1 November 2009

No laughing matter for Jim Carrey

Jim Carrey, the Hollywood star of a number of hit movies such as Ace Ventura, Dumb and Dumber, Liar Liar and Bruce Almighty (and some not so great movies such as Cable Guy), recently became a victim of cybersquatting. 

BWI Domains registered the jimcarrey.com domain name earlier this year and derived a financial benefit in the form of pay-per-click revenue from the web traffic that was diverted through the jimcarrey.com domain name to linking portals.

Jim Carrey duly instituted a domain name complaint before the World Intellectual Property Organisation's (WIPO) Mediation Centre in Switzerland.

For a complainant to succeed with a domain name dispute it must prove each of the three elements referred to in paragraph 4(a) of the Uniform Dispute Resolution Policy, namely that:

(i) the disputed domain name is identical or confusingly similar to a trade mark in which the complainant has rights;

(ii) the registrant has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Jim Carrey did not own any registered trade marks in and to his name, and had to rely on his common law rights. The WIPO Panel confirmed that a number of previous WIPO panelists have held that, in order for an individual to rely on unregistered trade mark rights, he or she must be able to demonstrate use of the mark in trade or commerce. Merely having a famous name is not necessarily sufficient to demonstrate common law trade mark rights. Jim Carrey had to show that his name has been used in commerce and has acquired a sufficient secondary association in order to establish that a common law trade mark exists.

A mark comprising a personal name has acquired secondary meaning if a substantial segment of the public understand the designation when used in connection with services or business, not as a personal name, but as referring to a particular source or organization.

The WIPO Panel held that, by virtue of the success of his numerous films, Jim Carrey has acquired a reputation as one of the world's most famous actors and comedians and that the use of Jim Carrey's name in connection with entertainment services provided a strong indication of source, and has therefore acquired a secondary meaning. The WIPO Panel was, therefore, satisfied that he established common law trade mark rights in and to his name, and that the domain name was identical or confusingly similar to the JIM CARREY common law trade mark.

The Panel noted that the website to which the jimcarrey.com domain name directs was used to direct internet users to a pay-per-click linking portal and that there was no evidence to support the premise that the registrant was operating a bona fide business through the website to which the jimcarrey.com domain name linked, or that the registrant was affiliated with, or authorised by the Complainant.

Jim Carrey had therefore made out a prima facie case and as the registrant failed to file a response to the complaint it remained for the WIPO Panel to determine whether the Respondent had legitimate rights or interests in the jimcarrey.com domain name.

The WIPO Panel was satisfied that the use of the website to which the jimcarrey.com domain name linked, qualified as use in bad faith. In addition, the WIPO Panel found further evidence of bad faith on the part of the registrant in the fact that the registrant previously engaged in a pattern of registering and using domain names incorporating the trade marks of third parties to redirect internet users to linking portals for profit.

The domain name accordingly had to be transferred to Jim Carrey.

Companies should police the internet for any unwarranted registration of domain names incorporating their trade marks and should consult with IP professionals specializing in Domain Name infringements, should they become aware of any domain name identical or confusingly similar to their trade marks (registered or common law).

Literally nobody is spared when it comes to cybersquatting, and even the cliffedekkerhofmeyr.com domain name was snatched before our eyes on the day of the announcement of the merger between Cliffe Dekker and Hofmeyr in September 2008 (the IP team managed to reclaim the domain before a WIPO panel later in 2008).

Eben van Wyk, Director and
Regardt Botes, Associate,
Intellectual Property

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