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WIPO Domain Name Decision: D2000-1689
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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fбbricas Agrupadas de Muñecas de Onil S.A. (FAMOSA) v. Gord Palameta
Case No. D2000-1689
1. The Parties
The Complainant is Fбbricas Agrupadas de Muñecas de Onil S.A. (FAMOSA), a corporation based in Alicante, Spain. The Complainant is represented by Carlos Lema Devesa, Esq., C/Velayos, 4 2є D, 28035 Madrid, Spain.
The Respondent is Gord Palameta, a resident of Roxboro, Quebec, Canada.
2. The Domain Name and Registrar
The domain name in dispute is <famosa.com>. The registrar is Network Solutions, Inc., located in Herndon, Virginia, USA.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Domain Dispute Resolution Policy and Rules approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules.
The Complaint was filed on December 5, 2000. On December 12, 2000, Network Solutions, Inc. verified that the domain name in dispute is registered to Respondent. Following remediation of a technical deficiency in the Complaint, the commencement date of this proceeding was established as January 9, 2001. The Response was filed on
January 30, 2001.
At the Respondent's request a three-member panel was appointed. The panel comprised of Dennis A. Foster (presiding), David E. Sorkin, and Roberto A. Bianchi was appointed on March 1, 2001, with a decision to be submitted by March 14, 2001. The Panel finds that the Arbitration and Mediation Center has adhered to the ICANN Policy and applicable rules in administering this proceeding.
4. Factual Background
Complainant is a Spanish corporation that since 1957 has engaged in the manufacture and international marketing of dolls and toys. Complainant markets its products under the name "Famosa," and possesses numerous trademark registrations that include that name, together with design elements, in Spain and several other countries, including Canada.
Respondent, a resident of Canada, registered the domain name "famosa.com" on November 18, 1999. In June 2000 Complainant contacted Respondent, notifying him of its trademark rights and offering to reimburse his expenses if he would transfer the domain name to Complainant. Respondent declined this offer.
5. The Parties' Contentions
(a) The domain name <famosa.com> is identical to Complainant's trademarks that include the word "famosa." The fact that these trademarks also include design elements is inconsequential, because design elements cannot be included in a domain name.
(b) Respondent lacks rights or legitimate interests in the domain name "famosa.com." The word "famosa" does not form part of his name or the name of his business, nor a trademark in which he has rights; nor is it the name of a work he has authored or produced.
(c) The domain name <famosa.com> was registered and is being used in bad faith. Complainant's products have been marketed internationally for many years, including in Canada. Respondent has registered other domain names related to Spain and the Spanish language. Respondent therefore must have been aware of Complainant and its trademarks when he registered the domain name.
(d) Respondent's bad faith is further demonstrated by the fact that he has registered at least 250 domain names, some of which correspond to the names of well-known persons, trademarks, and geographic names, indicating that his intent in registering <famosa.com> was to profit from it by reselling it to those with a legal interest in the name or by using it to redirect visitors to his web site. Respondent has in fact used the domain name <famosa.com> to redirect Internet users to other commercial sites unrelated to Complainant; this constitutes bad faith use. Although he has recently discontinued this use of the domain name, his present inaction also constitutes bad faith use, in that he is preventing the domain name from being used by Complainant, the owner of a corresponding trademark.
(a) Respondent selected the domain name <famosa.com> because of the meaning of the word "famosa" in Spanish and other languages.
(b) Respondent's long-term plan for the domain name <famosa.com> is to develop a web site related to the topic of female celebrities.
(c) Respondent was unaware of the existence of Complainant or its marks at the time he registered the domain name, and thus did not register the domain name in bad faith. Although Complainant's products are marketed to a limited extent in Canada, they are marketed by a separate company, Irwin Toy, and primarily under names other than "FAMOSA." Respondent is not knowledgeable about Spain; his interest in Spanish-language domain names is related to the growing Hispanic population of the United States and the importance of the emerging Latin American market.
(d) Respondent's legitimate interest and lack of bad faith are demonstrated by the fact that he has also registered the domain name <famoso.com>, which includes the masculine form of the word "famosa." Most of the other domain names that Respondent has registered are similarly generic. He has registered some domain names on behalf of well-known actors, but did so on their behalf, rather than in his own name, and is prepared to transfer these domain names to the named persons upon request. He has not registered domain names that infringe others’ trademark rights. While he has registered domain names corresponding to geographic names, such registrations are not covered by the ICANN Policy and cannot be considered evidence of bad faith.
6. Discussion and Findings
Under paragraph 4(a) of the ICANN Policy, Complainant must prove the following elements in order to obtain relief under the Policy:
(1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name was registered and is being used in bad faith.
Identicality or Confusingly Similarity
"Famosa" is a common word in Spanish and various other languages; it is the feminine form of the adjective "famous," and also can serve as a noun with the meaning of "famous woman." The extent of Complainant's trademark rights in the word "famosa" alone, apart from the graphical elements with which the word appears in Complainant's registered trademarks, is necessarily limited. Trademark certificates submitted by Complainant and corresponding to Brazil and Chile, for example, show that Complainant has disclaimed the use of "Famosa" separate from the rest of the elements of the mixed mark. Similarly, the Complainant's trademark registration in Canada shows that the trademark holder (the Complainant) disclaims the designed doll and the word "muñeca" ("doll" in English), so that a claim seems to exist on the stylized and easily readable word "Famosa."
At least one ICANN panel has questioned whether a mark containing graphical elements can support a finding of identicality or confusing similarity under the Policy. (Footnote 1) This concern is especially pertinent here, where the textual component of the mark is a relatively common word. Nonetheless, the identicality/similarity element does not require that Complainant's mark be particularly strong, and Complainant does possess rights in trademarks which have the word "famosa" as their primary or only textual element. The Panel therefore finds that the domain name "famosa.com" is identical or at least confusingly similar to Complainant's trademarks.
Lack of Rights or Legitimate Interests
Respondent has offered no evidence to support his assertion that he plans to develop a web site devoted to female celebrities. The Panel therefore finds that Respondent does not possess rights or legitimate interests in the domain name.
Bad Faith Registration and Use
The final element that Complainant must prove to the Panel's satisfaction is that the domain name was registered and is being used in bad faith. These requirements are conjunctive: Registration in bad faith is insufficient if one does not use the domain name in bad faith, and use in bad faith is insufficient unless the domain name was originally registered in bad faith. Viz Communications, Inc. v. Redsun, No. D2000-0905 (WIPO Dec. 22, 2000); Shirmax Retail Ltd. v. CES Marketing Group, No. AF-0104 (eResolution Mar. 20, 2000).
A majority of this Panel is not convinced that Respondent registered the domain name in bad faith. Our conclusion on this point is dispositive of the matter before us, but we do note that the evidence of bad faith use also appears to be lacking.
The Policy (in paragraph 4(b)) provides four examples of circumstances that constitute evidence of registration and use in bad faith: (1) registration with the intent to resell the domain name to the complainant, or a competitor of the complainant, at a profit; (2) registration with the intent to prevent the complainant from reflecting its trademark in a corresponding domain name, if the respondent has engaged in a pattern of such conduct; (3) registration with the intent to disrupt a competitor's business; and (4) use of a domain name that intentionally attempts to attract Internet users for commercial gain by creating a likelihood of confusion with the complainant's trademark. While it is true that the fourth example on its face refers only to use, and not registration, the panel still must find that the domain name was registered in bad faith in order for the complainant to prevail. The fourth example therefore merely provides that the nature of the respondent's use of a domain name is relevant evidence that a panel should consider in assessing the respondent's intent at the time the domain name was registered. Passion Group Inc. v. Usearch, Inc., No. AF-0250 (eResolution Aug. 8, 2000).
The examples of bad faith set forth in the Policy have at least one element in common: All of them effectively require that the respondent, at the time the domain name was registered, harbored an intent that related in some manner to the complainant or its trademark. This intent may, of course, be inferred from the respondent's subsequent conduct or other surrounding circumstances, but it must have existed when the domain name was registered in order for that registration to have occurred in bad faith. Thus, in Tata Sons Ltd. v. D & V Enterprises, No. D2000-0479 (WIPO Aug. 18, 2000), the panel's finding of bad faith registration of "bodacious-tatas.com" was based upon its factual determination that the respondent's purpose in selecting that domain name was to profit by diverting Internet users seeking the complainant's web site. (Footnote 2)
The issue of registration in bad faith thus turns on Respondent Palameta's intent at the time that he registered the domain name <famosa.com>. If he selected the domain name because of its similarity to a name in which Complainant had rights, intending to trade on Complainant's fame or good will, then his registration of the name can be said to have been in bad faith. Ciccone p/k/a Madonna v. Parisi, No. D2000-0847 (WIPO Oct. 12, 2000) (finding that respondent acquired <madonna.com> in order to trade on the fame of Madonna, a well-known entertainer). On the other hand, if he selected the domain name because of its correspondence to a common word, and was unaware that the word also happened to appear in a trademark, then he did not register it in bad faith. Etam, plc v. Alberta Hot Rods, No. D2000-1654 (WIPO Jan. 31, 2001) (finding that respondent registered "tammy.com" because it contained a common female name); Zero International Holding GmbH v. Beyonet Services, No. D2000-0161 (WIPO May 12, 2000) (finding that respondent registered <zero.com> because "zero" is a short, common word); Shirmax Retail Ltd. v. CES Marketing Group, supra (finding that respondent registered "thyme.com" because "thyme" refers to an herb). (Footnote 3)
Several UDRP panels have found bad faith registration of domain names that correspond to common words, but in the majority of these cases the panels have inferred, from circumstantial evidence, that the respondent selected the domain name because it corresponded to the complainant's trademark.(Footnote 4) There are a few cases in which respondents that registered a common word as a domain name without knowing that it was also in use as a trademark have been found to have registered the domain name in bad faith. (Footnote 5) A majority of this panel rejects that proposition, believing that a respondent's reason for selecting the domain name must relate in some manner to the complainant or its trademark in order to satisfy the requirement of bad faith registration. (Footnote 6)
We therefore consider the direct and circumstantial evidence before us to assess whether Respondent was aware of Complainant FAMOSA or its "FAMOSA" trademarks at the time he registered the domain name <famosa.com>.
Favoring Respondent's position is his own (albeit self-serving) statement that he was unaware of Complainant or its marks at that time. It is true that Complainant did have preexisting trademark registrations in several countries, including Canada, and had marketed its products internationally under the "FAMOSA" name, but the Panel is not of the view that Complainant's trademarks were sufficiently well known (especially in Canada) that we are prepared to disbelieve Respondent's claim of ignorance. We are not persuaded that Respondent had even heard of Complainant until Complainant initiated communications with Respondent in June 2000.
The list of other domain names registered by Respondent is potentially more probative of Respondent's intent. (Footnote 7) Complainant asks us to consider Respondent's registration of <famosa.com> in light of his numerous other domain name registrations, and infer therefrom that he registered <famosa.com> in bad faith. However, we do not find Respondent's other domain name registrations sufficiently problematic to support such an inference.
Of greatest concern to the Panel is Respondent's registration of a relatively small number of domain names that appear to correspond to the names of various well-known persons, including the domain names <brookeshields.com>, <tommyleejones.com>, and <sophiemarceau.com>.(Footnote 8) However, Complainant has not adduced any evidence that those persons possess trademark rights in their names cognizable under the ICANN Policy. (Footnote 9) Furthermore, Respondent claims that he registered these domain names intending them for the benefit of the named persons, rather than for his own benefit, that he has at all times been willing to transfer them to the named persons, and that in at least one instance he has already done so. He notes in support of this claim that he did not register the celebrity domain names in his own name, but rather in the name of "On behalf of [the named person]." Though we are somewhat skeptical of Respondent's motives in registering these domain names, the fact that his method of registering them differed from his method of registering other names, including <famosa.com>, makes us reluctant to use these registrations to draw inferences about his intent in the case before us. Furthermore, these registrations appear to represent only a very small share of the domain names registered by Respondent, and may well not be representative of his intent in registering most of those names.
Complainant also directs our attention to two other domain names registered by Respondent, <linuxcommands.com> and <portablemp3players.com>, claiming that these domain names incorporate trademarks and are indicative of Respondent's bad faith in registering <famosa.com>. While the Panel does not address whether these domain names do in fact infringe others' trademark rights or were registered in bad faith, in any event, like the celebrity domain names discussed previously, these two domain names represent an extremely small proportion of the domain names that Respondent has registered, and likely are not representative of his intent in registering most of those names.
Finally, Complainant asks us to consider the fact that Respondent has registered several domain names that correspond to geographic names. However, as in the case of the domain names discussed previously, Complainant has failed to offer evidence that the geographic names in question are protected by trademark rights, and it is not entirely clear to us that geographic names are covered by the ICANN Policy. (Footnote 10)
Respondent claims that with few exceptions, the domain names he has registered "are generic terms and will be developed as websites in accordance with the generic meaning" of those terms. Among these terms are numerous common Spanish words, including <famoso.com> as well as <famosa.com>. It appears to the Panel that this characterization does indeed fit most of Respondent's domain names, and that the domain names discussed previously, especially the celebrity names, are the exception rather than the rule.
In sum, if we must draw an inference as to Respondent's intent from the other domain names that he has registered, it would likely be that his selection of most of the domain names, including <famosa.com>, was motivated by his belief that they would have value or utility because of their commonly understood meanings, not because of their similarity to marks or names in which others had superior rights.
In the interest of completeness, we now consider Respondent's conduct in the context of the four examples of bad faith set forth in the Policy.
With regard to paragraph 4(b)(i), it does not appear that Respondent registered <famosa.com> primarily for the purpose of reselling it at a profit, nor that at the time of registration he had even considered the possibility of reselling it to Complainant or to a competitor thereof. The exchange of communications between the parties prior to these proceedings does not show that Respondent, at the time he registered the domain name, intended to sell it to anyone. Furthermore, upon receiving Complainant's request that he relinquish the domain name, Respondent did not even respond with a counteroffer. The Panel finds that the circumstances set forth in paragraph 4(b)(i) are not present in this case.
With regard to paragraph 4(b)(ii), we similarly find no evidence to support the conclusion that Respondent's intent in registering the domain name was to prevent Complainant from reflecting its trademark in a corresponding domain name, nor that Respondent has engaged in a pattern of such conduct. (Footnote 11)
As for the third example, registration with the intent to disrupt a competitor's business (paragraph 4(b)(iii)), we again find no evidence to support a claim that this was ever Respondent's intent. Respondent was apparently unaware of Complainant's existence when he registered the disputed domain name; he had no reason to want to disrupt its business, and there is no indication that he attempted to do so; and the parties are not competitors of one another anyway.
Finally, we do not find that Respondent's redirecting of visitors to the web site at "www.famosa.com" to other commercial sites unrelated to Complainant was an intentional attempt to profit by creating a likelihood of confusion with Complainant's trademark, the circumstance set forth in paragraph 4(b)(iv). We do not believe that he in fact created any such confusion, except perhaps among Internet users who believe that every company in the world has a unique name and the exclusive right to use that name in corresponding domain names within every top-level domain; nor do we believe that he even considered the possibility that such confusion might occur. And even if we did believe that Respondent was attempting to profit from such confusion—for example, if he used the domain name to redirect visitors to web sites operated by competitors of Complainant, and received commissions for referring those visitors—we would still require evidence to support an inference that Respondent contemplated this or a similar improper use at the time that he registered the domain name in order to find that he registered it in bad faith.
For the reasons set forth in the preceding analysis, a majority of the Panel finds that the disputed domain name was not registered in bad faith. As stated above, we decline to state a formal finding as to whether Respondent is using the domain name in bad faith, because the failure to prove bad faith registration is dispositive.
Reverse Domain Name Hijacking
Finally, Respondent wonders somewhat rhetorically whether the complaint was brought in a bad faith attempt at reverse domain name hijacking. Because such an exceptional determination was not clearly requested by Respondent, and under all the circumstances of this case, the Panel declines to enter such a finding.
For the reasons stated above, a majority of the Panel concludes that Complainant has failed to prove the bad faith requirement set forth in paragraph 4(a)(iii) of the ICANN Policy, and therefore determines that the relief sought by Complainant should not be granted.
A dissenting opinion by the Presiding Panelist follows.
David E. Sorkin
Roberto A. Bianchi
Dated: March 14, 2001
DISSENT BY PRESIDING PANELIST
I respectfully dissent from the Decision of the Panel majority. I agree with the findings on Identical or Confusing Similarity and Legitimate Rights and Interests, but I disagree with the Panel majority on Bad Faith: I believe there is sufficient evidence that Respondent registered and is using the disputed domain name (<famosa.com>) in bad faith.
In my opinion, the Respondent's conduct contravenes the bad faith provisions of the Policy at 4 (b)(iv):
by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your web site 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 your web site or location or of a product or service on your web site or location.
I am not sure whether the Respondent knew about the Complainant and its trademark rights in the disputed domain name <famosa.com> at the time Respondent registered the name. However, given that the name is registered in the Respondent's home country of Canada, a trademark search would have apprised the Respondent of the Complainant and its rights. Thus there was at least constructive notice.
The Respondent's business involves registering hundreds of domain names and then setting up a rudimentary web page for each name that advertises merchandise for sale and links to other sites such as Amazon.com. The Respondent recoups his significant investment by selling advertising on his hundreds of web pages. The more internet traffic the Respondent attracts, the more money he can charge for advertising.
In view of Respondent's modus operandi, this Panelist does not believe the Respondent is simply choosing domain names at random or that he is choosing words for their generic sense; rather, the Respondent is carefully choosing words he calculates will bring him significant amounts of traffic and advertising revenue. This is readily apparent in the celebrity names the Respondent has chosen, but I find it also is apparent in the so-called "generic" words the Respondent has chosen, including the disputed domain name <famosa.com>.
This Panelist finds the Respondent contrived to register words with a high probability of holding trademark value in many parts of the world, but which Respondent in the crunch could allege that he was using for their generic sense. Thus, when the Respondent registered <bjorn.com>, I have no doubt he was hoping to reap hits from the association with the great Swedish tennis star Bjorn Borg. In his Response, the Respondent unconvincingly says he is using the word as a common first name in Sweden and a few other countries. Nor do I believe the Respondent when he alleges he registered <tommyleejones.com> "on behalf of" Mr. Tommy Lee Jones, or <sophiemarceau.com> "on behalf" of Ms. Marceau, or <brookeshields.com> "on behalf" of Ms. Shields.
Similarly, when the Respondent registered the disputed domain name, <famosa.com>, I am convinced the Respondent calculated , assuming he did not actually know about the Complainant's trademark registration and use in Canada and elsewhere, that such a name was already a valuable trademark for many entities, and that most of those entities probably would be in Italy or Spanish-speaking countries or countries with a sizeable Spanish-speaking population.
In my opinion, the Respondent's business methods allow us to conclude he is not really concerned when one of his several hundred domain name registrations turns out to infringe an entity's valuable trademark or an individual's common law trademark in his own famous name . The Respondent simply gives up the domain name and selects another promising sounding domain name, ie one that might bring large volumes of worldwide web traffic, in one of a wide variety of languages.
Although the Respondent may well have known about the Complainant, it is not a requirement of the Policy at 4(b)(iv) that the Respondent actually know the owner or owners whose trademark he is infringing. In this Panelist's opinion, when a registrant cavalierly ventures into many foreign languages and cultures for domain names without appropriate trademark searches or legal assistance, the probability of trademark infringement by blunder or design is so high that, under facts such as ours, the Respondent can be said to have registered and to be using the mark in bad faith.
Dennis A. Foster
Dated: March 14, 2001
1. See, e.g., National Kidney Foundation v. Los Girasoles, No. AF-0293 (eResolution Aug. 31, 2000). To the opposite effect see, e.g., Surface Protection Industries, Inc. v. Webposters, No. D2000-1613 (WIPO Feb. 5, 2001); Adamovske Strojirny v. Rautiainen, No. D2000-1394 (WIPO Dec. 20, 2000);
Playboy Enterprises International, Inc. v. Rodriguez, No. D2000-1016 (WIPO Nov. 2000).
2. That inference may seem surprising to persons who have never heard of the Indian firm Tata Sons Ltd. but are familiar with the use of "bodacious tatas" as a slang term in American English. See, e.g., G.F. Pranzarone, Glossary of Sexual Slang, http://www.sexuality.org/l/sex/slang.html (listing "bodacious tatas" among numerous slang terms for mammary glands); Desiree Chen, Gambling on a Name, Chicago Tribune, June 28, 1996, § 2, at 1 (citing mistake by horseracing organization in permitting horse to be named "Bodacious Tatas," a reference to a woman's breasts). The failure of the respondent in Tata Sons Ltd. to submit a formal response to the complaint no doubt led the panel to be more receptive to the complainant's allegations regarding the respondent's intent. Had the respondent submitted evidence of its reasons for selecting the domain name, or at least directed the panel's attention to the common slang usage of the term "bodacious tatas," the result might well have been different. In any event, if the panel's inference that the respondent chose the domain name because of its similarity to the complainant's name is correct, then the conclusion that the domain name was registered in bad faith is also correct.
At least two UDRP decisions have applied the bad faith registration requirement in a manner inconsistent with the view of this Panel. See NetLearning, Inc. v. Parisi, No. FA95471 (NAF Oct. 16, 2000) (finding that respondent registered "netlearning.com" in bad faith in April 1996, even though complainant's first use of trademark "NetLearning" did not occur until June 1997) (2-1 decision); Artnews, L.L.C. v. Ecorp.com, No. FA95231 (NAF Aug. 22, 2000) (finding bad faith registration based upon respondent's renewal of domain name "artnews.net" after learning of Complainant's "ARTnews" trademark, without regard to respondent's intent or knowledge at time of original registration of the domain name).
3. There is even authority that takes this proposition one step further: In CRS Technology Corp. v. CondeNet, Inc., No. FA93547 (NAF Mar. 28, 2000), the respondent knew of the complainant's trademark "Concierge" at the time that it registered "concierge.com," but chose the domain name because of the meaning of the word "concierge," and believed that its intended use of the domain name would not violate the complainant's rights.
4. See, e.g., Ciccone v. Parisi, supra (inferring that respondent acquired "madonna.com" because of entertainer Madonna's fame and reputation, and not because of the generic sense of the word "Madonna"); Corinthians Licenciamentos LTDA v. David Sallen, Sallen Enterprises,and J. D. Sallen Enterprises, No. D2000-0461 (WIPO July 17, 2000) (where the panel stated that had the respondents not contacted the complainant for selling the domain name, its belief and findings might have been different); Cruzeiro Licenciamentos Ltda. v. Sallen, No. D2000-0715 (WIPO Sept. 6, 2000) (inferring that respondent registered "cruzeiro.com" because of the soccer team "Cruzeiro," and not because "cruzeiro" is a common word in Spanish and Portuguese); Alpine Electronics, Inc. v. AlpineSys, No. FA94972 (NAF July 26, 2000) (inferring that respondent registered "alpine.com" knowing of complainant's rights in "Alpine," and that he did not intend to develop a travel web site, as he claimed); Süd-Chemie AG v. tonsil.com, No. D2000-0376 (WIPO July 3, 2000) (inferring that respondent registered "tonsil.com" with the intent to resell it at a profit reflecting its value to complainant); General Media Communications, Inc. v. JMR Creations, No. FA94387 (NAF June 1, 2000) (inferring that respondent registered "penthouse.net" because of complainant's "Penthouse" trademark, and not because respondent sought to establish a real estate-related business); Hearst Communications, Inc. v. Spencer, No. FA93763 (NAF Apr. 13, 2000) (inferring that respondent chose the name "esquire.com" because of Esquire magazine, not the word "esquire").
5. In J. Crew International, Inc. v. crew.com, No. D2000-0054 (WIPO Apr. 20, 2000), for example, a majority of the panel found that the respondent was a domain name "speculator" engaging in a practice of "abusive registration" of domain names, and based upon this finding held that the respondent had registered "crew.com" in bad faith. The majority apparently did not even consider whether the respondent's reason for selecting that name was related to the complainant or its trademark. The dissenting panelist sharply criticized the majority's decision, accusing the majority of ignoring the Policy and substituting in its place a test that is overly broad and "fundamentally wrong."
Another case in which bad faith registration has been found notwithstanding the registrant's lack of knowledge of the complainant's trademark rights is Buzzer, Inc. v. Refract LLC, No. FA95968 (NAF Dec. 26, 2000) (finding that respondent registered "buzzer.com" believing that it would be able to sell the domain name at a profit because it contained the word "buzzer"). See also Traditions Ltd. v. noname.com, No. FA94388 (NAF May 8, 2000) (inferring bad faith from the fact that two other domain names registered by respondent contained well-known trademarks, without stating a position as to respondent's motivation for selecting the domain name "traditions.com").
The majority of this Panel disagrees with these decisions, at least to the extent that they hold that bad faith registration may be found in the case of a domain name registrant who, at the time of registration, lacks actual knowledge of the Complainant and its trademark. Such knowledge may be inferred based upon circumstantial evidence, and a panel should not place undue weight on a respondent's own self-serving denial of such knowledge. But if a panel ultimately concludes that the respondent lacked such knowledge, it should not find that the domain name was registered in bad faith.
6. This rule explains why the panels in the cases involving Madonna and Sting reached opposite conclusions: in Ciccone v. Parisi, supra, there was circumstantial evidence that the respondent acquired the domain name "madonna.com" because of Madonna's fame, while the panel in Sumner p/k/a Sting v. Urvan, No. D2000-0596 (WIPO July 24, 2000), found insufficient evidence that the respondent acquired "sting.com" for purposes related to complainant's use of "Sting" as his professional name.
7. This presumably is the basis for the reference in paragraph 4(b)(ii) of the Policy to a pattern of conduct. A respondent's registration of numerous domain names in bad faith certainly could be relevant circumstantial evidence of the respondent's intent in registering another domain name, and such evidence might well be considered to have more probative value and thus given greater weight by a panel than the respondent's own testimony concerning its motivations.
8. Complainant also lists other celebrity domain names registered by Respondent, but Complainant's argument concerning those other domain names is considerably weaker than it is for the three listed here.
9. It is true that UDRP panels to date have generally been willing to consider that well-known persons may have trademark or other analogous rights in their names sufficient to serve as a basis for a remedy under the ICANN Policy. See, e.g., Ciccone v. Parisi, supra; Roberts v. Boyd, No. D2000-0210 (WIPO May 29, 2000); Winterson v. Hogarth, No. D2000-0235 (WIPO May 22, 2000). But see Springsteen v. Burgar, No. D2000-1532 (WIPO Jan. 25, 2001) (expressing doubt whether the Policy covers personal names, but resolving the case on other grounds); Sumner v. Urvan, supra (holding that the Policy does not apply to personality rights, and declining to find that complainant had rights in his professional name "Sting" as a trademark or a service mark).
10. This may be a question that turns on local trademark law, as the decisions that have applied the Policy to geographic names generally have relied on registered trademarks, while those that have rejected its application have focused on the lack of trademark protection for such names. See, e.g., Daydream Island Resort Investments Pty Ltd v. Sorbello, No. AF-0586 (eResolution Jan. 12, 2001) (finding that resort business on Daydream Island, Queensland, Australia, had registered trademarks that included an island's name, and thus could challenge domain name corresponding to island's name); Rush v. Oregon CityLink, No. FA95318 (NAF Sept. 7, 2000) (finding that complainants, who represent the town of Gold Beach, Oregon, could not claim trademark rights in the name of the town because U.S. law denies trademark protection to geographically descriptive names); Bürgernetzverein Bamberg e.V. v. Stenzel, No. AF-0267 (eResolution Sept. 7, 2000) (finding that civic association in Bamburg, Germany, failed to prove it had trademark rights in the name of the city's name); Kur- und Verkehrsverein St. Moritz v. StMoritz.com, No. D2000-0617 (WIPO Aug. 17, 2000) (finding that official civic association in St. Moritz, Switzerland, had registered trademark rights in the name of the community); Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc., No. D2000-0505 (WIPO Aug. 4, 2000) (finding that the city government of Barcelona, Spain, had registered trademark rights in its name); Tillamook County Creamery Ass'n v. CES Marketing Group, No. FA94345 (NAF Apr. 26, 2000) (finding that county trade association had registered trademark rights in the county's name); RAIMAT, S.A. v. Antonio Casals, No. D2000-0143 (WIPO Apr. 24, 2000 (finding that a panel cannot discuss the validity of the RAIMAT trademark - alleged by respondent to be a geographical name - since its registration has been granted by a trademarkґs office).
11. As it happens, Complainant does own other domain names that reflect its trademark, including "famosa.es," "famosa.net," and "famosa.org," and at least two of these domain name registrations predate Respondent's registration of "famosa.com."