Challenge to Lassie!!! but in the end: Lassie Comes Home!!!!

[mandy]

Lassie.com domain name ordered transferred to the Lassie trademark holder Classic Media

1. The Parties

The Complainant is Classic Media, Inc., New York, New York, United States of America, represented by Sonja Keith, United States of America.

The Respondent is Warren R. Royal, Cumming, Georgia, United States of America, represented by ESQwire.com Law Firm, United States of America.

2. The Domain Name and Registrar

The disputed domain name is registered with Tucows.

B. The Parties

The Complainant owns the trademark “Lassie” and associated character names, and licenses use of both domestically and internationally to agents and licensees.

In the United States, “Lassie” is one of the most widely known dogs in film, television and print. She has been an American icon since the story of a lost collie finding her way home first appeared in 1938. The story of Lassie expanded into a widely selling novel in 1940, feature films and a radio show in the 1940’s, and debuted on television in 1954. The legend of Lassie has continued to grow through its run in syndication, cartoons, books and feature films and continues to be recognized around the globe.

The Respondent owns many common word domain names, such as , , , , , , , , , , , and . See paragraph 2 of the Declaration of Warren Royal (a copy of which appears in Exhibit 3 to the Response).

The Respondent registered the disputed name on January 10, 1999, and claims he did so for use with a business which the Respondent began operating in 1999 called “VanityWeb”. VanityWeb enabled users to rename their web sites using one of VanityWeb’s domains as in “Bob.Lassie.com” or “Bob.monarchs.com”. The Respondent earned revenue by selling banner ads that appeared on the web pages of that site. See Royal Declaration, paragraph 4, as well as a copy in Exhibit 5 of the Response of a print-out, via “www.archive.org,” of the “www.vanityweb.com” web page as of October 1999 which generally describes the Respondent’s concept for its vanity domain name service (though without any apparent mention of the use of the term “Lassie”). The Respondent launched his VanityWeb.com site on October 13, 1999. The evidence before the Panel indicates that, while the Respondent’s VanityWeb.com site was operational, the Respondent never offered the domain name for vanity use.

In 2000, the market for banner ads collapsed and VanityWeb’s revenues dropped 90 percent. Consequently, the Respondent was forced to cease operations of his web site.

Moreover, from February 8, 1999, through June of 2002, the Respondent used the disputed domain name as the address of his unofficial fan-site for the Complainant’s “Lassie” television series. That particular website featured a chat area, a bookstore, a video store, trivia, links and a mechanism for leaving feedback. A feedback button, when clicked, triggered an email window to pop up which was addressed to “wroyal@[email address]” (“wroyal” being an email alias for the Respondent). The site also featured a colorful, flashing link to Yep.com that appears to be an advertisement. The link featured the “www.yep.com” logo and text indicating that the viewer should “click here.”

The Respondent has not utilized the disputed domain name since 2002, but on January 1, 2006, he renewed his registration for the name.

7. Decision

Accordingly, under paragraphs 4(i) of the Policy and 15 of the Rules, the Panel now grants the relief sought by the Complainant.

The disputed domain name is ordered transferred to the Complainant.

The full decision: http://arbiter.wipo.int/domains/decision...-0208.html

[bargainbloodhound]

The respondent should have had his dog register the name. 

[jezebel]

The Respondent registered the disputed name on January 10, 1999, and claims he did so for use with a business which the Respondent began operating in 1999 called “VanityWeb”. VanityWeb enabled users to rename their web sites using one of VanityWeb’s domains

He was operating a Lassie fan club on the site too.  He was a cybersquatter trying to capitalize on a trademarked character.  WIPO made the right decision in awarding the name to the trademark owner.