TheJayLenoShow.com belongs to Jay Leno after UDRP ruling in Leno’s favor
Perhaps I am dating myself by saying so, but I remember when there were no governing rules or dispute resolution procedures in place to govern domain name registrations. I also recall the passage of the UDRP, which led to my involvement in some of the earliest celebrity-based domain name decisions on record. Some of those decisions are still cited today in current domain name disputes. The latest example of a celebrity domain name recovery involves Jay Leno. See http://www.wipo.int/portal/index.html.en
On June 25, 2009, WIPO decided in favor of Jay Leno in his UDRP action to recover TheJayLenoShow.com from a cybersquatter. The case, entitled Leno v Zambrano (Case D2009-0570), pitted Leno against a Texas real estate agent who had registered the domain name in 2004. Zambrano had used the domain name to redirect visitors to his real estate website.
It is interesting to note that at the time the domain name was registered, Leno’s show was actually called The Tonight Show. In the Fall of 2009, following his departure from The Tonight Show, Leno will be hosting a prime time show called The Jay Leno Show. This name, therefore, directly correlates with the domain name in dispute.
The pleadings on behalf of Jay Leno alleged common law trademark rights in his name. For those who have actually handled personality based domain name disputes, it is well known that the right of publicity is not specifically articulated in the UDRP rules governing owernship of domain names. Thus, a personality must either demonstrate ownership of registered trademarks, or argue in a trademark context that common law trademark interests exist. In a way, this is a round-about way to approximate the right of publicity, and historically it has proven to be effective in front of the domain dispute arbitrators.
One interesting takeaway from the ruling is that the arbitrator dismissed Zambrano’s defense of laches. Zambrano argued that his ownership of the domain name for five years precluded Leno from pursuing recovery. The arbitrator ruled that laches does not apply in UDRP proceedings..
Following the usual criteria that a complainant must meet in a UDRP action, the arbitrator ruled that the domain name in dispute clearly incorporated the entire Jay Leno mark, which was confusingly similar to Leno’s mark. The arbitrator ruled that Zambrano had no rights or interests in the domain. Last, the arbitrator ruled that Zambrano knew of Jay Leno and the value of Leno’s name. Taking all these factors into account, the arbitrator ruled that Zambrano had used the domain name in bad faith to attract web traffic to his site for commercial gain.
http://www.rightofpublicity.com
So Jay Leno can have any domain that has his name in it? What about thisWebsiteDoesNotBelongToJayLeno.com?
Interesting question. If the domain name is as explicit as your example, there is perhaps an argument that it is less subject to recovery by Jay Leno. But as always, context makes all the difference so even then it may very well depend on the content that is being posted on that domain name. And there also is that pink elephant in the room aspect which is, why have a domain name that has Jay Leno’s name in it but for the added traffic, recognizability and opportunity it brings to the site?
Thank you for posting that I won a cybersquatting case against a Texas man misusing the domain name thejaylenoshow.com to direct Internet users to his real estate website.
The World Intellectual Property Organization (WIPO) said I had common law trademark rights to my name after a 30-year career in entertainment, even though Guadalupe Zambrano registered the site in 2004. 5 years…..30 years…..c’mon. It’s mine and he knew it.
Furthermore, real estate agent Zambrano did not have any legitimate rights to the disputed web address and had registered it in “bad faith,” according to the ruling by William Towns, an independent arbitrator appointed by the Geneva-based agency.
This is over. I got the site. All is good. Now watch me at 10:00pm. Rush Limbaugh will be on my show Thursday night. Should be a ratings hit!
Hey Jay Leno, If I was that guy with the domain, I would delete the files and put domain park on the front page. I would of sold the site for few hundred thousands and settle.
Too bad he was greedy and lost.
I’ve found a lot of people have that same idea. It doesn’t usually work out the way you describe though. If one were to actually put a plan like that into action, it would be best to consult a lawyer first because of the additional monetary damages one might be facing as a result.
What if my legal name from birth was Jay Leno and I had a local cable TV show since 2004 called the Jay Leno Show? Is it just a popularity contest with WIPO where the one who’s more well-known and well-moneyed gets privilege?
It’s certainly more than just a popularity contest, and money doesn’t really come into play based on the procedure of domain arbitrations. For the most part, there is no in-person testimony, no discovery, no meetings, just written briefs that are submitted, thereby reducing the possibility of monetary influence or other factors. There have been a good number of decisions that went against the personality. In all likelihood, if your legal name from birth was Jay Leno and you had a TV show by that name, there would have been some trademark issues and communications from the network or producers of the show to work something out with you. At that point, and in your hypothetical, the issues would have gone well beyond just a domain name concern. But for the sake of conversation, imagining that you did have a show by that name since 2004, and it was your name, and somehow the other issues were not in play, then you very well may have won the domain name ruling based on their established policies.
Congrats on new show. I note that the show is looking for unusual musical collaborations. My daughter Callie & I are Greek-American musicians. We play Greek & music from around the world. Check my website for pictures, sound & info on our music.
I think that the delay argument failing is the most important part of this case. Bad faith domain name cases are a dime a dozen. Using the domain name for forwarding is a virtual guarantee of being found guilty of using someone else’s popularity as a free ride. I agree with the ruling – doing something bad for five years doesn’t excuse it. It would be different if Mr. Leno had approved of the idea, reneged, and did nothing for many years. Just because he didn’t go after this guy is no reason to allow him to continue.
Thank you for sharing the article 🙂