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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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Vanessa Minnillo v. Mike Morgan

WIPO Case No. D2005-0813 (WIPO, Sept. 27, 2005)

In this domain name dispute decided under the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel holds that Respondent has no legitimate interest in Vanessa, a domain name comprised of the name of a now famous TV personality.  Because Ms. Minnillo has common law trademark rights therein by virtue of her extensive commercial activities, and because Respondent offered to sell the domain to her for a price well in excess of the out-of-pocket expenses associated with its acquisition and maintenance, the Panel directed the transfer of the domain to Complainant.  Of note, the Panel held that it is the date on which Respondent first acquires the domain, and not the date on which it is first registered by its prior owner(s), that is of import in determining whether the Complainant has trademark rights sufficient to prevent Respondent's unauthorized use of the domain in question.

Complainant Vanessa Minnillo ("Minnillo") is a famous TV personality who first came to the public's attention when she won the Miss Teen USA pageant in 1998.  In 2003, Minnillo became a host for MTV.  She thereafter became a correspondent on "Entertainment Tonight" and appeared and/or starred in numerous other television productions.

Respondent Mike Morgan ("Morgan") is the current registrant of the domain Vanessa, which he acquired in April 2005 for $500.  The domain was first registered in October 2001.  Respondent never operated a web site at the domain.  Shortly after his acquisition, Complainant sought to acquire the domain.  In response, Morgan offered to sell it for $5000.  Complainant rejected this offer and instead commenced a UDRP proceeding seeking to compel transfer of the domain name.  The Panel held that Complainant had demonstrated each of the three elements necessary to obtain relief under the UDRP, and accordingly directed transfer of the disputed domain.

The Panel held that the first UDRP element was satisfied because the disputed domain was identical to Complainant's own name, in which Complainant held common law trademark rights.  Of note, the Panel held it was the date on which Respondent first acquired the domain name, and not the date on which the domain was first registered by any prior owners, that was of import in its analysis.  The Panel found that Ms. Minnillo had acquired common law trademark rights in her name at that time by virtue of the secondary meaning it had developed, and the public's recognition therein, as a result of Minnillo's extensive commercial activities and appearances on television.  Notably, not all famous people have common law trademark rights in their names.  To acquire such rights, a Complainant must show that the "name has become a distinctive identifier associated with the Complainant's goods or services." 

Said the Panel:

From the available evidence, it seems that the Respondent acquired the domain name for 500 United States dollars by purchasing it from an earlier registrant.  The evidence submitted by the Respondent shows that he did so on April 19, 2005 and so the proper question is whether the Complainant had common law or unregistered trademark rights in her name on that date.  Because Complainant had trademark rights in her name when Respondent first acquired the domain name at issue, Ms. Minnillo established the UDRP's first element, as the domain name at issue - Vanessa - was identical to her trademark.

The Panel held that the second UDRP element was met because Mr. Morgan had no legitimate interest in the domain at issue.  In reaching this result, the Panel rejected Mr. Morgan's claim that he intended to operate a fan site at the domain, in large part because he had not done so by the time the proceeding was commenced.

Finally, the Panel found Respondent had acted in bad faith, the final UDRP element because he had offered to sell the domain for $5,000, a sum well in excess of the $500 he paid therefore.  In reaching this result, the Panel rejected Respondent's claim that his offer contained a typo (he claimed he meant to offer the domain only for the $500 he paid, and not $5,000) because Respondent failed to produce evidence that he in fact paid $500 for the disputed domain.

Finding all of the elements of the UDRP satisfied, the Panel resolved this domain name dispute by directing Respondent to transfer the disputed domain name to Ms. Minnillo.

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