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August 31, 2010 / Nate Harris

Anthony Hopkins v. Private Whois Service

Summary of Anthony Hopkins and the Trustees of the Samson Holding Trust v. Private Whois Service c/o anthonyhopkins.com
(Nat. Arb. Forum Claim No. 1337181)
Filed July 27, 2010; Decided August 26, 2010 (Panelist: James A. Carmody, Esq.)

Domain Names: <anthonyhopkins.com>

anthonyhopkins.com

anthonyhopkins.com

The Parties

Complainant Sir Anthony Hopkins [note: Sir Anthony is a gentleman, and didn’t use his knightly title of “Sir”– I added it myself] is a legendary film actor who has appeared in over 50 motion picture films. He has received numerous Academy Awards, most notably for his role as Hannibal Lecter.

Respondent’s true identity is not known; the domain was registered by a private service in the Bahamas. Respondent registered the disputed domain name on April 13, 2003. The domain points to a click-through website.

Procedural Issue

Mr. Hopkins assigned his rights in his name, likeness, and image to the other Complainant, the Trustees of the Samson Holding Trust, on December 12, 2005. Multiple complainants may bring a complaint when there is a “sufficient link” between them, for example, a license. Here, the Panel found that condition was satisfied, and allows the complaint to proceed with the two complainants.

Identical or Confusingly Similar

The Panel notes that Mr. Hopkins does not hold a trademark registration for the mark ANTHONY HOPKINS. However, a registration is not necessary if the Complainant can demonstrate common law rights in the mark. Here, the Panel points to Mr. Hopkins’ extensive body of work in the film industry and his numerous awards to find that he had established common law rights in the ANTHONY HOPKINS mark. [Really? See Commentary, below.]

The disputed domain name is identical to the ANTHONY HOPKINS mark, in that the only change is the deletion of a space between “Anthony” and “Hopkins” and the addition of the generic top-level domain “.com”.

Rights or Legitimate Interests

The WHOIS record for the disputed domain name lists “Private Whois Service c/o anthonyhopkins.com” as the registrant of the domain. However, prior decisions have held that WHOIS contact information cannot be used to establish that the Respondent was ever commonly known by the disputed domain name. Thus, there is no evidence to show that Respondent has rights or legitimate interest in the disputed domain name.

Bad Faith

The Panel finds bad faith registration and use in the fact that the Respondent uses a domain name identical to Mr. Hopkins’ mark to redirect users to its website in order to generate click-through traffic.

Decision

It is ordered that the disputed domain name be transferred to the Complainants.


Commentary

As I’ve mentioned before, the UDRP does not recognize a celebrity’s right of publicity as a right under Paragraph 4(a)(i) of the Policy (the “Identical or Confusingly Similar” prong). See Jay Leno v. Guadalupe Zambrano (WIPO Case No. D2009-0570) for a great discussion of that doctrine. The case law is pretty clear that a celebrity using his or her personal name in conjunction with an offer of goods or services would have trademark rights as to those services; “[m]erely having a famous name, however, is not sufficient for there to be common law rights, even if the fame results from commercial activities.” Id.

In the context of the present case, what goods or services does Anthony Hopkins offer to the public? Doesn’t he just have a famous name, albeit from commercial activities?

Epilogue

8/30/2010: <anthonyhopkins.com> still points to a click-through webpage.

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