ACADEMIC PAPER : CELEBRITY : NEIL BROWNE QC
THE ARBITRATION OF CELEBRITY DOMAIN NAME DISPUTES
THE HONOURABLE NEIL BROWN QC
You would think that celebrities, being what they are, would be keen to register their names as domain names, set up their own websites and use the websites to promote themselves.
Some do, but others seem to have been slow off the mark, only to find that someone else has got up earlier and in effect stolen their name, registered it as a domain name and used the domain name to set up an unauthorized website.
Of course, it can be worse than that: the domain name is sometimes linked directly to a pornography website or used as a bait to attract internet users who are then switched to a website selling anything form Viagra to Pacific cruises . This, of course, can give the celebrity a bad name or even a worse name than he or she had previously.
Or he or she could just be made a figure of fun: see for instance the unfortunate events recounted in David Pecker v. Mr. Ferris, WIPO Case No. D2006-1514. Mr. David Pecker, apart from having an interesting surname, is Chairman and CEO of American Media, Inc (AMI) the publisher of several prominent lifestyle magazines. One can readily understand Mr. Pecker’s concern about not only having his name used as domain name without his permission, but more particularly about its being linked to a pornography site and hence linked in the public mind with pornography itself. It actually became worse in Mr. Pecker’s case than for other celebrities, for he attracted a lot of media attention when he brought the claim to retrieve the name, but lost the case.
There are other problems that arise in the case of celebrity domain names and they vary from case to case, depending on the celebrity, how the celebrity’s name came to used in a domain name, the use to which the domain name is being put and the various defences or excuses used by the party who registered the name to try to hold onto the name and defeat the celebrity’s claim.
Let me give a few examples of the categories of problem that arise before we look in more detail at the issues that arise and how they have been resolved.
Madonna, The Rolling Stones and Pele
One of the early cases was Madonna’s Case, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847, where <madonna.com> was registered by a cybersquatter and linked initially to a pornographic site, although it was later used to advance the Respondent, Mr. Parisi’s, dispute with Madonna. This is an early illustration of the problems facing celebrities and the unauthorised use of their names in domain names and websites: the celebrity does not have access to the domain name or the opportunity to use the domain name as he or she wants and, moreover, if the domain name is then linked to a pornography site, it undoubtedly disparages the celebrity’s name, even where, in Madonna’s Case itself, the respondent argued that Madonna did not have much of a name to disparage. However, Madonna was successful and had the domain name transferred to her.
In Mick Jagger’s Case, Mick Jagger v. Denny Hammerton, NAF Case No: FA0007000095261, the domain name <mickjagger.com> was also linked to a pornography site, enabling the panelist to find in Mr. Jagger’s favour and say:
“…By typing in Complainant’s mark with the ".com" suffix, Internet users are taken to a pornographic site, which is in no way associated with Complainant. See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites).”
In other cases, it is not only the linking of the domain name to a pornography site that concerns the celebrity, but the fact that the domain name is being used for commercial purposes, or, to put it bluntly, to make money on which the celebrity is missing out.
In a recent example of this , the Brazilian footballer Pele had had three domain names registered that incorporated his name without his permission. One of them, <peletv.com>, went to a website that opened up to a series of websites offering goods and services on football paraphernalia, treatment of football injuries, games, clothing and suchlike, but which then went on to promote Music Downloads, Insurance, Credit Cards, Online Dating and then onto some far more salacious offerings. Pele’s company, as well as being affronted by these indiscretions, was of course missing out on the click- thorough revenue being earned by the site whenever anyone perused it and successfully brought a claim to have the domain name transferred.
These three examples are just that, examples of where a prominent name has been taken without authority, used as a domain name for a website associating the celebrity’s name with an activity which reflects adversely on the celebrity, namely pornography, or purely money making through advertising goods and services with the impression that the celebrity is endorsing them. The latter activity is particularly pernicious, as it is not just making the money that is at issue, but the fact that the celebrity is not making it.
Sometimes, unauthorized celebrity domain names are linked to websites to which the celebrity simply objects because of the content of the unauthorized website, for example a particularly strident form of animal welfare or conservation.
As celebrities generally do not like their names being used in any of these ways and associated with goods, services or causes that they do not approve of, or being used at all in a way that the celebrity cannot control, the following questions arise, which go to the substance of the issue with which we are concerned.
Do celebrities have a right to protection of their own name? What can they do to retrieve a domain name if they find it has been taken? Can they sue? Is there any other sort of claim they can bring? What do they have to prove? Will they win?
The same questions arise with respect to other unauthorized websites that are simply offensive and expose less salubrious aspects of the celebrities that they would rather remained secret; other websites are just clingingly and embarrassingly sycophantic .
Then again, although some websites may be sycophantic, the celebrity, despite the disclaimer on the website, is clearly happy to be promoted in the way he or she is presented on the website and does nothing to stop it. For example, you would have to be very naive to believe that www.algore.org, which generously extols the virtues of the former Vice President Gore, was anything other than an official site designed to promote him as a Presidential candidate. Presumably he agrees with it all, as similar promotions are contained on his official website, www.algore.com, although one wonders what he thinks of the low interest loans being promoted on www.algore.net.
Other celebrity websites are fairly straightforward, like the English soccer player Wayne Rooney’s site at www.waynerooneyonline.com, which is laudatory without being sycophantic. Likewise, a site put up by one of David Beckham’s fans at www.davidbeckham.ws seems to be tolerated, despite the alarming headline that was on it at one stage, namely: “Posh and Becks Pregnant /Get news & pics of the pregnancy first with our Free Gossip Toolbar!www.Starware.com/Gossip.”
Sooner or later, however, money rears its ugly head and one comes across yet another case where a celebrity’s name has been used to make money by pushing one blandishment or another. Thus, in Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263, Morgan Freeman’s name was used in a domain name and linked to an entertainment site, apparently not pornographic, but which sold viagra and a few other offerings.
Still other celebrity domain names and the websites to which they lead, are what you might call normal deception, where the domain name incorporating the celebrity’s name diverts internet users to a straight out commercial website in the same area of interest as the celebrity whose name has been used, particularly music. For example, in the Rolling Stones Case , the domain name <rollingstones.com> was linked to a music retailing website. The domain name was transferred to the management of the Rolling Stones as a result of the proceedings, but I notice that <rollingstones.info> is still rolling along gathering no moss and offering dating services and other blandishments.
This illustrates another problem, of course, which is how many domain names do you have to register and pay for, or lock up, to stop the unauthorized use of your name? Celebrities find that they retrieve one domain name and close down the corresponding website only to find that another has sprung up with a slightly different spelling.
But all of these problem cases have the same major defect, which is that their contents cannot be controlled by the celebrity; either that, or they are dormant or unused domain names, buried like unexploded bombs, with the person who has registered them, sometimes a professional cybersquatter, just waiting for some potential new owner to come along and buy the name and start using the site to sell soap powder or anything else.
So the essential question arises again: can the celebrity do anything about this and, if the website is up and running and the full horror of its contents have been released on the public, can the celebrity really do anything about it?
Get in first
One way for celebrities to avoid these problems is to register their own names and all conceivable variations of them first, before anyone else gets in on the act and steals them. So, as with other aspects of the internet, the best advice is to get in first.
The problem with putting this advice into practice is that budding celebrities do not know that they are celebrities until the public or the media decree it and anoint them into the hall of fame and by that time the camp followers, eccentrics, fanatics and cybersquatters who have followed the careers of their incipient heroes have already registered one or all of the domain names available in the celebrities’ names. This is happening more frequently and faster as the time period in the public eye that is necessary to qualify as a celebrity becomes shorter and shorter: a moment of fame is now certainly less than Andy Warhol’s suggested 15 minutes.
Some celebrities are a wake-up to the necessity to register domain name early and at least they try to beat the cybersquatters at their own game. Thus, when the actors Angelina Jolie and Brad Pitt welcomed the arrival of their daughter Shiloh Nouvel Jolie-Pitt (as if her name itself were not enough of a burden with which to start her life), instead of buying her a Bunnykin mug or another more regular gift, sent their lawyers out on a foraging expedition to snap up 24 domain names with various versions of the child's name.
It is, I suppose, the inevitable cyber age equivalent of enrolling your child some years in advance in an exclusive school or club. However, even registering so many domain names did not protect the parents or the child in the Pitt case and <shilohnouveljolipitt.com>, although not now an active website, was set up with a slight spelling discrepancy in the domain name, which the astute reader will detect, as an unauthorised website devoted to baby wear and photographs.
But despite this commendable example set by the Jolie-Pitts, some celebrities are still too slow off the mark as was seen when Britney Spears and Kevin Federline had their baby. A gossip columnist let it be known that the baby had been named Sutton Pierce Federline and the next day, only a week after the child was born, someone registered the domain name <suttonpiercefederline.com> and several other variants. The unfortunate thing is that the owners of the domain name have been earning income from their asset by linking it to a site that carries advertisements, depending on what the computer reads as being associated with or generic to the domain name. Consequently, <suttonpiercefederline.com> has sensed the ‘pierce’ part of the name and the website carries advertisements and links for body piercing. The irony was that the name used by the cybersquatter for the domain name turned out not to be the name given by the fond parents to their child.
Tom Cruise and Katie Holmes are in a similar position, as they allowed through delay a domain name to be registered in the name of their daughter, Suri: <suricruise.com>.
The problem with this approach, registering the domain name ahead of the cybersquatter, is that the really determined and mischievous cybersquatter, instead of registering, for instance, <madonna.com>, will register <madonnatours.com>, <madonnafashions.com> or Madonna with one ‘n’ or two ‘d’s or in the case of Nicole Kidman, <nicolekidmannude.com> or some similar variation.
There is literally no end to the possible combinations and permutations, as companies like Yahoo have found to their annoyance and cost, for they are now forced to have great stables of domain names on which they pay the annual registration fees, but never use, but are obliged to hold, just in case some inventive cybersquatter in Brazil concocts a new way of spelling ‘Yahoo’ in Portugese and succeeds in diverting Yahoo’s potential customers to the cybersquatter’s own unauthorised website.
For others celebrities, however, who have not been so quick off the mark, the only solution, if they find their name has been registered as a domain name, is to try to remedy the situation by taking some sort of action to try to have the domain name transferred to the celebrity.
Get a consent order
Sometimes domain name holders will consent to the transfer of the domain name to the celebrity, either to avoid a fight, or in the realisation that they would lose the fight, or because on reflection they realise they have no claim to the domain name. An example of this is Carnival Plc v. Dave Jackson, NAF Case No: FA0997916 where the domain name at issue was <queen-elizabeth-2.com>. The Complainant was a cruise ship company that had registered trademarks over the name Queen Elizabeth 2 in relation to various goods and services. The domain name was transferred to it by consent, because the registrant had lost interest in keeping the name and probably just did not want to put up a fight.
Two other examples where consent orders were made were the 2006 decisions in Norgren, Inc. v. Norgren, Inc. c/o Domain Administrator, NAF Case No.: FA0603000670051 and DinersClub International Ltd. v. Nokta Internet Technologies, NAF Case: FA0605000720824. A further and more recent example where a consent order was made is Tom Stoppard, Tom Stoppard Limited v. Texas International Property Associates, WIPO Case No. D2007-1404. So, it is sometimes worthwhile trying to have the domain name transferred by consent.
Buy the domain name.
Obviously, the first method that some celebrities think of, like some companies who find that their trademark or business name has been abused by some unauthorised person registering it as a domain name, is to try to buy the name from the registrant. This sometimes works, but the problem with this approach is that once they show interest in buying the domain name, the price goes up and they might end up having to buy the domain name for an exorbitant price .
They might also find that they are, in effect, being held to ransom by a group or person who wants more than money to hand over the registration of the domain name.
This was the experience faced by Paul McCartney of The Beatles, who tried to retrieve a domain name in his own name, only to be told by the Respondent who had registered it, that all he had to do to have it transferred to him was to read and adopt a letter that promoted a particularly extreme environmental political line of the Respondent. McCartney refused to do this, called the cybersquatter’s bluff and took action to get the domain name back, proceedings in which he succeeded. The case is MPL Communications, Limited and MPL Communications, Inc. v LOVEARTH.net, NAF Case: FA01097086. In that case, a good general statement was made by an experienced panellist, Mr Peter Michaelson on what celebrities should do when faced with this situation.
“No obligation is imposed on a trademark owner to do any act, support any activity or endorse or affirm any cause for any respondent in order to retrieve a domain name from that respondent that should rightfully belong to that owner. To require otherwise would permit a respondent to effectively extort action of some nature from the celebrity a result clearly in conflict with the Policy . While the celebrity, in his (her) sole discretion, may decide, for whatever reason (s) he has, to acquiesce to or reach a negotiated settlement with a respondent in exchange for transfer of a corresponding domain name, the decision to do so lies solely with the celebrity. That respondent has absolutely no power, nor does the Policy permit any, to compel the celebrity to do any act regardless of how trivial that act might appear to be to obtain that domain name.
As well as this having been Paul McCartney’s experience, it has also been the experience of other celebrities, who find that it is not the money that the cybersquatter wants, or not only the money, but an endorsement of a product or even a telephone call or meeting under the guise of being a fan.
Sometimes, however, the celebrity is forced to deal with someone who is not really a fan, but rather an opportunistic cybersquatter and the celebrity ends up paying a large sum of money to obtain the name. This, of course, is particularly galling, as the celebrity maintains that all he or she is doing is retrieving his own name.
However, with skilled negotiation and perhaps a bit of flattery, celebrities can sometimes obtain the domain name for a reasonable price.
If this cannot be done, the alternative is to sue, either for breach of trademark or passing off. This will depend on the facts, which may not always be strong enough to show that the celebrity has a trademark that has been tarnished by registration of the domain name. The facts may also not be strong enough to support an action for passing off, as it may turn out that the Defendant has not tried to pass himself off as Madonna or Brad Pitt and has done nothing but register a domain name and hope that one day it will become valuable. In a nutshell, the problem with court action is that sometimes it fails.
Moreover, court actions are notoriously slow and expensive and they may simply not be an appropriate means of attempting to recover a domain name.
Bring a Complaint under the Uniform Domain Name Dispute Resolution Process
The other solution-which is the subject of this article-is to bring an application under the Uniform Domain Name Dispute Resolution Process (the UDRP) and try to prise the domain name from the registrant by an order of an arbitrator directed to the registrar with whom the domain name is registered to transfer the domain name from the current registered party to the celebrity. The celebrity can then use the domain name for an official website or link it up with the official website that has already been established under a different domain name or he may just hold onto it and do nothing with it, but pay the subscription every time it comes up for renewal.
If the celebrity does not want the domain name transferred to him, he may ask for and obtain an order that it be cancelled. Of course, transfer is a more popular order than cancellation, for if the domain name is cancelled, the registrant may obtain it as soon as it becomes free and then register it again.
On balance, having regard to speed, costs and simplicity of process, proceedings under the UDRP are probably the best course of action to take for celebrities who are incensed that their name has been used in an unauthorised way for a domain name and who want the domain name transferred or cancelled.
The great attraction of the UDRP is that it is compulsory, quick and cheap.
It is compulsory, as against the person who has registered the domain name, meaning in effect that he has already agreed to be the Respondent in such proceedings, because when you register a domain name, you do so by entering into a contract with a registrar accredited by ICANN , the company that runs the internet. You do not register a domain name directly. You may do this only through a registrar and by means of a contract with an accredited registrar.
You cannot buy a domain name; the contract in effect enables you to lease it. That contract always has a clause in it to the effect that, if there is a challenge to your ownership of the domain name, you agree to submit to a compulsory arbitration process , using an arbitrator provided by one of the bodies, also accredited by ICANN, that provides these arbitration services. The two major bodies that provide those services are the World Intellectual Property Organisation (WIPO) in Geneva and the National Arbitration Forum (NAF) in the United States.
If the registrar does not put in its contracts the clause that makes this jurisdiction compulsory, it may lose its accreditation with ICANN and its business will be destroyed. The same thing will happen if the registrar fails or refuses to implement an order to transfer or cancel a domain name; it might lose its accreditation. So, the reality is that anyone who registers a domain name always remains subject to a possible claim against the validity of the domain name brought by another person who claims to have a greater interest in the domain name than the person who registered it; if successful, there is a good chance for the reasons just given that the order obtained will be carried out.
Thus a celebrity is able to activate that process and bring a claim against the party who has registered the domain name and, if successful, will obtain an order to have the domain name transferred or cancelled.
Parties who have a complaint against your entitlement to the domain name thus have the right to compel you to take part in this arbitration process.
The process is quick because it is almost a form of strict liability and there are only a limited number of defences to such claims and in any event the agencies that provide the arbitration services and the arbitrators they appoint are under strict time limits to complete the process promptly.
The providers of the arbitration service go to great lengths to ensure that the panellist they choose for particular cases are unbiased and that there is neither the appearance nor the reality of a conflict of interest. Moreover, the number of sustained and reasoned rejections of complaints and the number of dissenting decisions in three-person tribunal judgments, show that the panelists take their work very seriously and conscientiously.
The process is also comparatively cheap because it is provided for a set fee and costs cannot be ordered for or against either party. Apart from the filing and administrative fee, the only costs for the celebrities bringing such an action are their own attorney’s fees, if they wish to engage one. There are no oral hearings, interrogatories or discovery and cases are decided on the submissions in writing made by each side, together with additional submissions or material that the panel may request.
The system has one drawback, which is that the tribunal hearing the case, or the panel as it is referred to, may make only an order for transfer of the domain name to the successful Complainant or an order for its cancellation. There is no power to grant an injunction or to make an order of any sort, apart from the two just mentioned and no power to award damages, costs or interest. If the aggrieved party wants any of those remedies, he or she must sue in the courts, which of course gives rise to endless problems about jurisdiction, service and enforcement of the judgment.
But the good points about the procedure are that it is quick, cheap and there is no appeal from the decision.
So, in summary, one course that is open to celebrities who are annoyed that someone has been using their name in a domain name is to bring one of these quick arbitration applications under the UDRP and, if they can, obtain an order, from which there is no appeal, that the domain name be cancelled or that it be transferred to them, so that they can use it themselves or lock it away and at least prevent anyone else from using it.
Of course, to bring a Complaint under the UDRP process, it must be really a case about domain names and not one where the process is being used as a guise or a device for bringing in reality a case that is really for breach of contract or trust or some other cause of action. Among several cases where this point has been made is The Estate of Marlon Brando v. WhoisGuard c/o WhoisGuard Protected, NAF Case: FA0506000503817 where the estate was relying on a common law trademark to mount its claim for the return of a domain name. But the panellist held there was no jurisdiction. What the parties were fighting about was whether Marlon Brando had actually made a gift of the domain name to his former business manager or not. The former business manager said that he had made such a gift. Brando’s estate said he had not. The panellist decided that Brando had registered the domain name himself, then put the business manager’s name on it with him and that after she was dismissed and he, Brando, died, she had transferred it from Brando and herself to herself alone. The question was: had this taken place consistently with Californian law? That was the real dispute and the panellist held that there was no jurisdiction to deal with the domain name case as if that were what the dispute was. In other words, it was held that this was not a domain name dispute at all, but a dispute about what was required by Californian Law to effect the transfer of property. The latter issue could only be determined by hearing from witnesses, an element that is alien to the UDRP process.
This article is about the UDRP process. It asks the questions: can a celebrity bring a claim under the UDRP process and claim back his own name, which have been taken by someone else, put into a domain name and used either to make money by linking it to a website that pays money for every hit on the site, or used to exploit a fantasy or to blackmail the celebrity into buying the domain name or even just to run a fan site?
If such a claim can be brought, will the celebrity win?
What do celebrities have to prove?
Can celebrities establish a trademark in their own name?
The first thing that celebrities have to prove if they want to bring a claim under the UDRP process is that they have a trademark in their own name. That is so, because under the UDRP, the complainant has to prove 3 things, namely that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
It will be seen therefore that the basis of the UDRP process is that the Complainant- the party bringing the claim-has a trademark or service mark in the same name or a similar name as the domain name that is being complained about.
So if the Coca Cola Co is complaining that someone has registered the domain name <cocacola07.com>, <bestcocacola.com> or <cocacolafizz.net>, it will have to prove that it has a trademark in the exact name that has been registered as the domain name or a trademark that is confusingly similar to it, so that it can argue that, for example, <cocacolafizz.net> is confusingly similar to the trademark Coca Cola.
So the Complainant who brings the complaint is the trademark owner, in our case the celebrity and the Respondent is the party who has registered the domain name and who is sometimes called the registrant.
There has been a lot of debate about why it should be that only trademark owners may have access to the fast track UDRP process that we are now discussing. What about others who have legitimate and reasonable complaints about the registration of domain names and yet do not have trademarks on which they can base their claims?
This is not the place to debate this issue, for the fact is that people in that position will have to sue in the courts instead of using the fast track UDRP process; but it is worthwhile noting that there is such a debate.
The Australian .com.au scheme.
Moreover, under some dispute resolution schemes for domain names, it is not necessary to prove a trademark. For example, under the Australian scheme for complaints on ‘.com.au’ domain names or the Australian country code as it is called, a complainant must establish that he or she has rights in ‘…a name [Note 1], trademark or service mark;’ The Note referred to tells us that ‘ For the purposes of this policy, auDA has determined that a "name … in which the complainant has rights" refers to:
a) the complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority; or
b) the complainant's personal name.’
So if the domain name being complained about is someone’s personal name, the Complainant will be able to get to first base by simply proving that fact and it is not necessary for him to prove that he has a trademark in his own name.
The new European .eu scheme.
Likewise, in the new European .eu scheme, it is necessary only to show that the Complainant has a right described as ‘a name in respect of which a right is recognised or established by national and/or Community law, such as the rights mentioned in Article 10(1)…’.
The examples given in Article 10 (1) are:
“…registered national and community trademarks, geographical indications or designations of origin, and, in as far as they are protected under national law in the Member-State where they are held: unregistered trademarks, trade names, business identifiers, company names, family names, and distinctive titles of protected literary and artistic works.”
So, that again is much wider than the requirements of the UDRP scheme. It will be sufficient in the .eu scheme if the Complainant has a family name, to take an extreme case, but only if family names are protected under the national law of the country in question. Whether the Complainant has an unregistered trademark in the name or not, he or she could therefore bring a Complaint through the European provider of domain name arbitration services, the Czech Arbitration Court, on the basis that someone has improperly taken the Complainant’s family name and used it for a domain name.
Claims for .com and similar domain names.
But for the big league of .com, .net, .org, which are the domain names that celebrities and cybersquatters seem to go for, it is necessary to prove a trademark or service mark in the celebrity’s name.
When that has been established, but only then, the tribunal can go on and decide if the domain name is identical to the trademark or confusingly similar to it, whether the person who registered the domain name had any right to register it and whether it was registered and used in bad faith. If all three of these elements can be made out, the celebrity or other Complainant will win and the domain name will be transferred or cancelled.
But getting to first base is important and sometimes it is the most difficult thing for the Complainant to prove. In fact, quite a few complainants actually lose their cases by not being able to prove a registered or unregistered trademark: David Pecker v. Mr. Ferris, WIPO Case No. D2006-1514 is one such case.
It is particularly difficult to prove in celebrity cases. Why? Because in most cases, the party complaining about the domain name is a company complaining about someone improperly taking a business name or the name of a product or service and there will sometimes be unregistered trademarks covering those products, even if there are not registered trademarks. But that is not always the case and there are many cases where even companies in business have failed to establish that they have an unregistered trademark as they have alleged. Here are some examples: Telecom Italia S.p.A. v. NetGears LLC c/o Domain Admin, NAF Case No: FA0944807, where the Italian telephone company claimed that it had an unregistered trademark over the numbers “187” because it was the number for customer assistance on the Italian telephone system; Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001, where the German postal company claimed that it had an unregistered trademark over the word ‘post’; and WOW Audio Visual Superstores Pty Ltd v. Comonoz Pty Ltd, WIPO Case No. DAU2007-0003 where a company claimed to have an unregistered trademark over the exclamation ”wow”.
In this regard, it is surprising that many companies simply do not have registered trademarks over their signs and names and the symbols of their trade, even when they have been using them for many years.
If they do not have a registered trademark, they have to establish, if they are in a common law country which recognises unregistered or common law trademarks, that the name or the sign or the symbol or whatever other device or logo they use, has become so associated with their products or services and them alone, that it can truly be said that this is the, albeit unregistered, mark of their trade.
Companies can and regularly do, succeed in this task. But it is harder for celebrities and other individuals to establish unregistered trademarks in their names because they are individuals, not companies with goods or products and they will have to show that they have a trademark in their own name or a trademark, if you like, in themselves, because it will be their own name that has been purloined and used in the domain name. So they will have to show that they have a trademark in their own name.
Merely to state the rule in that way makes it clear from the outset that it is not an easy thing to do. Very few people would think that they had a trademark in their own name, partly because many people would not regard themselves as being in trade. Yet this is what they must prove if they want to use the UDRP scheme to prise back a domain name that someone else has registered.
So how does the celebrity get to first base? How does the celebrity show that he or she has a trademark in his or her own name?
Some have registered trademarks. The complainant may be fortunate enough to have a registered trademark, which solves the whole problem of proving the existence of the necessary trademark. Some of the most prominent celebrities who are household names – and clearly those who obtain the best legal advice - have registered trademarks.
For instance, it is apparent from the decision in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847, that the singer Madonna had a registered trademark as well as an unregistered trademark that were both relied on and the decision of the panel that decided the case clearly thought that either was sufficient.
Likewise, the Rolling Stones had themselves covered by a long string of registered trademarks, as we see from the decision in Musidor B.V. v. Jung Hochul; NAF Case: FA0112000103053.
Jimi Hendrix, or rather his estate, was held to have both registered and unregistered trademarks and he also succeeded in his claim on that basis: Experience Hendrix, L.L.C. v. Denny Hammerton and The Jimi Hendrix Fan Club WIPO Case No. D2000-0364.
J K Rowling and Harry Potter
So also did J K Rowling, the author of the Harry Potter novels, have a registered trademark in her own name; that fact put her well on the way to succeeding in her several cases and retrieving various domain names, as she has done: Joanne Rowling v. Alvaro Collazo, WIPO Case No. D2004-0787.
To give you a taste of how the inventive cybersquatter plies his trade, the domain names in that case were <kjkrowling.com> and <www-jkrowling.com>, the former being a case of typosquatting because of the extra ‘k’ which is the next key on the keyboard to ‘j’ and the latter also being a case of typosquatting because of adding the letters ‘www’ before the domain name. The domain names were directed to the registrar’s site and the user was then bombarded with pop up advertisements. After the decision and retrieving the domain name, Ms Rowling was able to turn an unofficial website into an apparently official one, judging by its contents today. She also succeeded in other cases including the Irish case Joanne Rowling v. Hostine.net, WIPO Case No. DIR2006-0004.
While we are dealing with Ms Rowling, I should say something else about Harry Potter. One of the issues in this area is whether a federal United States trademark registration is required or whether a registration in one of the States of the United States is sufficient. It has generally been accepted that State registrations are insufficient for the purposes of the UDRP and if the trademark owner is going to rely on registered trademarks they must be Federal ones.
However, as you will see later, the registrations of the HARRY POTTER trademarks themselves were State registrations and not Federal registrations. But they were apparently regarded as good enough in Time Warner Entertainment Company, L.P. v. HarperStephens WIPO Case No.D2000-1254 to support an application to have a long series of Harry Potter domain names transferred to Time Warner. The Respondent does not seem to have been doing anything with the domain names and hence the decision was based on the finding that the domain names had been registered to prevent the owner of the Trademark from obtaining a domain name in the same name, or, as it is put in the UDRP, preventing the trademark owner from reflecting the trademark in a corresponding domain name.
The works of the other literary icon, Tolkien, are subject to registered trademarks as well: JRR Tolkien Estate Limited v. tolkien.net, WIPO Case No.D2003-0833 and JRR Tolkien Estate Limited v. Network Operations Center, Alberta Hot Rods, WIPO Case No. D2003-0837.
Another celebrity, or at least a company representing a group of celebrities that had the foresight to have registered trademarks, was the company which held the commercial rights to the New York Yankees: New York Yankees Partnership d/b/a The New York Yankees Baseball Club v. Covanta Corporation NAF Case FA060900080327.
Likewise, the celebrity outfitters Abercrombie & Fitch Stores, Inc had registered trademarks, which stood them in good stead in two cases. In
2000 they took on the doyen of cybersquatting domain name registrants, John Zuccarini, in Abercrombie & Fitch Stores, Inc. and A & F Trademark, Inc. v. John Zuccarini d/b/a Cupcake Patrol WIPO Case No. D2000-1004, which they won and in the course of it they were able to rely on their registered trademarks .
Three years later they had another fight in A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc., WIPO Case No. D2003-0172 where the panel was able to refer to the company’s registered trademarks and find as follows:
“Accordingly, the Panel finds that the Respondent’s domain names <abercronbieandfitch.com>, <abrecombieandfitch.com> and <abocrombie.com> are confusingly similar to the Complainants’ ABERCROMBIE & FITCH and ABERCROMBIE trademarks.”
Footballers also seem to well protected by registered trademarks. Thus, the company representing the interests of Pele, the Brazilian footballer, Glory Establishment v. FutbolMasters Ltd., FW, FM, Steve Leighton, WIPO Case D2007-0439 had a registered trademark and was successful in its claim. The English soccer player Wayne Rooney was in the same position and relied on his registered trademark in Stoneygate 48 Limited and Wayne Mark Rooney v. Huw Marshall, WIPO Case No. D2006-0916. So also did the Dutch soccer player Pierre van Hooijdonk have a registered trademark and, judging from the comments of the panel, he may have had trouble establishing a common law trademark on the evidence submitted, so it is just as well that he had a registered trademark: Pierre van Hooijdonk v. S.B. Tait, WIPO Case No.D2000–1068. The panel said:
“The Complainant has established that he is the owner of the Benelux registered trademark and service mark, details of which are set out above. It is noted that this would appear to be a very recent registration. Furthermore the Complainant has submitted that he is a world-renowned footballer with common law rights in the name <Pierre Van Hooijdonk>, although he has not submitted any evidence in support of this submission. The said domain name is clearly identical to the said registered trademark and service mark save for the ".com" element in the domain name. This Administrative Panel is therefore satisfied that the said domain name is identical or confusingly similar to the said registered trademark and service mark in which the Complainant has rights.”(emphasis added).
Other footballers with registered trademarks and who have been successful in domain name proceedings include Jaap Stam. a professional football player who played in Holland and also for Manchester United: Jaap Stam v. Oliver Cohen, WIPO Case No. D2000–1061
Other sportspeople and entertainers
The Formula I driver Mika Hakkinen was also successful in relying on his registered trademark in Mr. Mika Häkkinen v. "For SALE", WIPO Case No. D2001-1306.
Returning to the entertainers, we find that the band Mettalica also had a registered trademark and used it to advantage: Metallica v. Josh Schneider, NAF Case: FA0095636. So also did a Chinese-American entrepreneur and television personality in Yue-Sai Kan et al. v. Gong Gen Yuan et al, WIPO Case No. D2001-0548.
Without its being necessary to say much more about them other than to list them, here are some more cases based on registered trademarks: Warner Bros. Entertainment Inc. v Chris Sadler NAF Case No.250236, concerning more Harry Potter domain names, <shop4harrypotter.com> and <shopforharrypotter.com>; Warner Bros. Entertainment Inc. v Vivek Rana NAF304696, concerning <harrypottercollection.com>; Time Warner, Inc. v Alvaro Collazo NAF Case No.338464, concerning domain names like <compsuerve.com>, <copmpuserve.com>, <harrupotter.com>, <harrypotterandtheorderofphoenix.com>, <lordiftherings.net>,
<thesopranos.net> and that ever popular way of spelling domain names to catch the unwary, by making the “www” part of the domain name, as in <wwwtimewarnercable.com>; DC Comics, Turner Entertainment Co. and Warner Bros. Entertainment Inc. v IQ Management Corporation NAF Case No.514423 concerning <batman-costume.com>; <gilligansisland.com> and Warner Bros. Entertainment Inc. v SCS Collectibles NAF Case No. 661419, concerning <harrypotterville.com>; and Sheryl Crow v. LOVEARTH , NAF Case No.FA203208.
For a recent illustration concerning Marlene Dietrich, see Die Marlene Dietrich Collection GmbH V. Johan Duplesis Du Plesis WIPO Case No.D2007-1306.
Here are other cases of musicians who have succeeded in UDRP proceedings relying on registered trademarks: Experience Hendrix, L.L.C. v. Denny Hammerton and The Jimi Hendrix Fan Club,WIPO Case No. D2000-0364; Laurence Fontaine v. Visiotex SA, WIPO Case No. D2001-0071 (concerning the ‘adult’ singer and entertainer Laures Sainclair); Alain Delon in Alain Delon Diffusion S.A. .v. Unimetal Sanayi ve Tic A.S.,WIPO Case No. D2000-0989; Gene Klein a/k/a Gene Simmons, Gene Simmons Company, and Kiss Catalog, Ltd. v. Darryl Boyd (KISS) WIPO Case D2001-0183; Herederos de Manuel De Falla C.B. v. Music Sales Group, WIPO Case No. D2001-1234 (concerning <manueldefalla.com>); Laure Pester (Lorie) and Sony Music Entertainment France SA v. Movie Name, WIPO Case No. D2003-0312 (French singer); Peter Frampton vs. Frampton Enterprises, Inc.WIPO Case No. D2002-0141; Isabel Preysler Arrastia v. Ediciones Delfín, S.L. WIPO Case No. D2001-0298; Tour de Charme, S.A.R.L., Sony Music, Entertainment (Holland) B.V. v. Mademoiselle Patricia Kaas contre Stars en Direct, WIPO Case No D2002-0733 and Robbie Williams v. Howard Taylor WIPO Case No. D2002-0588.
Branching out into more exotic forms of entertainment, in Nora Baumberger v. SAND WebNames – For Sale, WIPO Case No. D2001-0502 the Complainant was described by the panellist somewhat tautologically as “a pornographic pornography star known under the pseudonym "Dolly Buster" ”. She was successful in relying on her registered German and European Community trademarks and in winning the proceeding.
As we have seen, literary works sometimes have registered trademarks, as in Anne of Green Gables Licensing Authority, Inc., v. Internetworks, eResolution Case No AF-00109 (2000) concerning the domain name <anneofgreengables.com>.
There was also a registered trademark over the Little Prince, or more accurately Le Petit Prince: Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085. The domain name was <thelittleprince.com>, but the trademark was LE PETIT PRINCE, giving rise to the interesting question whether a domain name could be identical or confusingly similar to a trademark that was in a different language. The panel resolved this question in the affirmative by saying:
“However a semantic similarity between a trademark and a domain name can also exist if the trademark and the domain name contain word elements of different languages if a considerable part of the public understands the meaning of the translation. See e.g. Compagnie Generale Des Etablissements Michelin - Michelin & Cie. v. Graeme Foster, WIPO Case No. D2004-0279. The Panel observes that Complainant’s registered trademark is identical with the English translation of Complainant’s trademark and title “Le Petit Prince” and that the English title “The Little Prince” of Saint Exupéry’s novel is well known in the English speaking world.”
A business person successful with a registered trademark over her name was the female Chinese-American entrepreneur and television personality Yue-Sai Kan : Yue-Sai Kan et al. v. Gong Gen Yuan et al., WIPO Case No. D2001-0548. Another interesting case of a business person succeeding by relying on a registered trademark was Dodi Al Fayed in Harrods Limited v Robert Boyd, WIPO Case No. D2000-0060, where the domain name at issue was not Harrods but <dodialfayed.com>. The trademark DODI FAYED was registered by Harrods as a European Community Trademark. After registering the domain name, the respondent placed it for sale at an auction website with an asking price of US$400,000. But Harrods succeeded in the claim and the domain name was transferred.
The case is interesting for two reasons, first that the complainant was seeking the transfer of a domain name that was not its own name, but the name of an associate, in this case the deceased son of the owner of the company. Secondly, Harrods relied on a registered trademark that was in the name of Harrods and not in the name of the executors of the deceased Dodi Al Fayed. As it was put in the decision:
“The Complainant owns the trademark, DODI FAYED, and the late Dodi was a director of the Complainant, which is owned by Dodi’s father, Mr Mohamed al-Fayed. ”
The complainant was allowed to rely on the registered trademark, which helped it succeed in the proceedings. As we will see later, this same issue arises in the case of unregistered or common law trademarks, where the issue in some cases is whether an employer such as a media company may have an unregistered trademark in the name of an employee like a journalist or an anchorman and what sort of evidence is needed to make out such a case.
Another interesting aspect of the Dodi Al Fayed Case is that there was a finding of bad faith made against the respondent who had registered the domain name on the basis that he was intending to try to sell it to the Complainant, that finding being the only rational conclusion that could be drawn from the few known facts, although it was only advertised for sale to the world at large and not offered directly to Harrods. The panel said that in view of the fact that:
“The Complainant owns the trademark, DODI FAYED, and the late Dodi was a director of the Complainant, which is owned by Dodi’s father, Mr Mohamed al-Fayed, (that) Mr Mohamed al-Fayed has personally been involved in public tributes to Dodi and Princess Diana, as well as in making well-publicised efforts to investigate how they were killed (and that as) (i)t strains belief that the Respondent was unaware of these matters…”
there should be a finding, to paraphrase the Policy, that the respondent had
“ registered… the domain name primarily for the purpose of selling, renting, or otherwise transferring …(it) to the complainant who is the owner of the trademark or service mark for valuable consideration in excess of the documented out-of-pocket costs directly relating to the domain name."
Nor is there any sign of any letting up in the practice of registering celebrity domain names. A recent one concerns Betty Ford: The Betty Ford Center at Eisenhower v. Domain Source, Inc., WIPO Case No. D2007-0901. The domain name in dispute was <bettyford.com> and the Complainant operated a drug and alcohol rehabilitation centre co-founded in 1982 by the former U.S. First Lady Betty Ford. The panel noted, which is important for our present purposes, that
“The Complainant’s treatment center has been used by a number of celebrities, and is sometimes referred to as being the “rehab of the stars”. The Complainant is the owner of a federal trademark registration for BETTY FORD CENTER, issued by the United States Patent and Trademark Office on September 28, 2004, and which the Complainant has used in commerce in relation to its counseling and rehabilitative services since as early as October 1982.
The Respondent registered the disputed domain name <bettyford.com> on September 14, 2003. The Complainant has submitted evidence reflecting the Respondent’s use of the domain name in relation to what appears to be a parked, pay-per-click website featuring direct links to websites of drug and alcohol rehabilitation centers that compete with the Complainant. The Respondent’s website also features so-called “sponsored links”, including “betty ford center”, “betty ford treatment center”, “betty ford clinic”, and “betty ford institute”, but these “sponsored links” merely direct Internet visitors to websites of competing rehabilitation centers.’
The registered trademark was clearly enough to get the case off the ground and, not surprisingly, the Complainant went on to win and obtain the domain name.
In the Australian context, although under the UDRP, not the Australian policy, for the domain name at issue was a ‘.com’ domain name and not a ‘.com.au’ one, the Wiggles company had registered trademarks in The Wiggles and Henry The Octopus that it could rely on in the proceedings: The Wiggles Touring Pty Ltd v. Thompson Media Pty Ltd, WIPO Case No. D2000-0124. The panel then had no difficulty in deciding that the domain names <thewiggles.com> and <henrytheoctopus.com> were identical to those trademarks.
Accordingly, the examples that have been given show that sometimes in these proceedings under the UDRP, registered trademarks have fortuitously been obtained and that it is legitimate for the trademark owner complainant to rely on them.
Sometimes registered trademarks are relied on, but it is not entirely clear from the decision whether the panellist deciding the case was acting on there being a registered or a common law trademark.
For example, in Sean Michaels Inc., v. Mark Allan Online Entertainment, E Resolution Case Number: AF-0214, the domain name was <seanmichaels.com>. The Complaint was in the name of a management company, but the panel said the celebrity being managed could have brought the case in his own name, (he was a successful adult movie star) based on the principles laid down in other cases on unregistered trademarks. But he had not brought the case in his own name, so the question was whether the company that was in fact the complainant, because it was the registered owner of the trademark, could succeed, which it did. That could only have been on the basis of the service mark referred to in the decision that had been applied for, but apparently not registered.
The decision noted that:
“The company filed an application to register the service mark "Sean Michaels" ... The … application states that the service mark in question was used for the first time in September 1989 and has been used in commerce since October 1989.”
But of course it was an application and not a regi