Warner Brothers complaint fails against the registrant of DaisyDukes.com

Posted 2009

Warner Brothers Entertainment have failed in their UDRP case against the registrant of the domain name DaisyDukes.com. The complaint was placed by Warner Bros. Entertainment Inc., who were represented by James R. Davis, of Arent Fox. The respondent (registrant of the domain) was a R Schwartz of Virtual Dates Inc., who was represented by Howard M. Neu, of Law Office of Howard M. Neu. The complaint was against the use of the said domain name for commercial pornographic services by the registrant.

The complainant placed by Warner Bros. Entertainment Inc. stated that the domain name was derived from the famous TV series The Dukes of Hazzard. The show was aired in the 1970/80's and became a worldwide hit and a subsequent Hollywood movie in 2005. One of the main characters was 'Daisy Duke' who typically wore high cut off denim jeans shorts. Warner Bros. stated that the Daisy Dukes character had been extensively marketed for decades and had featured in a variety of products like DVDs, toys, playing cards and clothes.

Warner Bros. therefore ascertained that the respondent had registered the domain name in bad faith and was solely trying to capitalise on the Daisy Duke trademark and character. The domain name also provided content which was derogatory toward women, and the only intention was to profit from the goodwill of the trademark. The respondent’s was also offering to sell the domain name at the bottom of the home page and this again had shown bad faith in an effort to profit from the trademark.

R Schwartz of Virtual Dates Inc. responded that Warner bros. has failed to indicate whether it has registered a 'Daisy Dukes' trademark. And infact had filed for trademarks for clothing, paper goods, toys and sporting goods two days after the said complaint was filed. He also responded that the term “Daisy Dukes” was generally recognized as a type of denim clothing worn by women, rather than the 'Dukes of Hazzard' character. He stated a song had been written about these short denim jeans pants (1992 song “Dazzey Duks” by rap artist Duice), boots had been called after them, the Urban Dictionary website defined them as cut-off shorts, and image searches online featured women wearing cut-off denim jeans. The “For Sale” banner was also inserted by Fabulous.com and was not in connection with' daisydukes.com'.

The panel decided that Warner Bros. had failed to thoroughly demonstrate that the registrant had used and registered the domain name in bad faith. They based their decision on the fact Warner Bros. had failed to address the evidence regarding the significance of the term 'Daisy Dukes' in popular culture. The general impression was that the panel believed a phrase can originate from a trademark but can later acquire a generic meaning.