WIPO: "" registered in bad faith

The WIPO arbitration panel has ruled that the domain name "" had been used and registered in bad faith and ordered that the domain be transferred to its legitimate owner, Catherine Cookson Charitable Trust.

The Complainant is a registered UK charity established in 1997 by the famous author Dame Catherine Cookson. After the author's death in 1998, the copyright in her literary works passed to the Complainant, who is the sole proprietor of the goodwill in the name Catherine Cookson deriving from the literary works, the stage and screen adaptations, the merchandising and by any other means. The Complainant further owns registered trade marks rights in CATHERINE COOKSON (Community Trade Mark No. 005832076). The Respondent is a business based in the Canadian province of Alberta.

John Swinson acting as sole panelist, found that the disputed domain name was confusingly similar to the Complainant’s trade mark in CATHERINE COOKSON as required by paragraph 4(a) of the Policy

"The disputed domain name contains the entirety of the Complainant’s trade mark in CATHERINE COOKSON. It is well established that the specific top level domain, such as “.com”, “.net” or “.travel”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (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)."
The sole panelist further found that the Complainant had established prima facie case that the Respondent lacked any rights or interests in the disputed domain name under paragraph 4(a)(ii) of the Policy:

"The Panel visited the disputed domain name on July 28, 2008. As at that date the disputed domain name was being used by the Respondent in connection with its Celebrity 1000 website. There is no evidence that the Respondent is commonly known by the disputed domain name. The Panel considers that the Respondent uses the disputed domain name to mislead Internet users looking for Catherine Cookson or the Complainant to a commercial website for the Respondent’s financial benefit. Such use is not bona fide. The Panel agrees with the findings of several previous panels that the Respondent’s use of celebrity names in domain names in connection with that the Celebrity 1000 website does not to constitute legitimate noncommercial or fair use: see Jeffrey Archer v. Alberta Hotrods tda CELEBRITY 1000, WIPO Case No. D2006-0431."

On the point of "bad faith" the sole Panelist ruled that the Complainant had also established the third element of paragraph 4(a)(iii) of the Policy in relation to the disputed domain name. One the point of using the domain in bad faith the Panel found that

"[t]he Respondent has engaged in a pattern of conduct of registering the names of famous people in order to prevent them from reflecting their name and trade mark in a corresponding domain name. In this case, the Respondent has registered the name of the famous author, Catherine Cookson, to prevent the Complainant from reflecting its registered trade mark, CATHERINE COOKSON, in a corresponding domain name. There have been a number of findings of bad faith against the Respondent in relation to domain name disputes involving famous people (...)

Catherine Cookson was a world renowned author who wrote almost 100 books which were translated into at least 20 languages. Many of Catherine Cookson’s books have been transferred to stage, film and television. The Complainant was created by Catherine Cook. At the time of registration of the disputed domain name in 1996, Catherine Cookson and the Complainant, were, and had been for a number of years, world famous. The Panel infers that the Respondent was aware of the Complainant and of the goodwill the Complainant’s trade mark and the Catherine Cookson name has generated. The Panel finds that the Respondent registered the disputed domain name in bad faith.

The disputed domain name currently resolves to the Respondent’s Celebrity 1000 website. The Respondent earns revenue from diverting users to its sponsored links on that website. The Respondent’s use of the disputed domain name has demonstrably been to attract, for financial gain, Internet users to the Respondent’s website, by creating the likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website."

It is an interesting fact of this case that the disputed domain was already registered in 1996, and as such the length of time before bringing the proceedings could have seen as some kind of acquiesence on part of the Complainant. On this point the panelist ruled:

"Ordinarily, the length of time which has elapsed between the registration of the disputed domain name and the bringing of the Complaint may have been a cause of concern as, in some cases, delay has been considered to be a waiver of rights. However, the Panel adopts the reasoning of the panels in Dire Straits (Overseas)
Limited v. Alberta Hot Rods, WIPO Case No. D2007-0778 and Tom Cruise v. Network Operations Center/Alberta Hot Rods, WIPO Case No. D2006-0560. The Respondent has not suffered from the delay and the delay does not impact on the Complainant’s right to obtain relief.

The evidence, in the Panel’s view, supports the conclusion that the Respondent sought to profit from, or exploit the trade marks of the Complainant. Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy."

For all the above reasons and in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panelist ordered that the domain name "" had to be transferred to the Complainant.

Case reference: Catherine Cookson Charitable Trust v. Alberta Hot Rods, Case No. D2008-0888 of 30 July 2008.

Class 46: the Uniform Domain Name Dispute Resolution Policy can be found here.

Posted by: Birgit Clark @ 00.28
Tags: Catherine Cookson, Domain names, WIPO Arbitration and Mediation Center,
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