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.”