Respondent's right to 'jenna.com' laid bare by prior agreement
The first complainant, Jenna Massoli, is an adult entertainer known professionally as Jenna Jameson. The second complainant, Jennasis Entertainment Inc, is the owner of the trademarks JENNA and JENNA JAMESON, which have been registered in the United States for use in association with services in Class 41 of the Nice Classification. The third complainant, Club Jenna Inc, is the owner of a US trademark registration for CLUB JENNA, also for use in association with services in Class 41. In 2000 Jennasis granted Club Jenna an exclusive licence to use the trademarks JENNA and JENNA JAMESON. Club Jenna also operates a website in association with the domain name 'clubjenna.com'.
In 2003 Linq Entertainment Inc acquired all the assets of SN Entertainment Inc, including the domain name 'jenna.com', which had been registered by the principal of SN Entertainment in 1996. Linq operates a website associated with the domain name 'jenna.com' featuring adult entertainment content using several adult models, all called Jenna.
In December 2004 the complainants filed a proceeding with WIPO under the Uniform Domain Name Dispute Resolution Policy in respect of 'jenna.com', alleging, among other things, that the domain name (i) had been registered to exploit the name, image and likeness of Jenna Jameson, and (ii) was identical or confusingly similar to one or more of the trademarks owned by the complainants. Further, the complainants alleged bad faith because:
- the domain name was intended to divert internet users from 'clubjenna.com';
- the website associated with the domain name uses models closely resembling Massoli; and
- text on the website refers to Jenna Jameson.
WIPO panellist Nels T Lippert found that the disputed domain name was identical to the registered trademark JENNA, incorporated the dominant portion of the CLUB JENNA mark, and was confusingly similar to the JENNA JAMESON mark. However, he found that the complainants failed to establish that Linq had no right or legitimate interest in the disputed domain name.
The evidence established that Linq had used the disputed domain name in connection with a bona fide offering of services prior to any notice of the dispute. Specifically, Lippert found credible uncontradicted evidence that a verbal agreement had been reached in 1998 whereby Linq's predecessor-in-interest was given the right to operate a website associated with the disputed domain name as the official Jenna Jameson website. Although this relationship subsequently broke down, the right of Linq's predecessor-in-interest to retain ownership and use of the disputed domain name was specifically acknowledged by a representative of Massoli. In a letter from that representative in 1999, SN Entertainment was granted the freedom to "create any contact at all for www.jenna.com, so long as it does not include any mention to Jenna Jameson or her intellectual property". Having purchased all the assets of SN Entertainment, Linq was found to stand in its shoes and accordingly had a legitimate interest in the disputed domain name.
Lippert stated that to the extent that Linq or its predecessor-in-interest may have included unlicensed content on the website, another forum was better suited to deal with those issues.
Antonio Turco, Blake Cassels & Graydon LLP, Toronto
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