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October 5, 2010 / Nate Harris

Pamela Anderson v. Alberta Hot Rods

Summary of Pamela Anderson v. Alberta Hot Rods
(WIPO Case No. D2010-1144)

Filed: July 10, 2010; Decided: September 8, 2010 (Panelists: Brigitte Joppich, William R. Cornish, and The Hon. Neil Brown QC)

Disputed Domain Name: <pamanderson.com>

pamanderson.com

The Parties

Complainant Pamela Anderson is a world-famous actress and model. She has been known since 1992, when she debuted on the show Baywatch. At its peak, the show commanded an audience of over 1 billion viewers on a weekly basis. Ms. Anderson owns numerous trademark registrations for the mark PAMELA ANDERSON, with those marks dating back to as early as 2002.

Respondent Alberta Hot Rods (“Alberta”) registered the disputed domain name in 1997. The domain does not currently resolve to an active website. The parties were involved in an earlier UDRP proceeding wherein Alberta was ordered to transfer the domain names <pamelaanderson.com>, <pamelaanderson.net>, and <pamelalee.com> to Ms. Anderson. In fact, Alberta has a record of registering domain names containing or comprising celebrity names, and has been ordered to transfer several of those domain names.

Procedural

Though the UDRP came into being after the disputed domain was registered, “all gTLD domains became subject to the Policy as of its adoption” when all domain owners were required to either accept the Policy or forfeit their domains. Thus, there is no question that the UDRP applies to this dispute.

The Panel disregards Alberta’s argument of laches, noting that it “does not regard laches as an appropriate defense to the Complaint made in this case.” According to the Panel, the Respondent registered the disputed domain in bad faith, and so is barred from raising the defense of laches by the doctrine of unclean hands.

Identical or Confusingly Similar

The Panel recognizes Ms. Anderson’s common law rights in her PAMELA ANDERSON mark dating back to 1992. It is “questionable” whether she can rely on rights in the name PAM ANDERSON, but ultimately the Panel finds that, “as ‘Pam’ is a common abbreviation of ‘Pamela””, the disputed domain is nonetheless confusingly similar to the PAMELA ANDERSON mark.

Rights or Legitimate Interests

The Panel finds that Ms. Anderson has made a prima facie showing that Alberta has no rights or legitimate interests in the name PAM ANDERSON under Paragraph 4(c) of the Policy. Alberta’s “unsupported arguments” fail to rebut this showing. Therefore, Ms. Anderson has satisfied this prong of the test.

Bad Faith

Ms. Anderson has been “widely known for her acting since 1992[.]” Since Alberta must have been aware of Ms. Anderson’s career, the Panel concludes that the disputed domain name was registered in bad faith. Furthermore, the Panel notes the “impossibility of conceiving a good faith use of the domain name” (emphasis added). Alberta’s “pattern of conduct” in registering celebrity names as domains further supports a finding of bad faith.

Reverse Domain Name Hijacking

Alberta alleges that Ms. Anderson is using the UDRP in an abusive manner to harass owners of legitimate domain names. In light of the above findings, however, a finding of reverse domain name hijacking is not warranted.

Decision

The Panel orders that the disputed domain name be transferred to Ms. Anderson.

Dissent

The dissenting Panelist argues that the Ms. Anderson is not entitled to rely on “extraneous evidence of any sort” to prove confusing similarity. Thus, the Panel was wrong to rely on Ms. Anderson’s “alternate name” (Pam) to find confusing similarity. Furthermore, the public may well conclude that the name “Pamela Anderson” is so “ingrained in the public psyche” that the name “Pam Anderson” must refer to someone else.

The dissenting Panelist also argues that Ms. Anderson does not rebut Alberta’s claim that it previously made a bona fide informative use of the disputed domain. Thus, Ms. Anderson did not make the requisite showing of a lack of rights or legitimate interest.

Finally, the dissenting Panelist argues that the doctrine of laches should apply in UDRP proceedings. (He references a similar argument he made in this article [subscription required]). “[I]n this Panelist’s view it is wrong to ignore [delay], wrong to reward complainants who engage in it and reasonable to take it into account as one of several factors helping the panel to come to a decision, even if it is not conclusive.”

Commentary

Though the Panel seems confused on this point, Pamela Anderson’s trademark registrations have nothing to do with her role on Baywatch. They are for clothing, perfume, fashion accessories, and pet accessories. Those registrations have priority dates of 2002 or later. Did Pamela Anderson have common law rights in her marks for those goods and services that predate registration of the disputed domain? It’s impossible to say on this evidence. Regardless, her celebrity status as a result of her acting (ahem) career is somewhat irrelevant, as the UDRP does not recognize the right of publicity. [Discussed here].

The Panel’s disregard for the laches defense is pretty mangled. Essentially, they argue that the defense of laches is barred by Alberta’s “unclean hands” from its bad faith registration. Huh? The maxim of equity I’m familiar with states that “one who seeks equity must do equity,” not that “one who seeks to raise an equitable defense must do equity.” The one who seeks equity through the UDRP is the complainant. The cleanliness of Alberta’s hands is irrelevant!

I also have to take issue with the dissenting Panelist’s strict exclusion of “extraneous evidence” from the determination of confusing similarity. To give just one example, Panels regularly rely on evidence (or take judicial notice) that one word is a synonym for another. How could you ever find confusing similarity without going beyond the domain name and the mark? Regardless of what you think of the Panel’s ultimate determination on the issue of confusing similarity, I don’t see how the Panel was wrong to recognize that Pamela Anderson may sometimes go by Pam Anderson.

Epilogue

<pamanderson.com> still returns a 403 Forbidden error.

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