Tracy Morgan’s official site is currently TracyMorgan.net
According to DomainTools.com, the domain name has an original registration date of 2001.
The domain is owned by PPA Media Services and Ryan G Foo
Now that the ruling is out here are the relevant facts and findings:
“The Complainant is Tracy Morgan, an individual with a contact address in California.
The Complainant is a comedian and actor. The Complainant appeared in 140 episodes of Saturday Night Live, an American live television sketch comedy and variety show. In addition to his fifteen years on Saturday Night Live, Mr. Morgan has numerous television and film credits. Mr. Morgan has received accolades for his work, including Emmy Award nominations.”
“The Complainant’s use of his personal name Tracy Morgan in connection with his entertainment services is considered by the Complainant as establishing common law trade mark rights in his name.
The Domain Name was registered on September 8, 2004, via a domain name privacy service, Private Whois.
The Domain Name resolves to a parking page containing a variety of links categorized under headings relating to the Complainant, his profession or other comedians and actors.
“The first element that needs to be established is whether the Complainant has trademark rights in the name Tracy Morgan.
The difficulty that exists in dealing with personal names is underlined by section 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0“) which reads as follows:
“Consensus view: Personal names that have been registered as trademarks are generally protected under the UDRP. While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person’s name as a distinctive identifier of goods or services offered under that name would normally be required…”
“However: The name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier for the business engaged in, or a religious leader), or making broad unsupported assertions regarding use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights.”
“The key is therefore whether the complainant uses his or her name in trade or commerce as an identifier of goods or services.”
“The Complainant submits evidence that it has rights in the name ”Tracy Morgan”.”
“The Complainant states that, as a result of his long use of his personal name in his professional capacity, Mr. Morgan has established common law rights in his name and that these rights existed prior to the registration of the Domain Name. Based on the evidence produced by the Complainant, the Panel is satisfied that the Complainant has Common law or unregistered trademark rights in the name “Tracy Morgan” for purposes of the Policy.”
“The second element which the Complainant needs to substantiate is whether the respective Domain Name is identical or confusingly similar to the mark TRACY MORGAN in which the Complainant has rights.”
“The Domain Name reproduces the exact Complainant’s name with the mere addition of the gTLD “.com”. It is widely accepted that the gTLD “.com” may be disregarded in assessing the issue of confusing similarity. The Panel finds that the dominant element of the respective Domain Name is the mark TRACY MORGAN, which is identical to the Complainant’s name.”
“The Panel therefore finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
“The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie case of the Respondent’s lack of rights or legitimate interests in the Domain Name. As a result of its default, the Respondent has failed to rebut that case.
“For instance, there is no evidence suggesting that the Respondent is affiliated with the Complainant, is commonly known by the Domain Name, or has obtained any licence or authorization to use the Complainant’s TRACY MORGAN mark.”
“In addition, the Panel finds that the Domain Name points to a parking page, through which Internet users are very likely to be directed to websites providing goods, services or information relating to Mr. Morgan directly or relating to his profession or other comedians and actors. Such use of the Domain Name cannot constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the Domain Name since it essentially relies on user confusion, most probably to generate financial gain.”
“Finally, the Panel considers the Respondent’s failure to respond to the Complaint as an additional suggestion of the lack of rights and legitimate interests of the Respondent in the Domain Name.”
“The Panel therefore finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.”
“The content of the website to which the Domain Name points features links to websites providing goods, services or information relating to the Complainant or other actors and comedians. The Panel therefore believes that the Domain Name was registered and is being used to attract consumers and make a commercial gain by providing links to third parties’ websites through a pay-per-click scheme thereby taking advantage of the Complainant’s goodwill and the likelihood of confusion with the Complainant’s name.”
“The Panel is of the opinion that the Respondent would, in all likelihood, have been fully aware that the registration and use of the Domain Name would impinge upon the Complainant’s rights in the TRACY MORGAN name and mark. In view of this and given the other circumstances highlighted above, the Respondent’s conduct falls within paragraph 4(b) of the Policy.”