Eminem wins battle for 'eminemmobile.com'
US rapper Marshall Mathers III, better known as Eminem, has joined the list of entertainers who have used the high-speed, low-cost World Intellectual Property Organization (WIPO) proceedings to shut down websites operated by cybersquatters. In Mathers v Mcintosh, WIPO panellist J Nelson Landry held that the respondent had engaged in cybersquatting by registering and using 'eminemmobile.com', even though the website eventually featured a disclaimer stating that it was not affiliated with Eminem.
Tim Mcintosh, a resident of the United Kingdom, registered 'eminemmobile.com' on March 19 2003 and was using the website to sell various goods. Mathers filed a complaint with WIPO, arguing that the domain name registration infringed his rights in the EMINEM mark.
Landry held that Mathers had established the three elements required for the transfer of a domain name pursuant to Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy. He noted that the domain name was confusingly similar to Mathers's highly distinctive EMINEM trademark, despite the fact that it contained the additional word 'mobile'. Landry also held that Mcintosh was not (i) making fair or non-commercial use of the domain name, or (ii) using it in connection with the bona fide offering of goods and services. Thus, Mcintosh lacked rights and legitimate interests in the domain name.
Finally, Landry held that the respondent had registered and was using the domain name in bad faith. Given Mathers's popularity at the time of registration of the domain name, it was inconceivable that Mcintosh was not aware of the EMINEM mark. Landry noted that the website contained a disclaimer indicating that it was not affiliated with, or sponsored by, Mathers, but pointed out that the disclaimer was not included until a year after the domain name had been registered. He held that this after the fact insertion of a disclaimer could not prevent a finding of bad faith. He reasoned that Mathers enjoyed exclusive rights and substantial goodwill in the well-known EMINEM mark, and noted that the website contained at least four graphical representations of the mark in its distinctive lettering, as well as several mobile phone ring tones of Mathers's songs accompanied by their titles.
It is worth noting that the decision does not explicitly state that an alleged cybersquatter can avoid a finding of bad faith by (i) including a disclaimer in the website at the time of registration, and/or (ii) using a disclaimer in a website that does not contain other items suggesting that it is sponsored by the mark holder. An earlier WIPO opinion implies that, because of initial interest confusion and consumer inattentiveness, disclaimers are insufficient to avoid a finding of bad faith.
Howard Shire and Shane Cortesi, Kenyon & Kenyon, New York
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