‘patbenatar.com’ remains with fan

International

In 2001 White Castle Way Inc v Jacobs, World Intellectual Property Organization (WIPO) panellist Frederick M Abbott has refused to order the transfer of the domain name ‘patbenatar.com’ to the complainant – the representative of rock star Pat Benatar and owner of trademark rights in her name.

Glyn O Jacobs registered the domain name ‘patbenatar.com’ in December 1998 to host a fan site that features, among other things, a detailed history of Benatar’s band, a complete chronology of her albums and a link to a website selling her CDs. 2001 White Castle Way Inc applied to register the mark PAT BENATAR with the US Patent and Trademark Office (USPTO) in 2000, claiming a first use of the mark in 1979. It filed an action with WIPO against Jacobs, arguing that the link to Benatar products was likely to mislead the public into thinking that Jacobs’s site was affiliated with the official Benatar site at ‘benatar.com’.

Abbott denied the complaint, despite finding that the domain name at issue was confusingly similar to White Castle’s trademark. Abbott found that White Castle’s common law rights in PAT BENATAR were not sufficient to preclude Jacobs’s legitimate interest in registering the domain name six months before White Castle applied to register the mark at the USPTO. Abbott also held that (i) Jacobs’s use of ‘patbenatar.com’ was non-commercial, and (ii) the website's content was in no way disparaging to Benatar. Accordingly, he concluded that White Castle had failed to establish Jacobs’s bad-faith registration or use of the domain name and thus refused to transfer it. He also rejected Jacobs’s counterclaim of reverse domain name hijacking.

For discussion of a recent case where the panellist found that the use of the name of a famous musician in a domain name was not legitimate, see Eminem wins battle for 'eminemmobile.com'. For other examples of decisions involving fan websites, see The uncertain status of criticism and tribute sites.

Shannon Yavorsky, Hammonds, London

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