the domain name <streetprice.com> was not confusingly similar to the Complainant’s STREETPRICES.COM trade mark.
In addition it seems that, whilst the UDRP is intended to be a swift remedy for clear cybersquatting cases and that defences such as the doctrine of laches are more suited to lengthier and more in-depth proceedings, it is important to strike the right balance and to ensure that trade mark owners act diligently to protect their rights. That being said, panels may well take delay into account, especially if it has allowed a domain name holder to establish a right or legitimate interest as a result of use of the domain name over a certain length of time.
Finally the dissenting opinion should invite trade mark owners to substantiate their complaints more meticulously in order to avoid creating legitimate doubts, as happened in the present case. However, fortunately for the Complainant, the dissenting opinion did not affect the outcome of transfer, given the majority of the Panel’s views. This should also act as a warning to brand owners always to select a three-member panel, as opposed to a single panel, in cases that are not completely straightforward and could potentially result in a valid difference of opinion amongst panel members.
The full decision is available here
David Taylor is a Partner at Hogan Lovells International LLP in the Intellectual Property, Media and Technology Group in Paris. He specialises in Internet-related intellectual property, and in particular the protection of brands online. He heads up the International Domain Name Practice, which covers the registration, recovery and protection of domain names and clients’ rights in over 160 jurisdictions. Jane Seager is Counsel at Hogan Lovells International LLP in Paris and works closely with David.
