Eliot Spitzer Reclaims Domain Names from Cybersquatter

In the case of Eliot Spitzer v. Eliot Spitzer, FA 919828 (Nat. Arb. Forum Mar. 20, 2007), the Panel agreed with the New York state Governor that the domain names eliotspitzer.com and eliotspitzer.org should be transferred to him.

Turning first to the question of whether the domain names registered by Respondent were identical or confusingly similar to a trademark or service mark in which the Complainant has any rights, the Panel noted that although Complainant did not have a federal trademark registration associated with the ELIOT SPITZER mark, a federal registration was unnecessary to establish rights in the mark pursuant to Policy ¶ 4(a)(i). Complainant asserted common law rights in the ELIOT SPITZER mark through the continuous and ongoing use of the mark as Governor of New York and as a prominent public figure, establishing secondary meaning in the mark. The Panel found that Complainant’s continuous and ongoing use of the mark was sufficient to establish secondary meaning in the mark pursuant to Policy ¶ 4(a)(i).

Complainant contended that Respondent’s eliotspitzer.com and eliotspitzer.org disputed domain names were identical to Complainant’s protected mark. The disputed domain names contained Complainant’s mark in its entirety and merely add the generic top-level domains (“gTLDs”) “.com” and “.org.” The Panel found that the addition of a gTLD to an otherwise identical mark failed to sufficiently distinguish the domain names from the mark pursuant to Policy ¶ 4(a)(i).

Turning next to the question of whether the Respondent had any rights or legitimate interests in the domain names at issue, the Panel noted that Respondent was not currently using the disputed domain names to resolve to any content. The Panel found that Respondent’s failure to associate any content with its disputed domain names evinced a lack of right or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Respondent had not proffered any evidence to suggest that it was commonly known by the disputed domain names, or that it was licensed or permitted to use or own any domain name registrations that were identical to Complainant’s mark. Although Respondent’s WHOIS information listed “Eliot Spitzer” as the registrant of the disputed domain name, the Panel found that there was no evidence showing that Respondent was commonly known by the disputed domain name pursuant to Policy ¶ 4(a)(ii).

Turning finally to the question of whether the domain names were registered and used in bad faith, the Panel held that Respondent’s failure to resolve its disputed domain names to any content evinced registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).

Having established all three elements required under the ICANN Policy, the Panel granted Governor Eliot Spitzer's request that the eliotspitzer.com and eliotspitzer.org domain names be transferred to him.