Site's absurdity saves registrant from bad-faith finding

In Diamond v Goldberg, National Arbitration Forum (NAF) panellist Michael Albert has denied actor Dustin Diamond's request to order the transfer of the domain name 'dustindiamond.com' to him. Albert held that the registrant's use of 'dustindiamond.com' constituted an active and legitimate non-commercial use.

Diamond is mainly known for his leading role in the television series "Saved by the Bell". He filed a complaint with NAF upon discovering that Max Goldberg was hosting a website at 'dustindiamond.com'. Goldberg maintained that the domain name at issue was used for a parody website. He submitted numerous emails and letters of support as evidence that the public viewed the website as a parody. He also pointed out that the website:

• sells no products;
  
  
• has no advertising; and
  
  
• generates no revenue.

Diamond produced no evidence to support his assertion that Goldberg had offered to sell the domain name.

Albert rejected the complaint, even though he (i) recognized Diamond's common law trademark rights in his name, and (ii) found that Goldberg had not established rights or a legitimate interest in 'dustindiamond.com'. Instead, Albert accepted Goldberg's argument that (i) the website's "outrageously ugly and low-tech graphics and numerous errors and misspellings", and (ii) the "sheer absurdity" of the site's claim that Diamond is a "famous superstar sex symbol" were evidence that the website is not meant to be taken seriously. This, Albert found, made Goldberg's use of the domain name a legitimate non-commercial one under Paragraph 4(c)(iii) of the Uniform Domain Name Dispute Resolution Policy.

Noting that his decision rested solely on his Paragraph 4(c)(iii) analysis, Albert nevertheless briefly addressed Diamond's argument that Goldberg registered the domain name in bad faith. Albert dismissed numerous prior decisions (in which a registration of a celebrity's trademark was found to constitute bad faith) on the basis that in each of those prior decisions, the registrant had some commercial interest in the domain name and/or had tried to sell the domain name. He also dismissed a World Intellectual Property Organization decision and two prior NAF decisions in which passive holding of a domain name was found to be bad faith, on the grounds that Goldberg's use was active rather than passive. Indeed, Albert stated that he had not found "a single case in which bad faith was found where the respondent engaged in active use that consisted of pure, non-commercial speech in the nature of parody or critical commentary".

Accordingly, Albert denied Diamond's request that the domain name 'dustindiamond.com' be transferred to him.

Lynda Zadra-Symes and Nathan Engels, Knobbe Martens Olson & Bear LLP, Irvine