In WIPO Case No. D2009-0563 Jim Carrey v BWI Domains (16 June 2009) single panellist Alistair Payne had little trouble deciding that the registration and resolution of the domain name jimcarrey.com to a parking site from which the registrant derived pay-per-click revenue constituted bad faith.
BWI Domains registered the domain name jimcarrey.com on 25 March 2007 and directed it to a parking site described in the WIPO proceedings as a “pay-per-click linking portal”. Jim Carrey complained to WIPO about the registration and use of the domain name on various grounds including that his name was so well known that there could be no legitimate use of it by BWI and that BWI’s use of the domain name was in bad faith because it was identical to his mark and BWI was using it to direct people to a pay-per-click site from which it derived a financial benefit. BWI did not respond to the complaint.
Mr Payne found that Jim Carrey had common law rights in his name which could be protected under the UDRP, and that he had succeeded in establishing a prima facie case that the disputed domain name was identical to the name in which he had common law rights. The domain resolved to a site from which BWI derived financial benefit and that there was no evidence that BWI operated a bona fide business through the website to which the domain resolved. Since BWI did not defend the complaint, this was sufficient to establish that it had no legitimate interest in the domain name, and the fact that it derived profit from it was sufficient to constitute bad faith within the terms of paragraph 4(b)(iv) of the UDRP. Accordingly, he ordered transfer of the domain.
As the panellist noted, what legitimate interest could anybody other than Jim Carrey possibly have in registering the domain name jimcarrey.com for gain? Based on the fact that BWI must be imputed to have known that Jim Carrey had rights in his name, even if BWI had responded with evidence demonstrating an intention to set up, for example, a Jim Carrey fan site under the domain name without view to commercial gain, the panellist would doubtless still have ordered a transfer. Parking such a domain name to derive click-through revenue presumably always constitutes bad faith where the only use without licence that legitimately can be made of a famous name is for a non-commercial fan or criticism site (leaving aside arguments over whether the respondent in any event should have used a distinguishing term in the domain name itself).