Jay Leno victorious in cybersquatting case

In Leno v Zambrano (Case D2009-0570, June 25 2009), a World Intellectual Property Organization (WIPO) panellist has ordered the transfer of the domain name 'thejaylenoshow.com' from Guadalupe Zambrano, a Texas real estate agent, to famous comedian and talk show host Jay Leno. 
In September 2004 Zambrano registered the domain name 'thejaylenoshow.com' and used the domain to redirect internet visitors to a website promoting his real estate services. Leno filed a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) with WIPO's Arbitration and Mediation Centre in May 2009 following the announcement that his new prime time talk show would be called The Jay Leno Show. 
Leno, asserting common law trademark rights in his personal name, demanded a transfer of the disputed domain name. The panellist, distinguishing between trademark rights and rights arising under the law of publicity, found that Leno had established common law trademark rights in the JAY LENO mark. Zambrano argued that the doctrine of laches should be used to bar Leno’s complaint based on the five-year period between registration and the initiation of the UDRP action. The panellist concluded that the doctrine of laches does not apply in UDRP proceedings.
After determining Leno’s common law rights and refusing to consider Zambrano's laches argument, the panellist proceeded to address the merits of the dispute. Under the UDRP, a complainant must prove each of the following three elements to obtain a decision requiring transfer or cancellation of the disputed domain:
  • the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; 
  • the respondent has no rights or legitimate interests in the domain name; and
  • the domain name has been registered and is being used in bad faith. 
The panellist addressed the individual issues in turn, finding in favour of Leno on each. First, given that the disputed domain name incorporated the JAY LENO mark in its entirety, the panellist found the domain name and the common law mark to be confusingly similar. Next, the panellist found that Zambrano had no legitimate rights or interests in the domain name, noting, among other things, that he had no relation to Leno nor was he ever commonly known as 'Jay Leno'. Moreover, Zambrano's intention was never to create a legitimate fan site. Finally, Zambrano admitted that he knew of Leno when he registered the mark and was aware that there was a tremendous potential to profit from the name. The panellist thus concluded that Zambrano had registered and used the disputed domain name in bad faith. The panellist also found that Zambrano had used the domain name merely to attract users to his website for commercial gain. 

Finding for Leno on all three factors, the panellist ordered the transfer of the disputed domain name.
Ron N Dreben and Daniel Marks, Morgan Lewis, Washington DC 

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