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Protection of Celebrities Names and Trade Marks under the
ICANN Uniform Domain Name Dispute Resolution Policy
Author: |
Igor Motsnyi LLM (Leiden)
Corporate Counsel, ElcomSoft Co Ltd
|
Issue: |
Volume 10, Number 4 (December 2003)
|
Contents:
- On
October 24, 1999 ICANN approved the Uniform Domain Name Dispute
Resolution Policy (UDRP) and accompanying Rules of Procedure.[1]
This has been, by all means, a remarkable event in the area of domain name
disputes. Since that time, the processing and disposal of dispute has
proceeded at a rate that is nothing short of astonishing.[2]
The UDRP has become an efficient and cost-saving means of solving so-called
"cyber-squatting problem". However it was not supposed to be an ultimate
remedy in each domain conflict. The policy is aimed at the most-obvious cases
of cyber-squatting, namely bad faith registration and use of domain names
identical or similar to trademarks of third parties. ICANN in its Policy
followed the recommendations from the World Intellectual Property Organization
(WIPO) that contained in the Final Report of the WIPO Internet Domain Name
Process April 30 1999 (The First Process).[3]
Arbitrators handled numerous cases concerning domain names identical or
similar to celebrities' names (both individuals and groups). These disputes
are somewhat peculiar due to the nature of their subject matter.
- The object of this article is to look at the main characteristics of the
domain name disputes under the UDRP that involved celebrities and see what
kind of problems may be faced by famous persons who wish to get back their
names. For the sake of clarity our discussion will be limited to the cases
resolved by the WIPO Arbitration Center. We will also not analyse any national
remedies that may be available to celebrities like the Anticybersquatting
Consumer Protection Act of the United States.
- A complainant must establish each of three elements in order to seek
relief under the UDRP:
- The domain name registered by the domain name registrant is identical or
confusingly similar to a trademark in which the complainant has rights;
- The domain name registrant has no rights or legitimate interests in
respect of the domain name in question and
- The domain name has been registered and is being used in bad faith.
- It is always the complainant who has to prove the presence of all three
elements in each case. Failure to prove one of these criteria leads to an
unsatisfactory result for the complainant, to be precise he (she) will simply
lose the dispute.
- As regards its scope the procedure has two main limitations:
- The first limitation confines the availability of the policy to cases of
deliberate, bad faith abusive registrations.
- The second limitation (what is more important for the purpose of our
topic) defines abusive registration by reference only to trademarks and
service marks.
- Thus, registrations that violate trade names, geographical indications or
personality rights do not fall under the definition of abusive registration
for the purposes of administrative procedure.
- We will further see how each of the three criteria listed above applies to
domain disputes over celebrities' names. It is worth noting that most of the
disputes over domain names of this kind are related to personal names and in
the very beginning it was not that clear at all whether the procedure is
applicable to personal names. However the first case law of the Arbitration
Center gave an affirmative answer to this question.
- The UDRP requires that in each case the
complainant must demonstrate that he (she) has rights in a trademark. In
Jeanette Winterson v Mark Hogarth (D2000-0235) the panelist had an
uneasy task to consider the issue of the UDRP scope in the case of a
well-known English author. This was the first case concerning celebrity's
domain name decided by the WIPO Arbitration Center. Mark Hogarth registered
the following domain names: jeanettewinterson.com,
jeanettewinterson.net, and jeanettewinterson.org. The panel devoted a great
deal of its decision to the issue of trademark rights in such a case. First it
noted that "the rules do not require that the complainant's trademark be
registered by a government authority or agency for such a right to exist". In
particular, the panel got support for this finding in the WIPO Final report on
the Internet domain name process (paragraphs 149-150), The First Domain Name
Process. Further, the panelists examined applicable decisions of the English
Courts (under par. 15a of Rules for Uniform Domain Name Dispute Resolution
Policy a panel shall decide a complaint on the basis of any rules and
principles of law it deems applicable).[4]
The panel analysed the doctrine of passing-off under the English law.[5]
- The panel made a parallel between "passing-off" and domain name
registration in that case.
- "In the Panel's view, trademarks where used in paragraph 4a of the Policy
is not to be construed by reference to the criteria of registrability under
English law but more broadly in terms of the distinctive features of a
person's activities. In other words, akin to the common law right to prevent
unauthorised use of a name. Thus, applying English law the Complainant clearly
would have a cause of action to prevent unauthorized use of the Mark JEANETTE
WINTERSON in passing-off". Registration of a trademark was not necessary and
"where the Policy refers to trademark without requiring registration it
clearly includes unregistered common law rights". The panel also cited
paragraph 2 of the Policy "Your representations" which required a registrant
to represent and warrant that to his knowledge, the registration of the domain
name will not infringe upon or otherwise violate the rights of any third
party. The paragraph refers to rights in general and not only to rights in a
registered trademark. Thus the panelist concluded that Jeanette Winterson had
established trademark rights in her name and it sufficed for the purpose of
the UDRP. The vast majority of panels followed this approach in subsequent
judgements.
- In Julia Roberts, (Julia Fiona Roberts v. Russell Boyd, D2000-0210) in a
dispute over domain name juliaroberts.com the panel did not
experience any problems in finding trademark rights of a famous actress in her
name. Julia Roberts did not have a registered TM however as the panel
highlighted "the Policy does not require that the Complainant should have
rights in a registered trademark or service mark". The panel relied on finding
in Jeanette Winterson case and did not consider this issue in detail.
- However
a well-known singer and performer Sting could not prove trademark rights in
the name Sting (Gordon Sumner, p/k/a Sting v. Michael Urvan,
D2000-0596). Like in the previous case Sting did not get his
professional name registered as a trademark. He relied on wide and long
lasting use of his name and worldwide reputation. The panel made a distinction
between previously decided cases over celebrities names and the case of Sting
due to the fact that "unlike the personal names in issue in the cases Julia
Fiona Roberts v Russell Boyd, Jeannette Winterson v Mark Hogarth, and Steven
Rattner v BuyThisDomainName (John Pepin), the personal name in this case is
also a common word in the English language, with a number of different
meanings". The panelist examined various meanings of the word "sting" in the
English language and concluded that this word is "in common usage". Although
the panel recognized the fame of the complainant under the name Sting it did
not recognise complainant's trademark or service mark rights in STING.
- In Bruce Springsteen case (Bruce Springsteen v. Jeff Burgar and Bruce
Springsteen Club, D2000-1532) the panel expressed its doubts as to the
applicability of the UDRP to conflicts over personal names. While the panel
presumed that the name of Bruce Springsteen was protected under the UDRP as a
trademark the case was decided in favour of the respondent on the other
grounds.
- It is worth noting that in a recently decided case a famous actor Pierce
Brosnan (Pierce Brosnan v. Network Operations Center, D2003-0519) has easily
proven trademark rights in his name.
- Another case illustrates the problem of
proving trademark rights in a name of a well-known person. A famous
entrepreneur Ted Turner failed to show trademark rights in his name (R.E. Ted
Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi, D2002-0251). It is
undisputed that Ted Turner was a well-known personality. Nevertheless, in
panel's view there was "insufficient evidence that his personal name has been
used commercially as a trademark to promote goods or services..." The panel
went on distinguishing non-business individuals (entertainers, authors,
professional sports people) where common law trademarks can be proven rather
easily and "pure business cases" which are more problematic since business
persons rarely use their names to market their own goods or services.[6]
The majority made a distinction between trademark law and personality law. As
the panel pointed out "under the trademark law, the mark itself for which
protection is sought must be used in commerce as a precondition to relief,
whereas the personality right may protect a person who does not commercially
exploit his or her own identity, but nevertheless desires to prevent others
from doing so." Therefore, Ted Turner was unable to demonstrate trademark
rights in his own name. In the majority's view this was an example of "the
unfortunate limitation of the Policy in relation to famous names which are not
shown to be used as trade marks." Dissenting panelist criticized the reasoning
of the majority asserting that there had been sufficient evidence to support
the existence of a common law trademark or service mark.[7]
Indeed, if this analysis had been applied in each case concerning a famous
individual there would have been probably different results since the
distinction between business and non-business individuals is rather vague and
arbitrary. The cases of Julia Roberts or Jeanette Winterson strictly speaking
were not so different from the one of Mr. Turner. It remains to be seen how
case law of the WIPO Arbitration Center will develop in this direction. At
this point one may say that in the vast majority of rulings panel had no
difficulties in finding unregistered names of well-known individuals to be
trademarks for the purpose of the UDRP by stating that these names have
acquired secondary meaning. However uncertainty still remains in respect of
so-called business persons and generic names like Sting. Accordingly one has
to be particularly careful while dealing with a dispute over a name, which is
also a commonly used word in any language.
- The following factors without limitation shall be taken into consideration
upon considering rights and legitimate interests of the registrant:
- Before any notice to the registrant of the dispute, the registrant use
of, or demonstrable preparations to use, the domain name or a name
corresponding to the domain name in connection with a bona fide offering of
goods or services; or
- The registrant (as an individual, business, or other
organization) has been commonly known by the domain name, even if he (she) has
acquired no trademark or service mark rights; or
- He (she) is making a
legitimate non-commercial or fair use of the domain name, without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark
or service mark at issue -4(c) of the UDRP.
- The most typical situation is the
one when the domain name does not correspond to the respondent's own name and
the respondent has registered the names of many other celebrities. In the
majority of the cases the respondents were the persons who owned numerous
domain names identical or similar to celebrities names. Perhaps the most
notorious registrant of domain names of this kind was John Zuccarini
(Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real
Video, Cupcake-Show and Cupcakes-First Patrol, D2001-0654; Nicole Kidman
v. John Zuccarini, d/b/a Cupcake Party, D2000-1415, Pierce Brosnan v. Network
Operations Center, D2003-0519). As the panel noticed in Nicole Kidman
"the sheer number of domain names similar to the marks of celebrities that
Zuccarini has registered-and the arbitral and judicial factors against him-are
sufficient to establish a prima facie case that he does not have rights or
legitimate interests in respect of registered domain names". In a dispute over
domain name madonna.com (Madonna Ciccone,
p/k/a Madonna v. Dan Parisi and "Madonna.com", D2000-0847) the respondent
was smart enough to register trademark MADONNA in Tunisia (a Tunisian
trademark registration is issued upon application without any substantive
examination) prior to notice of the dispute. However the panel was not
impressed by the registration. Both the complainant and the respondent were
from the United States and "if an American-based respondent could establish
rights vis a vis an American complainant through the expedient of securing a
trademark registration in Tunisia, then the ICANN procedure would be rendered
virtually useless." This registration was considered as an attempt to
circumvent the application of the Policy and even as some evidence of bad
faith.
- In Sting the Respondent provided the following evidence of his rights and
legitimate interests in the disputed domain name: copies of various emails
prior to the commencement of the dispute showing the UserName, the nickname,
the Screen Name, or the Account PIC under which the Respondent had registered
for internet gaming consisted or included the word STING; he also produced
some evidence to demonstrate that he has been using the player name sting.
However the panel rejected these facts as proof of legitimate interests by
stating that this word is indistinctive and is probably used by many people in
cyberspace. It provides the respondent with some degree of anonymity rather
than demonstrates that he has been commonly known as sting before.
Nevertheless, these factors were useful in finding the third factor in favour
of the respondent.
- In Bruce Springsteen the disputed domain name was
brucespringsteen.com. The registrant also owned some other celebrities domain
names and he managed a web site celebrity1000.com. The majority rather
surprisingly decided the case in favour of the respondent by finding that the
latter was making a fair use of the domain name. Visitors of the web site brucespringsteen.com
were automatically redirected to celebrity1000.com web
site. "In this case, the internet user, coming upon the "celebrity1000.com" web site would perhaps
be unsurprised to have arrived there via a search under the name "Bruce
Springsteen". If the Internet user wished to stay longer at the site he or she
could do so, or otherwise they could clearly return to their search results to
find more instructed material concerning Bruce Springsteen himself". In this
case the majority also criticized the previously taken approach in respect of
the complainant's duty to prove the absence of rights or legitimate interests
of the respondent. It was not enough, in panel's view, to simply state that
the respondent has no such rights. There were no pornographic or other obscene
material links to the web site in question and in panel's opinion Internet
users could not be confused with the unofficial nature of this web site. Some
commentators were very critical about such reasoning of the majority.[8]
- In general one may see the respondents cannot easily demonstrate rights
and legitimate interests in dispute over celebrities domain names. The Bruce
Springsteen case should be regarded as an exception rather than a rule and its
reasoning was not followed by later precedents.
- The following circumstances without limitation have to be taken into
account upon considering the issue of bad faith:
- Circumstances indicating that the registrant has registered or has
acquired the domain name primarily for the purpose of selling, renting, or
otherwise transferring the domain name registration to the complainant who is
the owner of the trademark or service mark or to a competitor of that
complainant, for valuable consideration in excess of documented out-of-pocket
costs directly related to the domain name; or
- The registrant registered
the domain name in order to prevent the owner of the trademark or service mark
from reflecting the mark in a corresponding domain name, provided that he has
engaged in a pattern of such conduct; or
- The registrant registered the
domain name primarily for the purpose of disrupting the business of a
competitor; or
- By using the domain name, the registrant has intentionally
attempted to attract, for commercial gain, Internet users to his web site or
other on-line location, by creating a likelihood of confusion with the
complainant's mark as to the source, sponsorship, affiliation, or endorsement
of his web site or location or of a product or service on his web site or
location - 4(b) of the UDRP
- In the majority of cases over celebrities' names the respondents
registered numerous domain names of celebrities (Julia Roberts, Jeanette
Winterson, Nicole Kidman, Backstreet boys, etc) and this was considered as
prima facie evidence of bad faith. In other cases the finding in favour of the
respondent was mainly due to the indistinctive character of a trademark. For
example, in Tarkan Tevetoglu v. Deep. Net Corp., D2002-0278, the
complainant, a well-known Turkish singer proved his rights in a TM, the
absence of rights and legitimate interests of the respondent but failed to
establish bad faith. The respondent persuaded the panel that Tarkan is a
widely used word in the Turkish language. "Certain businesses or domain names
incorporate the word Tarkan without apparent relationship to Complainants. The
Complainants' mark therefore is not especially distinctive or strong". Similar
conclusion can be drawn from Scorpions v. Alberta Hot Rods, D2001-0787. Just
like in Tarkan the complainant, a popular German rock group, failed to
demonstrate the last criterion. The complainant did not submit sufficient
evidence of respondent's bad faith registration and use: "Where the
Complainant's trademark is not distinctive only of the Band and its products
and is capable of other connotations, that can be a difficult burden for the
Complainant to discharge. The Panel agrees with the Respondent that this case
is far from being on all fours with the famous name cases involving Madonna:
Jeanette Winterson: Isabelle Adjani; and NOKIA."
- This passage is a good illustration to the potential problem any musician,
group or other well-known personality may face while trying to get back its
name that is of a generic character.
- Bruce Springsteen case is again in contrast with all other decisions due
to rather peculiar reasoning of the majority. In the majority's opinion the
complainant failed to provide the panel with any substantial evidence
regarding bad faith criterion. The majority criticized previous decisions on
the celebrities names and made a somewhat landmark conclusion:
"The users of the internet do not expect all sites bearing the name of
celebrities or famous historical figures or politicians, to be authorized or
in some way connected with the figure themselves. The Internet is an
instrument for purveying information, comment, and opinion on a wide range of
issues and topics. It is a valuable source of information in many fields, and
any attempt to curtail its use should be strongly discouraged. Users fully
expect domain names incorporating the names of well known figures in any walk
of life to exist independently of any connection with the figure themselves,
but having been placed there by admirers or critics as the case may be."
- Future panels however did not adopt this passage and however this way of
thinking certainly has its logic. If all domain names containing celebrities'
names are automatically reserved for the famous persons there will be
virtually no place for fan clubs' activity. However in Celine Dion case
(Celine Dion and Sony Music Entertainment (Canada) Inc. v. Jeff Burgar
operating or carrying on business as Celine Dion Club, D2000-1838) the
panel did not rule in favour of the same respondent in a situation closely
resembling the one in Bruce Springsteen.
- Whereas the general trend in the disputes over celebrities' domain names
under the UDRP supports the complainants the situation is still far from
clear.
- First of all, the Final Report of Second WIPO Internet Domain Name
Process (September 2001) did not extend protection to personal names as
such.[9]
- It just restated the same principle that only the individuals who have
trademark or service mark rights in their names may rely on the UDRP as a
means of redress.
" Persons who have gained eminence and respect, but who have not profited
from their reputation in commerce, may not avail themselves of the UDRP to
protect their personal names against parasitic registrations.
It by no means affords comprehensive protection to personal names... The
names of political figures, religious leaders, scientists and historical
persons may never have been used in commerce and, thus, are unlikely to have
trademarks associated with them."
- Therefore the standard of proof remains unaltered. One has to demonstrate
trademark rights in the first place. It may be a bit problematic in the case
of so-called "business popularity" as we have seen in Ted Turner. It is also
obvious that not every celebrity may rely on the UDRP. For instance, for
prominent politicians national law may provide adequate remedies.
- Second, famous individuals who use nicknames (or groups) which have a
certain meaning or are in common usage in any language are risking to lose a
UDRP dispute since these names or trademarks are not particularly distinctive
and this places additional burden on the complainants to provide evidence that
their names have acquired secondary meaning.
- Third, the UDRP has proven to be effective against manifest cases of
cybersquatting just like the situation when the registrant owns hundreds of
celebrities' domain names and uses them for advertising revenue or redirecting
to the web sites, which are not, related to actual activities of the famous
persons whose domain names he has registered. However the situation appears to
be more complicated when the respondent puts forward some more original
submissions (like the one in Bruce Springsteen).
- Last but not least, it is important to keep in mind that "the location of
the parties can be significant for determining whether the complainant has
trademark rights" (WIPO Final Report, the Second Process, par. 184). Rule 15
(a) of the Rules for Uniform Domain Name Dispute Resolution Policy provides
that the Panel shall decide a complaint on the basis of "any rules and
principles of law that it deems applicable". Therefore the outcome of a
particular case largely depends on the place of residence of the parties. The
panels readily found trademark rights in unregistered names of celebrities in
cases where the parties (and the panelists themselves) were from common law
countries: Julia Roberts, Jeanette Winterson, Dan Marino, etc. If the parties
are from countries, which grant protection only to registered marks the
results may be less predictable.
[1]
See http://www.icann.org/udrp/
[2]
S. Jones A child's first steps: the first six months of operation- the ICANN
Dispute Resolution Procedure for bad faith registration of domain names.
E.I.P.R. 2001, at 66.
[3]
The report is available at http://wipo2.wipo.int/process1/report/index.html
[4]
See http://www.icann.org/dndr/udrp/uniform-rules.htm
[5]
"Passing-off action was first developed to meet a classic case... Nobody has
any right to represent his goods as the goods of somebody else." W.R. Cornish
Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights
London 1999, at 619.
[6]
See Israel Harold Asper v. Communication X Inc. D2001-0540 "It is less likely
that a business person will use his or her name to market their own goods or
services, and very unlikely that they will do so to market someone else's.
Take, by way of examples, Henry Luce, Kenneth Thomson, Conrad Black and Rupert
Murdoch. Are their publications marketed as a product connected to the person
in question? Not likely?"
[7]
"The name "Turner" has been used in the names of several media companies, in
addition to its inclusion in the name of the Complainant Ted Turner Film
Properties. The majority needs numerous pages of explanation to dispel the
obvious and lose the forest for the trees. This evidence is sufficient to find
the existence of a common law trademark or service mark in the name "Ted
Turner..." The Policy is not so limited as to require this result." Dissenting
opinion in R.E. Ted Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi,
D2002-0251
[8]
See e.g. I. Hoffman A Lesson in Domain Names and Trademarks from Bruce
Springsteen, http://www.gigalaw.com/articles/2001-all/hoffman-2001-10-all.html
The author says "The site with the name of the artist as the domain followed
by the ". com" is almost always viewed as the "official" site, thus leading to
confusion".
[9]
The report is available at http://wipo2.wipo.int/process2/report/