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May 16, 2017

A Better UDRP Standard for Personal Names: Part 1

Law360

In this two-part series, we first survey cases under the Uniform Domain Name Dispute Resolution Policy involving the extent to which the UDRP does — and does not — protect individuals’ rights in their names against cybersquatters. The series then advocates for a more consistent treatment of well-known individuals who have established goodwill in their names, whether in the commercial or noncommercial context. Using both real and fictional examples, this first part of the series investigates the history of, and current status of cases under, the UDRP, which generally affords protection only to those individuals who can show that they have reaped commercial success through use of their names, or who are otherwise famous celebrities.

The Uniform Domain Name Dispute Resolution Policy frequently provides a welcome remedy for those trademark owners who fall victim to cybersquatters. But the UDRP is not so kind to individuals whose personal names are similarly targeted. UDRP decisions almost always require that an individual demonstrate commercial success in his or her personal name before ordering transfer of a domain name incorporating that personal name.

Imagine the different fates of our fictional characters, the sports hero "Brute Force" and the environmental activist "Leafy Greene." Brute plays center for a professional basketball team. Win or lose, this towering figure's name is in the papers throughout the season. He appears on cereal boxes and he endorses athletic shoes for a handsome fee. In a word, "Brute Force" is a commercial success. Under the UDRP, Brute can, very likely, protect the use of his name against cybersquatters who register the likes of "bruteforce.com," "bruteforce.online" and "bruteforce.basketball."

Leafy Greene, the CEO of a nonprofit forestry protection organization, will not fare so well against cybersquatters under the UDRP, despite her fame, her TV appearances on nature shows, her many public lectures, and favorable press on her activities. She is well schooled on tree diseases and often serves as an expert witness in environmental cases. She has even started a foundation to help troubled youth by engaging young people in environmental projects. But she doesn't sponsor or endorse any products or receive any compensation from her many environmental activities. If cybersquatters seize "leafygreene.org," "leafegreene.net" and "leafygreene.xxx," she might well be out of luck in invoking the UDRP.

This article examines the standards that tribunals administering the UDRP, principally, the World Intellectual Property Organization and the National Arbitration Forum apply to personal name cases such as Brute's and Leafy's fictional cases. It highlights inconsistencies in the personal name scenarios and the panelists' struggles with drawing the line at where personalities may or may not prevail. It then argues for a more generous application of those standards to protect the rights of individuals in their names. This more "lenient" standard would be consistent with the UDRP's mandate that the UDRP should be available as a lower cost alternative to those seeking to redress the wrongs brought about by cybersquatters without engaging in expensive court litigation. It would also construe the meaning of "trademarks or service marks" more liberally in the context of personal names to encompass noncommercial services rendered for the public good, particularly in obvious situations of cybersquatting.

The Current View: Limited Protection for Personal Names

Unlike a case under the Anti-Cybersquatting Consumer Protection Act (ACPA),1 which may entail protracted litigation, a UDRP case is a streamlined administrative proceeding, involving only the filing of a complaint and, should the registrant so choose, a response. It is thus an attractive option for brand owners who care only about reclaiming their marks from cybersquatters, rather than making a monetary recovery, which may be available under the ACPA.2

Section 4(a) of the UDRP exacts a three-part test that a complainant must satisfy to prevail: (1) the domain name at issue must be "identical or confusingly similar to a trademark or service mark in which the complainant has rights"; (2) the domain name registrant must not hold rights or legitimate interests in the domain name; and (3) the registrant must have registered, and be using, the domain name in bad faith.3 The UDRP thus does not expressly contemplate relief for claimants seeking to protect their personal names, as opposed to their brand names.

Decisions applying the UDRP do, however, generally afford relief to those claimants who make commercial use of their personal names, on the theory that this use establishes their trademark or service mark rights in their names. Specifically, entertainers, authors, athletes and other celebrities who make money off of their personal names have typically been accorded protection, with panels regarding their personal names, if unregistered, as common law marks.

The WIPO Overview 2.04 also reflects this limited view of an individual’s right to redress for the unauthorized registration and use of his or her personal name as a domain name:

While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person's name as a distinctive identifier of goods or services offered under that name would normally be required. ... However: The name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier for the business engaged in, or a religious leader), or making broad unsupported assertions regarding use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights.

The "Commercial Use" Standard in Practice

The General Distinction Between Commercial and Noncommercial Use

Many "personal name" cases have turned on whether or not the domain name complainant has made commercial use of his or her name. Some cases draw an express distinction between situations in which the complainant performs services for a fee — or endorses products — and those in which he or she does not.

For example, in Jay Leno v. Garrison Hintz, Case No. D2009-0569 (June 26, 2009), the panel found that entertainer Jay Leno had presented solid evidence of common law rights in his name based on his alleged "success and fame as an comedian, entertainer, author and television personality," and thus awarded him transfer of the domain name "weeknightswithjayleno.com." The panel observed that, in general, "in cases involving entertainers, authors, professional athletes and to a lesser extent business persons, complainants have been found to have common law marks in their names in circumstances where the name has been used as a marketable commodity, for a fee to promote another's goods or services, or for direct commercial purposes in the marketing of the complainant's own goods or services." See also Dustin N. Diamond v. Max Goldberg, NAF Claim No. FA0402000237446 (Apr. 5, 2004) (complainant who appeared in "numerous television shows and motion pictures" and sold instructional chess video established rights in personal name).

Likewise, in Arthur Golden v. Galileo Asesores SL, Case No. D2006-1215 (Dec. 15, 2006), the panelist ordered transfer of "arthurgolden.com" and "arthurgolden.net" to author Arthur Golden, who penned the best-selling novel "Memoirs of a Geisha." The panelist wrote that, on the evidence "the name Arthur Golden is associated with the literary products of the Complainant. These facts are sufficient to establish common law rights in the name ARTHUR GOLDEN. In fact, it is precisely the famous nature of the Complainant's name which is the probable cause of the registration of the domain names by the Respondent."

So, too, UDRP panels have applied this reasoning in the sports context to the "Brute Forces" of the world. For example, in ordering transfer of "danmarino.com" to professional football quarterback Dan Marino, the arbitrator stressed that the sports hero had "spent 17 years as the quarterback for the Miami Dolphins, has been a sports commentator, has acted in movies and has been recognized for community service", all evidence sufficient to establish his common law rights in "Dan Marino" as a mark. Daniel C. Marino Jr. v. Video Images Prods., WIPO Case No. D2000-0598 (Aug. 2, 2000). See also Dirk Nowitzki v. Happy Bulldawg Entertainment, NAF Claim No. FA1107001400861 (Sept. 8, 2011) (concluding that basketball star had established rights in his first name "Dirk" through success in the NBA, establishment of a charitable foundation, and large Twitter following and ordering transfer of "dirkswish.com" to him).5

Conversely, panels have denied other complainants relief, even when they have been well-known figures, where they did not plainly make commercial use of their names. A number of UDRP complaints have been brought by executives, like the fictional "Leafy Greene," who are primarily famous for their significant leadership roles at large companies or organizations. In these cases, UDRP panelists have been disinclined to find that the executives have rights in their personal names, even when there is evidence that these executives provide valuable, well-known public services in their own name, such as by giving interviews and lectures and publishing their views.

Perhaps the most prominent example involved the then-president of Planned Parenthood Federation of America Inc., Gloria Feldt. Planned Parenthood Federation of America Inc. v. Chris Hoffman, WIPO Case No. D2002-1073 (Feb. 21, 2003). The panelist in that dispute recognized Gloria Feldt's fame, that she had frequently appeared in public to express views on women's reproductive rights, and that she was also the author of many articles on that subject. Nevertheless, the panelist found that Feldt did not have rights in her personal name because none of her public work was commercial in nature and declined to award her transfer of the domain namesgloriafeldt.com.

While the Gloria Feldt example is well-known, it is hardly the only decision under the UDRP unfavorable to the leader of an organization whose name — although associated with significant public works or philanthropic efforts — was not used commercially. In Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540 (June 11, 2001), the complainant, a successful businessman, author and politician known as "Izzy" Asper, unsuccessfully sought the transfer of several domain names that incorporated his unusual name, such as "izzyasper.com." In one of the most extensive analyses on the personal names issue, the panelist ruled that "Izzy" Asper had not provided any evidence that his name, despite being well-known, had been used to identify commercial services or products. The panelist specifically ruled that Izzy's donations to a university (which named a building after him) and his philanthropic endeavors (the Asper Foundation and the Asper Jewish Community Campus) did not suffice to establish common law rights in his name because "it is not argued on [Asper's] behalf that there was any commercial consideration given to his name being included in the name of any of these bodies."

The same is true as to UDRP complaints made by business persons against domain name registrants co-opting their personal names. For instance, in denying transfer of "megwhitmanforgovernor.com," "megwhitman2010.com," "meg2010.com," "whitmanforgovernor.com" and "whitman2010.com" to Meg Whitman, then-CEO of eBay, another panelist found that Meg Whitman held no rights in her personal name. This, despite the fact that, during her tenure at eBay, Whitman received several awards, made "numerous speeches, presentations and public appearances to promote eBay", and was "featured on television and in numerous publication." Margaret C. Whitman v. Domains for Sale, Case No. D2008-1534 (Dec. 1, 2008). The panelist nonetheless rejected the idea that this created rights in Whitman's personal name, stating: "Merely having a 'famous' name is not sufficient to establish common law trademark or service mark rights in the name. ... To be entitled to protection under the Policy, however, a personal name must function as a trademark, and for common law trademark rights to exist, the Complainant's personal name must have come to be recognized by the public as a symbol which identifies particular goods or services with a single source". The panelist concluded that Whitman did not use the name "Meg Whitman" "as a source-indicator to a segment of the relevant buying public."

Similarly, in Jonathan Ive v. Harry Jones, WIPO Case No. D2009-0301 (May 5, 2009), the panelist determined that the well-known product designer at Apple Inc., Sir Jonathan Ive, did not have common law trademark rights in his name despite being frequently approached in his personal capacity to perform design work, where this designer admitted to only accepting a small number of such engagements. The panel thus refused to transfer "jonathan-ive.com," "jonathanive.com," "jony-ive.com" and "jonyive.com" to Ive.

Inconsistencies in Personal Name Decisions

Although many cases apply the distinction between commercial and noncommercial use in deciding whether a complainant has established common law trademark rights in his or her name, others do not adhere to this distinction. Or, the cases reach a conclusion with little or no analysis, merely resting on the fame of the complainant in awarding relief.

For example, even when an individual has used his well-known name in connection with the sale of merchandise, this has not always sufficed to establish rights in his personal name. In John Theodore Geiger a/k/a Teddy Geiger v. Premium Design, NAF Claim No. FA0512000604896 (Jan. 17, 2006), the arbitrator ruled that a professional performer and actor who gave concerts throughout country, released albums, appeared on television, and sold T-shirts under his name "Teddy Geiger," did not have rights in personal name and could not obtained third party registrations of "teddygeiger.com" and "teddygeiger.net." With little or no analysis, the arbitrator merely stated that Geiger did not allege common law rights in his name.

Likewise, in another case, a best-selling author did not prevail on his claim to protect his personal name against a registrant registering that exact name in his second-level domain, "robertgreene.com." Robert Greene v. Bob Greene, Claim Number: FA1106001391921 (July 12, 2011). This decision gave short shrift to the secondary meaning discussion: "Complainant contends that his ROBERT GREENE mark has developed secondary meaning and is therefore fully associated with Complainant. Complainant asserts that he is the author of a number of books, four of which have appeared on the New York Times Bestseller List. Complainant avers that he wrote The 48 Laws of Power, The Art of Seduction, The 33 Strategies of War, and The 50th Law. Additionally, Complainant claims that he frequently lectures at universities and businesses about the content developed under the mark. While Complainant has alleged an extensive amount of information about his use of the ROBERT GREENE mark, Complainant has failed to provide any dates or supporting evidence of its allegations. Therefore, the Panel concludes that Complainant has failed to provide sufficient evidence of common law rights in its ROBERT GREENE mark under Policy ¶ 4(a)(i)."

There is no clear or logical distinction between the Robert Greene case and that of Arthur Golden, author of "Memoirs of a Geisha," who succeeded on his claim to seize unauthorized registration of domain names incorporating his personal name. Similarly, in the authors' view, there is no easy answer as to why Michael Crichton, author of the sci-fi work "The Andromeda Strain," succeeded in reclaiming his name in a domain name, where Greene did not. See Dr. Michael Crichton v. In Stealth Mode, Case No. D2002-0874 (Nov. 25, 2002) (awarding transfer of "michael-crichton.com" to author Michael Crichton and observing: "Complainant has claimed to be the author of the numerous works already identified. Respondent has not contested this. The Panel therefore infers that Complainant has, through use, acquired common law trademark rights in his name.").

Moreover, as noted above, some cases take success on the screen as enough on its own to establish rights in a personal name, without requiring more. In other words, a complainant's fame alone has at times entitled he or she to succeed in a UDRP proceeding.

In one of the early and oft-cited cases on the subject, Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (May 29, 2000), the arbitrator ordered transfer of ";juliaroberts.com" to actress Julia Roberts, star of movies such as "Notting Hill" and "Erin Brockovich." This decision stated, with little or no analysis, that the actress Julia Roberts had developed common law rights in her name by virtue of being "a famous motion picture actress," and found that the domain name "juliaroberts.com" should be hers.

So, too, in Jim Carrey v. BWI Domains, WIPO Case No. D2009-0563 (June 16, 2009), the panelist declared that the complainant's name "Jim Carrey" "provides a strong indication of source" by "virtue of the success of his numerous films" and his personal renown as "one of the world's most famous actors", and awarded transfer of "jimcarrey.com" to the comedian Jim Carrey. See also Anna Nicole Smith c/o CMG Worldwide v. DNS Research Inc., NAF Claim No. FA0312000220007 (Feb. 21, 2004). There, the panelist did express some doubt that pop icon star, the late Anna Nicole Smith, held common law trademark rights in her name because "the mere fact of having a successful career as an actress, singer or TV program star does not provide exclusive rights to the use of a name under the trademark laws." Continuing, however, the decision explained: "The Humphrey Bogart case cited by Complainant is a prime example of the type of case that would be expected to prevail, since virtually no one familiar with the movie industry would fail to recognize his name as that of the famous movie star. The Panel does not believe Complainant's name has yet reached that level of fame." The panel nonetheless assumed Anna Nicole Smith's showing of such common law rights for purpose of its analysis. This analysis, again, suggests that, if a celebrity demonstrates a sufficient level of fame — without more — he or she may establish common law rights in his or her personal name, without use of that name to accompany a specific product or service.

The inconsistencies in these decisions, reflected in the above cases involving entertainers and authors, may stem from the fact that individual panelists from around the world, bringing their unique perspectives to bear on each case, are the decision-makers. The decision-makers are not bound to any specific judicial system and are not required to adhere to precedent. There is no appellate authority to harmonize their decisions. See Public Storage v. Deer Valley Mini Storage, WIPO Case No. D2012-1149 (Aug. 21, 2012). As this decision observed:

Each UDRP case involves its own specific and unique set of facts, with each panel bringing its collective knowledge, expertise, experience and wisdom to the task of deciding the issues involved. Doing so, as with adjudication, necessarily involves some degree of analytic subjectivity whether in assessing the facts and/or the pertinent law, and/or applying that law to the facts to achieve a result, which, in turn, will from time to time yield variable results from one panel to the next. UDRP decisions are not precedential. ... UDRP panels have no authority to ... function as an appellate body tasked with reviewing another UDRP panel decisions ... UDRP panels are co-lateral.

And, whatever the reason for these inconsistencies, a more generous standard in the personal name context is warranted.

As explained in the next article, we believe that a complainant should succeed in a UDRP case where he or she uses his or her name prominently in the nonprofit, as well as the for-profit, sense, and thereby gains public recognition for his or her name.

Roberta Horton is a partner and Michael Kientzle is an associate in the Washington, D.C., office of Arnold & Porter Kaye Scholer LLP.

The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

  1. 15 U.S.C. § 1125(d).

  2. The Lanham Act, 15 U.S.C. §1117(d), provides that in cases of willful infringement, a cybersquatter may be liable for $100,000 per domain name infringed. The UDRP, on the other hand, does not afford any monetary remedies.

  3. The UDRP is set forth in full at http://www.icann.org/en/help/dndr/udrp/policy.

  4. This Overview, which addresses questions that commonly arises in WIPO proceedings, is posted at http://www.wipo.int/amc/en/domains/search/overview2.0/#16, As noted on this site, “(t)he WIPO Center's identification of questions and careful and conservative evaluation of opinions is based on some 20,000 UDRP cases it has administered through March 31, 2011.”

  5. Where professional athletes have not fared so well, their cases have, in the authors’ view, presented exceptional circumstances. See, e.g., Adrian Lewis Peterson v. AdrianPeterson.com, NAF Claim No. FA1208001456431 (Aug. 30, 2012) (despite football star’s “celebrity status”, he presented scant evidence that he made commercial use of his name, submitting only a screenshot of his National Football League profile page, held insufficient to establish his rights in “adrianpeterson.com” to warrant transfer of that name to him). In Brayden T. Quinn a/k/a Brady Quinn v. Randy Darr, NAF Claim No. FA0906001267051 (July 20, 2009), the panelist held that the complainant quarterback’s “sportive accomplishments” were insufficient to establish rights in his personal name where “Brady Quinn” was not sufficiently well-known before respondent registered domain names incorporating his name.

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