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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:

    Introduction

  1. 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.

  2. 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.

    Scope of the UDRP

  3. A complainant must establish each of three elements in order to seek relief under the UDRP:

  4. 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.

  5. As regards its scope the procedure has two main limitations:

  6. The first limitation confines the availability of the policy to cases of deliberate, bad faith abusive registrations.

  7. The second limitation (what is more important for the purpose of our topic) defines abusive registration by reference only to trademarks and service marks.

  8. 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.

  9. 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.

    Trademark or service mark rights

  10. 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]

  11. The panel made a parallel between "passing-off" and domain name registration in that case.

  12. "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.

  13. 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.

  14. 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.

  15. 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.

  16. 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.

  17. 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.

    Rights and legitimate interests

  18. The following factors without limitation shall be taken into consideration upon considering rights and legitimate interests of the registrant:

  19. 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.

  20. 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.

  21. 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]

  22. 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.

    Registration and use in bad faith

  23. The following circumstances without limitation have to be taken into account upon considering the issue of bad faith:

  24. 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."

  25. 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.

  26. 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."
  27. 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.

    Conclusion

  28. Whereas the general trend in the disputes over celebrities' domain names under the UDRP supports the complainants the situation is still far from clear.

  29. 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]

  30. 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."

  31. 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.

  32. 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.

  33. 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).

  34. 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.

Notes

[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/

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