Will Smith's fame proves enough to win fight for 'WillSmith.us'
In Smith III v Mangalick, National Arbitration Forum (NAF) panellist R Glen Ayers has ordered the transfer of 'WillSmith.us' to famous actor and musician Will Smith. Ayers held that although Will Smith is a common name, it was possible to infer bad-faith registration because Smith is a very well-known celebrity.
Smith filed a complaint with NAF under the US Department of Commerce's usTLD Dispute Resolution Policy (usDRP) in response to Vip Mangalick's registration of 'WillSmith.us'. Smith argued that he is a famous actor and performer, and has common law rights in his well-known name. He highlighted that he also owns the registered trademark WILL SMITH. Smith further contended that Mangalick had:
- not used the domain name for any purpose;
- no rights or legitimate interests in the domain name; and
- acted in bad faith in registering the domain name, as it had been registered without authorization and Mangalick had offered to sell it to Smith for $100.
Ayers applied Paragraph 4(a) of the usDRP and concluded that Smith had met all of the requirements. He reasoned that the 'WillSmith.us' registration was identical to Smith's trademark and that Mangalick did not have legitimate interests in the domain name. The bad-faith issue, however, was not quite as straightforward.
Ayers noted that the offer to sell the domain name for $100 was not objective evidence of bad faith because the sum was nominal. He then considered whether he could infer bad faith from the facts that:
- Mangalick registered the domain name without having an interest in the Will Smith name;
- Mangalick had intentionally registered the domain name in full knowledge that it was related to the name of a very famous celebrity; and
- the registration blocked Smith from using 'WillSmith.us'.
He stated that these points had to be balanced with the fact that Will Smith is a very common name. Ayers concluded that although it was a close call, it was possible to infer bad-faith registration because Smith is a very well-known celebrity.
Thus, Ayers ordered the transfer of the disputed domain name to Smith.
Aimee Nassau and Tim Kelly, Fitzpatrick Cella Harper & Scinto, New York
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