MONDAY, 11 AUGUST 2008
WIPO: "catherinecookson.com" registered in bad faith
The WIPO arbitration panel has ruled that the domain name "catherinecookson.com" 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
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:
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 "catherinecookson.com" 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.
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