Jilliane Hoffman, LLC v. Scott Manford Wipo Case No. D2019-1878 September 23, 2019
When people or organisations inadvertently let their domain name registrations lapse, it is often the case that they are snapped up by opportunists (or even legitimate players who see a chance of getting hold of the domain name of their dreams) seeking to take advantage of the administrative error. Unfortunately, it can sometimes be difficult, costly, or even impossible to recover the lapsed domain. In many cases, those with a familiarity of the quirks of the UDRP can successfully defend Complaints and hold the former domain name owners to ransom, or successfully stand on their legitimate rights. Luckily for the following forgetful Complainant, her UDRP claim went undefended, and she was able to get her domain name back.
The Complainant, an American author who for many years operated her website at the disputed domain name <jillianehoffman.com>, had let her domain name registration lapse. The domain was subsequently registered by the Respondent, who used it for a website that promoted online gambling featuring an article falsely claiming to be written by the Complainant.
Unsurprisingly, the Complainant sought to get her domain name back through he UDRP. Given, as strangely seems to be the case with most authors and many other entertainment celebrities, that she had not registered her name as a trademark, to satisfy the first element of the UDRP, she had to prove she held common law rights in her own name. Having submitted evidence that her name had been used in association with a series of successful books for many years, the Panel accepted she had common law rights for JILLIANEHOFFMAN, and thus found the first element in her favour.
Having jumped over the first hurdle, the success of the Complaint in the second and third elements hinged on the panel finding that the Respondent had sought to take advantage of the Complainants mark.
With regards to the second element, the Complainant was significantly aided by the lack of response. All she had to do was successfully present a prima facie case that the Respondent had no right or legitimate interest in the domain name. The complainant argued that the presence on the website of an article on online gambling whose authorship was falsely attributed to her was a deliberate attempt to trade on the reputation and goodwill of the complainant, and as such did not constitute a bona fide offering of goods and services in association with the domain name. With nothing submitted by the Respondent explaining its conduct, the Panel was left with little option other than to accept this argument and find for the Complainant, which he did.
Moving on to the third element, there was sufficient evidence to suggest that the Respondent was not only aware of the Complainant’s common law rights in the disputed domain name, but, as mentioned previously, sought to take advantage of the Complainant’s reputation and goodwill. To register such a specific domain name, the Respondent must have known about the author and her books, suggesting to the panel the domain name was registered in bad faith. In addition, the presence of a falsely attributed article on the website was indicative of bad faith use of the domain name. In sum, the Respondent’s conduct supported a finding “of intentional and abusive interference with the Complainant’s use of her trademark” and they therefore found the third element in favour of the Complainant.
Having succeeded in getting her domain name transferred back to her, it is evident that the Complainant’s success was dependent on proving that the Respondent was directly taking advantage her trademark. She was aided by the lack of response and the fact her trademark comprised of her own full name; something unlikely to be confused with another term or a generic meaning. While in this instance the Complainant was one of the lucky ones, it is always best to make sure you don’t get into this mess in the first place.