David Duchovny : Domain UDRP followed up by a trademark application

David Duchovny’s CD.

Actor David Duchovny of “The X-Files” fame, retrieved his matching .com domain, DavidDuchovny.com, via the UDRP process, last month.

The decision might have startled some, particularly since the domain was registered and held for almost 20 years.

At the time of the UDRP, the Complainant asserted “common law rights” to the DAVID DUCHOVNY mark:

“Complainant is a prominent Hollywood actor and has established common law rights in the DAVID DUCHOVNY mark because that name has acquired an extensive secondary meaning as a result of Complainant’s widespread fame as an actor. “

Kenneth L. Port, Panelist, noted the following on the DAVID DUCHOVNY 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 Respondent had actual knowledge of Complainant’s mark prior to the registration of the disputed domain name.”

Following the positive outcome of the UDRP process, David Duchovny is moving forward, applying for the registration of the DAVID DUCHOVNY mark at the USPTO:

  • International class 009 : Downloadable musical sound recordings; Musical recordings; Musical sound recordings; Sound recordings featuring music; Visual and audio recordings featuring artistic performances; Visual and audio recordings featuring music
  • International class 041 : Entertainment services in the nature of production of motion pictures; Entertainment services in the nature of production of television drama; Film and video production; Motion picture film production; Entertainment services, namely, live appearances by a celebrity

To demonstrate use, David Duchovny provided two samples, from a CD record titled “David Duchovny – Hell or Highwater” and another from the movie “Phantom” (2013.)

Hat tip: Ed Timberlake, of Timberlake Law.

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One Response to “David Duchovny : Domain UDRP followed up by a trademark application”
  1. DW says:

    My thoughts on this are.. fair enough if udrp could prove the respondent knew of the name before registering it. My next thoughts are how would this have resulted if the respondents name was actually like the domain name? Would they still have lost it?

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