Elizabeth Taylor’s Estate Wins Rights To LizTaylor.xxx

A one member UDRP panel just award the domain name LizTaylor.xxx to the The Elizabeth Taylor Trust, Interplanet Productions Limited and The Elizabeth Taylor Cosmetics Company who all brought the UDRP.

The decision is more interesting that you think.

Also I’m not sure how the domain holder got the domain registered in the first place as the panel found they were not a member of the adult community.

As .XXX is a sTLD, restricted only to those who are members of the Sponsored Community, something they must acknowledge and verify before registering a .XXX domain.

Here are the relevant facts and findings:

“The Complainant has rights in the ELIZABETH TAYLOR trade mark registered with the USPTO on March 22, 1994. ”

“The Complainant alleges that the disputed domain name is confusingly similar to the ELIZABETH TAYLOR mark and that the short form “Liz” for the name “Elizabeth” does not negate the confusing similarity.  Elizabeth Taylor was not only an award-winning actress but an internationally-recognised producer, author and business entrepreneur.  The Complainant produced media articles which referred to her as “Liz Taylor”.

“The Complainant filed for United States trademark applications covering the mark LIZ TAYLOR for cosmetics, fragrances, jewellery, watches, clothing and footwear  in January of 2012.”

“The Respondent registered the disputed domain name on December 7, 2011 and has never used or developed the disputed domain name in connection with a bona fide offering or any goods or services.”

“The disputed domain name links to a website that incorporates a generic search engine with links to other third party websites selling cosmetics competing with those sold by the Complainant, as well as links to information relating to the life and career of Elizabeth Taylor.”

“The Panel is in no doubt that the disputed domain name is confusingly similar to the Respondent’s trademark. ”

““Liz” is a very common abbreviation of the forename, “Elizabeth”.  The Complainant has produced evidence that the late Elizabeth Taylor was known, in the media at least, as “Liz” Taylor.  ”

“Whether she personally liked the shortened version of her full name or not is irrelevant. ”

“It does not matter that the trademarks of the Complainant extend only to jewellery, clothing, etc.  ”

“All that needs to be proved under the Policy is that a complainant has rights in a trademark and that the disputed domain name is identical or confusingly similar to that mark.”

“The Respondent claims that he wishes to develop a website devoted to a porn star who calls herself “Liz Taylor” or “Lizz Taylor”. ”

“When one visits the disputed domain name, the Google search shows a whole list of pornographic sites devoted to a porn star who calls herself “Liz Taylor”.  ”

“It seems that some actors in the “adult entertainment” industry take on names of famous actors or actresses or slight variants thereof . ”

“One speculates whether the famous people whose names are thus appropriated are happy with this phenomenon.  The Respondent claims that he wishes to develop this website but because website development is not his primary occupation, he does not have time to do so. ”

“In the meantime, the domain name is inactive or diverts to this particular website.”

“The Respondent is required to show that he has made demonstrable preparations to offer goods and services using the disputed domain name before he had notice of the Complaint.  ”

“He claims, for example, to have had some contact with an agent for the star, Liz Taylor, but there is no evidence to support this contention. ”

“Nor is there any evidence to show that he had instructed a contractor to prepare a website.  ”

“An additional indication of lack of demonstrable preparations before notice of the Complaint stems from the fact that only after the Complaint was filed, did the Respondent apply to join the “Sponsored Community” for persons wishing to develop XXX domain names.  ”

“One wonders why, if he were so intent on promoting interest in the porn star, Liz Taylor, he did not take this step earlier.  He says that it is common practice for those with XXX sites not to seek membership of a sponsored community until after the domain has been registered but then, again, there is no evidence of this. ”

“Nor is there any evidence of a bona fide offering of goods and services in a legitimate non-commercial or fair use of the disputed domain name which could bring the Respondent within Paragraph 4(c)(iii) of the Policy. ”

“The Respondent uses the resolving website to provide inter alia hyperlinks on behalf of companies selling cosmetics in competition with the Complainant. ”

“It has often been held in UDRP cases that a Respondent must take responsibility for what is on a website.  Passing responsibility on to a “parking site” operator is not good enough.  Some links are to sites featuring the late Elizabeth Taylor.”

“Considering all the available evidence, the Panel has no difficulty in concluding both bad faith registration and use for the following considerations.”

 

“The fame of the Academy award-winning actress, Elizabeth Taylor, over many years, is worldwide.  There was much publicity when she died in March 2011, the disputed domain name was registered some months after her death.  It defies belief that the Respondent had never heard of Elizabeth Taylor at the time when he registered the disputed domain name, albeit in a contracted form of her first name, but in a form which is easily recognised as relating to Elizabeth Taylor, the famous actress.”

“The disputed domain name clearly tarnishes the Complainant’s trademark.  There is no evidence that the late Dame Elizabeth Taylor was associated with pornography on the internet.  Close association of her name with a pornographic site must surely tarnish the trademark bearing her name. ”

“Some internet viewers might be confused into thinking that the domain name liztaylor.xxx related to the late Elizabeth Taylor.  Some may be surprised that she might have been associated with pornography.  Others may be merely curious to see whether she indeed dabbled in that particular predilection.”

“One can take judicial notice of the fact that the name “Elizabeth Taylor” or its shortening of “Liz Taylor” would be well-known universally.  It would be certainly better known than the name “Liz Taylor” assumed by an actress in pornographic videos or downloads.  Hence there is a likelihood of confusion to internet users. ”

“The fact that the Respondent was not at the time of the Complaint a member of a Sponsored Community as envisaged by CEDRP strengthens the inference of bad faith registration and use of which all of the above are indicia.”

 

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