Minnesota
12 July 2017
Reporter: Mark Dugdale

DavidDuchovny.com is no longer out there


Actor David Duchovny has recovered davidduchovny.com more than 20 years after it was first registered.

National Arbitration Forum panellist Kenneth Port ordered the domain be transferred on 4 July, after receiving no response from the registrant and finding that it had been registered and held in bad faith for 21 years.

Port said in the written decision to transfer davidduchovny.com: “The registrant engaged in bad faith use and registration of the disputed domain name, apparently for 21 years … It appears that several domain names originally registered by the registrant have been ordered transferred.”

It is unclear why Duchovny, who is best known for his role as Fox Mulder in science fiction TV show The X-Files, took so long to bring dispute resolution proceedings against the registrant of davidduchovny.com, Alberta Hot Rods, whose owner Jeff Burgar has a history of registering domains containing the names of celebrities, such as Charlie Sheen, Pamela Anderson and Tom Cruise.

Port wrote on the subject: “Duchovny does not adduce any specific evidence of Burgar’s alleged intent or behaviour, and Duchovny waited 21 years to bring this case against Burgar. As such, it is hard to believe that Duchovny has been harmed at all by the disputed domain name. If, in fact, Duchovny had been harmed, one would think that such a complainant would not wait 21 years to demand the cessation of such use.”

In attempting to prove that Burgar had actual notice of Duchovny’s rights in davidduchovny.com, Duchovny pointed out that he had “widespread fame” as “a Hollywood actor” in 1996, when the domain was registered.

Port referred to the 2015 case of Google v Ahmed Humood in his decision, where it was held that actual knowledge of rights can come from the fame inherent in a mark.

“Although no one would claim that the David Duchovny mark, in 1996, was as famous as Google is today, given the demonstrated notoriety of David Duchovny in 1996 and the totality of the circumstances, the panel finds that Burgar had actual knowledge of Duchovny’s mark prior to the registration of the disputed domain name.”

More news
The latest news from IPPro The Internet
Join Our Newsletter

Sign up today and never
miss the latest news or an issue again

Subscribe now
ICE and industry team up to fight IP crime
21 November 2017 | Washington DC | Reporter: Jenna Lomax
US Immigration and Customs Enforcement has teamed up with Intellectual Property Enforcement Coordinator industry representatives and other US government enforcers to counter IP crimes
Alibaba in ITC spotlight
20 November 2017 | Washington DC | Reporter: Barney Dixon
Alibaba will be investigated by the US International Trade Commission over the importation and sale of insulated beverage containers, their labels, and packaging materials
Brexit a “material threat” to businesses, says Marques
20 November 2017 | Leicester | Reporter: Barney Dixon
Brexit could be a “material threat” to businesses that own trademarks in the EU, according to a position paper from intellectual property association Marques
Cozen O’Connor hires ex-DLA Piper litigator
17 November 2017 | Washington DC | Reporter: Barney Dixon
Cozen O’Connor has hired ex-DLA Piper litigator Hugh Marbury as member in its intellectual property department
Illicit streaming devices entering the UK fail to meet national electrical safety regulations, according to findings from FACT and Electrical Safety First
Mewburn Ellis opens Munich office
16 November 2017 | Munich | Reporter: Barney Dixon
Intellectual property boutique Mewburn Ellis has opened a new office in Munich, its first expansion outside of the UK
.UK suspensions doubled in 2017, says Nominet
15 November 2017 | Oxford | Reporter: Barney Dixon
Nominet has suspended 16,632 .UK domain names for criminal activity in 2017, doubling figures from 2016