The WIPO Arbitration and Mediation Center ruled that the site was registered in bad faith — after Saint had become a famous porn star — to unfairly capitalize on her name.
The complaint was filed on March 26, with WIPO, which offers alternative dispute resolution for domain name disputes.
While Tomcalova’s stage name is not officially trademarked, she contended that the disputed domain name is identical to the stage name in which she asserts common law trademark rights.
Tomcalova alleged that the “Respondent’s [Global Access] only intention is to misleadingly divert consumers and that the disputed domain is not being used in connection with a bona fide offering of goods or services.
Fabulous.com, the registrar under which SilviaSaint.com was registered, states in its Terms of Service that it’s illegal to register a domain name that infringes on the legal rights of third parties.
While Global Access did not comment on the issue of whether the disputed domain name is confusingly similar with Tomcalova’s trademark, it disputed that she had failed to establish common law trademark rights to her stage name at the time the domain name was registered.
WIPO’s decision for Tomcalova proved that she had, in fact, commercially exploited the name and provided sufficient evidence that shows that she has received a certain degree of recognition in the eyes of the public.
To prove her common law trademark, Tomcalova submitted a list of film titles she appeared in, magazine publications, and awards received before 1999, when the site was registered. Tomcalova has used the stage name Silvia Saint since 1997.
WIPO concluded his “visit on the website revealed that, indeed, respondent uses the disputed domain name for a website offering for sale adult entertainment DVDs and thus capitalizes on the complainant’s mark in her stage name ‘Silvia Saint.’ Respondent makes it clear his purpose is to divert traffic intended for complainant’s site to his own, and thus capitalizing on complainants mark.”
Therefore, he ruled the site must be transferred to its rightful owner, Tomcalova.
SilviaSaint.com is part of the FameDollars affiliate program, which also includes PeterNorth.com, DevilsFilm.com and Silverstone.com
The case was Silvie Tomcalova a.k.a. Sylvia Saint vs. Global Access, No. D2006-0399.
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